I. POLICY

  1. Unique nature of IP
  2. Passing doesn’t diminish quality of original (Jefferson)
  3. Can’t dispossess once obtained (Jefferson)
  4. Unlimited number of users
  5. Simultaneous use
  6. Need for protection
  7. Can’t protect rt in idea and still exploit for commercial gain (competitors will replicate)
  8. Incentive for creativity
  9. Risks of protecting
  10. Protecting rts in ideas withholds free flow of ideas into the public domain
  11. Stifle progress
  12. Public harm (goods too expensive, unattainable, not enough, etc.)
  13. Balancing of interests
  14. Interests of the public
  15. Progress of ideas/inventions
  16. Prevent monopolies
  17. Exploitation of a good idea
  18. Manifested in—short patent terms, finite © terms, disclosure requirements, fair use, ban on ©ing facts, right to “cover” songs
  19. Interest of inventor
  20. Incentive to invent
  21. Reward for innovation
  22. Manifested in—exclusive rights, protection of expression/creativity

II. STATE LAW PROTECTIONS

  1. UNDEVELOPED IDEAS
  2. Recover for:
  3. Novel—Nadel factors:
  4. Specificity—generic vs. specific application
  5. Commonality—how many people know about it
  6. Uniqueness—difference from known ideas
  7. Commercial availability—use in industry
  8. Different theories:
  9. Contract—must be novel to buyer (Masline)
  10. Selling ad space on RR was not novel enough for consideration (Masline)
  11. Reinforcing springs on lower side of car generally known (Lueddecke)
  12. Imputed knowledge for ideas that are so widely known (Nadel)
  13. Misappropriation—must be novel in absolute (Nadel)
  14. Selling ad space was widely known—no protection (Masline)
  15. Concrete—must be useful (Richter)
  16. “Over prescribing” theory of Elvis’s death was too vague (Sellers)
  17. Moving parts to find better balance not specific enough (Lueddecke)
  18. Used
  19. Withholding of cortisone theory of Elvis’s death would have been novel and concrete, but it wasn’t used in report (Sellers)
  20. Evidence that prototype was kept and out on desk suggests use (Nadel)
  21. Theories of Recovery
  22. Express K—enforceable if specifically agree to pay despite non-novelty of idea
  23. K terms for recovery
  24. Implied K (Lueddecke)—confidential relationship usually needed; inferences:
  25. Idea disclosed in confidence
  26. Originator doesn’t intend to divest her rights
  27. Acceptance of idea = agreement to compensate
  28. Damages for reasonable value
  29. Quasi K—compensation for unjust enrichment (disfavored)
  30. Property/misappropriation—disfavored b/c enforceable against the world
  31. Limitations
  32. Fed patent law doesn’t preempt K for license/royalties (Aronson—SCOTUS)
  33. Explicitly negotiated for no-patent contingency
  34. Not extending the monopoly beyond life of patent, only royalties
  35. Can’t use leverage of patent to K beyond life of patent (Brulotte)
  1. UNFAIR COMPETITION
  2. Passing Off
  3. First use
  4. Subsequent use by competitor
  5. Confuses or is likely to confuse (no chance of confusion = no infringement; nondeceptive references ok)
  6. Use of distinctive mark
  7. Descriptive name not distinctive (“coco-quinine” Warner v. Eli Lily)
  8. Express passing off—selling one product as substitute for another
  9. Quin-coco can’t be sold as coco-quinine w/out informing customer, even though formula can be the same (Warner)
  10. OR Likely to confuse as to source, sponsorship, association
  11. Secondary meaning—Generic words become distinctive
  12. Indicate source, not product
  13. Reverse confusion—first user in small market against subsequent national manufacturer, even though customers wanted 2nd, not first
  14. Big O Tire—customers came asking for Goodyear’s “bigfoot”—Big O had claim as first user
  15. No directly competing product—confusion over sponsorship/association (POLO confusion over association of magazine to Polo brand = actionable confusion)
  16. Expansion—extend to “natural” zone of expansion
  17. Sometimes limited to bad faith use b/c of speculative nature
  18. Preexisting use in new market—turns on public perception of mark and market fairness, not absolute first use
  19. Sample v. Porrath—preexisting user showed 2ndary meaning in market, but ct found no confusion for using similar names = both got rt to use “Sample”
  20. Remedies
  21. Injunctions—depending on type of infringement (clearer label, stop selling, etc.)
  22. Damages—lost profits or unjust enrichment if willful or fraudulent
  23. Policy
  24. Stealing the plaintiff’s sales (one competitor = recovery (Warner); many = maybe only confused consumer can sue (American Washboard))
  25. Harming plaintiff’s reputation
  26. Deceiving the consumer about source of goods
  27. Harms the marketplace
  28. Dilution
  29. Blurring—whittling away of selling power through unauthorized use on dissimilar products
  30. Tarnishment—use that diminishes mark’s positive associations
  31. Factors to consider:
  32. Similarityof marks
  33. Distinctive mark
  34. Strength of mark OR secondary meaning (selling power)
  35. “Lexis” not distinctive enough in general market, only to lawyers (Mead)
  36. Marks should look/sound the same (Mead—Lexis and Lexus not similar enough)
  37. Similarity of the products
  38. Sophistication of consumers
  39. Car buyers sophisticated enough to tell between Lexus and Lexis (Mead)
  40. Predatory intent
  41. Renown of sr. mark
  42. Renown of jr. mark
  43. No actual confusion needed
  44. Misappropriation—making profit off another’s production expense
  45. Interference at moment of profit
  46. INS v. AP—can’t copy un©ed news stories and sell them as your own, displaces market for producer’s goods
  47. Protection of production expenditure
  48. INS—AP had to incur all expenses
  49. CBT v. Dow Jones—Dow Jones incurred expense of creating stock indexes
  50. Incentivize innovation
  51. CBT—ct. wanted CBT to create their own index, not just take Dow Jones’
  52. Consider degree of appropriation
  53. Number of times taken (INS took over and over again; Aronson only took once; CBT took once in a while but still infringement)
  54. Amount of production expense avoided
  55. Diminished incentive for future production
  56. Limitations on unfair competition
  57. Rights in personal name not absolutely protected if:
  58. Consumer confusion is likely (Findlay)
  59. Name rights sold with business (Levitt)
  60. BUT NOT if used simply for identification of person, not producer (Edison)
  61. Federal Patent/© Law Preemption
  62. Can’t recover for copying if not patented/©ed (Sears/Compco)
  63. Compco—invalid design patent and no mechanical patent = copy-able
  64. Sears—no design or mechanical patent = copy-able
  65. States can protect against:
  66. Copying of non-functional elements with 2ndary meaning (Crescent Tool)
  67. Functional = essential to use of article or affects cost or quality (e.g., chocolate in Coco-Quinine)
  68. Deceptive labeling (Compco)
  69. Contract breach (Aronson)
  70. Misappropriation
  1. TRADE SECRETS
  2. Definition
  3. Restatement—process or device for continuous use in the operation of a business
  4. Uniform Act—also protects one-time things (e.g., secret bid) and negative know-how
  5. Elements (Metallurgical)
  6. Must be a secret that provides a competitive advantage
  7. Not generally known in industry (e.g., customer lists, method of bookkeeping, etc.)
  8. Subjective belief in existence of secret
  9. Novelty to industry
  10. Not generally ascertainable in indust (if D could have gotten it in public sphere, not liab)
  11. Look at value to holder and cost to develop
  12. Metal.—high cost to develop process created better furnace
  13. Reasonable precautions to protect the secret
  14. Disclosed in confidence/to further econ interest will not destroy the secret
  15. E.g., nondisclosure agreements to put emp’ees on notice, protect secret from non-essential emp’ees, cover windows
  16. Metal.—only disclosed in effort to K for new furnace w/ modifications
  17. duPont—still building plant so roof wasn’t complete, but still protected
  18. Liability—protected as long as it remains a secret (lost litigation discloses secret)
  19. Direct: disclose or use without privilege if:
  20. Obtained by improper means OR
  21. duPont—obtained secrets by aerial photographs over plant
  22. Going through trash—improper
  23. Reverse engineering—NOT improper (Chicago Lock—serial numbers obtained from picking locks not improper to publish)
  24. Showing up at trade show—not improper
  25. FOIA—exemption against disclosure of trade secrets
  26. Disclosure by breach of confidentiality
  27. Metal.—former employees gave secret
  28. 3rd Party purchaser liable if:
  29. Knew or should have known of breach of secrecy
  30. Used in commerce
  31. Metal.—3P purchaser hadn’t used b/c scraps not available
  32. Remedy
  33. Damages
  34. Lost profits OR
  35. Unjust enrichment
  36. P burden to show profits
  37. D burden to show associated costs
  38. AND actual loss (not otherwise accounted for)
  39. If nothing else: “reasonable royalty”—factors: (Metal.)
  40. Resulting foreseeable changes in competitive posture
  41. Prices past purchaser or licensees have paid
  42. Value of secret to plaintiff—including development cost & importance to business
  43. Nature and extent of use intended by defendant
  44. Any other unique factors
  45. Willful and malicious—double damages + attny’s fees
  46. Injunction—if no amount for damages can be determined w/out pure speculation
  47. Limitations
  48. Confidentiality Agreements/Trade Secret Injunction (PepsiCo.)
  49. Balance:
  50. Business needs to protect information
  51. Individual need to earn a living—individual usually wins (Wexler v. Greenberg)
  52. Must show
  53. Trade Secret AND
  54. Operating plan, pricing structure, selling & delivery sys. = TS (PepsiCo.)
  55. Actual or Threat of misappropriation—high degree of probability of inevitable andimmediate use (Teradyne)
  56. Taking similar job w/ competitor not enough of threat (AMP)
  57. High level CEO with actual knowledge (rather than just generalized skill) that could be used to predict moves for competitor, signed confidentiality agreement, and acted in bad faith found threat of misapprop—enjoined from starting immediate employment (PepsiCo.)
  58. Non-Competes (Reed, Roberts)
  59. Show that employee is in a position to use the trade secret (lower standard)
  60. Enforced to the extent that they are (Reed Roberts):
  61. Reasonable in time & area (e.g., selling business = reasonable not to compete)
  62. Necessary to protect employer’s legitimate interest
  63. Protect trade secrets, confidential customer info, etc.
  64. May not protect against public info (Reed Roberts—no injunct b/c he solicited off publicly available lists, not customer lists)
  65. Not harmful to public
  66. Not unduly burdensome to employees
  67. Shop Rights—all inventions made during employment belong to employee—Except:
  68. Employee specifically hired to engage in research and development OR
  69. Invention made during work hours, using employer’s equipment or materials
  70. NO Federal Patent Preemption (Kewanee Oil)
  71. Differences between Patent and Trade Secret Protection
  72. Patent—novelty, disclosure for public good, prevents independent creation
  73. TS—only minimal novelty, secrecy for R&D and efficiency in business, prevents disclosure and use
  74. TS serves (or doesn’t undermine) policy behind patents:
  75. Patent—what’s in public must stay there; TS—never in public
  76. Patent—value in promoting disclosure; TS—doesn’t defeat b/c:
  77. TS not patentable—TS incentivizes invention beyond patent protections, prevents hoarding knowledge, won’t even apply for patent/disclose
  78. TS dubious patentability—benefits of patent will encourage application, denial of patent will delay otherwise advancing production, TS allows exploitation of discovery, fear of invalid patent
  79. TS Patentable—weaker protection for TS incentivizes patents, time pressures of invention requires immediate protection
  80. Congressional allowance = no preemption (Marshall, concur)
  81. Dissent (Douglas)
  82. Where no patent, should be in public domain (Sears & Compco)
  83. Allow action for breach of confidentiality K, not injunctions against disclosure
  84. TS on Patent Applications
  85. Can’t withhold facts necessary to public’s understanding of patent (Van Products)
  86. Patent applications held in confidence; doesn’t destroy secret until patent issued
  87. K for TS—Must pay royalties so long as used under K, even if TS becomes public (Warner-Lamberth)
  1. RIGHT OF PUBLICITY
  2. Elements (either statutory or CL, but only in about ½ of states)
  3. Use
  4. Simply ask whether it was used, not how (White) (but see 1A considerations)
  5. Ofidentity/name or likenessw/out consent
  6. Broadly read to “invokes image” or “identifies”
  7. Look at image/depiction in context & as a whole (White)
  8. “Here’s Johnny” identifies Carson even if not using name or likeness on portable toilets; but using “J. William Carson” prob not infring b/c no association (Carson)
  9. Samsung violated © in using robot that evoked image of Vanna White on Wheel of Fortune for VCR ad (White v. Samsung)
  10. Racecar easily connected to driver such that use = identifying driver (Motschenbacher)
  11. Image of black boxer in ring labeled “The Greatest” = identifying Ali (Ali v. Playgirl)
  12. Use of nickname “Crazylegs” = identifying football player in women’s razor ad (Hirsch)
  13. Tom Waits has rt to singing style used w/out permission on Doritos ad (Waits)
  14. Imitation of Bette Midler’s voice for Ford ad = liable (Midler)
  15. Look-alikes where giving impression that celeb was actually there (Onassis)
  16. Need consent of personality depicted, not person who “creates” the identity
  17. Carson owns rts, not Ed McMahon
  18. Actors may have rts to protect the images of the characters they play
  19. Cheers actors have rt to protect physical likenesses from being licensed to make animatronics robots of their characters (Wendt)
  20. Forcommercial gain
  21. Basically targets memorabilia
  22. Exceptions:
  23. News—in connection with news, public affairs or sports broadcast, political campaign (look at medium, not content—use in personal style section ok)
  24. CA—play, book, magazine, newspaper, musical composition, film, radio, or TV program, work of “political or newsworthy value,” “single original works of fine art” or an ad for the above works
  25. Parody—Kazinski dissent to en banc rehearing in White
  26. Non-Transformative (First Amendment threshold)
  27. To get 1A protection can’t be a literal depiction for commercial gain w/out significant creative expression (Comedy III)—can look at:
  28. Depiction must be raw material for creating work not sum & substance of work
  29. Economic value derives from creativity not merely from fame of celebrity
  30. Sketches of 3 Stooges sold as lithographs and t-shirts were not transformative enough to trigger 1A protection (Comedy III)
  31. Warhol would likely get protection
  32. BUT see—Kozinski dissent in White—celebrities are part of important social dialogue
  33. Preemption
  34. Copyright preempts right of publicity if three conditions met:
  35. Subject matter is fixed in tangible medium of expression
  36. Subject matter is copyrightable (rarely preempted b/c names and likenesses are ideas)
  37. State right is equivalent to one or more of rights in 106 of copyright act
  38. Kazinski dissent in White—playing a character is © element of show—should be governed by ©
  39. Samsung ad parodied a ©ed TV show, WoF board was identifying feature, could have been a “monkey in a wig” in front of the board (White)
  40. Vampira is free to dress in black and be morbid
  41. Cheers actors have rt to protect physical likenesses from being licensed to make animatronic robots of their characters (Wendt)
  42. Remedies
  43. Injunction freely given
  44. Reasonable royalty or market value
  45. AND unjust enrichment
  46. Exemplary damages for willful violations
  47. Policy
  48. Prevents unjust enrichment by the theft of good will
  49. Media can’t televise full human cannonball performance w/o consent (Zacchini)
  50. Using former backup singer to imitate Bette Midler for Ford ad = liable (Midler)
  51. Overprotection may threaten free creativity and public domain
  52. Kennedy dissent in Carson—publicity rt in mere associations doesn’t serve goals of publicity & removes ideas from the public domain, doesn’t req same notice, duration limitations as ©
  53. Kazinski dissent in White

III. TRADEMARKS

  1. What is a TM?
  2. Any word, name, symbol, device, or any combination thereof (§ 1127)
  3. Supplemental Register
  4. Broader definition for registration
  5. Provides protection in foreign countries
  6. Anything else that can be shown to have secondary meaning:
  7. Color (Qualitex—green/gold press pad)
  8. Fragrance (Clarke—scented yarn)
  9. Location on goods (Levi Strauss—placement of tag on jeans)
  10. Slogans (Lincoln Park Van Lines—“From Maine’s cool breeze to the Florida Keys” TM b/c suggestive, not descriptive)
  11. Shape of package (shape of Coca Cola bottle TMed)
  12. Product design (Wal-Mart)
  13. Unless merely functional (e)(5)—no protection for function (e.g., if “pink” is what works in pepto, no protection for color)
  14. Service Marks (§ 1053)—mark used to distinguish services and indicate source (§ 1127)
  15. Same req’s and limitations as TMs
  16. A&M—advertising service marks
  17. Must be sufficiently separate from subject of ads
  18. Used to identify advertising services, not subject of ads (e.g., letterhead)
  19. Trade Dress (e.g., Mexican festive eating atmosphere at Taco Cabana restaurants)
  20. Protected on showing of:
  21. Distinctive (Siegel thinks better test would be to ask whether its common place)
  22. Inherent
  23. Arbitrary (Camel), fanciful (Kodak), or suggestive (Tide)
  24. Product Design can’t be inherently distinctive—not intended to identify the source just to make more appealing—must show 2ndary (Wal-Mart)
  25. OR Secondary Meaning
  26. Non-functionality (§ 1125(a)(3))—burden on party seeking protection to prove
  27. Expired Utility Patent: is strong but not conclusive evidence of functionality (TrafFix)
  28. Non ©able, trade dress of greeting cards deemed non-functional (e.g. two-fold, poetry on 1st & 3rd pages, deckle edge, etc.) (Hartford House)
  29. No likelihood of confusion
  30. Titles—not ©able but protected against passing off if:
  31. Distinctive/Secondary meaning
  32. Likely to cause confusion
  33. Is it source identifying?
  34. Protected:
  35. Distinctive
  36. Suggestive term—not completely arbitrary, but only slightly related (e.g., “Happywork”)
  37. Arbitrary/Fanciful—can’t be anything other than source identifying (e.g., Xerox, Kodak)
  38. Secondary meaning (§ 1052(f))
  39. Not protected:
  40. Generic names—Describe the product itself, not the producer (e.g., desk, Thermos)
  41. Look at word’s primary significance to relevant public
  42. No longer motivation to purchase as in Monopoly
  43. EXCEPTION—original products explicitly protected by law b/c new products could easily become generic
  44. Deceptive names (§ 1052(a)) (e.g., Lovee Lamb for synthetic seat covers)
  45. Budge test:
  46. Misdescriptive of character, quality, function, composition, use
  47. Prospective purchasers likely to believe misdescription describes goods
  48. Likely to affect decision to purchase
  49. Too Similar to existing mark (§ 1052(d)) (e.g., Narkomed as compared with Narco Medical)
  50. N.A.D.—ct. allowed use b/c parties agreed to it, marks were different enough, and customers were sophisticated
  51. Scandalous/Disparaging (§ 1052(a)) (e.g., Redskins offensive to Native Americans (Harjo))
  52. Not registerable, but can prevent others from using it
  53. Assessed in relation to those implicated by mark, not general public
  54. Geographically deceptively misdescriptive (§1052(e)(3)) (e.g., Durango for chewing tobacco not from Durango, Mexico (Loew’s Theatres))
  55. Show secondary meaning for protection
  56. Descriptive terms (§ 1052(e)(1)) (e.g., “Custom-Blended” for gasoline (Sun Oil))
  57. Descriptive vs.