Intellectual Property, Patents, Trademarks, and Copyright in a Nutshell
Authors:
Miller, Arthur R. / Davis, Michael H.
Edition:
6th
Copyright Date:
2018
39 chapters
have results for Intellectual Property: Patents, Trademarks, and Copyright in a Nutshell
Chapter 28 International Agreements 477 21 results (showing 5 best matches)
- There are only a handful of important multilateral international agreements to which the United States is a party that directly affect intellectual property. The major agreements are the Paris Convention (addressing patent and trademark), the Patent Cooperation Treaty, or PCT (addressing patent), the Trademark Law Treaty, or TLT (addressing trademark), the Berne Convention (addressing copyright), The Universal Copyright Convention, or UCC (addressing copyright), NAFTA (addressing all three), and the Trade Related Aspects of Intellectual Property Rights, or TRIPS (also addressing all three). Although all differ in more than just their subject matter, they share certain characteristics that have historical and continuing significance. In 2003, the United States acceded to the Madrid Protocol of the Madrid Agreement, governing trademark, and is now a part of the so-called Madrid system of international trademark registrations.
- GATT and NAFTA are departures from the tradition of national treatment with few substantive minimums. Despite being trade, not intellectual property, agreements, both NAFTA and GATT adopted substantive terms addressing intellectual property. NAFTA, comprising only Canada, the United States, and Mexico, although with provisions for extensions throughout the Western Hemisphere, was in many ways a precursor to TRIPS. Under the banner of globalization, both NAFTA and TRIPS member signatory countries have agreed upon substantive minimum standards for patent, trademark, and copyright—as well as trade secrets and unfair competition—with various although severely limited opportunities for developing countries to delay compliance temporarily. GATT, which has been absorbed into an umbrella organization, the World Trade Organization, or WTO, includes TRIPS as part of its overall terms. TRIPS, in turn, imposes upon its members most of the provisions of the Paris and Berne Conventions, with some...
- The oldest and most well-established characteristic of intellectual property agreements is that of national treatment, which can best be understood historically. When the first intellectual property treaties were proposed in the nineteenth century, different countries, at different levels of economic and cultural development, favored different coverage, treatment, and terms. Because it appeared impossible to reach an agreement on the level of protection that should be guaranteed in all signatory countries, a compromise was reached.
- The undemanding approach of national treatment has been the stated rubric of international intellectual property treaties even as, in fact, they depart from that approach in favor of agreement upon transnational minimum provisions. Thus, even NAFTA and TRIPS, which create important transnational norms of substantive intellectual property purport to be documents incorporating national treatment.
- Perhaps as a result, the United States has reserved to itself the right to address international legal disputes over intellectual property in a unilateral fashion. The Trade Act of 1974, as amended, includes a provision, Special Section 301 of the Act which authorizes sanctions against foreign countries in violation of trade agreements or even, absent such violations, when they unfairly restrict our foreign trade. Amendments in 1988 produced so- called “Super 301,” which enhances these penalties and also includes the creation of various watch and priority lists and, ultimately, trade sanctions. What is most surprising is that even when a state is in full compliance with international agreements to which we adhere—such as TRIPS, for instance—the United States reserves, under section 301 of the Trade Act, the right to impose penalties upon countries that, in its view, do not provide “adequate and effective” intellectual property protection. There is some doubt whether the application...in
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Chapter 11 The Foundations of Trademark Protection 179 18 results (showing 5 best matches)
- The manner in which a businessperson acquires a trademark is different from that in which other intellectual property, such as copyright or patent, may be legally protected. A trademark cannot be appropriated
- The growth of an increasingly complex and sophisticated body of state trademark common law was accompanied by attempts to federalize it, despite the lack of an express constitutional grant of power to do so. The first trademark laws were enacted by Congress in 1870 and 1876. Those statutes were declared unconstitutional in 1879 by the Supreme Court. (The Trademark Cases). The Court held that Congress had no power to regulate purely state matters such as trademark rights. In response to those cases, Congress passed statutes in 1881 and 1905 solely addressing the interstate use of trademarks. In 1946 Congress passed the most recent substantial revision of federal trademark legislation, the Lanham Act.
- Some of the most important and disputed issues in contemporary trademark law can be traced back to its historical development. For instance, the current disagreement over the objectives of trademark protection has its parallel in the history of conflicting claims for trademark protection from different interest groups centuries ago. A useful place to start the exploration of today’s controversy over the objectives of trademark law is to look at the original purpose of guild members during the medieval period who affixed the mark of their guild to the goods they sold. The mark was meant to identify the good as the product of a particular craftsman or group of craftsmen. The original function of trademark, therefore, was simply to indicate the origin of goods, by identifying the craftsmen who produced them. But those producers also saw in trademark the opportunity to gain a competitive edge over others. This partially explains the development of the philosophy underlying the current
- The expanded function of trademarks can be attributed in part to the fact that the modern market is not susceptible to or even dependent upon knowledge of the identity of different sellers. Trademark does serve to indicate origin, as one court has said, “though the identity of that source may in fact be unknown to the public,” . 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.
- Trademark Cases,
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Copyright Page 7 results (showing 5 best matches)
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- 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.
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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...
- Two considerations, however, make our task easier. First, the areas of patent, trademark, and copyright, are substantially statutory. Although that means that the law cannot be understood without occasional reference to the statute, it also means that, with the statute, at least some “black letter” law is immediately available. With the recent explosion of intellectual property as a mainstay of national and international trade has come a concomitant explosion of statutory changes. This presents a challenge to students and practitioners to stay up-to-date. Second, although intellectual property is relatively abstract, that is not to say that it is unfamiliar.
- Trademark, for instance, is hopefully even more commonplace than a punch in the nose. We all have seen Xerox machines and the ads that manufacturer places periodically to reinforce the strength of its mark. We have used aspirin, which once was a trademark but is no longer. Likewise, although most people have not seen a patent document, we all have seen, used, and benefitted from patented items, processes, combinations, and the like. We have seen and used copyrighted materials, including this book, and enjoyed many of them. Without patented and copyrighted items, our lives would be quite different. The richness they bring to us is one of the justifications for these protective legal concepts (although one always should note that copyright was not necessary to inspire Shakespeare to write nor was the patent system necessary to encourage the first inventor of the wheel).
- Finally, a basic book in any area cannot pretend to be the last word. As is true of all legal subjects, the field of intellectual property is hopelessly entangled with other legal areas, such as torts and property. It is inextricably bound up with antitrust and government regulation. It also is affected by concepts of federalism and the conflict created by simultaneous state and federal regulation of the same area. Although the basics are necessary for a good beginning, their mastery does not imply that the task is finished.
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Chapter 15 Trademark Practice 251 28 results (showing 5 best matches)
- Use in commerce was and is required similarly by section 1051, which allows registration of a trademark “used in commerce.” This requirement exists because there is no trademark clause in the Constitution. In fact, early attempts to regulate trademarks federally under the Patent and Copyright Clause were rejected as unconstitutional. (1879), supra. The Lanham Act gains constitutional legitimacy because it is founded upon the Commerce Clause, under which federal regulation of commerce is legitimate if, and only if, the regulated activities are interstate. Thus, unless an owner has used its mark in interstate commerce, it cannot comply with the requirement in section 1051 that the mark be “used in commerce.” This, then, is what is called the use-in-commerce requirement.
- The “in connection with” requirement, set out in sections 1051(a)(1) and 1051(b)(1)(A), means that registration can be obtained only with reference to whatever goods or services actually were used in commerce. The sale or transport of apples in commerce under the mark “Sweet-Test,” for instance, will not allow the applicant to claim registration for that mark for later shipments of peaches or pears. In addition, the mark actually must be used as a mark and not in some ineligible sense. For instance, the sale of “Sweet-Test” apples in interstate commerce with the promise that any bruised apples could be returned under a “bruise-free” guarantee would not qualify the term “bruise-free” as the trademark of the goods sold. The term “bruise-free” would not be in connection with the sale of the goods, but in the marketing of the guarantee. In one case, it was held that the term “Syncom,” which identified a computer that was used by the trademark owner to test speakers but that was not...
- Use in trade 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 increasing liberality with which courts treated the requirement of a use in commerce was more than the simple lifting of technical statutory requirements and, in fact, represented a profound alteration in the nature of the Lanham Act. Because of the fundamental distinction between use in commerce and use in trade, the tendency of courts to liberalize both of these requirements, without distinguishing between the two, had the effect of transforming the law of federal trademarks from that based upon the traditional common law rights flowing from actual use of the mark in trade to that of the European doctrine, which allows business persons to claim rights in marks simply by establishing an intent to use the mark. Although it may not always be obvious, this transformation is immediately apparent, however, through an understanding of that fundamental distinction.
- 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...
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Chapter 17 Infringement 289 42 results (showing 5 best matches)
- So called “gray market” goods bear valid trademarks, are imported into the United States, and compete with domestically manufactured or marketed goods bearing the same, equally valid, trademark. The term “gray market” is used to imply that something is wrong with them or their marketing, although their trademark status is often perfectly legitimate, which is why they are certainly not “black market” goods. Domestic parties complain that these lower-priced “parallel imports,” for one reason or another, compete unfairly with their own products. However, it is clear that trademark law does not give a party the right to exclude the sale of most gray market goods. The fact that the gray market trademark was authorized by a legitimate trademark owner is enough to remove any claim of trademark infringement. The dispute over parallel imports usually is not one of trademark law, but one of international trade law sometimes bordering on protectionism. It requires, at least, particular...
- Fair use allows fair comment that incidentally involves use of the mark for a purpose other than that normally made of a trademark. Collateral use allows the use of goods that bear a preexisting mark, resembling the repair-reconstruction doctrine in patents. See § 8.6, supra. The parallel between collateral use and repair-reconstruction is striking in some cases. When a party uses a trademarked item as a component of a more complex product, the doctrine of collateral use allows the party to so identify the component by its trademarked name without fear of being liable for infringement. This is true, however, only insofar as the party does not deceive the public into thinking that the product, as sold, actually is marketed by the owner of the trademark. Thus, the reprocessor can use the trademark in a nonconspicuous way solely to identify the component, but not to misattribute the finished product to the trademark owner.
- Parody has been held a legitimate form of trademark fair use, and, in fact, the subject is informed by the Supreme Court’s treatment of copyright parody in . See § 23.7, infra. But it is not fair use when a claimed parody is used to promote competitive goods or services.
- Since trademark law is equitable, it utilizes the traditional equitable defenses with the added element of a presumption favoring the registrant. Whereas in most equitable cases the court considers the public interest generally, the scale is usually tipped considerably in trademark cases in favor of the registrant, who not only has the statutory license to use the mark but comes equipped with the presumption of validity that registration confers. Nevertheless, the equitable doctrines of laches, estoppel, and unclean hands are all applied in appropriate trademark infringement cases. (See § 8.7, supra, for the distinction between estoppel and laches.)
- Although Congress attempted to abrogate the states’ Eleventh Amendment immunity by defining “person” in sections 43(a) and 1127 to include states and their instrumentalities, the Supreme Court has held, in a section 43(a) action, that this is constitutionally invalid absent a pattern of state trademark infringement, similar to its reason for rejecting immunity in the patent law context. See §§ 9.5, 10.1, supra, and § 26.6,
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Chapter 26 Remedies 451 19 results (showing 5 best matches)
- The classic remedy for copyright infringement is equitable relief. This includes both preliminary and permanent injunctive relief. Although in theory the standards applicable to copyright cases with respect to preliminary relief are no different than for other substantive areas of the law, it has been observed that preliminary relief is far more likely than in other contexts, especially when contrasted with patent law. As a matter of evidentiary proof this can be explained by the fact that proof of a valid copyright and of infringement is easier to develop at the pretrial stage than it is to prove comparable elements of other substantive violations of law, such as patent infringement. Perhaps more importantly, copyright infringers, like trademark infringers, but unlike patent infringers, are more likely to be transient entities who, absent injunctive relief, are apt to disappear before judgment is rendered or can be collected.
- Section 505 of the Copyright Act provides that costs shall be awarded in any civil infringement action except one against the government. In addition, the court has discretion to award “reasonable” attorneys’ fees to the prevailing party. This differs from patent and trademark law, which provides for attorneys’ fees only in special, “exceptional,” cases. On the other hand, it is not clear from some older copyright infringement cases that the courts’ views of what are “reasonable” amounts are realistic, perhaps due to the fact that these fees are awarded more often than in patent or trademark cases. See been developing experience with attorneys’ fees in recent years under numerous other statutes and in class actions, this is less of a problem today. In any event, the Supreme Court has indicated that attorneys’ fees are to be awarded on a strictly party-neutral basis.
- The states are immune from suit for copyright infringement and, along the same lines that such immunity exists in patent and trademark law, §§ 9.5, 10.1, 17.8, supra, it cannot be abrogated pursuant to the Fourteenth Amendment Due Process Clause absent some pattern of state infringement. The attempt by Congress to abrogate the immunity, 17 U.S.C.A. § 511, appears ineffective.
- 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.
- The criminal provisions do provide broader remedies with respect to seizure, forfeiture, and destruction making these procedures mandatory upon conviction rather than discretionary and generally giving the court broad powers with respect to the treatment of infringements as contraband.
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Chapter 19 Foundations of Copyright Protection 319 25 results (showing 5 best matches)
- The basic concept of copyright is The parallel in patent law are the concepts of novelty, nonobviousness, and utility, and, in trademark, distinctiveness. An invention, to be patentable, must be new or novel; it cannot have been invented previously by another. A copyrighted work, however, need not be novel. The author need not demonstrate that he was the first to create the particular expression embodied in his work. Since his work need not be novel, all that is needed to obtain copyright is originality—that the work have
- Copyright, at least in Anglo-American jurisprudence, never has developed a procedure of administrative examination before registration as is true of both patent and trademark law. Instead, copyright has developed the doctrine that expressive works are entitled to protection without examination—and, in fact, largely without registration. At common law, prepublication protection would have been impossible, of course, if prior examination were required since one of the purposes of protection was the author’s privacy. Registration is significant to modern American copyright law but the basic doctrine of this country’s copyright law is to protect authors without requiring it.
- The development of copyright law in England was shaped by the efforts of mercantile interests to obtain monopoly control of the publishing industry—similar to those of the guilds that were instrumental in shaping patent and trademark law. The history of copyright law is largely the story of judicial and statutory reactions to the resulting monopolistic restraints. In addition to the interest of publishers in having a monopoly over the production of books similar to the interest of medieval guilds in having control over the production of new technology, the development of copyright law also was uniquely influenced by those with an interest in controlling the of new works of authorship. The most significant interest of this character was the church, which sought to restrict the dissemination of anticlerical and reformation publications. This interest, however, has left few important legacies; by far, the most enduring influence on the development of copyright law was that of the...
- 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
- of an idea, copyright protection centers fundamentally upon the original of an idea, whether literary, artistic, commercial, or otherwise. The expression is the key because only the expression is protected by copyright. For example, the idea of a Civil War family besieged by the terrors and hardships of internecine conflict cannot be copyrighted. But the of that idea in a complex dramatic story, such as is accorded important copyright protection.
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Chapter 27 Copyright Laws and the Intersection of State and Federal Regulation 461 28 results (showing 5 best matches)
- Many state common law doctrines function in a way that is comparable to federal copyright in protecting interests and subject matter similar to those governed by the federal copyright laws. These state doctrines are described in a variety of ways. They can be included under the rubrics of unfair competition, unfair trade practices, misappropriation, and trade secrets. Some of them can be called moral rights, see § 27.4, infra. They relate to the law of intellectual property to the extent that they grant remedies for interferences with intangible property rights. The common law torts of defamation and invasion of privacy also affect and interact with interests related to copyright protection. They will not be extensively discussed in this volume 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 passing off is characterized by some kind of fraudulent conduct and, unlike copyright, focuses primarily on the defendant’s intent. It bears more resemblance to trademark than to copyright protection because its essence is that the defendant is attempting to sell its goods under the pretense that they are plaintiff’s—passing them off as someone else’s. To the extent, however, that the remedy sought is to forbid the defendant from selling a work that resembles the plaintiff’s—that is, to forbid defendant from deceptively imitating the works of the plaintiff—the similarity to copyright protection is obvious. In order to avoid federal preemption, the state remedy must turn on some kind of deceptive conduct.
- The clearest case of preemption is common law copyright. Any state cause of action securing to an author an exclusive right to copy a tangible expression clearly interferes with federal regulation and is preempted. In this sense, is what Congress termed the “bedrock” provision of the Copyright Act; it had as a primary goal (but not necessarily its result) the destruction of common law copyright protection.
- On the other hand, some state statutory or common law protection still is viable to the extent it is not described by the two basic elements: if the cause of action does not secure rights to copy, display, distribute, or perform, it might be a viable state regulation even if it regulates a tangible medium of expression. For instance, laws of theft are not preempted despite the fact that they cover, among other things, tangible means of expression of original works of authorship. To steal a book is not to copy it, necessarily, and a law against theft is not preempted because it does not grant a right equivalent to any of the federal exclusive rights. Similarly, a state cause of action granting protection to a speaker against someone else copying or performing his extemporaneous speech may not be preempted because such intangible expressions are not within the subject matter of copyright. A number of areas of intangible expressions therefore are still viable candidates for state...
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Chapter 25 Formal Requirements 443 13 results (showing 5 best matches)
- Unlike patent protection, and markedly different from trademark protection, copyright protection basically is self-executing. An author automatically is protected by federal copyright when he fixes the work in a tangible medium.
- 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.
- 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.
- Of course, when notice still is relevant—to preclude the defense of innocent infringement—it must comply with the terms of the Copyright Act. The Act requires that, to constitute proper notice, upon any publicly distributed copy of a work of authorship, a notice must be affixed containing the following information: (1) the emblem C, the letter C in a circle, the word “Copyright,” the abbreviation, “Copr.,” and (2) the date of first publication (except for greeting cards, postcards, stationery, jewelry, dolls, toys, or useful articles), and (3) the name of the copyright owner or a recognizable abbreviation or designation thereof.
- 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
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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 concept of innocent infringement is equally applicable to the rights of reproduction, derivation, distribution, performance, and display. Thus, in a situation similar to it is possible that an author might create a work that is unconsciously based on a prior work and therefore impermissibly infringes the original copyright owner’s exclusive right to prepare derivative works.
- Infringement—a word that is not defined anywhere in the Copyright Act—occurs whenever somebody exercises any of the rights reserved exclusively for the copyright owner without authorization.
- Just as the physical act of copying is the paradigmatic act of infringement, literary infringement seems to represent the paradigmatic subject matter of infringement. This is at least historically understandable, see § 19.1, supra, since in its beginnings copyright infringement involved nothing but “maps, charts, and books”. With respect to the elements of an infringement action, literary infringement does not differ from any other copyright subject matter: illegitimate copying must be proven, usually by demonstrating access and substantial similarity. The application of the substantial-similarity test to literary works poses difficulties because so many writing elements inevitably are repeated from one work to the next. Since some elements will be common to numerous works, the courts have struggled to develop ways of distinguishing those aspects that can be taken with impunity from those that remain the author’s. Those rather basic literary elements that essentially are fair game...
- A showing that the allegedly “borrowed” element exists in the public domain tends to support a defendant’s contention that he independently or with the help of other works than the plaintiff’s, created the work without infringing the plaintiff’s work. supra. Sometimes, in fact, the defendant explicitly claims to have taken from the public domain—as when a composer claimed to have borrowed fourteen notes of a Dvorak sixteen note sequence, supra. In supra, the defendant claimed that the similarities between his work and the plaintiff’s also were present to a certain extent in the public domain. The court found that the public domain did not include the precise figure found in both the plaintiff’s and defendant’s work but it did find similarities between the plaintiff’s work and the public domain. The court then articulated two important principles with respect to public domain matter and musical copyright: the existence of a similar public domain work is no defense to a claim of...
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Chapter 13 Dilution and the Expansion of Trademark Doctrine 215 28 results (showing 5 best matches)
- The development of a property right in the good will embodied in a trademark is the basis of modern expanded trademark rights and antidilution concepts. The rights in a trademark at common law were only those meant to prohibit confusion with respect to the origin of products. Therefore, those rights were very limited and were highly evanescent, since they could exist only with respect to the sale of particular products. The bar against ownership of trademark rights
- At common law, a trademark was intended primarily to distinguish between different sources so that the consumer would not be confused between similar products. In a market that has evolved to the point at which the consumer probably neither knows nor cares exactly who the producer is, the trademark serves a substantially different function. In a market composed of anonymous sources, trademarks are treated not so much as identifying the particular source, but rather as indicating a common (though anonymous) source of ownership such as a product line. The trademark tends to trade on consumer loyalty instead of producer identity. It attributes to the product the image upon which the trademark is based. The reaction of the consumer is central. The consumer may prefer a certain product not because the trademark has identified a source whom the consumer values, but because the trademark itself has a certain value.
- Thus, as courts sanctioned good will as a protectible feature of trademarks, the property interest in a trademark expanded. As that interest
- For instance, if consumers purchase shirts with alligators on them merely to have the alligator, it does not matter if a competitor markets an alligator shirt with a conspicuous disclaimer that they are only imitations. In this case, the owner has acquired a right in the mark itself, because the prohibition of the infringement does not prevent confusion so much as it prevents the marketing of similar marks. Confusion, if any, goes only to the mark and not to the product. In a sense, then, the requirement of confusion becomes collapsed into the element of similarity of mark. Such an expanded trademark theory elevates the trademark to a property interest. See supra. Once the marks are confusingly similar and the mark is the basis of commerce, relief is awarded under this doctrine to prevent dilution but not confusion.
- Thus, the expansion doctrine provides an owner with protection over uses that, at best, are hypothetical. Through this doctrine, the owner can extend protection to any field that the public naturally might associate with the present commercial activity of the owner. This amounts to a right at least partially
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Chapter 24 Ownership 419 42 results (showing 5 best matches)
- In the case of anonymous and pseudonymous works, the same 95 to 120 year scheme applies.
- 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 particular label used to characterize multiple claims to authorship determines important legal issues. If a composer authors a musical composition in 1990 and a lyricist authors the lyrics in 2000, the characterization of their status as separate or joint authors or that one or both produced the work for hire may determine when the copyright expires, whether termination of a license of the copyright by one of them effectively will terminate the license of the entire work (or just the part individually authored by that person), and the legal duties, if any, each owes the other. If the musical composition is deemed a new work when the words and music were combined in 2000, and the authors are deemed joint, the copyright in the work will not expire until 70 years after the death of the surviving author. However, if the authors are not deemed joint, the music and lyrics are viewed as separate entities and each will fall into the public domain separately upon the expiration of the
- 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
- Section 201 of the Copyright Act delineates the respective rights of the compiler and of the contributors. The compiler has the right to publish the collective work and owns the copyright in that work; he can revise the collective work and also can publish the contributions in a later collective work if it is part of the same series. However, a computer database of contributions to more than one collective, originally print, work constitutes a new work, not a later collective work belonging to the same series, and therefore infringes the individual authors’ rights to their contributions. This is so even though the . A contributor owns the copyright in the contribution subject to the rights of the compiler, unless he otherwise has expressly transferred the ownership of it. Under section 404, the contributor will not be prejudiced by a failure of the compiler to place a notice of separate copyright for the contribution apart from the compilation, and in fact there is no requirement...
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Chapter 20 The Subject Matter of Copyright 329 55 results (showing 5 best matches)
- The essence of copyright is originality, which implies that the copyright owner or claimant originated the work. By contrast to a patent, however, a work of originality need not be novel. An author can claim copyright in a work as long as he created it himself, even if a thousand people created it before him. Originality only implies that the copyright claimant did not copy from someone else. From that definition of originality comes the common but true example that an author could gain a copyright on the
- The constitutional limits and powers of the Copyright Clause are not necessarily coextensive with the powers and limits defined by the copyright statutes. The Constitution first defines the outer limit of protectability but Congress must expressly grant protection. Under the 1976 Copyright Act, the statute appears coextensive with the constitutional power, since although it lists, as previous statutes did, specific forms of works subject to copyright, it also states that copyright protection “subsists . . . in original works of authorship fixed in any tangible medium of expression,
- Recognizing this untenable situation, Congress finally granted record companies a copyright in their phonorecords in 1972 and empowered them to bring infringement actions against pirates. Under the 1976 Act, sound recordings and phonorecords are not treated differently from other mediums of expression with respect to being copyrightable subject matter.
- 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...
- This is not to imply, however, that there never has been controversy as to the limits of copyright protection because of the requirement of “authors” and “writings.” For instance, whether copyright protection could extend to anything more than a literal writing was an early issue, and was resolved quickly when one of the earliest copyright statutes provided protection for works of fine art. Once it became clear, however, that literality was no limit on copyright protection and that “writings” could also include paintings, sculptures, and other works of art, it also became clear that “authors” might include more than just literary artists and that, in fact, just as they need not be literary, they might not even be artists. Once the breadth of the constitutional words was accepted, it became obvious that a very minimal standard of originality was all that could be erected as an outer limit on copyright protection. In other words, only the minimal limit of originality—that protection...
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Chapter 21 Exclusive Rights 359 35 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 first-sale doctrine assures the copyright owner that, until she parts with ownership, she has the right to prohibit all others from distributing the work. On the other hand, once a sale has occurred, the first-sale doctrine allows the new owner to treat the object as his own. Thus, although a copyright owner might transfer ownership to a buyer and impose certain conditions, it is not a violation of copyright for the buyer to sell the work to another, even if the copyright owner had conditioned the sale upon a promise of no resales. Copyright law and the distribution right only secure to the copyright owner the right to control the first transfer of ownership. A statutory exception to the first-sale doctrine, enacted at the behest of the computer and record industries, forbids the commercial rental, lease, or lending, or anything “in the nature of rental, lease, or lending,” of phonorecords and computer programs.
- Thus, the owner of a copy of a painting, a photograph, a microfiche or even a computerized memory of copyrighted materials might publicly display the work by showing the painting or photograph to others or by making the microfiche or computer terminal available to the public at one location and be immunized in doing so by section 109(b). But, in order to protect the authors of copyrighted works from having their products unfairly exploited by developing and future communications technology, Congress has granted the copyright owner the exclusive right to display the copy in a way that would make it available in either multiple images or to persons outside the actual physical location of the copy. Thus, any digital form of network or Internet transmission would constitute a public display that violates the copyright owner’s exclusive display right and that is not immunized by the more narrow privilege granted by section 109(b) limited strictly to “no more than one image at a time, to...
- Largely due to the highly developed and profitable communications and entertainment industries and technologies of the twentieth century, the right of the copyright owner to exclude all others from publicly performing his work has become one of the most important rights secured by the copyright laws. Because large segments of our population now receive copyrighted information through mass media, electronic motion pictures, television tapes and discs, radio broadcasts, and a host of other technologies by which information is delivered the consumer—or, in other words, publicly the right of public performance has become extremely valuable to a copyright proprietor.
- Many people believe that one of the most glaring—but historically based—anomalies of the 1976 Act is the absence of a performance right for owners of sound recordings. Because of established industry relationships that have developed out of reliance upon this feature of American copyright law, the absence of a sound recording performance right has been impossible to alter despite occasional lobbying efforts to do so. With the advent of an entirely new sphere of music distribution and performance based on computer digital transmissions over the internet, the opportunity was ripe to recognize these performance rights because of a lack of developed industry relationships in that sector that otherwise might have opposed legislation. The pressure to amend the Copyright Act succeeded in 1995. Thus, with respect to digital transmissions, sound recording copyright owners have full performance rights and now have the opportunity to negotiate over, and profit from, the fees paid for such...
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Chapter 16 Subject Matter 267 41 results (showing 5 best matches)
- Service marks are essentially trademarks that are used in the sale of services instead of goods.
- In
- 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.
- The statute also prohibits “palming off” by which a competitor deceives buyers into believing that its product or service is that of another. In “palming off,” the injured party may be the purchaser if the purchased goods are inferior to the goods that they were represented to be. In addition, the competitor as to whose goods the bogus products were misdescribed has a remedy for assumed loss of business. Although section 43(a) is not simply “palming off,” especially since the TLRA expanded the action to include not only false statements about the plaintiff’s products or services but also competing ones, it still is true that “palming off” is one of its paradigms. However, to prevent a collision between trademark and copyright law, it has been held that a section 43(a) action cannot be based on a misrepresentation of authorship of a noncopyrighted work, and that the “origin” of goods within the meaning of 43(a) does not extend to
- Whereas a design patent does not bar trademark registration and, in a sense, reinforces it by attesting to the nonutilitarian characteristics of the element, a utility patent acts as a complete bar. Even after expiration of a utility patent, the fact that a claimed distinguishing element is eligible for registration effectively is rebutted by the earlier patent, which demonstrates persuasively that the element was adopted primarily for utilitarian reasons. In
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Index 487 63 results (showing 5 best matches)
Chapter 12 Distinctiveness 189 59 results (showing 5 best matches)
- The distinctiveness requirement is roughly analogous to the requirement of novelty for patent rights and to the requirement of originality for copyright. Without distinctiveness, either based on the inherent nature of the mark or developed by the owner through marketing, trademark rights fail.
- Naturally, a trademark must be distinctive if it is to serve the function of identifying the origin of goods and thereby avoid confusion, deception, or mistake. If a trademark is to protect purchasers from confusion over what they are purchasing, then the trademark somehow must be recognizable, identifiable, and different from other marks.
- The Lanham Act provides that a nondistinctive mark cannot be placed on the principal register of trademarks. And, if a mark is not on the principal register, it has no real protection under the federal trademark statute. Many marks that are ineligible for protection within the United States however, may be eligible in other countries because of differences in trademark statutes. To have protection in many other countries, treaties often provide that a foreign mark must be registered in its home country. Therefore, the Lanham Act provides for registration of distinctiveness, even though they are not, at the time, actually distinctive in the United States.
- 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.
- According to Judge Friendly, a generic term refers to the genus of which the product or service is a species. Although both a generic term and a descriptive term can come to have a secondary meaning, only descriptive terms can become eligible for trademark registration through the acquisition of secondary meaning. A generic term, no matter how distinctive of the owner’s goods or services it becomes, never is eligible for trademark protection. Thus, the word “spoon” is generic and ineligible. Courts are unwilling to foreclose a market to competitors who need the word to indicate the identity or character of their product.
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Chapter 23 Fair Use 395 49 results (showing 5 best matches)
- There are at least two additional interests relevant to fair use. First, although infringement need not be intentional and although the intent of the defendant is not determinative, the intent and motives of the defendant often are relevant. Second, a First Amendment interest often opposes the copyright monopoly. However, in , the Supreme Court found no inherent conflict between copyright law and the First Amendment, especially because of the very existence of the fair use defense. In magazine had published excerpts from the memoirs of former President Ford before they were to be published in to report the important facts of the memoir without “scooping” its very language and that, furthermore, there was no expansion of fair use based on a claimed “public figure” exception to copyright. The Court also emphasized the fact that the work had not yet had its “first publication,” the significance of which apparently continues, even after the near-total ...of common law copyright by...
- Fair use under section 107 specifically allows for multiple copying of copyrighted works when done for classroom use under certain conditions. The exact scope of this permissible copying is not defined in the statute itself, however. Likewise, section 108 provides for a limitation on the copyright proprietor’s exclusive rights and authorizes libraries to make copies of certain works. It also implicitly recognizes the right of others, under what presumably is fair use, to make photocopies in libraries having photocopying machines and immunizes libraries from any copyright liability if certain notices are posted.
- One response to the defense is that the First Amendment creates no exception to copyright because, as a constitutional doctrine, it is opposed by an equally constitutional doctrine: the Copyright Clause. This response, however, has been dismissed by most courts and commentators as excessively simplistic for at least two reasons. First, a literal reading of the Constitution will show that since the First Amendment is an amendment to the Constitution and to the Copyright Clause itself, the amendment should control. Second, even if the Bill of Rights and the Constitution are taken as a whole, priority must be given to the specific protections contained in the Bill of Rights. To do otherwise would be to grant carte blanche under a number of general constitutional powers such as the Commerce Clause, thereby creating a risk of utterly destroying the rights granted by the Amendments.
- First Amendment claims also have been evaluated under a rule of reason. In doing so, a court usually avoids the somewhat circular trap of the constitutional argument by acknowledging the constitutional right of criticism and fair use but insisting that the criticism and fair use be done reasonably. Using a greater amount of the copyrighted work than is reasonably necessary in reporting matters of public interest can defeat a fair-use defense. See . Indeed, the idea-expression dichotomy dictates that even when there is a clear First Amendment right involved, such as the memoirs of an ex-President, the First Amendment does not override copyright interests when a lesser taking would communicate the same ideas and facts and satisfy First Amendment interests. Furthermore, the very existence of the fair-use privilege undercuts the notion that the First Amendment either conflicts with copyright or creates its own privilege such as, for instance, a public-figure exception. ...that copyright...
- The more accepted response to claims of First Amendment fair-use rights is found in the idea-expression dichotomy. Viewing the First Amendment as prohibiting any restraints on the free communication of ideas, courts have held that there is no constitutional violation as long as copyright merely restrains using a particular expression as opposed to the idea itself. However, matters of public interest sometimes become so important that copyright has been lost because the particular work is uniquely situated to convey the ideas. In , the Zapruder films of the Kennedy assassination were held too important to be restricted by copyright claims. It may be thought that in such a case the idea and expression tend to merge. Generally, the courts have found the idea-expression line a convenient and workable way of resolving First Amendment claims. See . The Supreme Court has dismissed the potential conflict between copyright and free speech because fair use and the idea/expression dichotomy...
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Chapter 14 Loss of Trademark Protection and Partial Protection 229 51 results (showing 5 best matches)
- Trademark rights can be acquired only through use rather than adoption or appropriation in gross. Trademark rights therefore are a function of commercial reality. Thus, just as absence of use is a bar to the acquisition of legal rights, failure to use a mark after the acquisition of legal protection may constitute a bar to continued protection. The latter context is called abandonment.
- Because trademark rights never were considered to be property rights at common law except insofar as they actually were used in a particular commercial activity, the resolution of conflicting rights to the same trademark were and are determined, under common law, on the basis of both priority and market. The first user normally has priority but priority is measured and awarded only with respect to the market in which the first user conducted commercial activity. Since it was possible or even probable that a first user limited its commercial activity to only one area, it was not unusual for a second user to acquire rights in another area. With respect to that second area, the second user was, of course, actually the first user.
- Incontestability has some rather striking effects on a registrant’s rights. The most common situation involves the use of a mark that has descriptive qualities. The doctrine has the effect of expanding federal trademark rights far beyond common-law doctrine, allowing the incontestable registrant to forbid competitors from using descriptive and competitively useful terms.
- For many years, various circuits and even the Trademark Office applied a defensive/offensive distinction between a registrant who might permissibly resist cancellation with an incontestable though descriptive mark and a registrant who sought to enforce such a mark offensively against another. These offensive attempts were resisted by jurisdictions applying the distinction. That distinction, however, has been firmly rejected by the Supreme Court.
- What this means is that a court can ask whether the mark means no more to the public than the goods or services but it cannot ask whether those goods or services are preferred because of the identity of the source. That is, their motivation in preferring the source is not an issue. Nevertheless, it still is clear that the purchasers must understand the mark to be, or at least use it as, a trademark, even though they are not motivated by the particular identity or character of the source. If they identify the mark with the goods, however, as opposed to a particular source, no matter how anonymous, the mark is plainly generic.
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- Finally, another area at the intersection of state and federal regulation is state immunity from patent suits, under the Eleventh Amendment. See § 9.5, supra. Congress tried to abrogate that immunity by defining “whoever” in to include states and their instrumentalities. The Supreme Court has held that the Constitution’s grant of immunity to the states cannot be abrogated by Congress under the Patent Clause nor, of course, the Patent Act itself. Furthermore, the immunity cannot be abrogated under the Fourteenth Amendment unless it is shown that the states have engaged in a pattern of patent infringement. . The same is true of trademark and copyright infringement. See §§ 17.8, 26.6, infra.
- On the other hand, not all state doctrine regulating intellectual property impermissibly “clashes” with federal protection. In , 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.”
- 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 ...specific legislation, the Vessel Hull Design Protection Act, intended to protect boat hull designs, despite their functionality and unpatentability. If that legislation is constitutional it means that preemption...
- 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
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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.
- Unlike the Lanham Act, which governs trademarks, the Patent Act does not define damages in terms of profits, see § 18.3, infra. Since the prior Patent Act did include profits, there is reason to believe that the deletion of the term is meant to distinguish between damages and profits. . If plaintiff elects to recover total profits (on the patented item or component), he is entitled to that as a matter of right, if they exceed the reasonable royalty.
- 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 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...
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Chapter 1 The Foundations of Patent Protection 7 36 results (showing 5 best matches)
- The existence of a constitutional patent power had and continues to have important consequences. For one thing, it is far more explicit in its goals and purposes than is the Commerce Clause, for instance, which undergirds trademark law, thus subjecting patent law to what at least appears to be more rigid constitutional constraints.
- At the Constitutional Convention, in 1787, a measure was proposed to incorporate as one of the new federal powers the ability to secure, for limited times, patents and copyrights. The measure was adopted without debate. It reads:
- . In addition to creating limits, the constitutional provision also makes the of Congress’ patent power quite large. For instance, the trademark statute, unlike the patent laws, is founded upon the Interstate Commerce Clause and, as a result, federal trademark legislation must have some relationship to interstate commerce to be valid. The patent power, however, has no such interstate limitation. The strength of the explicitly worded Patent Clause also includes the potential to preempt state regulation. This, very briefly, means that there is a strong presumption in favor of federal regulation of this area. The consequence is that state regulation may be invalid if it interferes in any way with the objectives of the patent power. There is some support for the view that federal preemption is stronger in the case of a specific power, like the Patent Clause, than in the case of a less specific power, like the Interstate Commerce Clause.
- The patent application is submitted to the Patent Office but no rights immediately accrue, although recent amendments to the statute allow for pre-issuance royalties against others who practice the invention after notice of the application if a patent ultimately issues.
- Eventually, a patent may be granted effectively giving the patentee the exclusive right to make, use, offer to sell, or sell the invention to the absolute exclusion of others (technically the patentee only gains a right to exclude others from doing so but for most practical purposes, barring conflicting patent rights in some third party, this amounts to a monopoly right in the patentee to make, use, offer to sell, or sell) for a period of twenty years from the date of the original application.
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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
- Otherwise, the grant of preliminary and permanent equitable relief mirrors other areas of the law. In trademark cases, equitable relief must be carefully framed in an affirmative manner so as to prohibit illegitimate infringement while allowing legitimate competitive activity. A plaintiff may well demand that the defendant cease all activity but courts are exceedingly careful to recognize that some of the activities of defendants that cost plaintiff business nevertheless may be the results of legitimate competitive practices. For instance, when a plaintiff demanded that defendant be enjoined from competing, the court instead affirmatively required that the defendant conspicuously notify all prospective purchasers that the defendant’s product was not the same as the plaintiff’s, thereby prohibiting the infringement but continuing fair competition.
- Additionally, the plaintiff does not have to demonstrate that, had the defendant not made these sales, the consumers would have purchased from the plaintiff instead. In other words, plaintiff does not have to prove that defendant’s sales directly competed with plaintiff’s. In order to vindicate the public interest in preventing deceptive trade practices, it is deemed appropriate to allow the plaintiff to be the beneficiary and receive the profits rather than defendant. It effectively allows the trademark plaintiff to be a private attorney general.
- 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
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Chapter 5 Patentability—Nonobviousness 81 48 results (showing 5 best matches)
- In a sense, nonobviousness follows on the intellectual heels of novelty; but it is distinctively different. An invention may not have been developed before a certain date. It is, at that point in time, new; it has novelty. However, just because it never was invented before does not mean it was not hypothetically conceivable. It is possible that someone skilled in the relevant field of technology and familiar with its subject matter could have invented it with comparative ease had he tried; such an “invention” would be novel but obvious to that person. The reader should be cautioned that, under the America Invents Act, nonobviousness, like novelty, is determined as of the application date, not the date of invention.
- The effect of automatically recognizing as prior art for nonobviousness purposes the kind of prior art that is used for determining novelty is the creation of a doctrine of constructive prior art. Constructive anticipation for novelty purposes is a result of statutory command under section 102(d) and (e). The is strictly a matter of judicial fiat. . Because a patent may be granted long after its application date, it suddenly may become available as constructive prior art with respect to an already issued patent since that issued patent may have been filed the constructively and retroactively available application was filed. Obviously, this can happen because patents are not granted in the order in which their applications are filed. With respect to abandoned and rejected applications, which are kept confidential, prior art only arises upon an actual publication and so this problem of retroactive obviousness does not occur unless such applications are cited in other, publicly...
- considerations are economic and motivation issues and closely resemble the inquiries routinely made, for instance, in tort and contract law. Additionally, they are objective and prevent the court from wandering too far from established facts. For instance, it is difficult for a court to declare an invention obvious when the invention has met with instant success in an industry characterized by high levels of research and development. Thus, any attempt to apply a subjective “hindsight” test tends to be countered by an examination of secondary considerations.
- Nonobviousness and novelty intersect because of the similarity of some of the factual questions involved in both inquiries. Novelty requires that the invention has not been anticipated. This necessarily involves an investigation of the prior art; that is, what people actually knew, published, and did at earlier times. Likewise, the standard of nonobviousness requires an investigation of the prior art; that is, in light of the prior art, the invention must not have been obvious. Note, however, that there is no hypothetical inquiry in the test for novelty: actual anticipation is the standard. “Secondary evidence,” such as commercial success and unexpected results, is admissible to show that an invention was not obvious to those skilled in the prior art. But under section 102, that evidence is not relevant to the question of novelty.
- There are two typical sources of prior art: (1) printed publications, such as books and articles, and (2) testimony and statements of skilled practitioners and experts. The most common sources, however, are publications; this includes prior patents. A patent however, is statutorily confidential and is deemed nonpublic until a patent is granted. As a result, unless it is cited in some other publicly available patent application or office proceeding, if a patent application is abandoned or even if it is rejected early enough (before the 18-month publication that applies to most applications), it never becomes public and the Patent Office does not search these records as prior art for nonobviousness because it is and always remains legally unavailable. However, if an application becomes public through eventual approval or publication by the Patent Office, it then can serve as a source of prior art.
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Chapter 7 The Patenting Process 111 63 results (showing 5 best matches)
- After a nonprovisional patent application is filed, and an initial examination is made, an application may receive an initial office action of allowance or, more commonly, complete or partial rejection. If rejected, the claims then can be amended and even the specification can be modified, although new matter may not be introduced that would have the effect of increasing the scope of what was originally disclosed by the application. In response to any rejections, the inventor either will contest the rejection by presenting evidence in reply to the substance of the examiner’s rejection, or the applicant may add to or modify his claims. Once claims have been twice-rejected, the applicant can appeal to the Patent Office’s Board of Appeals, now the Patent and Trademark Appeals Board (PTAB). If the applicant is dissatisfied with the Board’s decision, he then has the option of either pursuing his ...United States District Court for the District of Columbia (in which case he preserves his...
- 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 “...
- 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.
- 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.”
- Patent Office procedures would amount to little more than mechanical techniques were it not for the fact that various rights can be gained or lost at each procedural stage of the patenting process. Patent rights themselves are defined in terms of many of the procedural steps that take place along the way, for instance in terms of the claims made by the inventor in his patent application. In addition, patent rights may be limited or eliminated at various stages of the process, for instance by acceding to the requests of the patent examiners that certain claims be redefined in a more restrictive manner or even eliminated. Many other rights can be challenged and defeated at other points, for instance by interference proceedings between inventors claiming rights to identical or similar inventions. Therefore, the procedure for obtaining a patent intersects with the substantive rights themselves and to a significant extent helps define those rights.
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Chapter 8 Infringement 143 42 results (showing 5 best matches)
- Both laches and equitable estoppel have been defenses to infringement. But there are important differences. Laches focuses on the timeliness of an infringement suit. Estoppel, however, focuses on the behavior of both parties. For laches a defendant needs to prove the plaintiff delayed in filing suit, that the delay was unreasonable, and that the delay resulted in prejudice. For estoppel, defendant must prove misleading conduct, resulting reliance, and prejudice. . The most glaring differences, in terms of proof, is the reliance factor and misleading conduct. For laches there is no need to prove that the defendant was misled and relied. All that needs to be proved is unreasonable delay and prejudice, or harm. But for estoppel, defendants seeking relief from this kind of delay must prove that they relied on the misleading conduct or statements, to their detriment. The Supreme Court has held that laches is not a valid defense to damages when a statute of limitations applies. In that...
- and that of , respectively narrow and broaden patent claims and thereby (but inversely) the possibilities of infringement. First, literal overlap of a claim over an accused structure requires that, for infringement, each and every element of the claim be found in the alleged infringement. The requirement of literal overlap presumes that each and every element of a claim is material and essential.
- 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.
- 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
- for instance, assumes that different claims apply to different devices or processes. Claim interpretations that tend to make one or more claims surplusage and merely repetitive of other claims are avoided. On the other hand, the rule of claim differentiation is really a guide or presumption, not a hard-and-fast rule, and the plain language of a claim that effectively duplicates another claim will not be contorted to read differently than it does. Claim construction is a matter of law, and it is up to the judge to determine the meaning of each and every word in the claims; this is so even though the Seventh Amendment guarantees a jury trial for patent infringement actions. . In construing the meaning of words in a claim, when there is a choice, the narrower meaning of a word in a claim controls.
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Chapter 2 The Subject Matter of Patents 25 49 results (showing 5 best matches)
- The major issue relating to design patents is that field’s effect on copyright and utility patent law. Since the protection afforded design patents is against copying, it bears a striking resemblance to copyright. Similarly, because design patents by definition involve designs on articles of manufacture, they intersect with matters of utility patentability and threaten to protect by design that which may have a function otherwise nonpatentable under utility patent protection. As a result, a design patent cannot be obtained for an exclusively functional design. . Furthermore, when a design includes both functional and merely ornamental elements, the substantial similarity required for infringement must be based solely on the nonfunctional, merely ornamental elements. . But it is clear that both design and utility patents can apply to the same product as long as the design patent protects only nonfunctional aspects of the invention.
- , 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 which case both the process and the machine may be patentable, although that is not always true.
- In addition to the four categories of patentable subject matter, there is a blanket supplementary gloss that applies to all of them. This permits a patent to issue on “any new and useful improvement” on a process, machine, manufacture, or composition. Obviously, though, an improvement still will have to fit in one of the four categories first before it can be a new and useful improvement thereof.
- Infringement is infringement of the entire patented design, not of any particular point, just as there cannot be infringement of only the heart of a patent or that of a copyright.
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Outline 46 results (showing 5 best matches)
Chapter 3 Patentability—Novelty and Statutory Bar 49 49 results (showing 5 best matches)
- Under that standard, the total combination of prior art and references thereto can make an invention unpatentable if that combination, as a whole, constitutes an enabling disclosure. The combination of references and prior art allows one to “borrow” prior art to understand a reference that by itself (at least to a court or perhaps to a nonskilled practitioner) might not otherwise necessarily constitute an enabling disclosure. In
- Sometimes, a reference can be fatal even though, by itself, it is not an independently enabling disclosure, in the sense that every last detail of producing the product or performing the process is to be found in the reference. Since the test of whether a disclosure is enabling is whether the person with ordinary skill in the pertinent art could reproduce the invention on the basis of the reference, there are some things that such practitioners are held to bring with them to the reference. Their skills and expected body of knowledge therefore need not be found in a particular reference in order to make that reference enabling. In other words, other references can be used in order to demonstrate the level of skill in the art. As was said in
- 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
- Three sections of the Patent Act explicitly enumerate the elements of patentability—novelty, utility, and nonobviousness. Section 101 requires that an invention have novelty and utility. Section 102 defines novelty; that section also creates certain “statutory bars” to protection in addition to lack of novelty. Section 103 requires that the invention be a nonobvious development over the prior art. The America Invents Act (AIA) alters all of the following doctrines, of course, so that novelty, as well as nonobviousness, is determined as of the effective filing date, as opposed to the date of invention. It is that the student carefully remain aware that these doctrines are quite different between the original 1952 Act and the AIA. The new Act erases the distinction between domestic and foreign anticipations and also seems to require more disclosure from a public use than the 1952 Act did. The novelty provisions in section 102 focus on certain events constituting ...and, if they do,...
- An inventor who does not immediately seek a patent is in jeopardy of a rival claim by a junior inventor who makes the same invention and acts with due diligence. The junior inventor may successfully unseat the senior inventor by proceeding with dispatch. The relative merits of such senior and junior inventors in that situation are mapped out in section 102(g). Priority depends upon three factors: the time of conception, the time of reduction to practice, and the use of due diligence in pursuing both patent protection and perfection of the discovery. By definition, a senior inventor is one who conceives first. The time of conception is defined as that moment when the inventor unambiguously had made mental discovery of the invention. The Federal Circuit has held that the mere formation of the idea, as long as it is definite, permanent, and particular, is enough. The inventor need not know, said the Court, that her idea will work, since that is not conception, but reduction to practice.
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Part II Trademarks 1 result
Part III Copyright 1 result
Chapter 6 Double-Patenting 107 5 results
- It therefore is possible to obtain a patent on a machine and a patent on a composition of matter that is produced by the machine, if both the composition and machine are independently patentable entities. However, if it would be impossible to produce one without inevitably producing the other—if the machine were the only possible way that the composition could be produced—then the two inventions are the same and the double-patenting bar would prevent the grant of two separate patents. . 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.
- 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.
- 35 U.S.C.A. § 253
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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
- If the claim of utility is fabricated by the inventor to give his invention market appeal, there may be no intrinsic and therefore legally cognizable benefit. The inventor of an ineffective drug, for instance, may not obtain a patent merely because he convinces gullible patients that it has a nonexistent curative effect. It is not so much that it lacks a minimum of benefit (after all, the patients may find it subjectively useful), but it is, instead, that it has an impermissible fraudulent
- 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.”
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Table of Cases xv 62 results (showing 5 best matches)
Acknowledgments iii 1 result
- 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.
