first assignment is for the coming week of 11 and 13 January

Course will have a mid term, paper and a final. 

know rawls approach to distrubittve and social justice for test - naturally strong or smart people dominants the rest. 

use her slides to see what is most important for tests. 

look at tables in pgs 31-33 in book - make cards for these each section - combine utility and design patent - then know key difference between utility and design patents.  especially remedies for violating the property rights.  

Provisional patent first and file ASAP - you are the first to file as the inventor - put in record that you were first. - 

research paper should be something of interest to me - identify an issue and write a paper - comparative analysis of how to approach between US and china way of IP protection, survey of Latham act across time and how trade secrets come along, two cases in subject matter by state and fed courts and how the approach differently - topics for the paper can be submitted in early Feb 2nd week or so.  abstract to submit then - she will comment on our idea and she will help fill it our and address appropriate questions around this topic.  

senator koons may come to class - 

• Know difference between UTSA and DTSA
• Three elements of trade secret: 1) not generally known and with economic value 2) reasonable precaution to keep secret, 3) defendant got materially wrongfully/misappropriation (no clear standard)
• 18USC 1833(b) is protection for wisleblowers to allow disclosure of trade secrets. 

One who holds a trade secret may reveal a limited amount of information without destroying the trade secret status - especially of there are CDAs and the info shared is to advance Plaintiff's interest.

Rules for Trade Secrets: 1) the subject matter must be a secret (but can also be generally known), 2)efforts must be made to keep the subject matter secret, 3) the law requires secrecy, but not necessarily absolute.

extent to info know, known by employees, steps to keep secret, value to business and competitor, money used to make the secret, the ease or difficulty re the info being duplicating by another.  the ability to reverse engineering generally means that there is not a trade secret

Initial position is everyone is behind veil of Ignorance where all are equal and have no idea about their future lives.  

Social and economic inequalities are just only if they produce compensating benefits for everyone - especially the least advantaged.  

A Just society would be run on just and fair principals where there is fair distribution of social goods (wealth, opportunities, privlidges, etc)

Egalitarian - to all the same

Meritocratic - to each according to their merit/talent

Socialist - from each according to their ability...

Libertarian - each is free to choose what they want to contribute to who they want to give it. 

Copyrights

Patents and Distant Cousin

Trademarks - from Lanham act (not specifically mentioned in constitution but enacted by broad power of congressional commerce clause) - state courts (not just fed) can hear some state and fed trademark cases

Trade Secrets

1. Trade Secret - freedom of contract, protection against unfair competition
2. Utility Patent - Limited monopoly to encourage production of utility work (process, machines) in exchange for immediate disclosure
3. Design Patent - Limited monopoly to encourage designs and creativity - includes 3D shapes that are not functional
4. Copyright - relatively long monopoly to encourage expressive works and promote publishing
5. Trademark - perpetual protection to increase quality of information in the work space

1. Trade secret - DTSA and UTSA (Defend Trade and Uniform (states) Trade Secrets Act)
2. Utility and Patent - federal Patent Act
3. Copyright - Fed copywright law and limited common law
4. Trademarks - Federal Lanham act and some common law for unfair competition

1. Trade Secret - fomula, pattern, program, device, method, technique, process
2. Utility Patent - Process, machine, composition of matter, plants, but no abstract idea, law of nature
3. Design Patent - surface ornamenation and 3D shapes
4. Works of authorship limited by idea/expression dichotomy - not for facts/research
5. Trademark - trademarks, service marks, etc. 

1. Trade Secret - Info not generally known - reasonable efforts to keep secret and has commercial value
2. Utility and Design Patent - Non obvious utility, original ornamentality
3. Copyright - original authorship fixable in tangible medium
4. Trademark - Distinctiveness, use in commerce or famous mark

Rockwell Graphic Systems, Inc. sued two former employees for misappropriation of trade secrets when they started working for a competitor, DEV Industries,  and used secret drawings.

Holders of trade secrets must take REASONABLE precautions to keep secrets confidential - do employees have easy access to secrets. 

Reverse engineering of a product does not constitute misappropriation of a trade secret; most cases reverse engineering of a patented invention will not be permitted.

Christopher took aerial photographs of a DuPont plant under construction to uncover trade secrets.

wrongful appropriation of trade secrets using sophisticated methods (plane) of industrial espionage not considered before, the protection is not total

novel process to make methanol, 

Cannot obtain knowledge of a trade secret without spending the time and money to discover it unless the holder does not take reasonable precautions to protect. Fence around construction site was sufficient to keep building plans secret

Don't need to have trespass or other illegal conduct or breach of confidentiality to misappropriate trade secrets - also fraudulent, phone tapping, and other espionage now allowed.  General means that fall below the general rules of morality in business is misappropriation  

Safeway Containers had disclosed its secret design to Dravo Corp. for them to appraise it, later alleging that the Defendant had unlawfully misappropriated the secret design.

A confidential relationship may be implied without an express promise of trust.  Def knew that info was disclosed for very limited purpose of evaluating purchase.  

1. Trade secret - protection against misappropriation, acquisition by improper means or unauthorized disc.
2. Utility Patent - Exclusive rights
3. Design Patent - exclusive rights
4. Copyright - rights against reproduction, adaptation, performance, display,
5. Trademark - exclusive rights in US, protection against dilution for famous marks

1. Trade Secret - Until information becomes public knowledge
2. Utility patent - 20 years from filing, with extensions up to 5 years  for drugs and med devices
3. Design patent - 15 years from grant of patent
4. Copyright - life of author +70 years, min of 95 years after publication or 120 years after creation
5. Trademark - perpetual, subject to abandonment

1. Trade secret - loss of protection (unless sub rosa)
2. Utility patent - right to patient lost if disclosure more that one year before filing

 Pg 90 - reverse engineering is permissible if info to reverse engineering if info to reverse engineer is in public domain

warner lambert vs RJR co - page 102 -Listerine trade secret no longer trade secret, trade secret cases are not like copyright cases - pag 103 3rd to last paragaph - parties are free to contract as they wish, 

Smith vs Darvo a confidential relationship may be implied without an express promise of trust. 

Edwards vs arthur anderson - cannot have anti business NDA - cannot restrict employment

pepsi vs redmon - noncompete 

Mickey Line vs Fischer - balancing test to determine if disclosure of trade secrets are inevitable; 1) level of competition between the two companies, 2) whether the employee has a similar position in the new company, 3) actions the the new employer has take to present the former employee....

Winston research vs 3M - next class - 

Parties are free to contract in any manner with respect to a secret formula or trade secret.

In 1881 Warner lambert acquired formulation for Listerine and agreed to pay Reynolds $20K xx.  Once the formula for Listerine was no longer a trade secret,  warner wanted to stop the payments.  Fed law determines duration of patent protection or copyright, but contract law has no statutory limit on the scope of trade secrets.  

Issue:    In litigation involving trade secrets, may a court enjoin the actual or threatened misappropriation of trade secrets?

Rule:    In litigation involving trade secrets, a court may enjoin the actual or threatened misappropriation of trade secrets.

(1) A particular embodiment of a general approach to solving a problem can be a trade secret.  (2) A court has discretion to enjoin disclosure of a trade secret for the period of time during which it would take a competitor to develop a competing product after the holder of the trade secret has disclosed it publicly, 

Federal patent law does not preempt state trade secret protection.

Kewanee Oil Co. brought a action seeking injunctive relief and damages for the misappropriation of trade secrets. The district court applied Ohio state law and granted a permanent injunction against the disclosure of twenty of the claimed forty trade secrets until such time as the trade secrets had been released to the public. The Court of Appeals for the Sixth Circuit reversed, holding that state trade secret protection was preempted by operation of the federal patent law.  The United States Supreme Court granted certiorari.

An invention that was known or used by others in this country before the patentee’s invention is not patentable.  Not novel.  

An invention that was known or used by others in this country before the patentee’s invention is not patentable. The lack of publication of Teplitz’s work did not keep the alleged infringer, National Lead (Defendant), from claiming prior use as a defense. The work was done openly and in the ordinary course of the activities of the employer, a large producing company in the oil industry, and therefore no further affirmative act was required to bring the work public’s attention at large. 

Independent discovery

Reverse engineering

Either can make a trade secret no longer a secret

• Information disclosed in patents
• Information disclosed in SEC filings
• Information disclosed in data books, websites, etc.
• Information observable on plant tours
• Information disclosed in speeches and articles

• Information of value disclosed or used in violation of an obligation of confidentiality
• Information of value disclosed or used by one who knows or ought to know it was derived from someone who violated an obligation of confidentiality
• Information of value acquired by improper means
• Information of value disclosed or used by one who knows or ought to know it was acquired by someone through improper means

Penalties for Trade Secret Misappropriation

Civil Liability - injunction, double damages, attny fees

Criminal statues -state and federal

Harm to reputation/customer relationships

• Have a gatekeeper - lawyer, QA group, etc. 
• Well-defined procedures for managing secrets
• Employee training by designated organization lead
• Automatic e-mail headers
• Guarding against overuse of practices and procedures put in place
• restricted distribution
• off-limits areas
• visitor access procedures
• disposal of sensitive materials
• firewall, passwords, access cards, digital watermarks
• preserving audit trails

(a) the person made an express promise of confidentiality prior to the disclosure of the trade secret; or (b) the trade secret was disclosed to the person under circumstances in which the relationship between the parties to the disclosure or the other facts surrounding the disclosure justify the conclusions that, at the time of the disclosure, (1) the person knew or had reason to know that the disclosure was intended to be in confidence, and (2) the other party to the disclosure was reasonable in inferring that the person consented to an obligation of confidentiality

• A confidential relationship may be implied without an express promise of trust. (smith dravo - shipping containers)
• The holder of a trade secret can sue another for obtaining knowledge of the trade secret without having spent the time or money to discover it on their own (areial photographs Nemours)
• Parties are free to contract however they choose with respect to a secret formula or trade secret (RJR paying for listerine even after trade secret reveald).

• A noncompetition agreement, even if it is narrowly drawn so as not completely bar a former employee from participating in his or her profession, trade, or business, violates a statute that prohibits the restraining of a former employee from practicing a profession, trade, or business, unless the agreement falls within an exception to the applicable statute.

Mickey’s Linen v. Fischer, 2017 WL 3970593 (N.D. Ill. Sept. 8, 2017), identified the following three-factor test:

The factors to determine whether disclosure of trade secrets is inevitable are: 1) the level of competition between the former employer and the new employer; 2) whether the employee’s position with the new employer is comparable to the position he held with the former employer; and 3) the actions the new employer has taken to prevent the former employee from using or disclosing trade secrets of the former employer

1. A particular embodiment of a general approach to solving a problem can be a trade secret.

2. A court has discretion to enjoin disclosure of a trade secret for the period of time during which it would take a competitor to develop a competing product after the holder of the trade secret has disclosed it publicly.

An invention that is already in the public domain is no longer patentable.

The Patent Office rejected an application for a patent because a dissertation on the same topic had already been published overseas. 

Hall tried to patent something that was described in his dissertation that was published in Germany 1 year prior to the patent application.  Fail.  

If an inventor gives or sells a device to another with no limitation or restriction, or injunction or secrecy, and it is used, that use is public and places the invention “in public use. EVEN IF DISCLOSING TO A SINGLE commercial PERSON'

Barnes invented stronger corset steels, gave them to Egbert in 1855 and again in 1858. Egbert put the corset bars in other corsets; Barnes explained how they were made and used.  Def argues that the steels were in public use.  

Exposure to public view is not and never has been the test of a public-use bar.  It is important to recognize that the idea of a public use can be found even if the invention is not observable by the public as consequences today could not be imagined when this case was decided  Now it is frequently applied to technological advancements in sophisticated machinery, etc., since the insides are seldom seen by anyone.

Synopsis of Rule of Law. Neither an inventor’s experimental use, nor anyone’s use under his direction, has ever been regarded as public use.

 Nicholson (Plaintiff) had obtained a patent for a process of creating a wooden pavement and claimed that the city of Elizabeth, N.J. (Defendant) had infringed his patent. Defendant claimed that Plaintiff’s alleged invention had been in public use, with his consent and allowance, for six years on an avenue in Boston prior to his application for a patent and argued that said use constituted an abandonment of the pretended invention. Nicholson (Plaintiff) countered that the pavement in Boston was 75 feet in length and constructed at his own expense to determine its durability, and therefore did not constitute abandonment by public use, the lower courts agree, and the United States Supreme Court granted certiorari.

102(a) - 

102(b) - anticipation - not previously described - rather rare to reject patent based on this issue  - patent opinion search avoids if there is a previous description/anticipation

In order to determine whether an invention is eligible for patent or is only an obvious improvement to a prior art requires a case-by-case analysis of the scope and content of the prior art, the differences between the prior art and the claims at issue, as well as the level of ordinary skill in the applicable art,

1952 patent act was first time to look at non obviousness

combination was eligible for patent when it produced an “old result in a cheaper and otherwise more advantageous way

requires novelty AND nonobviousness - reduces the number of patents that will be awarded and reduce the enforcement of multiple similar patents. 

To determine whether an invention is unpatentable, a court reviews the differences between the prior art and the claims at issue, the level of ordinary skill in the art at the time of invention, and the presence of any secondary considerations such as commercial success, long felt but unsolved needs, failure of others, etc., surrounding the origin of the subject matter sought to be patented.

Teleflex had patent for electronic sensor on foot pedal to control vehicle throttle; KSR did something similar, Teleflex sued for infringement; KSR claimed that teleflex claim 4 was obvious

whether the combination of art is obvious to a person with ordinary skill in the field at the time of invention, not whether it is obvious to the patentee

Combination of previously patented elements that are obvious to combine will not get a patent - this is what claim 4 by Teleflex had, and kSr did not infringe because it was obvious to a person with ordinary skill in the field. 

In the context of chemical inventions and discoveries, the utility requirement is satisfied only if the chemical process and product, in the form existing at the time of the patent application, confer a specific benefit upon society.

Manson went for patent on manufacturing of steriods, was denied by examiner and then by internal patent board and then reversed  by PTAB. PTAB revsersed saying the utility was in the process of making the steriod, and there is a link saying similar steroids were beneficial for tumors; courts rejected even after appeal because utility/usefulness cannot be based on similar chemical structure. - too limited view of utily to have "potential" utility.  Discussion of "useful" - does it mean the process produced the intended product, or does the product itself have to be useful.  Look at congress initial intent where Useful must be specific and must have a benefit to society, patent applications need to publicize and describe these benefits in order to get patent protection.  patent is not a hunting license - 

subsequent decisions indicate that utility must be specific, substantial and credible.  "biological activity" fails - in vitro or animal testing can suffice if it meets the utility of one skilled in the art

Four statutory categories - process, machine, manufacture or composition of matter

OR improvement thereof...

NOT for laws of nature, natural phenomena, or abstract ideas

patents can include applications of these ineligible concepts (natural law)

Invention must be useful in two respects: 1) substantial utility to sever a particular practical purpose and , 2) specific and substantial utility meaning serve a specific practical purpose. 

patent can be approved based on experimental situation - but limited for life sciences where laboratory promise may not have enough proven utility

outside of life sciences, patent application rejected only if there is absolute no "practical utility"

After March 16 2013, first to file (vs first to invent) with a grace period of 1 year for prior publication of invention 

102(a) cannot be previously published PUBLICALLY , in public use, on sale, or otherwise available to public prior to date of filing or otherwise described in a application for patent 

102 (b) 1 year exception if publication was made by the inventor or joint inventor

Must disclose every element of the patent claims or else it will not anticipate the application - not novel

Biggest issue -  the claimed invention as a whole would not have been obvious before the effective filing date of the claimed invention/subject matter as a whole  to a person having ordinary skill in the art to which the claimed invention pertains.

is the invention a big enough technical advance over the prior art - cannot be a trivial step forward in the art - don't try to use hindsight  or obvious to try

Does NOT need to disclose the entire prior art but can combine other ideas and previous patents to be nonobvious

nonobviousness - John Deere case and KSR cases - seminal cases cited all the time. - 

most of rejections are due to nonobviousness - 

102(a) - knowledge or use

102(b) patents or publications

102(c) patent applications that subsequently issue of published

102(f) 

102(g)

bench scientist 1 year of experience to 15 years of experience

Look at Education of inventor

Type of problem encountered in the art

prior art solutions to the problem

XXX

XXX

get more...

Cannot claim ownership of inventions or processes that he has not described and disclosed in the specification portion of his patent application - overly broad

1840 and 1848 morse patents telegraph machine, but one claim was any future invention that uses elecrtomag to print characters or letters at a distance.  Oriely then installed his own telegraph system in KY, was found to infringe on Morse patent. 

Oriely wins, specification requirements must show enablement of the invention, cannot patent future claims without showing the machine invented - overly broad claim was rejected.  

If the written description of a patent is so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.

Edison light patent used carbonized bamboo as conductor, Sawyer and Man obtained subsequent patent using "carbonized fibrous or textile material"(bamboo falls into this category) and used fibrous paper specifically. 

Sawyer and Man patent for "carbonized fibrous or textile material" was too broad and only disclosed paper carbonized material - would create a monopoly and deter progress of invention. 

A natural law or natural phenomena must be sufficiently added upon or transformed in order to make an idea, formula, mechanism, or test patentable.

Thiopurine metabolism is highly variable, creates toxicity or ineffective therapeutic levels - Prometheus created a test to determine if a thiopurine dose was too high or low, sold test to mayo.  mayo then created their own test using a different level of thiopurine, sued by Prometheus.  Mayo filed for sum judgement because level of thiopurine is a natural phenomenon that cant be patented - 

An individual may utilize a natural process in completing a scientific discovery and may state so in filing a patent application. But the natural phenomena or process must be applied to the final thing to be patented and may not be “the” thing to be patented. 

Prometheus’ two patent applications describe the correlations between administering a thiopurine compound to an individual and determining how a particular dosage could be too low or too high. Although the processes are not themselves natural laws, they are not sufficient to transform a natural process into a patentable process.

new patent cannot just change the material - two different doorknobs - one with wood vs poreceline

Where the only distinguishing feature between the prior art and a claimed invention is the substitution of one known material for another in a part of the claimed invention, the patent is invalid.

• 101 - inventions patentable
• 102 - 
• 103 - 
• 112(b) - 

Utility patent must be enabled

Enablement is the reduction of the invention to practice - showing that your concept actually works - 

The absence of even one element of a patent’s claim from the accused product means there can be no finding of literal infringement

Amron had patent on watergun where water was stored in gun housing, larami produced super soaker guns with a patent for external removable water chamber.  lboth sue each other for infrigement, larami filed for partial sum judgement against amron infrigement action.  Court granted partial sum judgement against amron as there is at least on element in amrons' patent that is not found in supersoaker (tank difference).  This ONE ELEMENT is enough to determine no infrigement by supersoaker. 

If a device performs substantially the same function in substantially the same manner to achieve the same result as that of a patented invention, the similar device may be found to infringe the patent under the doctrine of equivalents.

Linde had a flux welding material composing of calcium and metal silicate, Uniomelt had similar flux made of calcium and magnesium.  Linde sues graver for infringement, both do the same thing with similar results, and that magnesium could be considered and metal silicate - supported by prior art saying magnesium and metal silicates are interchangable.  .  

To be liable for actively inducing infringement of a patent, the party must know that the induced act constitutes patent infringement.

SEB has patent for cool touch deep fryer, Sunbeam hires global tech to build a deep fryer.  Global tech, in hong kong buys a SEB fryer and uses it to design the fryer for sunbeam,  SEB fryer does not have patent markings in HongKong.  Global tech attny did patent search but was not told that the design was copied from SEB.  

Willful ignorance is not OK, must have confirmed knowledge of patent infringement.  In this case, Global tech purposely tried to avoid knowledge, and that is NOT acceptable.  

The very limited experimental use defense to patent infringement only applies to acts taken for amusement, to satisfy idle curiosity, or strictly for philosophical inquiry and not applicable when the act is intended to further the infringer’s legitimate business interests, regardless of whether the entity is for-profit or non-profit.

Mdey worked for duke, got laser patents for 10+ years.  Duke wanted to use his lasers for research outside of gov funding, Madey resigns, duke continues to use lasers, Madey sues for infringement.  Distric court gave sum judgement to Duke saying experimental use is not infringement, Madey appeals.  

Appeals court rules for Madey, saying Duke is doing more than just experimental uses.  

112 indefiniteness claim dispute between GI and Cugai - 

Holding that the term "at least about" specific activity of 160K was indefinite because the patent provided no guidance as to where the line should be drawn between the numerical value (previous value in patent application was about 120K) of the prior art cited in the prosecution history and the close numerical value in the patent

"Best mode" for making invention is no longer a requirement for new patent applications - best mode to make invention may change in future. 

_{Final will have only 6 key cases that we will need to do}

Limited trade secrets on the final

final will focused on second half of the class after mid march - copyright law, design patent, etc. 

Rubric for patent application:

Indirect vs Direct infringement - doctrine of equivalents - doctrine when device performs substantial same manner in same way for the same results is equivalence - does not need to match every claim - show the presence of every element or substantial equivalence is required.  

know the London vs Carson Pirie case

know difference between comprising of (Broad claim and broad protection - add elements would still infringe comprising claim language), consisting of(closed, used more often and narrow claim), and consisting essentialy of (intermediate - depends on what is being added as elements and one ordinary skill in art results in material change to patent)- what this means for claim language in patents. 

Graver case re equivalents will be on final.  

Best Mode

Indefineatness

A design infringes on a design patent only if an ordinary observer of the designs would find substantial similarities, such that the observer would be induced to buy one thinking it were the other.

Egyptian patent for nail buffer was hollow rectangular tube with buffing surfaces on three sides; Siwsa made one with four buffing surfaces. 

Sum judgement given to Swisa as EGI did not pass the ordinary observer test and the point of novelty test  - ONLY THE ORDINARY OBSERVER TEST IS NEEDED

LA Gear made popular high tops for women in late 1980s - Hot shots brand - THom McAn copied and had balloon trademark in same place, same color scheme

THom tried to say that the design was functional/utilitatiran purpose and therefore not valid under a design patent - but.  elements of design can also serve utilitarian purpose, but when the ornamental design is the basis of the design patent, it is a design patent. 

Thom loses, did not invalidate the LA gear design patent.  

1. Novel- cannot be exactly the same design
2. Original
3. Ornamental - not primarily functional (lip on soap receptacle was functional, not design.  
4. Nonobvious - to ordinary (not expert) designer - look for basically the same design

The visual characteristics or aspects displayed by the object

• Protection for the life of the author plus 70 years
• Work for hire vs 
• Substantial similar to original is sufficient to show - take away scenes a faire and historic fact and similar to look at remainder of creative context
• Extrinsic test - objective comparison of specific expressive elements - gets to court
• Intrinsic - subjective - ordinary reasonable person would see the overall concept and feel - factfinder
• Contributory infringement - requires 1) direct infrigement by a 3rd prty, knowledge by D of infrigement, 3) material contribution to the infrigement by D. 
• Vicarious infrigement elements - 1) direct infrigement, 2) direct financial benefit to D, 3) the right and ability to stop of limit the infrigement (intent is not a required element)
• Fair use doctrine elements - criticism, teaching, comment, news, parody - elements to consider
  • _{1) the purpose of use (for teaching better than commercial), 2) nature of copyright work (not major factor), 3) the amount copied as a whole, 4) the effect of the use on the value of the copyrighted work.  WAS WORK TRANSFORMATIVE based on all these elements.}
• _{Derivative copyrighted works -} 
• _{Damages for copy infringement -} 
• _{Process - 1) create, 2) file, 3)copyright office acts, then 4) sue}
• _{MGM vs Grokster - 2005 - inducement of infrigement is contributionaly liable for infringement because you provided the medium to distribute the copy works.}  
• _{Digital Millennium Copy Act of 1988 - protects ISPs from contributory infrigement liabity if they, 1) have a policy to terminate accounts of repeat infrigers, 2) informs users of the policy and 3) accomodate and not interrer with standard tech measures used by copy holders to protect thier works.}  

• To be granted copyright protection, works must be original, meaning that they entail some minimal degree of creativity. Phone book addresses is not copyrightable. 
• A computer menu command hierarchy (menu of operations for cut and paste) is not copyrightable because it is a method of operation. Similar to VCR buttons to play, pause fast forward.  Computer programming is copyrightable, but not menu of operations. 
• A design feature of a useful article is copyrightable if it is (1) identifiable separately from the useful article and (2) protectable as artwork either standing alone or in another medium. Cheerleader outfits are copyrightable because they 
• Generalized abstractions in a work are not copyrightable. - abbies irish rose play vs similar play not copyrightable. 

Both are specialty tax services - cost segregation and IRS and energy studies - accelerated depreciation for tax  - ETS negotiated to acquire Scarpello but no agreement reached.  Scarpello used "engineered tax services" as a google ad campaign where Scarpello would come to the top of the search when engineered tax services was put in search.  

Trademark law - must look at term holistically and found that "engineered tax services" deserved protection as it was the name of a company and is therefore a suggestive mark (copyrightable) 0not just desriptive marks (not protected) - - 

KST used longhorn logo - they attended UT and were fans of UT football - UT asked them to stop using longhorn logo - trademark dilution

Factors for trademark infringement -1) type of mark, 2) similarity between marks, 3) similarity of products, 4) idently of retail outlets and purchases, 5) the identity of the advertising media used, 6) defendants intent, 7) any evidence of actual confusion. 

UT longhorn silhouette is not sufficiently famous to be trademark restrictive-not to the level of Buick or Kodak.  

2ndary meaning is not required for a trade-dress-infringement claim if trade dress is inherently distinctive.

2 Pesos opened restaurants with a motif very similar to Taco Cabana’s; TCabana sued for trade-dress infringe

Trade dress is protectable if it is not functional and is either inherently distinctive OR has acquired a secondary meaning. Trade dress is inherently distinctive if it is able to identify something as coming from a particular source, even if general public would NOT make the connection

Color, on its own, can be trademarked if it meets all other legal requirements of a trademark.

Qualitex used a distinct green-gold color on the dry cleaning press pads it sold to dry cleaners. Jacobson began selling pads of a similar color. 

Colors have the ability, similar to words or symbols, to acquire a secondary meaning in that they are able to come to identify a source of goods. Green-gold color serves no function other than this visual recognition.

A product’s design can be distinctive and protectable, only upon a showing of secondary meaning for trade dress infringement.  

Samara designed and sold children’s clothes. Wal-Mart contracted with a supplier to design a line of clothing based on copies of Samara's designs.  Walmart wins.

Trade dress traditionally referred to a product's packaging but can also include product design - but only if there is secondary meeting - canNOT be inherently distinctive

After the patent for a product feature has expired, there is a very strong presumption that the feature is functional and therefore not subject to trade dress protection.

MDI held utility patents - two springs to keep temporary road signs from blowing over; After the patents expired, TrafFix made signs using an identical device.  MDI said springs were trademark and sued for infringement. 

dual springs were functional and therefore never trademark protected - must show feature is NOT functional to then claim trademark infringement. 

an unregistered trademark is enforceable by the first user of the mark if the user puts the public on notice by making sufficient public sales with the mark on its product 0 even under limited and exploratory sales.

Loreal chose Zazu as the name for a hair coloring shampoo - was already registered with a Zazu Salon.  Loreal contacted Zazu to verify that Zazu did not sell products under the Zazu name, but they were developing hair color under the brand name of Zazu in a unregistered TM.  Zazu put Loreal on public notice.  Loreal therefore knew but still sold their color under Zazu name.  Zazu won.    

Trademark registration of a mark can be refused on the ground that the mark is primarily geographically misdescriptive only if the purchasing public would expect the associated product to have its origin in the geographic area referenced in the mark.

Nantucket was based in NC and made mens shirts with Nantucket on them.  They filed TM application for "Nantucket", was rejected because TM was misdecrsiptive due to geographic location difference.  Was overturned upon appeal, ok for NC to TM Nantucket name.  

An action to enjoin the infringement of an incontestable trade or service mark may not be defended solely on the grounds that the mark is merely descriptive.

Park N Fly had TM for Park N fly for 6 years, brought suit against Dollar PNF; Dollar defended on the ground that PNF was merely descriptive.  

owner must file an affidavit with the PTO stating that the mark has been registered and in continuous use for at least five years, Park N Fly wins.  

A mark shall be deemed to be in use when it is used or displayed in the sale/advertising of commercial services

 Likelihood of confusion, likelihood of dilution.  

Rescuecom had a federal trademark; Google suggested to competitors that they have keyword search for Rescuecom and have their company be at top of search list.  Rescuecom sued Google for TM infringement, 

Rescucom wins, Trademarks shall be deemed to be in use when it is used or displayed in the sale/advertising of commercial services

Both are boatmakers, AMF had name of Slickcraft (vs Sleekcraft). Sleekcraft sued for TM infrigement.  

A trademark owner must prove that an accused infringer’s unauthorized use is likely to confuse consumers. At the outset, it’s important to note that the Lanham Act doesn’t require actual confusion, only a likelihood of confusion.

A trademark owner must prove likely confusion by a preponderance of the evidence. In general, courts evaluate whether an appreciable number, not necessarily a majority, of ordinarily prudent purchasers are likely to be confused. 

Initial-interest confusion is a valid basis for a TM-infringement claim with internet searches and the Lanham Act.

Look at previous card. Multi TIme made military watches and owned TM for "MTM Special ops" and sold its watches under limited retailers and not thru Amazon.  If someone searched for MTM Special Ops on amazon, other watches would come up.  MTM sued for TM infringement, district court granted sum judge to Amazon because not likely to produce confusion with consumers.  MTM appealed. 

Yes. Under the Lanham Act, a plaintiff may bring a trademark infringement claim against a defendant for creating consumer confusion prior to the point of sale, even if the consumer confusion is resolved before the sale goes through.  

To state a trademark dilution claim, a plaintiff must show that it owns a famous and distinctive mark, that the defendant has commenced using a mark that is allegedly diluting the famous mark, that a similarity between the marks gives rise to an association between the marks, and that the association is likely to impair the distinctiveness or harm the reputation of the famous mark.

Haute diggity dog parodied famous luxury brands - Chewy Vuitton - Haute diggity wins - not similar enough for dilution. 

A plaintiff demonstrates a violation of the Anti-Cybersquatting Consumer Protection Act by showing that it had a distinctive or famous trademark, that the defendant’s domain name is identical or confusingly similar to the trademark, and that the defendant registered the domain name with a bad faith intent to profit.

However Use of a trademark in a domain name is nominative fair use if the mark is used merely to describe products being sold on the website.

In order to be liable for contributory infringement, a service provider must have more than a general knowledge (must know or should have know) that its service is being used to sell counterfeit goods.

Tiffany sues ebay for selling counterfeit tiffany jewelry for contributory infringement claim - ebay wins as they did not have actual knowledge that they were selling false tiffany jewelry.  

A federally registered trademark is considered abandoned if its use has been discontinued with intent not to resume.

Brooklyn Dodgers moved to LA Dodgers, did not use TM for Brooklyn Dodgers; In 1988, SNOD did a restaurant called Brooklyn Dodgers with exact same logo.  TM was determined as abandoned because not used in commercial purposed for 2 years = ABANDONED TM 

The owner of a trademark registered under the Lanham may not enjoin/stop another’s unauthorized use of the mark  in a geographically separate market where there is no likelihood of public confusion.

Dawn makes donut mix wholesale, hart food stores sold donuts in Rochester area with Dawn TM.  Hart did not know about Dawn TM, Dawn sued for infringement; 

Lanham Act eliminated the defenses of good faith and lack of knowledge. An owner only abandons a trademark if he or she stops using the mark anywhere in the nation

Where the commercial purpose of a dilutive use of a trademark is inextricably entwined with expressive speech elements protected by the First Amendment, such use falls within the noncommercial use exemption to the Federal Trademark Dilution Act.

Mattel made Barbie's, MCA/Aqua had song Barbie Girl, Mattel sues for TM infringement.  barred TM use must be commercial use in commerce to be dilutive.  MCA song was  noncommercial use, was parody, combined with expressive 1st amend speech issues; MCA wins, was not TM dilution.  

To obtain a preliminary injunction, must show that: (1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm if the preliminary injunction is not granted, (3) the balance of the equities favors the plaintiff, and (4) an injunction is in the public interest. A likelihood of irreparable harm cannot be just assumed 

Herb Reed was founding member of the platters - TM for platters was transferred to Florida Entertainment Mgmt.  Platters broke up, and Reed continued to perform under "the platters".  

A plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to an award of profits.

Romag made magnetic watch and purse fasteners for Fossil; some fossil bags had counterfeit snaps with Romag mark, Romag sues fossil for TM infringement.  Jury found Fossil did infringe, but was not willful.  Romag gets $7mil, Fossil appeals says not willful.  Fossil loses, no need to show willful infringement of Romag TM.  

A dollar-for-dollar expenditure for corrective advertising is unnecessary to dispel the effect of confusing and misleading advertising.

Big O made tires called Big O Big Foots.  Goodyear starts to sell BigFoot tires and spend $10mil in advertising GY Bigfoot tires.  Jury awards 2.8 million to Big O instead of the $10 million that GY spent.  No dollar for dollar required - Big O sells only in 28% of the country, and the 2.8 million is appropriate as a starting point - then reduce by 75% per FTC guidelines--> $678K damages.   

Kewanee Oil Co. v. Bicron Corp.

United States Supreme Court

416 U.S. 470 (1974)

State trade secret protection is not preempted by federal patent law. A state law will be preempted only if it “stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.” Trade secret protections under state law and patent protections under federal law may overlap, but they each play a different role

states should continue to be free to enact law in patent law

Nadel v. Play-by-Play Toys & Novelties, Inc.

United States Court of Appeals for the Second Circuit

208 F.3d 368 (2d Cir. 2000)

Contract-based claims in submission of idea cases require only a showing that the disclosed idea was novel to the buyer in order to find consideration--> compensation. 

Craig Nadel had idea for a monkey toy that spun around. Presented to  Play-By-Play; months later, Play-By-Play introduced “Tornado Taz,” similar to the monkey.  

Nadel’s idea was novel to Play-By-Play as of their meeting, and was a genuine issue of material fact Accordingly, summary judgment to Play be Play was inappropriate.

Midler v. Ford Motor Co.

United States Court of Appeals for the Ninth Circuit

849 F.2d 460 (9th Cir. 1988)

A party may not deliberately imitate the distinctive voice of a professional singer in order to sell a product.

Bette Midler sound alike song in a ford ad.  Sues for misappropriation. 

Not every imitation of a person’s voice will be actionable. But Midler has a very distinctive and famous voice and Ford imitated her voice without her permission. This constitutes an actionable misappropriation of Midler’s identity.

White v. Samsung Electronics America, Inc.

United States Court of Appeals for the Ninth Circuit

971 F.2d 1395 (9th Cir. 1992) - State rules are allowed for misappropriation and iP rights. 

The common-law right of publicity can protect a celebrity's identity from unauthorized commercial exploitation.

Samsung makes futuristic ad where a robot turns letters on a game show, did not reference Vanna directly, but was immediately identified as replacing Vanna.  Vanna sues, on CA state based law for right of publicity.  Wins.   

Enough evidence exists to reinstate Vannas claim that Samsung’s unauthorized use of her identity violated her common-law right of publicity.