Prof. Dreyfuss

Survey of Copyright Outline

Trademarks

1)Background IP Theory

  1. Patents and copyrights are public goods in that their possession is non-rivalrous, but trademarks remove existing material from public domain
  2. Copyright Clause (Article I, sec. 8, clause 8) grants Congress the power to “promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” (Covers copyrights and patents)
  3. Commerce Clause (Trademarks)
  4. Alternatives
  5. Federal funding grants (Ex. NIH) and Prizes (Ex. Nobel)
  6. Industry cooperation and sticky business practices
  7. Liability rule and Trade secrets
  8. Commissioning (Ex. textbooks)

2)Trademark Introduction (§§1051, 52-54, 56, 64-65, 1091, and 1127)

  1. Subject matter
  2. Words, symbols, packaging (trade dress) and product configuration
  3. Justifications
  4. Preventing consumer confusion, rewarding investment & creativity
  5. Types
  6. Trademark
  7. Service mark (Ex. Con Ed)
  8. Collective mark (Ex. Ladies Garment Works Union)
  9. Certification mark (Ex. Good Housekeeping Seal of Approval)
  10. Owner of the mark can’t sell or award discriminatorily
  11. Lanham Act of 1946
  12. Use
  13. Principle Register awards constructive notice, prioritization, and prima facie evidence of validity
  14. PTO→ TTAB→ CAFC; PTO→District→Regional Court
  15. No time limit, as long as mark is in use (good will buildup)
  16. Re-certification every 10 years & chance to explain nonuse
  17. Bona fide intent to use
  18. Within six months of Notice of Allowance, applicant must file a verified written Statement of Use (1988 Amendment)
  19. Registration in a foreign country
  20. Paris Convention (Universal filing date)
  21. Facilitates global marketing
  22. TRIPS and General Agreement on Tariffs, Trade (GATT)
  23. Minimum IP standards and MFN-status to members
  24. Madrid Agreement (Non-US)
  25. Problem is reduction to home-country registration
  26. Supplemental Register (alternative. – no constructive notice)
  27. Registration is denied, but capable of becoming distinctive

3)Requirements for Trademark Protection

  1. Physical Use
  2. Element of display and actual use in providing consumers a signal
  3. MicroStrategy“Intelligence Everywhere not used enough”
  4. Cognitive Use (Distinctiveness)
  5. Intrinsically capable of being understood as a signal rather than a description of the goods (i.e. Pepsi, not brown syrup drink)
  6. Requirements for Federal Registration
  7. No deceptive, immoral, scandalous or disparaging matter (§1052a)
  8. In re Old Glory Condom – “Confederate condoms okay”
  9. Only applies to future userThrifty Rent-A-Car v. Thrift Cars

4)Spectrum of Trademark Classification

  1. Generic/common descriptive–NEVER (ex. light beer limits referencing)
  2. Foreign words are translated into English to determine category
  3. Weiss Noodle Co – “Ha-Lush-Ka means egg noodles”
  4. If mark becomes generic, new efforts to educate public (Xerox)
  5. Merely descriptive
  6. Eligible if it acquire secondary meaning & not generic (Auto Page)
  7. Surveys, affidavits & dictionary used as evidence
  8. If the meaning of initials is known, treat just like descriptive words
  9. Heileman – “LA beer not generic, but descriptive”
  10. Colors and numbers eligible under §1127, but wary of depletion
  11. Qualitex Co. – “Green-gold cleaning pads-Yes”
  12. In re Dial-A-Mattress – “1-888-MATRESS-Yes”
  13. Functionality, even with secondary meaning is not eligible
  14. Suggestive
  15. Automatically eligible without proof of secondary meaning (Tide)
  16. Arbitrary (Coined)
  17. Same protection as a suggestive terms but is far enough removed from the good to not be attacked as being descriptive (Kodak)

5)Trade Dress

  1. May be protected under 43(a) of the Lanham Act, based on a finding of distinctiveness and non-functionality, w/o proof of secondary meaning.
  2. Taco Cabana, Inc – “Mexican restaurant decorations-Yes”
  3. TrafFix Devices – “Functional spring-stand-No”
  4. Descriptive trade dress requires secondary meaning (Samara Brothers)

6)Other Provisions

  1. Cancellation (§1064)
  2. Petition can be filed when anyone believes they’ll be damaged by a mark on the Principal Register (cheaper, quicker then adjudication)
  3. Incontestability (§1065)
  4. After 5 years of continuous use, marks cannot be cancelled on certain grounds, such as that it was confusingly similar
  5. May be used offensively in an infringement claim (Park N’ Fly)
  6. Standing (§1063)
  7. “Real interest” test for personal interest or potential injury

7)Trademark Infringement and Contributory Infringement (§1114, 21, 25)

  1. Passing Off for Federal Trademarks (§1114)
  2. Consumer Confusion for State and Federal Trademarks (§1125/§43)
  3. Dilution
  4. False endorsements, advertising and reversing passing off
  5. Cyber piracy
  6. Test for Consumer Confusion (From Polaroid v. Polarad)
  7. Strength of the mark
  8. Lois Sportswear v. Levi “Back-pocket stitching for Levi”
  9. Degree of similarity in the mark
  10. Court can look at placement, pronunciation, typeface etc.
  11. Proximity of the products, i.e. both jeans in Levi
  12. Bridging the gap, aka future entrance into infringer’s market
  13. Actual confusion
  14. Junior’s good faith use (McDental-No)
  15. Quality of respective goods, aka impact on reputation, confusion
  16. Consumer sophistication
  17. Test for Dilution under the Federal Trademark Dilution Act (FTDA)
  18. Under tarnishment or blurring, trademark owner must demonstrate actual dilution, not just a mere likelihood (V Secret Catalogue)
  19. Requirements of fame and “commercial uses in commerce”
  20. Remedy for dilution is an injunctionMattel “Barbie Girl”
  21. Test for False Advertising (competitors policing the market)
  22. Is the claim just puffery?
  23. If not, is the statement literally false? (Skin-So-Soft)
  24. If not, were consumers misled? (Can use surveys to demonstrate)
  25. Test for Contributory Infringement
  26. If a manufacturer or distributor intentionally induces another to infringe or supplies its product to a known infringer, they are liable
  27. Infringement on the Internet
  28. Evidence of extortion or false information can show bad faith
  29. Wal-Mart “Sucks distinguished enough-No infringement”
  30. ACPA addresses cyber-pirating of domain names

8)Interest in Public Access (§1057, 60, 64-65, 72, 1114-15, 25, 26-27)

  1. No likelihood of public confusion b/c there is no present likelihood that P will expand its market into D’s market area. Dawn Donut (§1057)
  2. If P did move in, it could get an injunction (overruling Rectanus)
  3. Under modern stream of commerce, this view is outdated
  4. Owner’s sale of its product exhausts the right to maintain control over who then resells the product and subsequent sells are not infringement
  5. Exception for unauthorized resale of a materially different product
  6. Davidoff & Cie “Cool Water fragrance re-sale with alterations”

  1. Defenses (§1052 and §1115b)
  2. Fraud
  3. Fair Use (Registration is notice, which limits a fair use defense)
  4. Nominative use (Identifying yourself and not endorsement)
  5. Product must be not readily identifiable w/o use of mark
  6. Only so much of the mark may be used as is reasonably necessary to identify the product or service
  7. Playboy Enterprises “Wallpaper not covered”
  8. Parody
  9. Need to be satirizing holder and not making a comment about something else L.L. Bean “Non-com Catalog”
  10. Abandonment
  11. Loss of distinctiveness: Protect through consistent message
  12. Non-use: Return to public domain (3 years for prima facie)
  13. Silverman “Amos n Andy intent to resume-Yes”
  14. Quality Inn “Mc is not generic”
  15. Term is used descriptively, not as a mark
  16. No ind. burden to negate likelihood of confusion KP Make
  17. Pre- or prior registration by the defendant
  18. Equitable defenses of laches, estoppel, and acquiescence

9)Remedies

  1. §1114 and §1116: Primary remedy is injunctive relief
  2. Generally, sellers/printers/publishers not liable for profits/damages
  3. §1117(a): Monetary relief including profits, damages, att. fees and costs
  4. No profits without evidence of willfulness George Basch (2nd Cir)
  5. Rule is not upheld in all circuits (Quaker Oats-7th)
  6. Every award is subject to equity principles
  7. Quaker Oats “Thirst-Aid: 10% profits too high”
  8. No monetary remedies if P did not provide the appropriate notice of registration, unless the D had actual notice of the registration
  9. Standards for P/D attorney fees not equal Very Minor Leagues
  10. Other factors are degree of certainty that D benefited, other available remedies, failure to do a trademark search, failure to take precautions to avoid confusion, plaintiff’s laches & unclean hands
  11. §1122: No Federal and state immunity
  12. No state liability for own products College Savings Bank v. FL
  13. §1124 bars importation of physically different foreign goods bearing a trademark identical to a valid US trademark, regardless of affiliation between the producing firms Lever “US & UK soap”
  14. §2323e: Criminal Penalties (rare in the US)
  15. ACPA: Statutory damages of $1,000-$100,000 per domain name

Copyright

1)Copyright Introduction (§104A, 401-412, 701-710)

  1. Authorized broadly under the Copyright Clause (Article 1, §8, Clause 8)
  2. Pre-1978 (1909 Copyright Act)
  3. Notice
  4. Perfecting the copyright (register and two copies to Lib. Of Cong.)
  5. Renewal (two 28 year terms)
  6. Manufactured in US (abolished in 1996)
  1. Post-1978 (1976 Copyright Act)
  2. No renewal obligation
  3. Registration and notice are recommended, but not required
  4. Regist. is a prereq for infringement for US works (§411)
  5. Regist. is a prereq for statutory damages (§412)
  6. Failure to deposit results in a fine (§407)
  7. Works covered (§102a)
  8. Literary works
  9. Musical works covering the words and the music
  10. Dramatic works, including any accompanying music
  11. Pantomimes and choreographic works
  12. Pictoral, graphic and sculptural
  13. Movies covering the sounds and the pictures
  14. Sound recordings
  15. Architectural works
  16. §102a
  17. Originality
  18. Compilation & derivative works require author contribution to be considered original (§103)[EU protects databases]
  19. Minimal degree of creativity Trade-Mark Cases
  20. Kregos “Other categories not protected”
  21. Facts are not original and may not be copyrighted (§102b)
  22. Feist “Phone book-No originality for alphabetical”
  23. Key Publications “Chinese-Am. phonebook-Yes”
  24. Variety of category selection = No merger of idea w’ expre
  25. Kregos “9 item pitching form is eligible”
  26. Blank space for information does not prevent protection
  27. “True artistic skill” to make a reproduction copyrightable
  28. Different medium (Alfred Bell, Alva Studios)
  29. Hearn v. Meyer “Oz reproduction-No”
  30. West Publishing Co “Star pagination-Yes”
  31. Time and effort do not equal protection
  32. Hearn v. Meyer “Oz reproduction-No
  33. Authorship
  34. Fixation
  35. Embodied in a copy that is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communication for period of more than transitory duration
  36. Test to Prove Infringement
  37. Ownership of a valid copyright,
  38. Copying of constituent elements of the work that are original.
  39. Alternatives to Copyright Protection
  40. Lead time/Contracts/Slipping privilege
  41. Copyright misuse/Antitrust injuries/Compulsory licenses
  42. International Stage
  43. Universal Copyright Convention
  44. Berne Convention
  45. Dual registration system (US vs. Others)
  46. TRIPS
  47. Restoration for foreign works with lapsed US requirements
  48. New Have Agreement
  49. WIP determines whether an international application meets all minimum requirement (15 years for int’l design)

2)Useful Articles and Characters (§102-104, 105, 113a-c, 120)

  1. No protections for any idea, procedure, process, method of operation, concept, principle, or discovery (functional matters) in such work (§102b)
  2. Useful articles intended as exception to pictorial works in (§102a)
  3. Baker v. Seldon “Book-yes/system-no, to keep in public domain”
  4. Tests for Useful Articles
  5. Degrees of Freedom: Can design elements be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, it is copyrightable. (Adopted in Brandir)
  6. Brandir “Form of bike rack heavily influenced by utility”
  7. Temporal Displacement: Can the person looking at it separate the utilitarian and non-utilitarian aspects? (Carol Barnhart)
  8. Physical severability test (Mazer v. Stein)
  9. Derivative works
  10. Copyright grantsexclusive right to prepare derivatives based upon the work, and infringer cannot suefor non-infringing aspects
  11. Anderson “Rocky IV script, passed substantial similarity”
  12. Characters are generally copyrightable, since they are distinctive
  13. Copyrightable if they constitute story being told Warner Brothers
  14. Story being told or character delineation test MGM “James Bond”
  15. Fanciful costumes will be registered only if they contain separable pictorial or sculptural authority, but garment designs will not be registered even if they contain ornamental features or are historic dress
  16. Architectural work (§102 & §120) covers the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawing
  17. If visible from public place, no preventing pictorial representation

3)Incentives: Ownership, Duration and Moral Rights

  1. Possible Copyright Owners
  2. Original author of the work, including joint authorship (§201a)
  3. Party to whom the work is licensed or transferred (§201d)
  4. Party who commissions the work or employs the author
  5. Work for hire doctrine, unless express agreement (§201b)
  6. Test for Joint Authorship
  7. Intent: Both participants intended for themselves to be co-authors.
  8. Childress “No intent for Childress w’ Mom Mabley play”
  9. Thomson “Rent-Inquiry is into factual indicia”
  10. Copyrightable: Both participants contributed to copyrightable work
  11. Test for Work for Hire (§101)
  12. Is the work prepared by an employee or an independent contractor?
  13. Factor for an independent contractor include: own studio, own supplies, short time period, employers business
  14. Reid “CCNV not in sculpture business-Independent
  15. Was work prepared by an employee within the scope employment?
  16. Was work specially ordered for use as a contribution to a collective work, part of a motion picture or other audiovisual work, translation, supplementary work, compilation, instructional text, test, answer material for a test or atlas, or an express agreement?
  17. Sculptures are not covered in this section Reid
  18. Test for Assignment of Derivative Work
  19. If the author dies before the commencement of the renewal period, then the assignee may continue to use the original work only if the author’s successor transfers the renewal rights to the assignee
  20. Stewart v. Abend “Hitchcock no Rear Window rights”
  21. Dastar “Origin of Goods-TV series on Ike book, in P.D.”
  22. Author can file a renewal registration prior to death, in which case renewal rights vests with him, not the statutory renewed successors
  23. Duration of Copyright Protection
  24. Life of the author plus 70 years (§302a)
  25. Sonny Bono CTEA: 20 year extension (Valid in Eldred)
  26. Joint works: 70 years after death of last surviving author (§302b)
  27. Works for hire: 95 years from first publish or 120 from creation
  28. Termination provision
  29. Opportunity to renegotiate original grant b/c value of is hard to determine at the beginning of their life
  30. Right of termination after at least 35 years (§203)
  31. Moral Rights (expire with death of author)
  32. Right of disclosure
  33. Creator is the only one with rights in an uncompleted work
  34. Right of attribution
  35. Prevents naming others creators and protects anonymity
  36. Right of integrity
  37. Prohibits alteration of creator’s work that destroys the spirit
  38. Visual Artists Rights Act (VARA)
  39. Only applies to painting, drawing, print, sculpture or still photo produced for exhibited purposes only existing in a single copy or a ltd edition of less than 200 copies signed, consecutively numbered
  40. Steinberg v. Columbia Pictures “New Yorker cover-No”
  41. Right of integrity includes right to prevent any intentional distortion of an author’s work of visual at that would be prejudicial
  42. No damages for passage of time or conversation efforts

4)Infringement

  1. Types of Copying
  2. Entire work is literally copied (easy case)
  3. Using scene or dialogue, ask whether part taken was “substantial”
  4. Copying the abstract/non-literal aspects of the work
  5. Nichols v. Universal-Plot/character differences for Abie’s”
  6. Tests for Copyright Infringement
  7. Substantial Similarity (Computer Ass. “No for scheduler”) 2nd Cir
  8. Abstraction: Dissect program and isolate each level of abstraction contained within it. (code to ultimate function)
  9. Filtration: What is and is not protectable material?
  10. Elements dictated by efficiency
  11. Elements dictated by external factors
  12. Elements taken from the public domain
  13. Comparison: Whether D copied aspects of protected work?
  14. Extrinsic/Extrinsic Test (Apple Comp.No-Windows interface 9th)
  15. Extrinsic/Objective Prong
  16. Separates protectable and non-protectable elements
  17. Can use expert testimony and analytic dissection
  18. Access can be shown through a chain of events between parties or wide dissemination of the work
  19. Intrinsic/Subjective Prong
  20. Is there similarity such that works are substitute?
  21. Perspective of intended observer or ordinary user
  22. 7thCir. Test (Stillman “Arrangement silent airline commercial”)
  23. Ownership of valid copyright, access, and substantial similarity btwn works when compared in their entirety
  24. Covers unlawful appropriation for protectable expression
  25. Differences between the tests
  26. Litigation cheaper in 9th Circuit test
  27. Expert does work at the beginning of 9th Circuit test
  28. Higher chance to jury to infuse public domain elements in 9th Cir.
  29. Subconscious Copying
  30. Access and virtual identity, even without intent, establish unconscious infringement
  31. Bright Tunes Music “Harrison’s My Sweet Lord-Infringes
  32. Aesthetic Similarity Test
  33. If works are aesthetically different, first is considered inspirational
  34. Interim Infringement (reverse engineering)
  35. Intermediate copying of a computer code can constitute copyright infringement, but when disassembly is the only means through which access to unprotected aspects can be had that its fair use
  36. Sega “Interface between console and games-okay”

5)Contributory Infringement

  1. Distributor of device w’ object of promoting its use to infringe copyright, shown by clear expression or other affirmative steps taken to foster infringement, is liable for the infringement by third parties.
  2. Evidence including supplying former customers, no filtering tools, failure to police, and revenue streams based on use or advertising
  3. MGM v. Grokster “Peer-to-Peer network-Liable”
  4. A&M Records v. Napster “Peer-to-Peer network-Liable”
  5. Exception for ClearPlay (filter), not CleanFlicks (edited copy) under the Family Entertainment and Copyright Act of 2005
  6. Tests
  7. P has to show almost exclusive use is to infringe. (Breyer)
  8. Maximum protection to technology people.
  9. Ginsberg wanted a test with more of a balance
  10. If substantial non-infringing uses than you do a cost-benefit analysis to determine whether use should be allowed (Posner)
  11. Sale of copying equipment does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes.
  12. Sony v. Universal-VCR sales not infringement on TV programs”
  13. Contrast w’ Inwood “Intent-based trademark infringement
  14. Online Service Providers Limitations (Title II of the DMCA)
  15. Transitory communication
  16. Ellison v. Robertson “AOL’s storage was transient”
  17. System caching
  18. Immediate action to remove infringing material upon discovery
  19. Providing users links to infringing material
  20. For all: No monetary relief and limited use of injunctions
  21. Leeway also given to libraries (§108) and to situations where free public use outweighs the copyright issue (§110)

6)Public Performance

  1. Copyright owner has exclusive to right to publicly perform work (§106(4))
  2. Publicly performed when it is captured, transmitted to satellite, or sound recordings digital transmission in DPR (Transmit Clause)
  3. Viewing booths violates (Public Place Clause) Red Horne
  4. Owner of a lawfully made copy can publicly display the copy without the copyright owner’s permission to viewers where copy is located (§109c)
  5. “Home-style” and TEACH exceptions expand right of individuals

7)Compulsory Licenses