Intellectual Property: The Law of Copyrights, Patents and Trademarks
Authors:
Schechter, Roger E. / Thomas, John R.
Edition:
1st
Copyright Date:
2003
44 chapters
have results for Trademark law
Chapter 25. Introduction to the Law of Trademarks 59 results (showing 5 best matches)
- Many thoughtful experts bristle at the characterization of trademark rights as “monopolies,” and the monopoly-based criticism of trademark law abated significantly during most of the latter half of the twentieth century. Recent expansions of trademark protection, however, have once again raised the anxiety of some observers who fear significant anti-competitive consequences from an over-broad conception of trademark law.
- Finally, in 1905, Congress passed the first modern trademark registration act. Though far more sophisticated than any previous law, the 1905 statute suffered from a number of shortcomings. Most significantly, it sharply limited the types of trade-identifying symbols that could be registered. Many types of trademarks that are well-accepted and commonly used today were simply ineligible for registration under the 1905 law.
- In broad outline, those legal rules are quite straightforward. Unlike patents and copyrights, trademarks are protected by both state and federal law. State law protection is almost always based on the common law, though, to be precise, quite a few states also have trademark statutes. For common law purposes the first party to adopt a mark and use it in connection with a particular category of goods or services is deemed to be the owner of that mark. No further formalities or governmental applications are required. Once a party has used a mark, it may also apply to the United States Patent and Trademark Office to federally register the mark. The relevant federal statute also provides a way for a firm to begin the application process even before it has used the desired mark, however no federal registration will be granted until after such use takes place. Federal registration confers a variety of additional legal protections and privileges, but it is not mandatory and many smaller...
- The incentive rationale, however, is not really at the root of trademark law. Our legal system does not protect trademarks to encourage firms to come up with wittier brand names or more attractive logos. The goal is not to induce another make-over of Betty Crocker or an even better name for athletic shoes than NIKE.
- As early as 1920, only 15 years after the passage of the 1905 Act, there were already calls for a revision of federal trademark law. The process of enacting a new law ultimately took a quarter of a century. The end result was the 1946 Trademark Act, conventionally known as the Lanham Act, after Congressman Fritz Lanham who chaired the Patent Committee in the U.S. House of Representatives. The law became effective on July 5, 1947.
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Chapter 30. Trademark Dilution 69 results (showing 5 best matches)
- H.R. Rep. 104–374 (Nov. 30. 1995) (“[T]he proposed federal dilution statute would not preempt state dilution laws. Unlike patent and copyright laws, federal trademark law coexists with state trademark law, and it is to be expected that the federal dilution statute should similarly coexist with state dilution statutes.”).
- In 1927 an influential law review article, by an academically accomplished, prominent New York lawyer named Frank Schechter, suggested that the main purpose of trademark law ought not to be the prevention of consumer confusion, but rather the preservation of the uniqueness of merchants’ trademarks. He expressed the concern that even non-confusing uses of a firm’s trademark might cause “the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark.” Effectively Schechter was arguing that strong trademarks were entitled to a property-like protection that should prevent any other party from using the mark, even if the use was on non-competing and utterly unrelated goods. While he did not use the term, his idea became the stimulus for a new cause of action to protect trademarks known as ...the doctrine is designed to provide relief when the acts of an unauthorized third party water down, erode or weaken the cachet and magnetism of a strong trademark...
- When Congress undertook a major revision of the Lanham Act in 1988, the Trademark Review Commission recommended that the time was ripe to adopt a federal dilution law. Although the Senate agreed, the dilution component of the bill failed to secure passage in the House of Representatives and consequently, when the President signed the Trademark Law Revision Act of 1988, it did not include any dilution provisions. Nonetheless, the International Trademark Association continued to push for a federal dilution law, and in 1995, Congress finally passed the Federal Trademark Dilution Act (or FTDA), codified as new section 43(c) of the Lanham Act.
- As early as 1932 Congress considered legislation that would have enacted the dilution doctrine as federal trademark law. Frank Schechter helped draft that legislation, and testified in its behalf, but the bill was not adopted. The dilution concept, however, did not fade away. Rather, proponents turned their attention to the state legislatures. In 1947, Massachusetts became the first state to enact a state trademark dilution statute. The dilution concept received further impetus in 1964 when the then United States Trademark Association (now the International Trademark Association or INTA) promulgated a model state trademark bill which included a dilution provision. By the early 1990’s dilution statutes had been adopted by about half of all American jurisdictions, including such populous and commercially important states as New York, California, Illinois, Florida and Texas. Nonetheless many courts gave these state dilution laws a narrow construction, for instance often requiring the...
- Restatement (Third) of Unfair Competition, § 25. (“One may be subject to liability under the law of trademarks for the use of a designation that resembles the trademark, trade name, collective mark, or certification mark of another without proof of a likelihood of confusion only under an applicable antidilution statute.”).
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Chapter 26. Acquiring Trademark Rights 71 results (showing 5 best matches)
- The United States has a “dual” system of trademark law. A firm can secure trademark protection under state law, usually under state common law, or it can seek federal rights, under the federal trademark statute known as the Lanham Act, or both. The two are independent of each other. A mark can be valid and protectable under state common law even though the owner has not taken any steps to secure federal rights. Conversely, a mark can be protected under federal law even though state common law rights have not accrued, though this would be somewhat less likely.
- Since the point of trademarks is to enable consumers to relocate goods that they approve of, affixation of the mark to the goods by itself is not enough to create protectable trademark rights. After all, consumers are not likely to begin associating the mark with a particular producer if there are thousands of units of the merchandise with the mark affixed all sitting in a warehouse behind locked doors and none available for actual purchase in retail stores. Thus, at common law, a merchant must actually “use” the trademark, by selling or leasing goods or services bearing the mark to the public in bona fide transactions in order to earn protectable trademark rights. As one court has put it, “[t]he gist of trademark rights is actual use in trade.” Trivial or virtually invisible use of a mark will not be enough to establish common law trademark rights.
- Perhaps most importantly, even non-affixed symbols of trade identity are almost always protected under general principles of unfair competition law even if they do not qualify as technical trademarks. For instance, one who exactly copies the inventive and unique name of a sandwich being sold by a store across the street is guilty of generic unfair competition regardless of whether the sandwich name was considered “affixed” so as to rise to the level of a formal trademark. Consequently, as the leading commentator on trademark law has observed, “the common law requirement of affixation is of little significance today.”
- All four types of symbols can be referred to as “marks,” and in most judicial and administrative opinions, any reference to trademarks is meant to encompass the other three varieties of marks as well. That is also true for the discussion that follows in this text. The Restatement (Third) of Unfair Competition tracks the Lanham Act by separately defining trademarks, service marks, certification marks, and collective marks but earlier state law opinions rarely used any terminology other than “trademark” regardless of the type of identifying symbol at issue.
- order to obtain common law rights in the mark. Use of the mark in any other way was not considered adequate and would not be the basis for a finding of trademark rights. Thus, older common law opinions held advertisement of the mark on the radio insufficient bases upon which to ground trademark rights. One case even found the use of a name for a food product on a menu to be inadequate use to confer trademark rights because the mark was not actually “affixed” to the goods, implying, perhaps, that the merchant should have spelled out the trademark in melted cheese right on the plate! Under this strict approach, in a contest between two firms seeking to use the same mark, the common law rule was to grant rights in the mark to the party who first sold goods
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Chapter 32. Trademark Assignments and Licensing 49 results (showing 5 best matches)
- The relevant treaty provision is Article 11 of the Trademark Law Treaty. The legislation conforming U.S. law to the treaty is the Trademark Law Treaty Implementation Act, P.L. 105–330, 112 Stat. 3064 (October 30, 1998). The U.S. formally became a party to this treaty on August 12, 2000.
- Trademarks are transferable. They can be bought and sold like other business assets. The outright sale of a trademark is known as an “assignment.” There is, however, a catch. The law is clear that a trademark can only be sold “with the accompanying goodwill” of the underlying business and that it not permissible to assign a trademark “in gross,” which means independently of the associated goodwill.
- The failure of the licensee to conform to quality control requirements that form part of the license agreement is a breach of that agreement, and it will leave the licensee open to liability under contract law principles. If the licensee continues to sell goods marked with the trademark, but which do not conform to required quality control standards, that will also be considered trademark infringement.
- The same logic obtains in the case of a trademark. If the company that owns and operates WESTIN brand hotels wants to get out of the hotel business, it can sell the various hotel buildings it owns along with the WESTIN trademark to any willing buyer. Subsequent to such a sale consumers who use the WESTIN trademark to pick a hotel for an upcoming trip will continue to encounter the same hotel buildings in the same locations with the same decor and facilities as they have come to associate with the mark. Consumer expectations will not in any way be thwarted. To consumers, it will be as if the sale never even occurred. On the other hand, if the original trademark owner attempted to sell merely the WESTIN trademark, the buyer might choose to affix it to hotels of an entirely different sort—perhaps smaller and with fewer amenities, perhaps with different and quirky decor, perhaps in only a few out of the way cities. Consumers booking a room at a WESTIN would, on arrival, be baffled and...
- The parties are free to structure a trademark licensing business arrangement however they see fit. Thus, a license can give the licensee exclusive rights to use the marks either nationwide, or only in a particular territory or from a single location, or the licensor can reserve the right to compete with the licensee or to license other parties to do so. The parties can agree that the licensee is free to sub-license others, or they can specifically forbid sub-licensing. The license can last indefinitely or for a specified term. The parties may agree on any amount and method of payment that they like, though it is customary to tie licensing fees to the amount of goods sold or revenues earned from use of the mark. Where there are ambiguities in the terms of a trademark license, ordinary principles of contract law will control any dispute over those terms. While most trademark licenses will be reduced to writing, there is no requirement that they must be, and an oral license agreement...
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Chapter 1. Introduction to Intellectual Property 32 results (showing 5 best matches)
- Trademarks consist of any word or symbol used by a merchant to identify its goods or services, and to distinguish them from those of others. To be subject to protection under the trademark laws, a mark must successfully distinguish the origins of its associated goods, and not be confusingly similar to marks used by others or merely describe the characteristics of those goods. Trademark rights arise under state law as soon as the mark is used on goods in commerce. However, trademarks may be registered with the PTO, a step that affords significant substantive and procedural advantages. Trademark law also protects the appearance of product packaging and, in some cases, the actual physical configuration of the goods, if these serve as brand identifiers. A trademark owner may prevent others from using any mark that creates Trademark rights persist so long as the mark continues to be used and retains its distinctiveness.
- The term “intellectual property” may sound pretentious, but it is an apt description for the subject matter of the laws that give rise to proprietary interests in creations of the mind. The principal legal intellectual property disciplines are copyright, which concerns artistic and literary works; patent, pertaining to pragmatic innovations; and trademark, relating to commercial symbols. These three core fields are complemented by a number of statutes and common law doctrines in fields ranging from trade secrets, to the right of publicity, to false advertising. Although copyright, patent, trademark and related disciplines share much in common, they arose from distinct traditions and often operate
- Trademarks form one arm of the common law of unfair competition, a collection of principles that encourage the maintenance of honest practices in commercial affairs. A number of other doctrines are grouped under this heading, including passing off, reverse passing off, dilution and false advertising.
- Ironically, although intellectual property law concerns abstract creations, it does insist that the intellectual creation be embodied in something tangible at least once. In copyright, works must be fixed in tangible form to be protected; the patent law requires the inventions be “reduced to practice”; trademarks must, sooner or later, be subject to actual use in the marketplace. These principles ensure that abstract ideas remain free from intellectual property rights. Intellectual property rights are instead allowed for the embodiment of that idea in a particular work of authorship, invention or commercial symbol. Put differently, intellectual property laws concern downstream products, not upstream ideas.
- The requirement that protected works exhibit an “intellectual step” is among those promoting the public domain. This standard is most apparent in the patent law, where an invention must be new and beyond the ordinary abilities of the skilled artisan to quality for protection. A more lenient requirement applies to the copyright law, where the protected work of authorship must be original to the author and display a modicum of creative authorship. In trademark law this requirement is yet more relaxed: the mark must be capable of distinguishing the source of the goods or services with which it is associated, rather then identifying those goods or services themselves.
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Chapter 27. The Distinctiveness Requirement and Issues of Trademark Validity 80 results (showing 5 best matches)
- Inherently distinctive marks—whether arbitrary, fanciful, or suggestive—used to be known as “technical trademarks.” In the first half of the 20th century, only technical trademarks could be protected via the common law cause of action for trademark infringement. Owners of all other types of trademarks had to resort to the more general claim for “unfair competition” in order to protect their marks. Moreover, only technical trademarks were eligible for protection under the Federal Trademark Law of 1905—the predecessor of the Lanham Act. This terminology is now no longer used, and the Reporter’s Notes to the Restatement (Third) of Unfair Competition refers to it as “obsolete.”
- In thinking about trademark validity it is useful to bear in mind that the issue can come up in at least two contexts. First, when a firm seeks federal protection by applying for a Lanham Act registration, there will be an administrative determination of validity. If the mark is found unsuitable, registration will be refused. Second, if one firm accuses another of trademark infringement, the defendant will often argue that the plaintiff’s mark is invalid. This argument can be raised whether the mark is federally registered, or whether it is allegedly protected under state common law. In either case, if the defendant can persuade a court that the term in question is not a valid mark, the plaintiff will be denied relief. Thus the rules governing trademark validity pervade a large number of trademark disputes.
- Many prospective trademarks are nothing more than ordinary words or phrases drawn from regular language. Those words or phrases may—to a greater or lesser degree—describe the goods being sold. The more descriptive the words are, however, the more likely it is that other merchants will also need them, suggesting that no one firm should be allowed to monopolize them as a trademark. For instance, if the first firm in an area to sell baked loaves of yeast, flour and water was permitted to sell them under the trademark BREAD, subsequent bakers might have a rather awkward time telling the public what they had available for sale. Protecting a mark consisting of the words FRESHLY BAKED might also lead to the same difficulties. To avoid such problems, the law requires that a trademark be “distinctive.” No word, symbol or device can be protected as a trademark unless it satisfies this requirement of distinctiveness.
- A further complexity can be introduced when a merchant seeks trademark protection for descriptive terms that are factually inaccurate when applied to its own products. For instance, a firm might apply the purported trademark GLASS WAX to a glass polish that contains no wax. This has the same problem as the use of any descriptive term because competitors who market a wax based polish may need the phrase to describe their own products, and consumers might not perceive the phrase to be a brand name, but rather a mere description of contents. It also has a further vice. It can potentially mislead consumers. Obviously, the law should hesitate considerably before granting terms likes these the status of a trademark.
- Not very many firms try to claim trademark rights in a previously used and well-established generic name for an established category of goods. Even the boldest executives at General Motors do not think of CAR as a plausible trademark. (Those at Harley–Davidson were, however, predictably bolder, and attempted to assert trademark rights in the term HOG for large motorcycles, until the Second Circuit ruled that the words was generic. ) Merchants do, however, sometimes attempt to seek trademark protection for a well recognized generic term by coupling it with a foreign article and calling the result a trademark—a technique
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Chapter 33. Trademarks on the Internet 94 results (showing 5 best matches)
- case law has developed and now take the necessary precautions to insulate themselves from liability. For example, many cybersquatters are now careful to no longer offer the domain name for sale in any manner that could implicate liability under existing trademark dilution case law. And, in cases of warehousing and trafficking in domain names, courts have sometimes declined to provide assistance to trademark holders, leaving them without adequate and effective judicial remedies. This uncertainty as to the trademark law’s application to the Internet has produced inconsistent judicial decisions and created extensive monitoring obligations, unnecessary legal costs, and uncertainty for consumers and trademark owners alike.
- As part of its effort to manage any conflicts between trademark and domain name rights, ICANN requires all accredited registrars to adopt a uniform dispute resolution policy, and to secure the agreement of those registering domain names that they will abide by this policy. ICANN works closely with the World Intellectual Property Organization, or WIPO, and a variety of other entities interested in both Internet and trademark issues, with the goal of unifying domain name practices around the world and minimizing conflict with trademark law.
- was a victory for the trademark owner, several aspects of the opinion suggested that dilution law might not be an effective tool against cybersquatters in all cases. First, while the PANAVISION trademark is fairly clearly a famous mark, in many cases, a trademark owner challenging a cybersquatter might not be able to demonstrate the requisite fame. That is precisely what happened in where the owner of the mark THE CHILDREN’S PLACE for children’s clothing stores was unable to secure a preliminary injunction under the FTDA against a party using a virtually identical domain name because the court refused to find its trademark famous.
- Perhaps the problem that received the greatest attention in the late 1990’s and in the early years of the new century has been the use of trademarks as “domain names”—the names by which a given site or page on the World Wide Web is identified. Other problems relate to the use by Web site owners of other’s trademarks as links on their web sites, and to the use of such marks in hidden computer code, not visible to a web surfer, but which can be read by a search engine. Where Web site owners have sold advertising to third parties in the form of banners or “pop-ups” on their site, they have sometimes keyed those advertising messages to the use of another party’s trademark word, to the displeasure of the trademark owner. In still other situations, the senders of bulk e-mail have made references to trademarks that they do not own either in the text of their messages or in the “header” of those messages. What follows is a whirlwind tour of these issues and a snapshot of the law that...
- Web Site owners might wish to use other parties’ trademarks in their meta-tags. For instance, a retailing firm might want to include trademarks of the brands that it sells so that a consumer searching for those brands would be likely to find its website. For example, if Crate & Barrel sells ALL–CLAD brand cookware, it might include want to the ALL–CLAD trademark in a meta-tag. The owner of a non-commercial web site might want to use trademarks in meta-tags if the site offers information or criticism of the trademark owner. For example a web site devoted to the advocacy of gun control might include the trademarks of the NATIONAL RIFLE ASSOCIATION in meta-tags to attract web surfers who use that trademark as a search term. In addition, a firm might wish to list its competitors marks in meta-tags so that parties searching for the competitor will also learn of the existence of their web site. For example, the company that sells ADIDAS footwear might want to use the NIKE trademark in a...
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Chapter 34. International Aspects of Trademark Protection 56 results (showing 5 best matches)
- Trademarks are creatures of national laws. They are protected within a given nation only when the claimant has observed the relevant rules of that nation’s domestic laws. Consequently, the owner of state or federal trademark rights under U.S. law does not automatically own the right to use its mark on the relevant goods in any other nation, unless it takes steps to conform to that other nation’s laws. Moreover, the U.S. trademark owner may actually be precluded from using the mark in a given country if another firm is considered to have superior rights under the domestic laws of that country, even if the U.S. firm was the first to use the mark world-wide and is a much bigger firm with a much larger volume of sales. Similarly, a foreign firm that may have been using a mark for decades in dozens of countries around the world has no automatic rights to that mark in the United States unless it observes the requirements of U.S. law. As the Court of Appeals for the Federal Circuit has...
- Both the Paris Convention and TRIPS require member nations to adhere to a principle known as “national treatment.” This requires each member country to treat foreign parties who apply for trademark protection no less favorably than they treat domestic parties. The national treatment concept can be thought of as a principle of nondiscrimination against foreigners. Consequently, any foreign party seeking U.S. trademark protection is entitled to base its claim on the same activities or representations that would suffice for a domestic firm. For instance, a foreign merchant can begin using the mark in U.S. domestic commerce, and by that act, secure common law rights to the trademark under the laws of the relevant U.S. state or states. Similarly, that foreign merchant can also, based on its use of the mark in domestic U.S. commerce, file for Lanham Act registration. Moreover, a foreign merchant is entitled to seek Lanham Act registration based on an “intent to use” filing, just like a...
- The chief obstacles for U.S. firms seeking trademark protection in other countries are procedural rather than substantive. Under present law, a U.S. firm seeking to protect its trademarks in other nations must file a separate application in every country where it wishes to obtain trademark rights. There is no “one-stop-shopping.” This is, of course, expensive and burdensome. For firms contemplating use of a mark on a global basis, local counsel must be hired in dozens of nations, filings must be made in numerous languages, and administrative and legal fees can be quite substantial. For firms with extensive product lines and multiple trademarks, this cost and the risk of error is enormous.
- [S]ome courts have reasoned that the accessibility in their country of a foreign web site that contains trademarks involves use of those marks in their country. If there were widespread adoption of the principle that prescriptive jurisdiction of a particular country can be premised upon the mere accessibility of a web site in that country, then a producer would be required to clear its trademark use in every country of the world. With respect to future marks, this would significantly increase the cost of trademarks, and hence of goods to consumers. It would convert truly local uses in global uses, giving rise to innumerable conflicts, causing the depletion of available marks, and eviscerating the concept of local use through which trademark law has facilitated co-existence of marks in the past.
- Under TRIPS, the special protection for well-known marks applies to both trademarks and service marks, whereas the Paris Convention provision is limited to goods only. TRIPS also makes it clear that a well-known mark is entitled to protection even if it is used on different types of goods or services than those sold by the mark owner, “provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.” This standard is essentially the “likelihood of confusion” test for related goods that is commonly used in U.S. domestic trademark disputes.
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Chapter 29. Trademark Infringement, Counterfeiting and False Advertising 156 results (showing 5 best matches)
- kind of way is given trademark rights in that symbol. Those rights are essentially a form of legally enforced exclusivity—a limited property right if you prefer —forbidding others to use the trademark in certain ways. It follows that the unauthorized use of another party’s trademark will be actionable as trademark infringement. There is, however, a lot of law hiding behind that word “sometimes.”
- the immunization from unfair competition liability of a company with a well established trade name and with the economic power to advertise extensively for a product name taken from a competitor. If the law is to limit recovery to passing off, anyone with adequate size and resources can adopt any trademark and develop a new meaning for that trademark as identification of the second user’s products. The activities of Goodyear in this case are unquestionably unfair competition through an improper use of a trademark and that must be actionable.
- Because the Lanham Act is designed to confer nationwide rights in trademarks one might think that the problems of “geographically remote” trademark rights does not come up where one party has obtained a federal trademark registration. However, there are a number of ways in which the statute has had to accommodate itself to the common law principles discussed thus far. The treatment of remote junior users under the Lanham Act is illustrated in a trilogy of cases, all involving fast food businesses.
- Intent is not an element of trademark infringement. A defendant can be found liable and enjoined even if it is pure of heart and adopted its trademark wholly ignorant of the plaintiff’s prior use and superior rights. This was not always the case. Early nineteenth century trademark law conceived of trademark infringement as a form of fraud or deceit, and thus required a showing of illicit intent. However, as courts began to focus on the reaction of the consuming public instead of on the motivations of the alleged infringer, they began to dispense with any insistence that the plaintiff show intent. As the Fifth Circuit has explained, “good faith is not a defense to trademark infringement…. The reason for this is clear: if potential purchasers are confused, no amount of good faith can make them less so.”
- In a confusing bit of legal history, there was time when only parties with inherently distinctive trademarks could bring suit for trademark infringement. Firms using symbols that were not initially distinctive, but which had acquired secondary meaning, were required to plead and prove “unfair competition” instead. Moreover, some very old case law indicated that while an intent to deceive would not be required in trademark infringement cases, it would be required in cases of unfair competition. All of this is now strictly a matter of legal history. The modern rule is quite clear that all trademark owners—regardless of where their marks might fall on the continuum of distinctiveness—are now entitled to sue for trademark infringement, and that intent is not a required element of plaintiff’s case. Of course, as we have seen earlier in this chapter, proof of intent to confuse the public remains relevant as a factor bearing on the issue of likelihood of confusion.
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Chapter 31. Fair Use, Other Affirmative Defenses and Remedies 123 results (showing 5 best matches)
- Finally, a firm may wish to use another firm’s trademarks not in their trademark sense at all, but rather in their everyday dictionary sense, merely to communicate information to the public. Here again, the law has been tolerant, allowing the use of the words under a concept usually labeled the “descriptive fair use” doctrine.
- Traditionally, any plaintiff seeking an injunction must demonstrate that it has no “adequate remedy at law.” A remedy “at law” means, essentially, money. This rule, therefore, requires a plaintiff to show that a monetary award will not suffice to rectify the situation. In trademark cases, once the plaintiff demonstrates infringement, the courts uniformly hold that this standard is automatically satisfied, because the defendant’s wrong is a continuing one. As one court put it, the damage from trademark infringement is by its “very nature irreparable and not susceptible of adequate measurement for remedy at law.” It would be impractical and unfair to force a trademark owner to keep bringing suits every few months for the on-going damage inflicted by the infringing defendant, while the public became increasingly confused and the value of the mark withered away.
- The line that cannot be crossed in these situations is for the third party user of the mark to in any way falsely suggest that it is authorized by or affiliated with the trademark owner. If a firm gives undue prominence to a trademark in its advertising or on its signs in such a way as to imply a connection between itself and the trademark owner, the law will no longer tolerate the behavior because of the risk of consumer confusion.
- Laches is a traditional defense to any request for equitable or injunctive relief, applicable in many contexts besides intellectual property law. Since injunctions are the most commonly sought remedy in trademark infringement cases, it is not surprising that claims of laches have cropped up repeatedly in trademark litigation. Moreover, many courts have held that the laches defense can also be used to defeat a request for profits or damages arising from trademark infringement, even though most monetary remedies are traditionally classified as “legal” rather than equitable.
- After a trademark owner sells trademarked goods the buyer may wish to resell those goods to others. Sometimes, of course, the trademark owner anticipates that such reselling will take place and may even expressly or impliedly authorize it. For instance, when a manufacturer such as Procter & Gamble (P & G) sells CREST brand toothpaste to a retailer, such as the CVS or Rite–Aid pharmacy chains, P & G expects that the drug store will resell those branded tubes of toothpaste to the public. It would be absurd to treat the resale of the goods by CVS as trademark infringement, even though CVS does not own the CREST trademark. The drug store is reselling the goods with the implied permission of the manufacturer, the goods are “genuine” CREST products, and there is no risk of either consumer confusion or injury to the trademark owner by such sales. Not surprisingly, therefore, such resale is immune from attack as trademark infringement. This doctrine is conventionally known as the “first...
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Chapter 28. Protection for Trade Dress and Other Unconventional Trademarks 58 results (showing 5 best matches)
- Color is a central attribute of many trademarks. One need only think of the red and white of the COCA–COLA logo, or the brown and gold combination associated with West Publications casebooks to appreciate this fact. Nonetheless, one of the more troublesome questions in trademark law has been whether a single overall color can, by itself and independent of any design or color scheme, function as a trademark. Those with an affinity for Latin refer to this issue as one involving the protectability of color “simpliciter.”
- The Court found that there was no legal obstacle to the use of color alone as a trademark, provided that the color had achieved secondary meaning and was not functional. The Court could not “find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark …” and observed that “[i]t is the source-distinguishing ability of a mark—not its ontological status as color, shape, fragrance, word or sign—that permits it to” function as a mark.
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (“It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time … after which competitors are free to use the innovation.”); Elmer v. ICC Fabricating, 67 F.3d 1571, 1580 (Fed.Cir.1995) (“Patent law, not trade dress law, is the principal means for providing exclusive rights in useful product features.”); Stormy Clime, Ltd. v. Pro-Group, Inc., 809 F.2d 971, 977–78 (2d Cir.1987) (“Courts must proceed with caution in assessing claims to unregistered trademark protection in the design of products so as not to undermine the objectives of the patent laws.”).
- Trademark law does not prevent a person from copying so-called ‘functional’ features of a product which constitute the actual benefit that the consumer wishes to purchase…. [I]n the context of this case, the name and emblem are functional aesthetic components of the jewelry, in that they are being merchandised on the basis of their intrinsic value, not as a designation or origin or sponsorship.
- The Death of Ontology: A Teleological Approach to Trademark Law
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Half Title 1 result
Title Page 3 results
Table of Contents 47 results (showing 5 best matches)
Appendix: Researching the Law of Intellectual Property 57 results (showing 5 best matches)
- • If you know the title of an article but not which journal it appeared in, access the Intellectual Property–Law Reviews, Texts, and Bar Journals database (IP–TP) and search for key terms using the title field. For example, to retrieve the article
- Intellectual Property: The Law of Copyrights, Patents and Trademarks
- united states patent and trademark office
- Federal Intellectual Property–Patent and Trademark Office Decisions
- Federal Intellectual Property–Trademark Manual of Examining Procedure 2nd Edition
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Index 121 results (showing 5 best matches)
Chapter 24. Trade Secret Law 28 results (showing 5 best matches)
- The American Law Institute was not content to rest, however. A distinct Restatement (Third) of Unfair Competition was promulgated in 1993 with a thorough treatment of trade secrets in sections 39–45. The remainder of the work is devoted to trademarks, misappropriation, deceptive marking, the right of publicity and related doctrines. Like the Restatement of Torts and the Uniform Act, the Restatement of Unfair Competition remains faithful to the case law and does not presume to be an instrument of radical legal reform.
- The tensions between the patent and trade secret laws have sometimes erupted into arguments that the patent statute preempts state trade secret laws. In addition to asserting that trade secrecy discourages disclosure of new inventions, commentators have also observed that the patent law reflects the policy that only new and nonobvious inventions merit proprietary patent rights. Although the requirement that a trade secret not be public knowledge has been equated to the patent law’s novelty requirement, the trade secret laws do not demand that the secret subject matter be nonobvious.
- The American Law Institute’s 1939 Restatement of Torts included two sections that defined the subject matter of trade secrets and the misappropriation cause of action. Although this treatment was succinct, The American Law Institute concluded that trade secret law had grown “no more dependent on Tort law than it is on many other general fields of law and upon broad statutory developments,” and opted not to house trade secrets there.
- That the common law has been supplemented by these four accounts of trade secrets law may seem to hold tremendous possibility for confusion. However, the substantive law of trade secrets provided in the Restatements, Uniform Act and Economic Espionage Act is largely consistent. The later sources are marked by more familiar language and a greater level of detail than their predecessors. Although judicial opinions may cite to different authorities, the core precepts of trade secret law remain intact.
- Despite these apparent conflicts, the courts have ruled that trade secret protection may co-exist alongside the patent and other intellectual property laws. In the Supreme Court observed that trade secret laws also serve a principal purpose of the patent laws, the promotion of innovation. The Court also considered the patent law a far more attractive option for inventors of patentable subject matter and reasoned that most inventors would opt for the patent system. The Court also noted that, historically, the two bodies of law had been in place since the earliest days of the Republic.
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Westlaw Overview 1 result
Preface 5 results
- While there are many common themes that pervade the different branches of intellectual property law, the law of copyrights, patents, and trademarks still remain fairly discrete fields. Each is governed by its own separate, and fairly elaborate federal statute, and the cases dealing with problems in one of the areas rarely cite cases from the others. Our organizational scheme reflects this segregation of topics. After an introductory chapter exploring some of the unifying themes in all intellectual property disputes, we have divided this work into three principal parts dealing respectively with the three branches of the law. We have tried, however, through cross-references in both text and notes, to alert the reader to overlap or even conflict between the various branches of intellectual property law.
- Even more significantly, we believe that thoughtful legal rules in these areas can facilitate amazing progress and much good for the citizens of the United States and the world, while rules crafted to advance special interests hold the potential of doing great harm to large numbers of people. Our hope is that this book will help a wide variety of actors in the legal system to gain the kind of introduction to copyright, patent and trademark issues that will enable them both to distinguish between sound and unsound legal regimes and to become champions of the former. A teaching book can aspire to no more and should aspire to no less.
- Writing a book about intellectual property at the dawn of the twenty-first century is like trying to hit a moving target while riding in the bow of a speedboat. Dizzying political, economic and technologic changes have prompted the Congress to undertake massive revisions to all three major branches of intellectual property law over and over again in the past few years. Those new enactments, along with problems not addressed by legislation, have led to a cascade of decisional law on a stunning range of highly complicated issues. That in turn leads to circuit splits, law review articles, more legislation, and still more cases. Anything that one endeavors to say on the subject runs the risk of being obsolete before the ink has dried or the toner has cooled on the page.
- We have sought to steer a middle ground with the citation of authority. In order to keep the book to a manageable size, we did not attempt to follow the law review practice of supporting every statement with a citation, nor did we attempt to gather complete lists of authorities for various propositions. That such a task would have been impossible in a single volume is evidenced by the existence of huge multi-volume works in all three branches of intellectual property law. On the other hand, we have tried to provide at least some support for most major points, and sufficient
- Intellectual property issues are unusually engaging and stimulating. The excitement of this area of the law reflects the excitement of living in a technologically advanced, culturally diverse, economically robust time and place. As more and more authors develop more and more ways to express themselves and to disseminate their work; as more and more technologists conjure more and more ways to make our lives longer, healthier, easier and more fun; and as more and more merchants conjure more and more varieties of goods and services to cater to our needs and wants along with appealing symbols to identify them; the law has been in a mad scramble to keep up. The Internet and globalization have thrown down extraordinary challenges to the legal system. For the student of intellectual property, there is never a dull moment.
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Chapter 11. State Remedies Analogous to Copyright and Federal Preemption 50 results (showing 5 best matches)
- Competitive injury and theft of intellectual property have always been considered a branch of the law of Torts. Although both the first and second Restatement of Torts addressed some matters of unfair competition law, such as trade secrets, neither considered the status of the misappropriation doctrine at all. In the early 1990’s the America Law Institute began the preparation of a new restatement dealing directly and exclusively with law regulating competitive practices. The result of this effort was the publication, in 1995, of the Restatement (Third) of Unfair Competition, so named because of its roots in the two earlier Torts Restatements. We will encounter this new Restatement repeatedly and in some depth in the materials dealing with trademark issues a bit further on in this Hornbook.
- In our federal system, federal law takes precedence over state law. To be more precise, state statutes and common law doctrines are void if they conflict outright with federal statutes or undermine their basic purposes. The three state remedies discussed in this chapter all seem to nibble around the edges of copyright law. When states forbid the use of data or information generated by others under the rubric of the misappropriation doctrine, there is the potential of conflict with the copyright rule that denies protection to facts and historical data. Requiring those who receive ideas from outsiders to pay for them might conflict with the general rule of copyright law that there is no protection for ideas. Protection of a celebrity’s persona under the heading of the right of publicity poses many of the same problems. As a result, each of these three regimes, along with other doctrines of state law, may raise issues of federal preemption.
- With the passage of the Copyright Act of 1976, Congress divested the states of the authority to provide for common law copyright in favor of a unified federal copyright system for both published and unpublished works. To further clarify the boundary between permissible state protections and federal law the 1976 Act also expressly addresses federal preemption of state laws in § 301. Section 301 calls for the preemption of state law claims that provide rights “equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103….” As restated by the Court of Appeals for the Second Circuit, § 301 preempts a state law claim if:
- on which the copyright had expired, and to restrain the use of words that did not otherwise qualify for trademark protection because they lacked sufficient distinctiveness.
- non-statutory decision, the Court was expounding on general federal common law, a body of law governing only cases filed in federal court and predicated on diversity of citizenship. After , general federal common law ceased to govern even in that category of cases, and the federal courts were required to resort to state law doctrines to resolve cases founded on diversity jurisdiction. Given that
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Chapter 18. The Patent Instrument 14 results (showing 5 best matches)
- Courts routinely state that the patent applicants are allowed to coin their own terms for use in claims. As expressed in the vernacular of the patent law, “a patentee is free to be his or her own lexicographer.” However, newly minted terms may not be misdescriptive, nor should the applicant employ such banal terms as “gadget” or “widget.” The courts and PTO have been more hostile to the use of trademarks or trade names within patent claims however. Typical of such cases is which rejected a claim reciting the trademark “FORMICA.” The PTO Board of Appeals reasoned that the manufacturer was free to change the composition of FORMICA as it pleased, rendering Bolton’s claim of indefinite scope.
- Leeds v. Commissioner of Patents and Trademarks, 955 F.2d 757, 759 (D.C.Cir.1992).
- Department of Commerce, Patent and Trademark Office,
- However, specifications may also contain simulated or predicted illustrations. Known in the patent law as “prophetic examples,” such “paper experiments” may contribute to enablement so long as they actually aid those of ordinary skill in the art to achieve the invention.
- Because many foreign patent laws include no analog to the best mode requirement in U.S. law, inventors based overseas have also disfavored disclosing their best mode. At the time this book goes to press, however, scant effort has been directed towards legislative reform of the best mode requirement.
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Chapter 13. Introduction to the Law of Patents 28 results (showing 5 best matches)
- The patent law often seems the most daunting and elusive of the intellectual property regimes. The patent statute has become an increasingly intricate work of legislation. As well, the proprietary rights extended by individual patents often concern complex subject matter. As a result, many students are drawn to the field less out of intellectual curiosity than from a desire to obtain a return on investment in earlier technical training. Others come to the patent law out of the recognition that it is important. Of all of the intellectual property systems, the patent law provides the most robust rights; has been most subject to sweeping domestic and international reforms; and, perhaps of most immediate significance, generates far more work for practitioners than copyright, trademark and related disciplines put together.
- The 1883 Paris Convention for the Protection of Industrial Property is the foundational international agreement concerning patents (and trademarks). The Paris Convention contains few provisions mandating particular legal requirements for the patent law, but it does provide for national treatment. As a result, signatory states must treat domiciles of Paris Convention signatory states in the same manner as their own domiciles.
- In order to receive a patent, an inventor must file a patent application with a specialized government agency known as the United States Patent and Trademark Office, or PTO.
- Legal historians have been quick to seize upon venerable antecedents to our contemporary patent law regime. An ancient Greek system of rewarding cooks for excellent recipes, and a Florentine patent granted in 1421 have been variously cited as predecessors to the modern patent law. With its requirements that the invention be new, useful, and reduced to practice; provision for a ten-year term; and registration and remedial scheme, the Venetian statute bears a remarkable resemblance to the modern law. By the Seventeenth Century, numerous European states had enacted similar legislation. For purposes of the common law world, the most significant of these successors was the English Statute of Monopolies, an important commercial statute of the Jacobean era.
- Although paths to the patent system vary, students quickly discover that this discipline is as engaging as any they will encounter in their legal careers. The patent law is a venerable regime with a rich history. But in many ways it remains a work in progress. The most important problems seemingly resist solution, and there are always many more questions than answers. Diverse factors contribute to this state of affairs, but at bottom the unsettled state of the patent regime results from a course of technological progress that is both relentless and unpredictable. The patent law must balance its past with the mandate to remain as current as the latest developments in biotechnology, computer science, finance and other diverse endeavors. In succeeding chapters of this treatise, the authors hope not only to explain the technical workings of this discipline, but to convey the fascination and enthusiasm that has resulted from their own studies of the patent law.
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Chapter 19. Patent Prosecution 29 results (showing 5 best matches)
- The Patent and Trademark Office’s involvement in the United States patent system does not necessarily end when it formally grants a patent. The law has long recognized the numerous possibilities for mistakes, ranging from minor typesetting errors to significant substantive flaws, to make their way into the patent instrument. The patent statute thus provides the PTO with several different mechanisms for correcting the inevitable. The magnitude of the mistake largely determines which procedure will be employed.
- Sometimes inventors seek more robust patent protection in some countries than in others. This step may be taken for business reasons or due to differences in the patent or competition laws in varying jurisdictions. The Act therefore contains a provision allowing applicants to “submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding application filed in a foreign country.”
- Unlike other sorts of intellectual property, patents come into existence only through the intervention of the government. The entity assigned the task of approving patent applications is an agency entitled the United States Patent and Trademark Office, or PTO. The administrative process through which an inventor acquires a patent from the PTO is known as prosecution. The most frequent professional duty of patent practitioners, prosecution is also the task assigned to most entry-level patent lawyers. Even those engaged exclusively in patent litigation need to be thoroughly apprized of the events at the PTO that lead to the grant of any patent to be sued upon or defended against. Attorneys who do not routinely practice in the patent law may also find themselves more frequently approached by inventors wishing to obtain a patent than by patent proprietors who wish to enforce their intellectual property rights. For all these reasons, a basic grasp of prosecution mechanisms is elemental...
- 19.1 Introduction to the Patent and Trademark Office.
- § 19.1 Introduction to the Patent and Trademark Office
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Chapter 9. Copyright Infringement 35 results (showing 5 best matches)
- Mars Inc. v. Kabushiki–Kaisha Nippon Conlux, 24 F.3d 1368, 1372–73 (Fed.Cir.1994) (“The common law concept of ‘unfair competition’ has not been confined to any rigid definition and encompasses a variety of types of commercial or business conduct considered ‘contrary to good conscience,’ including acts of trademark and trade dress infringement, false advertising, dilution, and trade secret theft …”)
- In administering this supplemental jurisdiction provision the courts have interpreted the concept of “unfair competition” broadly to include such matters as trade secret theft, conversion of intellectual property and various forms of passing off and common law trademark infringement. In the decided cases, the most difficult issue under section 1338(b) has proven to be whether the state law claim is genuinely “related” to the federal intellectual property claim. While there has been some disagreement among the courts, the emerging consensus seems to require that both the copyright claim and the non-federal claim arise from a common nucleus of operative fact in order for them to be considered related.
- addressing a similar provision in the trademark statute. In these decisions the Court held that Congress had not validly abrogated state immunity to charges of trademark and patent infringement in the federal courts. The virtually inescapable conclusion from these opinions is that the 1990 copyright legislation is similarly invalid.
- , 64 Patent, Trademark & Copyright J. 32 (May 10, 2002).
- This statute goes on to provide that this “jurisdiction shall be exclusive of the courts of the states.” In other words, claims arising under the copyright laws can only be filed in federal court. While this provision seems simple enough, litigants and courts have had difficulty determining just when a case “arises under” copyright law.
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Chapter 20. Patent Infringement 31 results (showing 5 best matches)
- Before we take up the topics of literal and equivalent infringement, a preliminary word on claim interpretation is in order. Those new to the patent law may be pleased to learn that, unlike other intellectual property disciplines, individuals must define their patent interests expressly in a government-approved instrument before filing an infringement suit. Further, although patent claims employ notoriously stilted language, they are at bottom quite humble texts. Each claim is but a single sentence that verbally portrays a product or process. As compared to the ambiguous substantial similarity analysis found in copyrights, or vague likelihood of confusion standard of the trademark law, patent infringement analyses might appear at first blush to be entirely straightforward.
- and trademark law have extensively considered parallel importation, this issue has arisen only infrequently in the patent law. The Federal Circuit has yet to speak definitively on this point, while the only relevant Supreme Court opinions are over a century old.
- concerned an electric welding composition termed a “flux.” When applied to the surfaces to be joined through welding, a flux assists in the fusing of the two metals. The claimed flux consisted of calcium fluoride and alkaline earth metal silicate. The accused flux was known under the trademark Lincolnweld 660. It consisted of silicates of calcium and manganese. Manganese is not an alkaline earth metal. However, the patentee also marketed a flux composition known as Unionmelt Grade 20 consisting of silicates of calcium and magnesium. Also, prior art patents employed manganese as a welding composition.
- Although early Supreme Court opinions were reluctant to employ the patent law to police these infractions, Federal Circuit case law has strongly upheld a cause of action for patent infringement where the sale was conditional, despite the first sale doctrine. According to the Federal Circuit, restricted sales by the patentee do not allow the inference that the patentee intended customers to enjoy unrestricted use of the invention. As a result, contractual conditions will generally be enforced through the patent law unless the court determines they violate some other law or policy, such as the antitrust law or the doctrine of patent misuse.
- The patent law has long considered persons who encourage the unauthorized practice of another’s patented invention to have engaged in culpable conduct. Such individuals face liability for patent infringement even if they never directly employ the patented invention themselves. The patent law terms this sort of conduct as “indirect” or “dependent” infringement.
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Acknowledgments 5 results
- There are many others whose contributions were one step removed from the preparation of this book, but who laid the foundation that made it possible. I am greatly indebted to Professor J. Thomas McCarthy of the University of San Francisco, not only for his extraordinary contribution to trademark law through his definitive treatise, but for his many thoughtful observations and kindnesses over the years. He is one of the true gentlemen and scholars in our business. I would not be in law teaching if not for the confidence and support of Professor Glen E. Weston, my emeritus colleague at George Washington, who illustrated for me what a teaching book should look like. I am grateful as well to Jerome A. Barron, the Dean who hired me, and to Michael K. Young, my current Dean, for doing so well the hardest thing a Dean can do—namely to leave a faculty member unmolested to pursue a large project. The forbearance, patience, and grace of several at West Group, notably Tom Berreman, Doug Powell...
- Leonard Klein, a research librarian at the Jacob Burns Law Library was, as always, masterful, in finding just the right resource at just the right moment. My colleague Robert Brauneis offered many useful observations on several chapters, rescuing the reader from much ambiguity.
- W. Nies gifted me with two unforgettable years of training in the work of the remarkable court on which she served. I miss her dearly. I shall always be grateful to Professors Martin Adelman and Rebecca Eisenberg for igniting my interest in intellectual property, Harold Wegner for first placing me in front of a law school classroom and Professor Hugh Hansen for proposing a full-time career in law teaching. I also acknowledge Professors Rochelle Dreyfuss, Jerome Reichman and Pamela Samuelson, distinguished senior colleagues who have inspired a new generation of intellectual property scholars. The thoughful commentary of Professor Douglas Lichtman improved the patent portions of this text and was of immeasurable help. My thanks also to Peter Corcoran, Jyotsna Gautam and Brian McMahon for their invaluable research assistance.
- Only other authors of similar books really understand the large number of people who make a work like this possible. I am deeply grateful to several remarkable law students at George Washington University who helped in the research for this work, including Michael Alter, John Donboli, James Gallagher, Mark Glaze, John Moran, Douglas Rettew and Wayne Stacy. Thanks are also due to David Colletti and Paul M. Levine for meticulous help in proof-reading under great time pressure.
- This volume would have been simply impossible without the collaboration and encouragement of my co-author Jay Thomas, whose enthusiasm and amazing hard work kept me moving through many hard patches. Finally, there are no sufficient words of thanks for my students. So many teacher-authors have said it before that it may take on the trappings of a cliche, but the intellectual curiosity, probing questions, good humor, excitement and energy of two decades worth of G.W. law students have been, more than anything, what got me out of bed each morning and what made this book possible.
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Copyright Page 2 results
- and West Group are registered trademarks used herein under license.
- West Group has created this publication to provide you with accurate and authoritative information concerning the subject matter covered. However, this publication was not necessarily prepared by persons licensed to practice law in a particular jurisdiction. West Group 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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Chapter 6. Ownership and Transfer of Copyright Interests 28 results (showing 5 best matches)
- Field v. True Comics, 89 F.Supp. 611 (S.D.N.Y.1950); Local Trademarks v. Powers, 56 F.Supp. 751 (E.D.Pa.1944).
- This provision, of course, is akin to the Statute of Frauds, familiar from contract law. In interpreting it, however, one must bear in mind that the term “transfer” is specifically defined in the current copyright law and that definition is not entirely intuitive. According to the statute:
- Although different in a number of particulars, the recordation scheme under the 1909 copyright law closely resembled the one described above. Just as is true today, subsequent transferees would prevail under the older law if they had no notice, actual or constructive, of a prior transfer, if they paid value and if they promptly recorded.
- For almost 100 years, U.S. copyright law has treated the copyright in works prepared by employees not as the property of the individual creator but rather as that of the creator’s employer. The principle—known as the works made for hire doctrine—can be traced back to Justice Holmes’ 1903 opinion in and, with substantial changes, carried it forward into the 1976 statute as well. The current law provides:
- The CCNV argued that Reid was an employee, and that the work was thus a work made for hire because they had the right to control his work, and because they had actually exercised such control as the work progressed. The Supreme Court disagreed. It criticized the actual control test by noting that since “it turns on whether the hiring party has closely monitored the production process, the parties would not know until late in the process, if not until the work is completed,” whether the work was a work made for hire. It held that employee status should be determined instead by application of the law of agency. The Court was influenced by the structure of the definitional provision of the statute which seems to draw a sharp distinction between “employees” and “independent contractors.” To assist the lower courts in applying its test, the Court identified several factors relevant under agency law in
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Chapter 4. The Subject Matter of Copyright—Specific Categories of Protectable Works 37 results (showing 5 best matches)
- Protection for titles and short phrases may, however, be available under the “passing off” theory of the unfair competition law. In addition, short phrases that qualify as trademark slogans may be registered under the Lanham Act.
- As is developed elsewhere in this text, sound recordings receive more limited protections under copyright law than do most other types of works. This feature of the law is controversial, however, and the law is otherwise in most other nations of the world. There is a not insubstantial chance that Congress will eventually extend a performance right to sound recordings. Another significant limitation upon copyright in sound recordings is that these works are protected only against duplication of the work through mechanical means, such as a tape recorder. No matter how closely one band tracks a protected sound recording by imitating the earlier rendition, an independently fixed second version does not infringe the copyright in the first sound recording.
- Notwithstanding these legislative developments, Congress continued to harbor some uncertainties as to the workability of using copyright law to protect software. Consequently, Congress established the National CONTU submitted its final report in 1978, concluding that copyright law was indeed the appropriate legal mechanism to be used for software protection.
- From their very first appearance, computer programs proved to be a controversial and troublesome subject area in the law of copyright. Some of the issues that bedeviled the courts and Congress have been resolved, but others continue to percolate. In order to understand both the historic and the current controversies, it is necessary to know just a bit about computer programs.
- Another potential controversy concerning the copyrightability of computer software is the question of who owns the copyright in a “computer-generated work.” For instance, software can be imagined which would permit a computer to generate elaborate works of music without any human input. The difficulty in such cases is whether the work itself qualifies as a “work of authorship” if it was not created through direct human involvement, and if so, who should be considered the author. While there is little law thus far on these problems, the CONTU Report suggested that such works should be protected and that the copyright owner should be the person using the program, rather than the author of the underlying program which generates the contested output. That is also the solution that has been adopted under British law.
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Chapter 16. Novelty 37 results (showing 5 best matches)
- exemplifies third party secret use cases. Gore obtained a patent including process claims for quickly stretching crystalline, unsintered polytetrafluroethylene (commonly known under the trademark “Teflon”). During later enforcement litigation, a competitor learned that a John Cropper, living in New Zealand, had earlier invented the same technology. Prior to the critical date, Cropper both sent a letter describing the invention to a Massachusetts company, and sold his machine to Budd. Budd employees were told to maintain the Cropper machine in confidence, and at some later point Budd practiced the process.
- The other key aspect of § 102(a) is determining an applicant’s date of invention. The nature of the activity that comprises the applicant’s invention date is also not elaborated in § 102(a). The statute merely states the phrase “the invention thereof by the applicant for a patent” without further definition. However, the drafters of the 1952 Act relied upon extensive case law concerning predecessor statutes to § 102(a). This precedent set forth an elaborate definition of the level of activity that amounted to an “invention date” in the patent law. This definition involves three terms of art: conception, reduction to practice and diligence.
- Sometimes a patent discloses a set or group of technological things, such as an entire class of chemical compounds. The PTO will then learn of a prior art reference that describes the use of a subordinate member of that group, such as a discrete compound within the claimed class. In the patent law, these sorts of problems are referred to as those of “genus” and “species.” Genus-species relationships create logical difficulties for the anticipation analysis of the patent law, but they have been resolved as follows.
- Expert Opinion on the Case For and Against the Introduction of a Grace Period in the European Patent Law
- Regrettably, the world’s patent laws do not exhibit a great deal of uniformity in their definitions of the prior art. The United States in particular has gone its own way by maintaining a unique “first-to-invent” system. In the United States, when more than one patent application is filed claiming the same invention, the patent will be awarded to the applicant who establishes the earliest acts of invention. Other countries have opted for a “first-to-file” rule under which entitlement to a patent is established by the earliest effective filing date of a patent application. Although inventors around the world have long maligned the interface problems created by the first-to-invent system, the United States has yet to muster the political will to harmonize its patent law with global norms.
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Chapter 5. Publication and Formalities 23 results (showing 5 best matches)
- Under the Copyright Act of 1909, publication formed the crucial dividing line between protection under state common law and protection under the federal statute. Before publication, an author whose work was reproduced without his or her permission could maintain a cause of action for infringement of “common law copyright” under the law of his or her home state. There was no time limit on this right. The “common law copyright” was perpetual—it endured as long as the author kept the work unpublished. Moreover, federal law simply did not apply to unpublished works in most cases. After publication federal protection of the work replaced the common law remedy. It is for this reason that common law copyright under the regime of the 1909 (and previous) copyright acts was sometimes also referred to as a “right of first publication.”
- One of the key aspects of the law of publication as it evolved under the 1909 act was the distinction between a “limited” and a “general” publication. A limited publication is one “which communicates the contents of a manuscript to a definitely selected group and for a limited purpose, without the right of diffusion, reproduction, distribution or sale.” For example, if a law professor were to prepare a draft of a law review article on the law of publication under the 1909 Act, and to circulate that manuscript to 10 colleagues at a variety of other schools for comment, with the implicit understanding that no further copies would be made, that would be merely a limited publication. Consequently, even under the strict rules of the 1909 Act, dissemination of that law review article manuscript
- Registration was not always optional under American copyright law. Under the earliest copyright statute in the United States, the law required the filing of the title page of a work with the clerk of the U.S. district court in the district where the claimant resided as a formal condition of copyright protection. Without the filing, copyright protection under federal law would be lost. By the time of the 1909 act, however, registration was to be made with the Copyright Office rather than with the district courts, and was no longer an essential condition of copyright protection.
- In the U.S. law, the rule was first laid down in the landmark opinion of Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 8 L.Ed. 1055 (1834). For a more recent example of divestitive publication see Bell v. Combined Registry Co., 397 F.Supp. 1241 (N.D.Ill.1975) (distribution of copies of poem
- rationale for this doctrine was that once an author forgoes the privacy of the work in favor of commercial exploitation, that author should be forced to enter into the tradeoff of federal copyright law—statutory protection, but only for a limited term—rather than continue to enjoy the indefinite protection of common law copyright.
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Chapter 2. Introduction to the Law of Copyright 28 results (showing 5 best matches)
- Copyright today is an exclusively federal, statutory subject. The governing law is the Copyright Act of 1976, effective for works created on or after January 1, 1978. —in part by the common law of the various states, and in part by selected provisions of the 1976 law.
- (1) All works of authorship are protected under the federal copyright law from the moment they are fixed in a tangible medium of expression. State common law protection is expressly preempted.
- The most noteworthy manifestation of natural rights theories within the copyright law is the doctrine of moral rights. Moral rights laws generally include three principal components. The integrity right allows authors to prevent objectionable distortions, mutilations or other modifications of their works. The attribution or paternity right allows authors to claim authorship of their works. Finally, the right of disclosure allows authors to decide when and in what form a work will be distributed to the public. Moral rights theories play a central role in many foreign copyright laws and have been recognized to a more limited degree in the United States.
- This constitutional provision reveals a number of interesting features about the U.S. copyright law. First, the clause refers to “Authors” and their “Writings.” While Congress might protect persons other than Authors or material other than constitutional Writings under other provisions of the constitution, such as the commerce clause, the subject matter of copyright appears to be limited to the writings of authors. Indeed, the Copyright law of 1909 defined the subject matter of copyright as “all the writings of an author.” When confronted with the question, the courts have found materials of this sort to be within the scope of the constitutional term “writings” and thus appropriate subject matter for copyright law.
- natural rights theories are most resonant in the context of the copyright laws. Under these views the interests of authors in their works exceeds the economic. Authors are instead seen as bearing a personal relationship with their creative expression. By providing individuals with the right to control uses of their works of authorship, the copyright law acknowledges the dignity and worth of these individuals themselves.
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Chapter 8. Duration of Copyright Interests and Termination of Transfers 16 results (showing 5 best matches)
- Prior to publication, the work was protected by “common law copyright.” This meant that the author had a state common law cause of action against anyone who used or duplicated the work without his or her permission. This common law right was perpetual in duration. Another way to think of this situation is to realize that the act of publishing the work marked the dividing line between the state and federal regimes of protection. It signified that the author had traded state law protection of perpetual duration in favor of the greater protection, but limited term of federal copyright.
- As noted previously, under the 1909 Act an unpublished work was not protected under the federal copyright law at all. Rather, it was protected under state common law copyright. Such state protection effectively endured for an unlimited term, provided the author did not publish the work.
- 1909 Act, § 24. The case law under the 1909 Act held that the residual category of “next of kin” would be determined as a matter of state law. See Silverman v. Sunrise Pictures Corp., 273 F. 909 (2d Cir.1921).
- With the adoption of the 1976 Act, as modified by the Bono Act, Congress decided to bring all such unpublished works under the scope of federal copyright. That meant that these pre-existing but unpublished works would now only be protected for a limited time. As a general matter, Congress granted these works the same basic terms as those applying to new works created after the effective date of the 1976 law. life of the author, plus 70 years. For example, assume a work was created in 1970 and never published, and that its author died in 1975. Prior to January 1, 1978 (the effective date of the 1976 act) it was protected by perpetual common law copyright. After that date it was protected under federal law, and the state law protection was pre-empted. The federal copyright would expire in the year 2045, 70 years after the death of the author.
- Congress constructed the termination of transfer provisions with the lessons from the 1909 Act and its case law in mind. In particular, the right to terminate may not be assigned in advance.
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Chapter 3. The Subject Matter of Copyright—Basic Requirements 21 results (showing 5 best matches)
- The fixation doctrine can be put the other way around—there is no federal copyright protection for unfixed creative works such as an extemporaneous speech, a brand new poem that the poet can recite from memory but has never written down, or a jazz improvisation performed spontaneously at a night club. These “unfixed” works might, however, be eligible for protection under state law, either under the misappropriation doctrine, or some other principle. This means that the moment of fixation of a work is the dividing line between potential common law protection under state law and federal statutory protection.
- Second, there already exists a legal regime to reward innovation in the development of principles and procedures—namely patent law. Unlike the relatively easy criteria necessary for copyright protection, patent law has fairly rigorous prerequisites. The would-be patentee must show that his or her invention is both “novel” and “nonobvious” If copyright protection extended to ideas, concepts and the like, it would provide an alternative to patent law that would undermine the many significant policy objectives of patent.
- Although the requirement of fixation was not explicit in federal copyright law prior to the 1976 act, it was a necessary adjunct of the scheme established by the prior laws. Under those statutes, federal protection did not attach until the work was either published with notice, or registered with the Copyright Office.
- right and the traditional copyright law. Some have argued that the extent of these differences makes the anti-bootlegging law constitutionally suspect. The Intellectual Property Clause of the Constitution only authorizes Congress to protect It remains to be seen whether other courts will decide similarly, however, and also whether the anti-bootlegging law remains a special case or the start of a more wholesale rethinking of copyright’s fixation requirement.
- Interestingly, this term is nowhere defined in the text of the copyright statute. This was by design. Congress indicated in the accompanying legislative history that its failure to offer a definition of this crucial term was meant to incorporate the case law definition of originality that had evolved during decades of construing the 1909 Act. Under that case law “originality” implicates two rather distinct concepts, both of which must be satisfied before a work can be assured of copyright protection.
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Advisory Board 9 results (showing 5 best matches)
Chapter 10. The Fair Use Defense 22 results (showing 5 best matches)
- For the next 135 years, courts relied upon this judicial language as the basis for a common law fair use doctrine. When Congress revised the copyright laws in 1976 it chose to codify the idea of fair use in section
- Nonetheless, historically there has been a broad consensus, among both courts and commentators, that enforcement of copyright laws does not conflict with the First Amendment. This is because First Amendment values are considered to be already built in to the structure of the copyright act. Two aspects of copyright doctrine in particular are usually cited as eliminating any risk of interference with free speech concerns. The first of these is the idea/expression distinction, discussed in some depth in Chapter 3 of this treatise. Since copyright only protects the expression of an author—his or her words, notes, lines or images—others for us to make a movie about a blonde sorority member who goes to law school, or even a movie about a blonde woman law student who defies expectations and achieves great academic success despite the initial hostility of her classmates. The idea/expression dichotomy guarantees that any imposition on our ability to express ourselves will be quite minimal,...
- H.R. Rep. No. 94–1476, 94th Cong., 2d Sess. 68–70 (1976). Interestingly, both the American Association of University Professors and the Association of American Law Schools (the professional organization of law professors) did not agree to these guidelines because they were, in its view, “too restrictive with respect to classroom situations at the university and graduate level.”
- and the Second Circuit has observed that the fair use doctrine prevents “rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” It exempts from liability certain modest uses of copyrighted work when those uses will not undermine the economic interests of the copyright owner. It is unequivocally the most important defense in copyright law, both in terms of how often it is asserted by defendants and in terms of its importance to basic copyright policies.
- although some courts have suggested that after a preliminary showing on some of the fair use elements, the burden will shift back to plaintiff to rebut the claim of fair use. Courts also describe the fair use inquiry as a “mixed question of law and fact.”
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- Second, the asserted harm must have been reasonably foreseeable, rather than indirect, removed or remote. This requirement follows from the traditional tort law concept of proximate cause. In the Federal Circuit explained that not every injury of which the patentee complains may be the type the patent laws were designed to remedy. For example, if the patentee is so shocked to learn of the infringement that he suffers a heart attack, he is not entitled to claim damages under the Patent Act. The court explained that although this sort of harm is traceable to the infringement, it is too remote to justify compensation under the patent laws.
- The Patent Act sets forth the remedies a patentee may obtain upon a finding of infringement. These remedies include injunctions, monetary damages and attorney fees. The statute also allows for damages to be increased by up to three times in exceptional cases of willful infringement. The Patent Act does not provide for criminal sanctions for violation of patent rights, nor does it allow the patentee to obtain statutory damages in the manner of the copyright law.
- The Federal Circuit will not ordinarily enhance damages due to willful infringement if the adjudicated infringer did not know of the patent until charged with infringement in court, or if the infringer acted with the reasonable belief that the patent was not infringed or that it was invalid. Federal Circuit decisions emphasize the duty of someone with actual notice of a competitor’s patent to exercise due care in determining if his acts will infringe that patent. This duty may be fulfilled by obtaining and observing competent legal advice before commencing, or continuing, activity that may infringe another’s patent. The best practice appears to be the commissioning of an infringement and validity opinion from a member of the patent bar who is fully conversant with the patent law; has familiarized herself with the patent, its prosecution history, and the pertinent prior art; and is knowledgeable of the products or processes that might be accused of infringement.
- ...infringement has been roundly debated. Critics of the policy believe that the possibility of trebled damages discourages individuals from reviewing issued patents. Out of fear that their inquisitiveness will result in multiple damages, innovators may simply avoid looking at patents until they are sued for infringement. To the extent this observation is correct, the law of willful infringement discourages the dissemination of technical knowledge, thereby thwarting one of the principal goals of the patent system. With willful infringement principles encouraging industry to seek out opinion letters of patent counsel, these developments have been likened to a “full employment act” for the patent bar. Fear of increased liability for willful infringement may also discourage firms from performing the public service of challenging patents of dubious validity. Perhaps it is time for the patent system to shift to a “no-fault” regime of strictly compensatory damages, without regard...
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Chapter 7. The Exclusive Rights of a Copyright Holder 23 results (showing 5 best matches)
- Some works of authorship display a useful article as such. A blueprint may depict the design of an electric circuit, for example, or a model may portray an aircraft engine. For that matter, a pop art painting might depict a toaster or a blender. In such cases § 113(b) specifies that the copyright law provides authors with no “greater or lesser rights with respect to the making, distribution or display of the useful article so portrayed….” Stated more simply, a copyright in a pictorial, graphic or sculptural work depicting a useful object does not extend to embodiments of the useful object itself. If an engineer develops a blueprint depicting a electric circuit, for example, the engineer could use the copyright law to prevent reproductions of the blueprint itself. But others could actually build the circuit without violating the engineer’s copyright. If the engineer seeks intellectual property protection for the useful article itself, she must turn to the patent law.
- of the Berne Convention requires signatories to provide the rights of integrity and attribution. Although U.S. adherence to the Berne Convention prompted many changes to the U.S. copyright law, Congress initially declined to establish a full-fledged moral rights regime. The United States instead took the position that various common law causes of action, including the right of privacy, the right of publicity, defamation and unfair competition, provided rights equivalent to the moral rights required in Article 6 These state laws, although limited to works of fine art, create protections resembling the moral rights available abroad.
- The future of moral rights in U.S. copyright law remains uncertain. At the time the statute was enacted, some commentators believed that VARA would serve as the first step towards a more comprehensive moral rights law in the United States. Yet outside the academic community, few have since stepped forward to support the expansion of moral rights beyond the narrow confines of VARA. Balanced against a desire to fulfill the international commitments of the United States should be concern that moral rights present an uneasy fit with the collaborative nature of many contemporary works of authorship, including broadcasting, film and music. Expansive moral rights would effectively provide one of a number of participants with the ability to hold up sophisticated joint projects. The compatibility of moral rights with the traditional fair use privilege is also questionable. For the near future, at least, U.S. copyright law seems reluctant to further embrace moral rights concepts beyond VARA.
- The U.S. copyright law traditionally has had a utilitarian focus. Protection of authors has not been seen as the ultimate purpose of copyright, but rather as a means to achieve the broader social goal of promoting expression.
- Overview of Basic Principles of Copyright Law
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Chapter 14. Patent Eligibility 24 results (showing 5 best matches)
- Thus, the inquiry of whether a particular invention is of the kind the patent laws were intended to protect has traditionally been considered a different matter from whether the invention possess novelty, and is useful, within the meaning of the patent law. Utility and novelty are addressed in Chapters Fifteen and Sixteen of this text respectively.
- Contemporary patent law takes a liberal view towards the format in which a claim is drafted. In particular, the patent law often allows a particular invention to be claimed as both a product and process. For example, suppose that the inventor of a new shovel files an application at the PTO. He might draft the following set of claims: (1) a product claim towards the shovel itself; (2) a method of making the shovel; and (3) a method of using the shovel to excavate items from the earth.
- Presentations of information traditionally did not comprise patentable subject matter. Under the printed matter doctrine, information inscribed upon a substrate for purposes of presentation was held outside the scope of § 101. Courts viewed such inventions as no more than memorialized versions of abstract ideas and reasoned that the mere act of recording information should not impart patentability. This rule also performed a channeling function, diverting works of authorship from the patent law to the copyright law.
- If our experience with the patent law has taught us one thing, it is that the scope of patentable subject matter will inevitably broaden. This trend has accelerated to the point that few cognizable restraints appear to limit the scope of patenting. With the patent system poised to impact a range of activities as broad as human experience itself, we may justly question why the law of patent eligibility has become a one-way ratchet. A review of structural aspects of the U.S. patent system goes a long way to offering an explanation for this historical trend.
- Justice Frankfurter wrote a concurring opinion that has better withstood the passage of years. He recognized that exceptions to patentability based upon such terms of “laws of nature” are, outside of the obvious cases of discoveries from the wild, extremely dubious. Everything that happens does so in accordance with the “laws of nature,” even if they are imperfectly understood. Justice Frankfurter would have struck down the claimed invention on an alternative ground. He noted that Bond’s claims did not recite the specific combination of bacterial strains that he employed, but rather attempted to secure exclusive rights to any combination of bacteria that possessed non-inhibitive properties. According to the concurrence, Bond’s patent presented overly broad claims in comparison with his narrow technical disclosure. In modern terms, these issues would be addressed in terms of enablement under § 112.
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Chapter 21. Equitable Defenses to Patent Infringement 12 results (showing 5 best matches)
- opinion offers two principal lessons. The first is that a patentee may limit the use of patented articles and may obtain a remedy through the patent laws if others disobey that restriction. Restraints on the repair or modification of patented equipment will be struck down only if they violate some other positive law, in particular the antitrust laws. The second is that the Federal Circuit will find misuse only when the Supreme Court has specifically declared a commercial arrangement as such, or when the conduct is demonstrably anticompetitive.
- The court adhered to settled law that the effect of a laches defense is to bar relief on a patentee’s claim only with respect to damages accumulated prior to the filing of suit. Equitable relief and claims for future damages may still be awarded in favor of the patentee even in cases where laches was successfully proven.
- The case law more clearly explains that a shop right endures through the duration of the patent.
- the U.S. patent law includes a number of other defenses that may ultimately bar the patentee from relief in an infringement action. Chief among them are laches, estoppel, shop rights and misuse. These doctrines relate not to the validity of a patent but to its enforceability against another. If successfully invoked, they essentially provide the defendant with license to practice the patented technology.
- Although hardly unique to the patent law, the equitable defenses of laches and estoppel have recently been of considerable importance in this discipline. In an era where patent litigation has become an increasingly lucrative endeavor, patentees have demonstrated a renewed willingness to review their portfolios in order to consider whether any claims are being infringed. Sometimes this effort results in the “dusting off” of patents that are near expiration or have in fact expired, with litigation commenced regarding infringements that began years before. A review of laches and estoppel cases in the patent context therefore seems well worthwhile.
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Chapter 12. Copyright in the International Perspective 8 results (showing 5 best matches)
- The international dimension of copyright has never been so important. Movies, music, software and other works authored by U.S. citizens enjoy popularity around the world. In the era of the Internet, these works may be copied and distributed globally in a matter of moments. Yet, although copyrighted works observe few boundaries, copyright law itself remains strictly territorial. Each nation’s copyright laws extend only as far as its own borders.
- Congress adopted a minimalist approach with the BCIA. Only changes deemed absolutely necessary to ensure Berne compliance were introduced into U.S. law. The most significant of these changes, discussed earlier in this book, in Chapter 3, concerned statutory formalities. Once an obligatory feature of U.S. copyright law, the formalities of notice, deposit and registration have been reduced to recommended but ultimately voluntary options.
- Although no true global copyright system exists, the copyright regimes of the United States and its trading partners are linked through a handful of international agreements. These agreements do not create a universal copyright law, in that they do not provide for a single source of rights effective worldwide. Yet they allow authors to claim a national copyright almost anywhere in the world. This Chapter discusses the most significant of the agreements that, together, comprise the international copyright system.
- Article 5(2) of the Berne Convention requires that, for works outside their country of origin, copyright protection be afforded without formalities. The term “formalities” includes several traditional features of U.S. copyright law, including Copyright Office registration and the placement of notice on copies of the work. Article 5(2) abolishes these requirements for works outside of their country of origin. Although formalities can be imposed in the country in which the work originated, if a work originates from a Berne signatory state, that work must be protected automatically in all other Berne countries.
- The BCIA also declares the Berne Convention to be executory, rather than self-executing, under U.S. law.
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Chapter 23. Patent Law in International Perspective 10 results (showing 5 best matches)
- (Kluwer Law International, The Hague 1999), 646.
- If the international search report does not reveal any public domain knowledge that would defeat the patentability of the claimed invention, the applicant may wish to enter the second part of the PCT process, the so-called “national stage.” Here the applicant submits the PCT application to various national offices. At this time, patent examiners in each country examine the application based upon their own national laws, either allowing or rejecting the patent application.
- As of April 15, 2002, 163 nations had signed the Paris Convention. The World Intellectual Property Organization (WIPO), a specialized agency located in Geneva, Switzerland, administers this international agreement (and a number of subsequent instruments addressing intellectual property). The Paris Convention commits its signatories to the principle of national treatment, the principle of patent independence, and a system of international priority. Through the national treatment principle, Paris Convention signatories agree to treat foreign inventors no worse than domestic inventors in their patent laws, so long as these foreign inventors are nationals of a Paris Convention signatory state.
- Prior to the Paris Convention, many national laws applied a principle of patent dependence against foreign inventors. As a result, domestic patents would expire at the same time any foreign patent covering the same invention lapsed, regardless of the term the patentee was ordinarily due. These provisions sometimes worked a hardship against inventors who had obtained patent protection in many countries, only to discover that marketing the invention was feasible only in some subset of them. Such an inventor would prefer to let some patent rights lapse rather than incur expensive maintenance fees. In a world where patent rights depended on one another, however, allowing one patent to lapse would amount to a global forfeiture of patent rights.
- The Paris Convention was an advanced treaty at the time of its formation in the late nineteenth century. However, many observers believed that its shortcomings became more pronounced with the passage of time. Other than the minimal standard of national treatment, the Paris Convention does not provide substantive patent law standards for its signatories to adopt within their domestic patent systems.
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Chapter 17. Nonobviousness 8 results (showing 5 best matches)
- Patent Law Amendments of 1984, Pub. L. No. 98–622, § 104, 98 Stat. 3385.
- The correspondence of inventor surnames between the application and the prior art patents was not a coincidence. In fact, the PTO and CCPA cited the earlier work of Bass, Jenkins and Horvat against them. They did so by following the traditional patent law principle that each new combination of joint inventors constitutes a distinct inventive entity. This principle holds even where these combinations share individual inventors. For example, the joint inventors Bass, Jenkins and Horvat were considered a different inventive entity than the team of Bass and Horvat. Each group of natural persons essentially acquires its own legal identity; they, as a whole, constitute “the inventor” of that technology.
- While the ultimate question of patent validity is one of law, … [§ 103] lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved…. Such secondary considerations as commercial success, long felt but unresolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.
- As we leave the Trilogy, it should be noted again that they comprise central opinions within the modern patent law. At least, the Federal Circuit has lent them great significance. Arguably the Supreme Court did not comprehend the importance of the Trilogy because, in subsequent cases such as and
- The law does not require that an invention exhibit unexpected results to be patentable. But a finding that the invention does demonstrate superior and unexpected properties suggests nonobviousness.
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Chapter 15. Utility 5 results
- the notion of utility is a longstanding feature of United States patent law. In
- Under Justice Story’s view, the utility requirement does not provide a significant place for technology assessment. Outside of the most narrow limits, valuation of the invention is left to the market rather than to the mechanisms of the patent law.
- All that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word “useful”, therefore, is incorporated
- Patent applicants need only supply a single, operable use of the invention that is credible to persons of ordinary skill in the art. Although the utility requirement is readily met in most fields, it presents a more significant obstacle to patentability in the disciplines of chemistry and biotechnology. In these fields, inventors sometimes synthesize compounds without a precise knowledge of how they may be used to achieve a practical working result. When patent applications are filed claiming such compounds, they may be rejected as lacking utility within the meaning of the patent law.
- Both the patent bar and the scientific community await judicial resolution of the legal protectability of these crucial technologies, a decision that will undoubtedly compel a further unpacking of the precise scope of the patent law’s utility requirement.
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- Publication Date: May 1st, 2003
- ISBN: 9780314065995
- Subject: Intellectual Property
- Series: Hornbooks
- Type: Hornbook Treatises
- Description: This work provides a comprehensive treatment of all three major branches of intellectual property law, surveying basic principles and emerging issues. The book summarizes what is clear, identifies what is unsettled, and offers concise views on how some open issues might be sensibly resolved. This text also deals with a variety of related intellectual property topics, including state laws governing the misappropriation of intangibles, state protection for the right of publicity and for trade secrets, and both federal and state rules concerning false advertising and deceptive trade practices. The authors use numerous examples to guide you through various technical areas.