 TRADEMARKS 

DEFINITION, §45: A trademark is a word, name, symbol, device, or any combination

thereof, that is used to distinguish the goods of one person from goods manufactured or
sold by others, and to indicate the source of the goods, even if the source is unknown.
-A mark can be practically anything, as long as its inherently distinctive or capable
of acquiring distinctiveness to the extent that it functions as a source identifier.
PRIMARY SIGNIFICANCE TEST: Source Identification is Key: What is the primary
significance of the mark to an ordinary member of the relevant consuming public? To be
distinctive primary significance to consumer must be the identification of a Specific
Source, not just a specific type of product.
FOUR CATEGORIES of MARKS: Differing Levels of DISTINCTIVENESS—
1) GENERIC: words that describe what it is; classes of goods like “book” -NO TM
PROTECTION
-Genericide: when words like Kleenex and Xerox become part of common vernacular
-Effect of Registration: If TM is registered there’s a strong presumption that the
term is not generic
-D has Burden of Proving that it is which they might do by the following:
Evidence of generic: (Horizon Mills)
(1) seller didn’t contest widespread use by competitors,
(2) seller uses the term in a generic way,
(3) dictionary definitions,
(4) media usage (general media, not trade publications),
(5) consumer survey (arguably most persuasive way).
2) DESCRIPTIVE: words that
1-literally describe product, how it is (light beer) or
2-describe the basic purpose or utility of the product (Excedrin pm)
Protected only if it acquires 2ndary meaning to the public linking the
product to a single source.
-Primarily Geographically Descriptive: primary significance of mark is that 1) it’s
a place generally known to the public, and 2) relevant, reasonable public would
believe the goods originate there 3) and they DO
-ALSO OK w/ 2ndary Meaning.
3) SUGGESTIVE: Protected, inherently distinctive Indirectly describes—requires
multistep mental process to make the connection. (e.g. Treetop, Greyhound, Coppertone)
4) FANCIFUL or ARBITRARY: Most Protected, inherently distinctive
-Fanciful: things that are wholly made up like Exxon, Kodak, Polaroid,
-Arbitrary: takes something real and associates it w/ something it doesn’t match,
i.e. Apple computer
SPECIFIC CATEGORIES of MARKS: Trade Dress, Product Design, Color
TRADE DRESS: CAN be inherently distinctive, does NOT require 2ndary meaning (Two
Pesos v. Taco Cabana)
-An Identifying mark is distinctive and protectable if it is
-Inherently distinctive OR
-Has acquired 2ndary meaning
-Eligibility also depends on non-functionality
-NOTE: Although trade dress CAN indicate source to consumer, in close cases courts
should err on side of caution and classify ambiguous trade dress as product design
and require 2ndary meaning. (WalMart)
Policy: Protecting an inherently distinctive trade dress from the beginning, w/o
waiting for secondary meaning to accrue is important for the originator’s business.
PRODUCT DESIGN: CANNOT be inherently distinctive, ALWAYS requires 2ndary meaning
(WalMart v. Samara Bros)

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 -Rationale: consumer is not predisposed to identify the design with the source b/c
design characteristics usually have other purposes besides source identification
(utility, aesthetic appeal)
COLOR: NOT inherently distinctive, CAN get protection if NOT FUNCTIONAL and has 2ndary
meaning (Qualitex)
NON-QUALIFYING MARKS: Functional, Misdescriptive, Geographically
Misdescriptive, Deceptive
FUNCTIONAL: A mark is functional and therefore not protectable if it is:
1) Essential to the purpose and utility of the product
And/or
2) Affects the cost or quality of the product to the extent that giving one person
control over it would prevent others from effectively entering or competing in the
market.
Utilitarian v. Aesthetic Functionality: If it has utilitarian functionality
that’s the end of the inquiry, worry about competitive necessity more for
aesthetic (pp 56-57).
Product Features: CANNOT receive Trade Dress Protection if it’s FUNCTIONAL (TrafFix
Devices v. Market Displays)
-An expired utility patent is strong evidence that the design is functional
-Person seeking trade dress protection has burden of showing the feature is NOT
functional
-The Lanham Act does not give trade dress protection to a functional design just
because the owner advertised so that the public would associate the design with the
source
POLICY: Allowing a functional feature to be TM’ed would be like giving a patent without
regard to whether the feature qualifies for a patent. Also, unlike patents, TMs are forever.

Deceptive, Misdescriptive, and Deceptively Misdescriptive Marks:

1-Deceptive: misdescribes (geographically or otherwise) in a way that materially
affects purchasing decision
-NEVER protected (Van Heusen—Supersilk)
2-Deceptively Misdescriptive: misdescribes something about the product,
consumers are likely to think it’s true, but doesn’t make a difference in whether or not
they buy it.
If primarily geographic, §2(e)(2): NOT protectable—Never Ok to
misrepresent origin of goods
If some other category: PROTECTABLE w/ 2ndary meaning.
3-Non-deceptively Misdescriptive, §2(f): misdescribes the product, but no one
would believe it was true, probably making it arbitrary and thus inherently distinctive
-PROTECTABLE w/o need for 2ndary meaning
-Ok for geographical if no one would believe goods originated there, e.g. North
Pole Bananas.
OTHER Non-Qualifying Marks: Offensive, scandalous, and disparaging §1052(a)(b)
(c)
1-Consider if mark is shocking to sense of truth, decency, or propriety, disgraceful or
offensive to the conscience or moral feelings.
2-HIGHLY SUBJECTIVE: Trademark Trial and Appeals board says resolve uncertainty in
favor of the applicant.
3-Consider proposed mark in the context of the marketplace as applied to the goods and
services described in the application.
-Disparaging: would a substantial composite of those referred to , identified, or implicated
in some recognizable manner by the mark view the mark as disparaging?

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Registration of a SURNAME §1052(a), (e)(4) protectable with 2ndary Meaning
-Primary Significance Test: if significant primarily only as a surname then NO TM.

Obtaining Rights By Using A Mark:

Nature and Extent of Use: Has there been ACTUAL USE, and WHEN did it start?
(Timeline useful here)
TM ownership rights flow from
1-prior appropriation &
2-actual use in the market.
a) Actual/Genuine use in the market may be established even if:
1-the first use is not extensive &
2-it does not result in:
-deep market penetration or
-widespread recognition.
(both of which , if present, strongly weigh in favor of
finding actual use)
b) Doesn’t matter if the market use is “good business,” word of
mouth/homegrown strategies count as long as:
1-They are sufficiently public (allowing inference of commercial use)
2-Represent a real attempt to gain business, and
3-They are consistent and continuous, even if not high in volume.
c) Abandonment of Marks: LA§45 describes 3 ways this can happen:
1-Non-use w/o intent to resume use, may be inferred from facts like nonuse for 3
consecutive years.
2-Genericide: the mark becomes generic
3-Uncontrolled/”Naked” Licensing: If a mark owner licenses another to use the
mark but doesn’t control the nature of use, licensees may depart from the mark
owner’s quality standards and the public may be misled b/c the TM won’t have the
same signaling effects that it originally did.
d)Token Use: Nominal Shipments of goods don’t count as sufficient use
for TM rights if it’s obviously done so no one else can use the mark.
Geographic Extent of Rights:
Injunctive Relief—over intermediate junior user?
1- P must prove that its prior use of the mark penetrated the geographic
market in question:
Market Penetration: Sweetarts Test:
1-$ value of sales at the time the other user entered the market.
2-Number of customers compared to population of state.
3-Relative and potential growth of sales.
4-Length of time since significant sales.
2-Present Likelihood of Confusion: nationwide rights conferred by
registration don’t entitle a TM owner to injunctive relief unless there’s a
present likelihood of confusion.
To enjoin a Geographically Remote user the Registered owner must prove:
1-Owner’s TM’d products and the infringing products are being sold in the same
geographic area
OR
2-Owner has concrete plans to expand into the infringer’s trade area.
Tea Rose/Rectanus Doctrine: the first user of a common law trademark may not
oust a later user’s good faith use of an infringing mark in a market where the first
user’s products or services are not sold.
Good faith Use: 1) lack of prior knowledge of the other’s use, 2) adoption of
mark w/o intent to reap benefits of other’s good will or, 3) to carry out a

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 purpose inimical to the interests of the other

INTERMEDIATE JUNIOR USERS: Potentially retain limited geographic rights

RULE: 15 U.S.C. §1115(b)(5)-if a junior user begins using a mark before the senior user
registered it, the junior user may have limited rights to the mark if:
1- the mark was adopted without knowledge of the registrant’s prior use and
2-the mark has been continuously used by the party.
3-This only applies to the area where the junior did business up until the senior user
registered the mark (the “zone of reputation”).
-The junior user must establish significant sales in the areas (Sweetarts
market penetration?) the mark has gained reputation(not de minimus, Think
Healthcom).
-Advertising alone can’t establish junior user’s TM rights in an area.
Junior User Trade Area: Once the trade area is established, the junior user can expand to
exploit the entire trade area, up to it’s boundaries.
-IF Junior user starts using after the Senior has already registered:
Dawn Donut: junior user can get geographically remote limited exclusive rights use as long
as there’s no likelihood of confusion BUT, jr. user’s rights subject to sr. user’s decision to
enter that market, so big risk for the jr. user. Plus internet now makes it hard to show that
geographical remoteness negates likelihood of confusion.

Infringement And Consumer Confusion

§32(1) Lanham Act, Infringement of Registered Marks; §43 (a)
STEP 1: Does the Mark qualify for protection?-VALIDITY of Mark
STEP 2: Does the P have exclusive rights to use the mark?
STEP 3: Is there a LIKELIHOOD of CONSUMER CONFUSION???
Direct Confusion RULE: POLAROID factors (Lever Bros. v. American
Bakeries)
1)Degree of similarity of the two marks
2)Strength of the mark:
source indicating capability of the mark, where is it on the spectrum in reference to
this particular good/service.
2)Proximity of the products:
.

4)Likelihood that the prior owner will bridge the gap

5)Actual confusion
6)D’s good faith
7)Quality of D’s product
8)Sophistication of buyers
1) SIMILARITY between the two Marks: are they substantially identical? (Counterfeit)
-Typically where we start in the process, weighted very heavily in the mind of the judge
RULE: Similarity of a registered mark & an applicant’s mark are determined by the DuPont
factors: (In re Coors Brewing Co.) Similar in:
1-appearance,
2-sound,
3-connotation, &
4-commercial expression of the two marks : typeface, packaging, colors
and if so, evaluate
5-similarity of the goods/ services
2) Strength of the mark: Focuses on the mark’s distinctiveness and tendency to

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identify the goods as coming from a particular source.
2 Factors Used to Measure Strength of Mark:
1-Distinctiveness of the Mark: Is it generic, descriptive, suggestive, arbitrary,
or fanciful
2- Recognition value: TO BE A TRADEMARK, A SYMBOL MUST CREATE A
SEPARATE AND DISTINCT COMMERCIAL IMPRESSION linking the
product to a SINGLE SOURCE. (Autumn Bread v. Margarine)
3) Competitive Proximity: Evaluate:
1-Nature of the goods: are the parties selling the same thing?
2-Channels of marketing: do they sell through the same media?
3-Market segments: do they target the same buyers?
4-Geographical trading area
5-Any other ways in which relevant products do or do not share a market of the 2
products

4) Likelihood prior user will bridge the gap (b/w the proximity of the 2 products)
-Look at senior user’s interest in preserving avenues of expansion and entering into
related fields:
We protect a “sphere of commerce” around the genre the senior user/TM
owner competes in.
-Applies where Junior user is operating in a different market genre from senior,
-Evidence of mark owner’s Business Plans:
1- Does the mark owner have concrete plans to bridge the gap?
2-Takes into account whether the P’s brand/product diversity is wide
enough, and the two markets are similar enough that a consumer would
assume the P has expanded their product line.
5) Actual Confusion It’s black letter law that actual confusion need not be shown to prevail
under the Lanham Act, since it is very difficult to prove and the Act only requires a
Likelihood of confusion.” (Lois Sportswear)
6) Defendant’s good faith: Generally not heavily weighted.
7) Quality of the D’s product:
-Inferiority of the infringer’s product supports and inference that it won’t be confused
for the real thing…BUT…
-Courts have recognized that the existence of inferior infringing goods
strengthens a P’s interest in protecting its reputation.
8) Sophistication of the buyers: Takes into account Attention and time buyers spend
when considering the source
And also whether people who see it being worn or used will know.
 
Reverse Confusion: Senior user is overwhelmed by junior user’s saturation of market
—consumers are likely to think the junior user is the source of the senior user’s
goods/services.
Factors that are the same for direct confusion:
attentiveness of consumer
degree to which the channels of trade and advertisement overlap
FACTORS: Similarity of Marks, Strength of Marks, Conceptual Strength
Commercial Strength, should be analyzed in terms of:
-The commercial strength of the junior user as compared to the senior.
-Any advertising or marketing campaign by the junior user that’s
resulted in saturation of the public awareness of the junior user’s mark.

Secondary Liability: Did they know/should they have known: It is well-established

that if a manufacturer or distributor intentionally induces another to infringe a trademark, or

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if it continues to manufacture or distribute products for one whom it knows or has reason to
know is engaging in trademark infringement, the manufacturer or distributor has
contributory responsibility for any harm done as a result of the deceit.
What about Landlords/Licensors? Same duty imposed by SCT on mnfrs and
distributors.
Willful Blindness: Suspects wrongdoing and deliberately fails to investigate b/c
they don’t want to know.
-Willful Blindness=Actual Knowledge for purposes of Lanham Act
-No duty to seek out and prevent violations but can’t “look away” once
you have reason to suspect.
Extent of Control: If Δ supplies service rather than product courts look at the extent to
which ∆ monitors/controls the actions of the infringer. Direct control/monitoring by D usually
= contributory infringement.
Inducement: Did D encourage, tempt, or persuade the infringer to infringe?
Vicarious Liability: Can be proved by showing:
Agency relationship: established by showing 1)Principal’s right to control alleged
agent 2) alleged agent’s power to alter the legal relations of the principal
3 Alternative ways to establish Vicarious Liability: Proof of 1) Apparent or
actual partnership 2) Authority to bind in third party transactions, 3) Joint
ownership/control over the infringing parties
TRADEMARK DILUTION15 USC 1125(c)(1); 15 USC 1052(f): Only applies to FAMOUS
and distinctive marks!
Blurring: impairs distinctiveness
Tarnishment: degrades the good will of the product.
Starts in the states, protecting the selling power of the senior user, and providing only
injunctive relief.
Federal Dilution not until 1995 §43 (c):
Trademark Dilution Revision Act 2006 (TRDA )Factors: requires that the marks be
identical, nearly identical, or substantially similar/identical to the protected mark.
Substantial similarity test: more stringent for blurring than it is for determining a
likelihood of confusion.
-Mark used by alleged diluter and protected mark must be similar enough that
a significant segment of the target group of consumers sees the two marks as
essentially the same.
The court may consider all relevant factors including the following: TDRA
Factors
1-Similarity of the mark with the famous mark
2-Degree of inherent or acquired distinctiveness of famous mark
3-The extent to which the owner of the famous mark engages in substantially
exclusive use of it
4-The degree of recognition of the famous mark
5-Whether infringer intended to create ass’n w/ famous mark
6-Actual mental ass’n b/t alleged infringer’s mark & famous mark
Policy: Dilution claims are traditionally viewed as protecting only the mark owner’s good
will and not protecting consumers because you don’t have to prove confusion. But: maybe
dilution creates “noise” in the marketplace and distorts the signals received by consumers.
CYBERSQUATTING: Establishing Internet domain names utilizing other’s marks as names
RULE: Lanham Act § 43(d): Creates a Cause of Action for a TM owner who can
establish:
1-It has a VALID mark entitled to protection
2-Its mark is distinctive OR famous
3-The defendant’s domain name is identical or confusingly similar to OR
in the case of famous marks, dilutive of the owner’s mark
4-The defendant used, registered, OR trafficked in the domain name WITH

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 5-A bad faith intent to profit from the domain name. (critical element)
UDRP (Uniform Domain Name Dispute Resolution Policy): usually
easier/cheaper to go through this arbitration process then to litigate through §43(d)

UNFAIR COMPETITION/PASSING OFF— §43(a)(1)(A): Basically free-riding on

the other mark’s goodwill
Can take the form of:
1-Direct confusion (express)
2-Substitution of another product in response to a request for Plaintiff’s TM’d
product without (verbal) notice to the consumer
3-Using a photo of another’s goods/mark to advertise one’s own goods.
(implied)
1-Unfair Competition: sort of a catch-all for situations like the University hospital
case where someone has really misappropriated the plaintiff’s goodwill and
reputation which is leading to legitimate consumer confusion.
-Generic Names Just because a term is generic and we won’t give it federal
registration doesn’t mean a company can’t build goodwill in the term which is
then capable of misappropriation ,and doesn’t mean we won’t give some kind
of protection.
2-Reverse Passing Off: Selling a product another has made and passing it off as
your own.
Commercial Detriment: Don’t have to prove actual harm or actual confusion BUT
R3 unfair Competition requires proof of likelihood of confusion and likelihood of
commercial detriment
3-Strict Liability: Suppliers are strictly liable for passing off, without regard to
whether they took reasonable care to avoid doing so.

TRADEMARK DEFENSES:
REGISTRATION, Generally
Prima facie evidence of validity and owner’s right to exclusive use.
Burden of proof is on defendant at trial to prove the mark is NOT valid.
Incontesability §15: A mark that is registered and has been used continuously for 5
years obtains “incontestability.” Serves as conclusive evidence of mark’s validity
and owner’s right to use the mark
-Defense available to mark owners in a cancellation proceeding (Lanham §
33(b)).
- Mere descriptiveness NOT recognized by Lanham Act as basis for
challenging incontestable mark.
-Exceptions to Incontestability LA §14(3)(5) (Rebuttals to Incontestable status)
Arguing that the mark: 1) has become generic, 2) is functional, 3) was
abandoned 4)has been misused by plaintiff to misrepresent goods/services
5) violates antitrust law, 6) obtained fraudulently or contrary to provision of
Lanham §4 6) D claims common law rights to a mark in a limited area.
Policy of Incontestability: opportunity to gain this status by satisfying the
requirements of § 15 encourages producers to cultivate the goodwill associated
with their mark.
-Likelihood of Confusion and Strength of an Incontestable Mark:
-Strength of the mark should be determined independently from
incontestability.
-Just b/c mark is incontestable doesn’t necessarily mean it’s strong for
the purposes of establishing confusion.

FAIR USES DEFENSES: Fair use can be Classic, or Nominative

“Classic”or “descriptive” Fair Use §33(b)(4): A defendant is free to use a mark in

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its strictly descriptive capacity, to describe their own product or its geographic
origin, or identify that it contains Ᵽ’s product (Intel inside).
Focuses on HOW and WHY the INFRINGER uses the mark, NOT how owner
uses it
RULE: (Sunmark, Inc. v. Ocean Spray Cranberries)To be fair use, alleged infringer
must use the term:
1- other than as a mark,
2-in a descriptive sense, AND
-The use of a name that is similar to (or IS) a TM to truthfully describe a
product (not as a mark) is not infringement even if it causes
consumer confusion.
3-in good faith
Bad faith RULE STATEMENT: requires showing that the defendant
intended to trade on the good will of the mark holder by creating
confusion as to source or sponsorship.
Bad faith indicators: proving an alleged infringer was aware of
mark NOT ENOUGH
-Copying typestyle, packaging, or labeling DOES indicate Bad
Faith.
POLICY: to compete effectively and to inform consumers about the qualities and
characteristics of their products, sellers must be able to describe their products and
have access to descriptive terms necessary to compete, even if those terms are
another’s TM.

Artistic Fair Use: the use of marks as social commentary (e.g. Warhol’s Campbell Soup
can, Barbie Girl song)
As social commentary, 1A values are balanced with the TM owner’s source-indicating
interests.
Comparative Fair Use: Comparative advertising is a descriptive use and permissible
as comparative fair use
-Usually little danger of confusion: Generally the point if to distinguish the two
brands.
-Use of a rival’s mark that doesn’t create confusion is beneficial to consumers so they
can compare.
Nominative Fair Use: def uses the mark as an expression of something else (e.g. artistic,
social commentary, etc.)First amendment helps in these cases.
Generally used for purposes of comparison, criticism, or point of reference (parody,
Barbie enchiladas)
3 Elements of Nominative Fair Use:
1-P’s product not be readily identifiable w/o use of TM
2-Only so much of the mark may be used as reasonably necessary to
identify P’s product
3-User must do nothing that would, in conjunction w/ TM, suggest
sponsorship or endorsement by TM owner.
Fair Use for Reconditioned Goods: Consider:
1-Are the repairs or the reconditioning so extensive that it would be a misnomer to
call the product by its original name?
2-SCT focuses on a comparison of the qualities and characteristics of the goods when
new, and after the reconditioning process.
Repackaged Goods and Component Parts: Truthfully describing what’s inside your
product—“made w/ Hershey’s”
-OK to use w/o permission, even if re-packager modifies mark holder’s goods and
makes inferior product.
-Caveat—Not ok if deceptive/confusing: if the declaration of the component

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 part is so prominent that it makes the consumer think the new product and the
component part are from the same source.

 COPYRIGHT 

COPYRIGHT Policy: not to reward the labor of authors, but to promote the progress of
science and useful arts.
REQUIREMENTS, §102(a): Copyright protection available for:
1) original (minimally creative-Feist) works of authorship
2) fixed
3) in any tangible medium of expression,
-now known or later developed
-from which they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device
4) Consist of EXPRESSION rather than IDEAS or FACTS, which must remain in
the Public Domain
SUBJECT MATTER of © 17 U.S.C. § 102: In General

GENERAL CATEGORIES:
1) literary works; (includes computer programs) 2)musical works, including any
accompanying words; 3) dramatic works, including any accompanying music;
4)pantomimes and choreographic works; 5)pictorial, graphic, and sculptural works; 6)
motion pictures and other audiovisual works; 7) sound recordings (works that result
from the fixation of a series of musical, spoken, or other sounds, but NOT the sounds
accompanying audiovisual works.) and 8) architectural works

EXCLUSION of PROTECTION for IDEAS—

Copyright does NOT extend to any idea, procedure, process, method of operation,
principal, or discovery
-ideas and facts preexist creative efforts OR would exist without them and
can’t be possessed by a single person.
Is it an IDEA? General elements necessary for the creation of other works SUCH
AS:
1-Concept: game show, parade w/floats
2-Solution (this type of idea or the expression that flows from it is usually excluded
from protection because it’s functional—more below): design of forms necessary
to implement an accounting system, rule for a game, etc.
3-Building Blocks: plot and theme of novel, colors and shapes in visual works
4-Scenes a faire: ideas standard in a genre; “formulas”
-elements necessary to implement an unprotected idea
Do the similarities between 2 works follow from the idea? (e.g. business man contemplating
jumping photo, lots of differences, but lots of similarities too, but the similarities follow from
the businessman jumper idea.

-If it’s too close to call between copying an idea or an expression, is there a policy
consideration that would function as a tie breaker? (e.g. blue paintings example)

EXCLUSIVE RIGHTS: §106 (1)-(6)

The owner of copyright under this title has the exclusive rights to do and to authorize any of
the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or
other transfer of ownership, or by rental, lease, or lending;

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(4) perform the copyrighted work publicly: in the case of literary, musical, dramatic,
and choreographic works, pantomimes, and motion pictures and other audiovisual works;
(5) display the copyrighted work publicly: in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the
individual images of a motion picture or other audiovisual work, and
(6) in the case of sound recordings, to perform the copyrighted work publicly by
means of a digital audio transmission.
OWNERSHIP & AUTHORSHIP:
The person who creates the work is the sole owner from the moment the work is fixed
UNLESS:
WORK MADE for HIRE: § 101 (p629): A work prepared by EITHER:
1) an employee creating the work within the scope of employment,
if no traditional employment K exists, look to common law of agency:
1- hiring party’s right to control product
2- skill required
3- source of the instrumentalities/tools
4- location of the work
5-duration of the relationship between the parties
6-whether the hiring party can assign additional projects to hired
party
7-extent of hired party’s discretion over when and how long to
work
8-method of payment
9-hired party’s role in hiring/paying assistants
10-whether the work is part of the regular business of the hiring
party
11-whether the hiring party is in business
12-the provision of employee benefits AND
13-the tax treatment of the hired party.
OR
2) an independent contractor specifically commissioned to make a work that falls
within the 9 categories described in §101 (2)and there’s a written agreement
memorializing the work made for hire status:
1)Motion picture
2-Other audiovisual work
3-Translation
4-Supplementary work
5-Compilation
6-Instructional text
7-Test
8-Answer material for a test
9-As an atlas.
NOTE: If you K that something will be a work made for hire but it doesn’t fall into one of the
9 categories, a court may still construe the agreement as transferring ownership of © to the
hirer.
STRATEGY and ARGUMENT: If it’s not a work made for hire, could you argue joint
authorship instead? Did the person who wants in contribute any type of copyrightable
expression? (like the producers on tv show who control the set and costumes and the
appearance of the stuff in the pics taken by the freelance photogs)
Copyright Ownership in a Work Made for Hire vests in EMPLOYER or HIRING
PARTY
JOINT AUTHORS and Joint Works
RULE: (Aalmuhammed v. Lee )To be “joint work” there must be

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 1) a copyrightable work,
2) two or more “authors” who each contribute copyrightable expression
BUT Note: Valuable & copyrightable contribution doesn’t necessarily
= “Author”
3) The authors must INTEND their contributions be merged into
inseparable or interdependent parts of a unitary whole.
-Requires some kind of objective manifestation of shared intent to be
co-authors

Test for authorship:

An “author”
1-exercises control,
-The person to whom the work owes its origin and who superintended
the work…the ‘mastermind.’
-Absence of control is strong evidence against authorship.
2-coauthors make objective manifestations of a shared intent to be
coauthors, and
3-Audience appeal of the work turns on both contributions.
The contributions are integrated to the extent that you couldn’t point to
either one as the conclusive reason for its success.
Copyright Ownership vests equally in all joint authors, who may each FULLY
exercise ALL rights endowed by ©, as long as they share any proceeds equally w/ the
others
DERIVATIVE WORKS authored by someone other than original author: who owns
©? See 17 U.S.C. §§ 101, 103
RULE: (Gracen-Dorothy plates) A derivative work must be substantially different
from the underlying work to even BE copyrightable.
BUT Consider: RULE, Mirage Editions v. Albuquerque A.R.T. co.:
A work will be considered a derivative work only if:
-It would be considered an infringing work if the material which it
derived from the preexisting work had been taken without consent of a
copyright proprietor of such preexisting work.
To prove it would be considered an infringing work as per
above,
Ᵽ must show that the alleged infringing work and the original
are:
Substantially similar in both ideas and
expression.
So…to be a copyrightable derivative work you have to balance the need for
substantial similarity in the context of creating something substantially different,
BUT: If it IS, and they were authorized to create the work (license, etc.) they own the
© in the derivative work, UNLESS allowed that would interfere w/ original author’s
ability to exploit the original.
Policy: main reason involves public domain stuff. If I use the last supper in my creation it
has to be different enough from the original that other people who want to use the public
domain painting aren’t subsequently prevented because of my ©
LIMITATIONS on COPYRIGHTABILITY: Facts, Ideas, Functional
FACTS, generally: NOT copyrightable b/c facts do not owe their origin to an act of
authorship.
Actual facts v. fictional facts: actual facts exist whether someone discovers them or
not, they did not originate in the mind of the discoverer. “Facts” about Seinfeld were
created from the imagination of the writers, so even though they’re true WRT the show,

11
 they are not FACTS for the purposes of © law
Fiction Portrayed as Fact: If you write a work and portray it as being factual, and
someone else uses the “facts” for another work, you CANNOT claim infringement later
by revealing that your “facts” were really “expression,” Nash v. CBS
COMPILTATION of Facts CAN be Copyrightable §101: (Feist) A work formed by the
collection and assembling or preexisting materials or of date that are selected, coordinated,
or arranged in such a [minimally creative] way that the resulting work as a whole constitutes
and original work of authorship
Minimal Creativity: works must show some modicum of creativity, but this isn’t a super
high standard. Just can’t be so mechanical, routine, and entirely typical as to require no
creativity whatsoever.
Selection and Arrangement: these are the elements of a compilation that make it
copyrightable, and the only elements which ARE copyrightable. Did you make creative
decisions about what to include and how to organize it?
-Facts you selected and arranged are STILL UNPROTECTABLE, anyone can use facts
from your compilation.
IDEAS:
MERGER DOCTRINE: Where an idea and its expression are inseparable, copyright should
be denied to prevent monopoly of the idea. Did the author have any meaningful
choice in deciding how to express a particular idea?
1-Commonly applied for Phenomena/Solutions: ideas that describe scientific
phenomena or provide solutions like Instructions, recipes, commercial valuations—
things where there are limited ways you can really express it.
2-Suggestion/Opinion/Taste: Ideas that don’t explain or solve, but are instead
infused with the author’s taste or opinion (e.g. pitching form) NOT ALWAYS APPLIED if
opinions/taste/suggestions don’t “materially assist the understanding of future
thinkers”
Policy Question: If it’s an idea in the second category, do we think withholding
the merger doctrine (allowing copyright) will impair free public access to ideas?
SCÈNES À FAIRE: Conventions of a genre.
-Refers to the unprotectability of incidents, characters, or settings which are, as
a practical matter, indispensable, or at least standard in the treatment of a
given topic.
-Audiences have come to expect certain plot devices, stock/standard characters,
images, sounds, and expressive techniques
Policy Alternatives:
1)The communicative effect of the device may be so great that a given work
lacking those features wouldn’t be able to achieve any communicative
effect.
OR
2)The communicative effect is so great that the benefit of their use for future
creators clearly outweighs any possible cost to the originators of the
features.
Is it FUNCTIONAL: (Baker v. Seldon): Is it like the forms—which were necessary to use the
accounting system and therefore not protected, or is it like the essay explaining the
system—which was protected because there are many diff ways one could write an essay
explaining the system
BLANK FORMS RULE: Rejects copyright in forms that are designed only to receive
information, NOT convey it (e.g. timecards, graph paper, diaries, bank checks, etc.)
Clues it might be FUNCTIONAL:
1-Is it necessary to copy the element in order to implement an unprotected idea?
2-Does the element increase the efficiency of the process?
3-Do external factors favor adoption of the element in question?
4-Has the element become a standard in the relevant industry?

12
 5-Is it necessary for compatibility with other works?
Is it utilitarian?:
-Intended to bring a result? i.e. bike assembly instructions
-Is there only one way to efficiently give a set of instructions? (merger doctrine)
-are the instructions succinct and efficient descriptions of use (prob. Functional &
unprotected), or do they contain elements clearly unnecessary for instruction, like creative
phrasing, jokes, or historical information (creative elements and specific expression would
be protected, but not the actual instructing parts b/c how many ways can you say insert peg
a into slot b?)
Is it a useful article? An article having an intrinsic utilitarian function that is NOT merely to
portray its own appearance or to convey information
-map, instruction manual, anatomy dummy NOT USEFUL—conveys its own
appearance and conveys info)

#1: is the work a useful article under the statutory definition?

-It has intrinsic utilitarian function: chair, belt buckle, door handle
If YES, then
#2: does it have SEPARABILITY?
aesthetic features that can be identified separately from, and are capable
of existing independently of, the utilitarian aspects?
If YES, then it may be copyrightable

-Separability, §§101,113: RULE: (Brandir-Ribbon Rack) A PSG work is copyrightable

if its aesthetic elements can be conceptually separated from its functional elements
Physical: creative lamp design not protectable b/c you can’t physically separate the
functional from the creative
Conceptual—fancy belt buckle case. Sure it’s functional, you can use it to buckle
your belt, but the fancy design has nothing to do with the function of buckling your
belt, it’s conceptually separate.
-Would an individual looking at it think of the aesthetic aspects of the work as being
separate from the functional aspects?
-Design Process: separability only if the designer can make aesthetic choices that
are unaffected by functional considerations—ribbon bike rack, every change in shape
made for aesthetic purposes affects the function of the bike rack.
-Mannequin: its aesthetic design is geared toward its utilitarian goal of displaying clothes,
the more attractive it is, the more life-like, the better job it does of selling the clothes.

Establishing Copyright Infringement

INITIAL CONSIDERATIONS:
Has D potentially infringed by:
-Direct copying of the work
-Preparation of a derivative work based on the work
-Distributed a copy of the work to the public
-Performed the work publicly
-Displayed a copy of the work publicly?
Does one of the limitations apply to what D did: i.e. facts, functional, fair use?
-Has there been Misappropriation?
-Did D copy (or adapt, distribute, perform or display) protected material,
OR
-Did D only use non-protected materials (such as non-original expression, facts,
ideas, or functional elements)

13
-Is Δ’s work Substantially similar?
INFRINGEMENT Requires proving 2 things:
1-Ownership of a valid copyright
2-Copying of constituent elements of the work which are original.
Enforcing Copyrights: 1st-- Determine which rights have been violated-Usually
more than one
-Owners acquire certain exclusive rights so those who exercise those rights without
permission can be enjoined and/or are liable for damages.
“copying” is “shorthand for the infringing of any of the copyright owner's five exclusive
rights.”
Right to prepare derivative works
Right to reproduce
Right to distribute
Right to display publicly
Right to perform publicly

Direct Infringement: Copy has to be fixed in the same medium as the original
RULE: Ᵽ must prove (Three Boys Music Corp v. Bolton) :
1-Ownership of a valid copyright.
2-Copying in Fact: does NOT have to be intentional (could be subconscious)
MUST SHOW:
a) Reproduction of Ᵽ’s work by some process
OR
b) ACCESS: Δ had access to Ᵽ’s work and the works are
substantially/probatively similar in light of that access.
1-Proof of access requires a reasonable opportunity (more than a
bare possibility) or possibility to view or copy the Ᵽ’s work.
Evidence of Reasonable Access proven by:
1-Establishing a Chain of events b/w Ᵽ’s work and Δ’s access
to that work (e.g. dealings w/ publisher/record co.) OR
2-Ᵽ’s work has been widely disseminated (i.e. through sales
of sheet music, records, radio performance, etc.).
Infers “Subconscious” copying often theorized as a
result of Widespread dissemination (Learned Hand:
‘Everything registers somewhere in our memory…It is no
excuse that in invading the author’s rights his memory
played him a trick.’)
AND
2-Substantially similarity
STARTING LINE: filter out and disregard all non-protectable
elements.
Scenes a faire: generic plotlines, genre conventions,
etc.
BASELINE QUESTION: Are any of the PROTECTABLE
ELEMENTS, STANDING ALONE, substantially similar?
Two-part Test:
1) Extrinsic similarity (Objective): Ᵽ identifies concrete
elements based on objective criteria. (Must be proved to
survive summary judgment; jury can’t find SS without
both ex/intrinsic similarity evidence).
1-Often requires analytical dissection of work and
expert testimony.
2-Relies on specific criteria that can be listed and
analyzed: real similarities at the level of plot,
character, themes, mood, pace, dialogue,

14
 sequence of events, etc.
3-Filter out and disregard non-protectable elements.
4Identify where the works share ideas/expression: do
the shared areas constitute protectable expressive
elements?
2) Intrinsic similarity (Subjective): Also—Ordinary
Observer Test (2nd Circuit) “Would a reasonable person find
the overall concept and feel of the works to be substantially
similar?” (This is a jury question, not to be considered in
a motion for summary judgment).
Access Inverse Ratio Rule:
Requires a low standard of proof of substantial similarity
when a high degree of access is shown.
-Absent any proof of access Ᵽ can still make an infringement claim
if the songs are “strikingly similar,” creating a presumption of
access.

INDEPENDENT CREATION: Reasonable access + Substantial similarity = Presumption of

copying
Shift of burden to Δ to prove Independent Creation: Evidence like work tapes, notes,
etc.
© recognizes possibility that multiple authors will independently produce identical/nearly
identical expressive work, leaves room for them to demonstrate requisite originality to
support a ©.

Infringing Copying-Misappropriation
RULE: (Tufenkian-Persian rugs)P must show:
1-his work was actually copied and
2-substantial similarity or that copying was unlawful appropriation for
example,
protected expression in earlier work copied
amount copied was more than de minimis.
Relies on Feist:
Ᵽ’s creative choices in Selection, arrangement, and editing of public domain
elements was mimicked by Δ.
Just because Δ altered one thing that changed the overall feel doesn’t
change the fact that he substantially copied Ᵽ’s original contribution to the
public domain material. (Poem may add a new stanza that changes the whole
tone/message of the poem, but it doesn’t change the fact that the rest of the poem is
an exact copy),

Unauthorized Derivative Works See 17 U.S.C. § 106(2)

Derivative Work: Definition (§101):
A work of authorship that is based on a preexisting work such as:
1-Translation
2-Musical arrangement
3-Dramatization
4-Fictionalization
5-Motion picture version
6-Sound recording
7-Art reproduction
8-Abridgement
9-Condensation
10-Any other form in which a work can be
Recast

15
 Transformed, or
Adapted
OR A Work consisting of:
Editorial revisions
Annotations
Elaborations, or
Other modifications
which, AS A WHOLE, represent an original work of authorship.
RULE, Galoob: to qualify as a derivative work it must
1- Exist in a concrete and permanent form (not as permanent as “fixed,” NOTE fleeting
presence in RAM counts)
AND
2- Substantially incorporate protected material from the preexisting work.
-To infringe the adaptation right, a derivative work must incorporate some
copyrighted portion of the original work.
-A work merely inspired by or based on a prior work that is not substantially
similar to protected expression does not infringe. (Litchfield v. Spielberg)
BASELINE QUESTION: What is the PROTECTED MATERIAL? E.g. Teddy Ruxpin: the
protected audiovisual work is the overall idea of the animated bear that tells stories. Vector
had to use the original design of that animation to create it’s tape, it was confined by the
expressive elements of the copyright holder. Ok, so even though a bear that tells stories is
an idea, teddy Ruxpin has specific details about him that constitute specific original
expressions of that idea, and the infringer had to use those expressive elements to make his
tape.

MAP Files RULE: (Micro Star-video game files) An exact description of an audiovisual
display counts as a permanent or concrete form which is a copy of protected material.
HOLDING: D claims the downloaded MAP files do not meet the “concrete” or
“permanent form” requirement. The data values in the MAP files create the
audiovisual display so they are permanent and concrete copies of P’s protected
expression. The copied MAP files are unauthorized derivative works.
Unauthorized Distribution of Copies of the Work 17 U.S.C. § 106(3)
Proving Distribution: requires proof of “dissemination to the public,” ( §106(3))
HOLDING/RULE: Library distributes (and therefore disseminates to public)
when it places an unauthorized copy in its collection, includes it in its index
system, and makes it available to the public.
Generally: Public Availability=Distribution
Don’t always have the evidence to prove that someone actually
checked it out, so we allow availability to create the inference of
distribution.
DEFENSE: §109 First Sale Doctrine: Copyright owner’s right to distribute a
copyrighted work does not prevent owner of a lawfully obtained copy from
selling, renting, lending, or otherwise disposing of the lawful copy.
Unauthorized Public Display & Public Performance 17 U.S.C § 106 (4,5)
“Homestyle Exception:” Copyright law classifies music-playing business or shop
owners as performers, but small business or shop owners playing music from a single
receiving apparatus of the kind commonly used in homes (e.g. radio, portable cd
player, etc.) are exempt from liability as long as certain conditions are met regarding
the size of the place, and how many speakers or monitors there are.
Meaning of “Public:”
1-Measured according to characteristics of the place itself, OR
2-Measures by the number of people present, and the relationship
among them (i.e., 20 ppl hear and see a movie on a projector screen in a
bowery in a public park you rented out, but it’s a family reunion and their

16
 your family.)
RULE: (Columbia Pictures-in store movie rental)To perform a work means …in the
case of a motion picture or other audiovisual work, to show its images in any
sequence or to make the sounds accompanying it audible. To perform a work
“publicly” means to perform it at a place open to the public or at any place where
there’s a gathering of a substantial number of persons outside of a normal circle of a
family & its social acquaintances is gathered.
HOLDING: D’s services are the same as a movie theater but with some
privacy. Just because cassettes can be viewed in private does not alter the
fact that the store is open to the public. Transmission to the public is “public”
even if people are not all in the same place or view at the same time.
Transmission to a public setting such as a hotel room is a public performance.
Thus, D’s private rooms are like viewing in a hotel room and constitute a
public performance.
Think about type of control exercised by the person showing the
work.

Secondary Liability:
Contributory: SCT (MGM)—intentionally inducing or encouraging direct
infringement
1-Substantial participation in, or material contribution to the
infringing activity,
RULE: Sony—limits imputing culpable intent as a matter of law just
because the product could be used for infringement.
-Balance: are there more non-infringing uses available
than infringing uses?
Which use are the ppl buying it most likely to employ?
-If there is a substantial non-infringing utility to the product
greater than its infringement utility or primarily intended by, or
primarily known of by the party that distributes it, the fact that
it could be used for infringement does not satisfy this
prong.
2-Knowledge (actual or constructive) that infringement is likely to
occur.
Knowledge: determined by the extent of the interweaving of the
direct infringer’s activities and the activities of the 3rd party.
Spectrum:
K of character of DI/nature of DI’s businessK of infringement/innocence of transactions
HOLDING: (Cherry Auction) “Providing the site and facilities for known
infringing activity is sufficient to establish contributory liability.

Inducement (Sometimes grouped with Contributory): (MGMv. Grokster Inc.)

proven by evidence of affirmative intent that the product be used to infringe:
Active steps taken to encourage direct infringement Including, but NOT
limited to
express promotion of counterfeit goods,
encouraging their sale, or
protecting the identity of the infringers.
such as:
Advertising an infringing use, or
Instructions on how to engage in an infringing use
HOLDING, MGM:
“One who
distributes a device

17
 with the object of
promoting its use to infringe copyright,
as shown by
clear expression or
other affirmative steps taken to foster infringement
is liable for the resulting acts of infringement by 3rd parties.”

Vicarious: SCT (MGM)—profiting from direct infringement while declining to exercise

a right to stop or limit it.
(Fonovisa v. Cherry Auction) does not require active participation, only:
1-Direct financial benefit from the infringement
Causal Relationship: Can be est’d through showing that infringing
goods are a “draw” for customers.
9th Cir. Says there doesn’t have to be a direct commission gained from
the infringement to satisfy this prong: flea market case—Cherry
Auction didn’t get a commission from the sale of the infringing
recordings, but they did get the daily booth rental fee from the
infringers, as well as the entrance fees and concession proceeds from
customers who came to buy the recordings.
2-Power to control the infringing activity
Control: represents the character of the legal relationship b/w DI
and 3rd party.
Spectrum: Actual supervision (Emp/emp’ee) Formal right to control est’d thru K
(vendor/vendee)

Anti-Circumvention & Technological Protection Measures

RULE: (RealNetworks v. Streambox) Digital Millennium Copyright Act (DMCA)
prohibits technology or product that :
1-is primarily designed for the purpose of circumventing a technology that
effectively controls access to a copyrighted work or protects a right of a
copyright owner;
2-has only a limited commercially significant purpose or use other than to
circumvent such technological protection measures; or
3-is marketed for use in circumventing such technological protection
measures. 17 U.S.C. §§1201(a)(2), 1201(b).
Fair Use: Defense to Copyright Infringement- 17
U.S.C. §107
BEFORE WE GET TO FAIR USE D HAS TO SHOW A VIOLATION OF ONE OF THEIR §106 RIGHTS. 
Unauthorized Use ≠ Infringement: Unlicensed use of a © work isn’t infringing, even if
it’s not authorized, UNLESS:
It conflicts with one of the specific exclusive rights conferred by © law.

“Ordinary” and “Personal” Use: permissible

4 FAIR USE FACTORS: Burden of Proof on D to prove it IS fair use, not on Ᵽ to

prove it ISN’T.

1-Purpose and Character of the Use: commercial v. private/non-profit

PURPOSE: Criticism, Parody, and Other “Exemplary” Uses
Generally ok according to § 107: Criticism, comment, news reporting, teaching
(copies for classroom use), scholarship, research, etc.

a-Challenging use for commercial gain: likelihood of future harm is

presumed.

18
 -SCT says: a use is commercial if the users stands to profit economically
from exploiting the copyrighted material without paying the customary
price.
b-Challenging non-commercial use requires proof that:
1-The particular use is harmful
OR
I2-f the particular use becomes widespread it would adversely affect
potential market for the © work.
c-Ᵽ NOTrequired to show:
actual present harm, or
certainty of future harm
d-Ᵽ IS required to show by a preponderance of evidence:
Some meaningful likelihood of future harm exists
CHARACTER: Is it, and to what extent is it, transformative:
DOES IT:
1-Add something new with a further purpose or different
character,
2-altering the first with new expression, meaning, or message
DOES NOT have to visually transform the work, could
use the work for a different expressive purpose than the
original. Ex: under Bill Graham Archives v. Dorling
Kindersley Ltd. 2nd Cir. Said Δ’s use of Ᵽ’s concert poster
was transformative because it was used in a
biographical timeline, a totally different expressive
purpose than the original author’s use as a concert
promotion.

2-Nature of the Copyrighted work: Published v. unpublished, fact or fiction, etc.

3-The substantiality of the portion used in relation to the copyrighted work as a

whole
-Focuses on qualitative use, not just quantitative. (e.g. even though
article only used 300 words, those 300 words represented the heart of the
entire work).
Parody exception: a parody’s ability to comment on the original is
dependent on a recognizable allusion to the original, which usually
requires using the most distinctive or recognizable (the “heart”)
features of the original.

4-The effect on the potential market use or value of the work/ impairment of
commercial value of ©
Right of first publication: commercial value of this right lies primarily
in exclusivity
Policy: creating/preserving incentives for creative effort

Is it going to cut into the economic incentive of the original author: consider,
is Δ’s use going to create a market substitute for the copyrighted work, or a
market substitute for the exercise of one of Ᵽ’s rights if he chooses to use it
later?
Supplanting P’s market: creating a substitute=BAD,
Suppressing Ᵽ’s market: scathing criticism that makes it so no one
wants it anymore=OK

PARODY: use of some elements of a prior author’s composition to create a new one that,
at least in part, comments on that author’s works.

19
 “Parody, like other comment or criticism, may claim fair use under §107.”
Threshold Question: would a reasonable person perceive the work as a
parody?
Whether the parody is in good or bad taste doesn’t matter, not for
the court to decide.
Does the new work:
1-Supersedes the objects of the original (creates a market
substitution/replacement)
OR
2- Do the Parody and the original usually serve different market functions.
3- Is it, and to what extent is it, transformative: DOES IT:
Add something new with a further purpose or different character,
altering the first with new expression, meaning, or message
Parody has an obvious claim to transformative value.

Parody is NOT: a commentary that has no critical bearing on the

substance or style of the original which the alleged infringer merely uses
to get attention or avoid the drudgery in creating something fresh.
If this is the case the claim to fairness diminishes accordingly (if not
vanishes), and other factors, like the extent of its commerciality,
loom larger.

RULE: (Campbell v. Acuff-Rose-Orbison’s Pretty Woman)Factors relevant to determine fair

use:
Purpose of the Use
Nature of the Copyrighted work
The substantiality of the portion used in relation to the copyrighted work as a whole
The effect on the potential market use or the value of the copyrighted work
HOLDING: Purpose of use: 2 Live Crew’s song reasonably could be perceived as
commenting on or criticizing the original. Whether it is in good taste is not for ct to decide
Note: ct asks whether D adds something to the work to transform it into something different
or just copying/ taking advantage of P’s song

ÈÈ PATENTS ÇÇ
Five Elements for Patentability
1. patentable subject matter (§ 101)
2. utility (§ 101)
3. novelty (§ 102)
4. non-obviousness (§ 103)
5. enablement & written description (§ 112)

ELEMENTS OF PATENTABILITY: SUBJECT MATTER

35 U.S.C. § 101
“Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a patent
therefore, subject to the conditions and requirements of this title”
“Thing” Group: Machines, Manufacturers, and Compositions of matter are product claims.
They are things.
You can use the words device, apparatus, however,
a manufacturer is something that is static; a machine has moving parts.
Compositions of Matter that are chemical in nature (I.e. a new compound, new
combinations of compounds, and things distinguishable from machines and
manufacture).

20
Processes: These are not things but are acts that develop

Diamond v. Chakrabarty (Subject Matter; 1980) “Anything under the sun made by
man”
Issue: does C’s micro-organism constitute a “manufacture” or “composition of matter” w/in
the meaning of § 101?
Holding: Yes – it’s patentable
Reasoning: not naturally occurring; product of human ingenuity; bacterium has markedly
different characteristics from any found in nature and one having the potential for significant
utility
Notes: the fact that it consists of products of nature does not mean that the
combination is a product of nature.
In re Bilski Fed Cir. 2008 Note: machine-or-transformation test is not the sole test, but is
a useful & important clue
RULE: A process is patent-eligible under §101 if:
1) It’s tied to a particular machine or apparatus: If it’s not it means you could
practice the invention in your head, which means that it’s an abstract idea
and impossible to enforce.
OR
2) It transforms a particular article into a different state or thing.

ELEMENTS OF PATENTABILITY: ENABLEMENT & WRITTEN DESCRIPTION

35 U.S.C. § 112: SPECIFICATION
“The specification shall contain a written description of the invention, and of the manner
and process of making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best mode contemplated
by the inventor of carrying out his invention. The specification shall conclude with one or
more claims particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention.
4 DISCLOSURE Requirements: §112; 1-3 Refer to Description/Specs, 4 refers to Claims
1) Written Description: Serves 2 functions
1-Notice: allows 3rd parties to see where your property boundaries lie
2-Timing of Invention: limits patentee’s ability to file subsequent patents
broadening the claims, while keeping their original filing date.
a. Claim Amendments: any time you amend claims later it has to be
supported in your earlier application, otherwise you can’t have the filing date
of your earlier claims.
2) Enablement: requires a patent holder to teach a PHOSITA how make and use an item
without undue experimentation
- What is undue, i.e. too much, experimentation? Trial and error ok, but undue
experimentation is not.
Look at:
1- the technology,
2-quantity of experimentation necessary,
3-amount of direction or guidance presented, presence or absence of working
examples,
4-nature of the invention,
5-the state of the art,
6-relative skill of those in the art,
7-predictability or unpredictability of the art,
8-the breadth of the claims.
-Constrains scope of claim: A patentee cannot claim more than he discloses
Scope of the claim must bear reasonable relationship to the scope of enablement so

21
 inventor can’t gain patent rights beyond what is enabled.
-Info disclosed has potential immediate value to follow-on researchers
interested in improving the patented invention.
3) Best Mode: Application MUST disclose the “best mode” for
creating/processing/using/constructing your invention:
(Unique to US: US is the only country that requires best mode, so it’s often a pitfall for
foreign applicants)
2 Part TEST to Determine Compliance w/Best Mode Req:
1st Prong—Subjective: At the time of filing, did the inventor know of a mode
of making/using his invention that he considered best?
If YES, then:
2nd Prong—Objective: Is disclosure adequate to enable PHOSITA to practice
the “best mode,” or has the inventor concealed his preferred mode?
Compares what the inventor knew w/ what he actually disclosed.
-Judged as of the filing date: if you come up with some better mode a few years
after you got your patent you won’t get busted on this one. BUT: How much
improvement activity should patentees be allowed to capture?
-Public Policy: Prevent inventors from obtaining patent protection while concealing
(as a trade secret) the preferred embodiments of the claimed invention from the
public.
DON’T HAVE TO INCLUDE:
PRODUCTION DETAILS:
-Commercial Considerations: e.g. equipment the inventor has on hand,
relationships with suppliers, etc.
Because these considerations do not relate to the quality of the
claimed invention.
-Routine Considerations: Things that matter vis-à-vis the claimed
invention, but are routine details of production a PHOSITA would already be
aware of.
BUT: who’s to say what the BEST way is??
4) Definiteness-THE CLAIMS : State your claims with clarity, since the claims are your
property boundary.
-Claim terms must be clear enough that PHOSITA will understand the limitations of
the term:
-It’s a good strategy to provide definitions of key terms in the
specification.
-Invention can be broken down into several claims—good idea to do so b/c if any part
of claim is invalid the whole thing is struck, so if other aspects of the invention are
embodied in other claims they could survive.
-Must be clear to fulfill the notice function: public is informed of the scope of the
inventor’s right to exclude
-Will help show if your claims are valid
Rejections under §112(2):
-“Typo” rejections: easily fixed in prosecution
-Vague/Indefinite: more substantive than “typo;” claim is too vague to show where
the claim boundaries lie.
-Does not always lead to rejection, BUT, if the patent is issued and
infringement takes place, vague claims could be vulnerable and subject to
review during litigation
 
            
 
ELEMENTS OF PATENTABILITY : UTILITY
General Utility: can the invention as claimed really do anything? Is it capable of any use?
Specific Utility: does the invention work to solve the problem it is designed to solve? The
invention doesn’t have to be perfected, but must be refined and developed to a point

22
where specific benefit exists in its currently available form–
Policy: Otherwise you allow an applicant to engross what may prove to be a broad
field.
Beneficial or Moral utility: does the intended purpose have some minimum social benefit,
or is it at least not completely harmful or deleterious? Does society want this done?

ELEMENTS OF PATENTABILITY: NOVELTY & PRIORITY §102

§ 102: A Person Shall Be Entitled to a Patent UNLESS :
(a) Known, used, or printed: the invention was known or used by others (occurs totally
independent of applicant and his invention) in this country, or patented or described in a
printed publication in this or a foreign country, before the applicant’s date of invention.
(b) Bars: Public Use, On Sale; Patented/Printed in Foreign Country more than 1year
prior to date of US patent application
(c) Abandonment
(d) Impact of Foreign patent app: No US patent if you applied for a foreign one more
than 1yr before applying in US.
(e) Prior Patents: The invention was described by an application or actual patent w/filing
date prior to your invention date
(f) Not the Inventor: if you did not yourself invent the subject matter of the patent
(g) Interference: Someone else might be able to foil your patent by establishing priority
over you (conception & diligence)

NOVELTY: Not KNOWN, Not USED, No PRINTED PUBLICATION §102(a)

-Geographic Distinction: “known or used” as delineated in§102(a) refers ONLY to prior art
known or used in the US
(BUT we do allow you to RTP in another country and have it count for proving the worthiness
of your patent in the US.)
KNOWN: To be known by others in the US prior to applicant’s invention date, the
invention must have been:
1) RTP’d, or described in writing sufficient to enable a PHOSITA to make it
w/o undue experimenting.
AND
2) Accessible to the public
-Publicity Requirement: very light, No affirmative act necessary—
basically basically understood as lack of secrecy—no efforts made
to conceal.
USED: To be used by others in US prior to app’s invention date, the invention
must’ve been:
1) RTP’d, or described in writing sufficient to enable a PHOSITA to make it
w/o undue experimenting.
2) Accessible to the public (see above)
AND
3) Used in the manner for which is was intended by its inventor

PRINTED PUBLICATION BAR: Misleading, does NOT actually have to be printed OR

distributed to count.
 Dissemination and Public Accessibility are the keys to the legal determination
of “published.”
RULE: (Klopfenstein)To be a printed publication the reference must have
been
1) sufficiently accessible
2) to the niche of people who would actually be interested in,
or who work in, the art (PHOSITA’s);

23
 Factors to consider:
1-Length of time the display was exhibited
2-Expertise of target audience
3-Existence (or lack of) of reasonable expectations material will not be
copied
-Has audience been prohibited from or instructed not to take
notes or photos?
-Is presentation in a form that makes it easy to copy the
relevant portions?
4-Simplicity or ease with which the material could have been copied

NOVELTY: BARS—PUBLIC USE, ON SALE §102 (b)

Public Use Bar §102(b):
(refers to use resulting/related to applicant, as opposed to 102a- use occurring separate and
independent of applicant)
Public Use: if more than one year before patent app is filed:
-persons other than the inventor/applicant
-used the completed, operative invention
1) The device used in public includes every limitation of the later
claimed invention
OR
2) By obviousness, if the differences between the publicly used
invention and the claims would have been obvious to a PHOSITA.
3) Public use doesn’t require that more than one of the
invention be used: one well-defined case of use is enough to suffice.
-in the way it was intended to be used
-and are under no limitation, restriction, or obligation to keep the invention
secret.
Public v. Private: Whether use of an invention is “public” or “private” does NOT
necessarily depend on the # of people who see or know about its use.(Ex:
Egbert: Corset stays built inside corset, not “seen” in public)
Policy: Trying to get invention into the public domain. We want people to file their
patents in a timely manner so the 20yr time will run and the invention will reach
public domain in a reasonable length of time.
 Strategy to Avoid Finding of Public Use:
Inventor controls the use of the invention
Inventor imposes confidentiality on the person using it.
rd
NOTE!!  3 Party Public Use: §102(b) makes no distinction between inventor
activity and 3rd party activity WHICH MEANS §102(b) applies even when a 3rd party,
UNBEKNOWNST TO INVENTOR, publicly uses the invention!
EXPERIMENTAL USE “EXCEPTION” to Public Use: Showing Experimental
Use negates a showing of Public Use
Definition of Experimental Use: use of an invention by
-the inventor himself, or
-any other person under his direction,
-by way of experiment,
-in order to bring the invention to perfection is NOT Public Use.
TEST: Determining “Experimental Use:” Evaluate the totality of the
circumstances (Lough) including:
1-Extent of Use: Number of prototypes and duration of testing
2-Monitoring Use: Whether records or progress reports were made

24
 concerning the testing.
If inventor DOES NOT INQUIRE about the testing or RECEIVE
REPORTS of the results,
HE IS NOT EXPERIMENTING!!!
3-Confidentiality: Existence of secrecy agreement or confidential
understanding b/t patentee & party doing the testing.
4-Compensation: Whether patentee received compensation for use of the
invention
5-Extent of control the inventor maintained over the testing (most
important)
 If inventor has NO CONTROL over the alleged experiments HE IS
NOT EXPERIMENTING!
“Public” Experimental Use?: City of Elizabeth v. Pavement Co. (Experimental Use
Exception, 1877)
-If the nature of your invention is such that you can ONLY experiment on it in
public (e.g. wooden pavement test in Boston then it won’t be barred by Public
Use bar, as long as there’s evidence that you controlled and limited the
experiment to the greatest extent possible
Bottom Line: Unless you 1) monitor the prototypes you gave out 2) keep some kind
of records/reports 3) keep it confidential and 4) know where they all are or get them
all back, YOU’RE PROBABLY NOT EXPERIMENTING

Policy: we want to encourage people to perfect their inventions before rushing to

the PTO. From a statutory perspective, the significance of experimental use is that it
is deemed to NOT BE a public use, even if it’s visible to the public, it’s treated as
simply NOT being a public use, not an actual “exception.”
Always encourage a client who is experimenting to file a temporary
application.
On-Sale Bar: §102(b)
Definition of On Sale Bar: An inventor is barred from obtaining a patent if, more than 1
year before the filing date of his patent application, he or a 3rd party offers for sale or sells,
the claimed invention (or an obvious variation thereof) anywhere in the world.
Rule: On-Sale Bar applies IF (Space Systems)(Pfaff) the invention is:
1-Ready for patenting: as shown by either of the following:
a) RTP: it has been reduced to practice
OR
b) Enabled Conception: prior to the critical date the inventor has prepared
drawings or descriptions that would enable a PHOSITA to practice the invention.

2-The Subject of a Commercial Sale:

a)“The Offer must meet the level of an offer for sale in the K sense as understood by
the commercial community.” Fed. Cir. 2001
i. A communication that fails to constitute a definite offer to sell the
product and to include material terms is not an ‘offer’ in the K sense.
b) Subject matter of the offer must fully anticipate or render obvious what is
eventually claimed.
Threshold Question: is invention @ point where inventor could satisfy §112
disclosure reqs?
NOTE: On sale bar doesn’t arise when there is additional development
after the offer for sale.
On Sale Bar NOT Triggered by:
1-Assignments and licenses.

25
 2-Distinction between offering to sell the PATENT ITSELF, and offering to sell what’s
CLAIMED in the patent.
a. Selling the patent, i.e. the property rights=OK
b. Selling the claims, i.e. the invention itself=NOT OK
NOTE!!  3rd Party SALE: §102(b) makes no distinction between inventor activity and
3rd party activity-- §102(b) applies even when a 3rd party, UNBEKNOWNST TO
INVENTOR, sells or offers to sell the invention!

NOVELTY: No ANTICIPATION §102 (e)

ANTICIPATION: Proving LACK of NOVELTY by Anticipation Requires Prior Art
where:
-Each and every claim limitation of applicant’s invention is
disclosed/enabled in a single reference so as to place the invention in the
possession of a PHOSITA
-This has to be a single invention: you can’t prove lack of novelty by
showing that the challenged patent can be pieced together from a
bunch of other prior art patents.
-BUT if a PHOSITA could piece it together, it might fail as
obvious under §103
-The single reference doesn’t have to explain every single detail, it’s
taken as a whole with the knowledge that a PHOSITA would have.
Prior art must have strict identity with the challenged invention!!

PRIORITY: PROVING DATE of INVENTION: §102 (g)(1) Critical for all §102 Novelty
provisions
1st to REDUCE INVENTION to PRACTICE (RTP): Prima facie “First and True” Inventor
Reduction to Practice (RTP): 2 types
1) Actual: Inventor can prove that the invention is suitable, or works for its intended
purpose.
1-Prototype, etc.: physically made and tested
2- Lab tests: can be sufficient if they simulate actual working conditions, actual
working conditions not required:
-Perfection and commercial viability NOT REQUIRED to show actual RTP.
(Fujikawa v. Wattanasin).
2) Constructive: happens when the patent application is filed.
CRTP may occur even if the applicant never built or tested his invention as long as
he satisfies §112 disclosure reqs.
Policy: to encourage early disclosure of the invention.
1st to CONCEIVE: Exception to being 1st to RTP, requires DILIGENCE
A party who was the last to RTP might be the true and first inventor IF

1) First to CONCEIVE of the invention

1) Must be shown by: objective evidence that the inventor was the FIRST to
form in his mind a definite and permanent idea of the complete and
operative invention as it is thereafter applied in practice .
-To be the first and true inventor you have to have invented it on purpose.
Even if you invent it by accident while working on another project, the date
you stumble on it counts, not the date you started the project that led to it
-If another inventor conceived of your accidental invention before you
stumbled upon it, and they exercised reasonable diligence in RTP, then
they will be the first and true inventor of the invention for that
purpose.
AND

26
 2) REASONABLE DILIGENCE exercised in reducing invention to practice (he didn’t
abandon, suppress, or conceal the invention.) from the time of conception up
until the time the other person filed the patent.
Policy: Balances interest in rewarding/encouraging invention w/public interest in
earliest possible disclosure.
ANY DELAY:
-Requires proof of a legally sufficient excuse for any periods of inactivity on
the invention’s RTP: Standards for sufficiency depend on whether the inventor is a
regular person or one whose job is to invent (corp, researcher)
-Reasonable everyday problems and limitations OK, if it’s an independent
inventor b/c not expected to devote entire life to RTP’ing invention: job, family
responsibilities, financial limitations, all ok reasons for delay or inactivity.
-Other generally acceptable excuses: 1) illness; 2) waiting for manufacture by
a3rd party supplier of a special part or synthesis of a special compound needed to
continue work on the invention (NOT for regular items easily procured from other
sources); 3) delay while continuously seeking a company capable of actually RTP’ing
your invention 4) Delay due to collection of data in order to prepare patent
application
-Generally UNACCEPTABLE Excuses: 1) Commercial Considerations—Delays
due to raising capital for commercial exploitation of the invention not excusable; 2)
Waiting for someone specific to be there to help, when there are plenty of others
around capable of doing the work (Griffith c. Kanamaru)
Griffith v. Kanamaru: Griffith couldn’t show that he’d made his invention his first
priority. Instead, it seemed to take a backseat to other projects. Because of
this, the court decided the delay was not excusable.
-Abandonment (Also §102(c)), Suppression and Concealment
1) Is there Evidence that inventor intentionally abandon, suppress, or conceal the
invention b/w RTP and filing?
2) Can we infer A, S, or C from an unreasonable or unexplained delay?
Abandonment also §102(c): if 1st true inventor abandoned, you can get a patent if
the 1st kept it secret (it’s not KNOWN)
-Not a total bar: If you abandon, but resume when you find out someone else is
working on it you could still get priority as long as you RTP 1st, or if it’s already RTP,
the date you resume work would be the invention date.
S&C: Not the time elapsed that’s the controlling factor, but the total conduct of
the first inventor.

ELEMENTS OF PATENTABILITY: NON-OBVIOUSNESS §103

Non-Obvious Inquiry-§103 (Most common reason for invalidating patent rights):
Would the claimed invention have been obvious to a PHOSITA (also, ordinary creativity) in
the art the time the claimed invention was made?

FIRST: Identify your PHOSITA b/c obviousness depends on what the PHOSITA would
know/do.
- Remember—ORDINARY Skill (which also implies ordinary creativity)We don’t
want to set this bar too high, we don’t always equate it with the skill of the inventor
because the inventor might be extraordinary:

SECOND: Identify Scope and content of the prior art: Only ANALAGOUS prior art taken
into consideration, you can’t pull stuff from totally unrelated fields (limited to fields of which
a PHOSITA would be reasonably aware)
§103 violation can result from multiple references combined: diff from
§102(e), anticipation.

27
Threshold Question: Is the sought after patent a combination which:
1-merely unites old elements
2-with no change in their respective functions
3-and yields no more than one would expect from such an arrangement?
“Time of invention”: §103 requires casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field.
Clues that it might be OBVIOUS: Predictable Use = Predictable Results: Probably NOT
OBVIOUS (KSR v. Teleflex):
1-If a PHOSITA can implement a predictable variation, §103 likely bars patentability.
2-Apparent Reason to use known methods to combine familiar elements which yield
only predictable results.
3-Improvement is no more than the predictable use of prior art elements according to
their established functions.
4-If it’s something already known in prior art that's altered by the mere substitution of
one element for another known in the field, it’s obvious if it doesn’t do more than
produce a predictable result.
PREDICTABLE RESULTS COROLLARY: Conversely, if prior art warns that a
particular combination is
1- really hard or dangerous, or
2- Not worth trying b/c it’s certain to only yield certain predictable results,
BUT you figure out a way to combine it that yields productive, unpredictable results,
then that’s a good inference of NON-OBVIOUSNESS!
Evaluation of 2ndary Considerations: objective inquiries to shed light on origin of
patent’s subject matter
Is it OBVIOUS in light of:
1-Interrelated teachings of multiple patents
2-Demands known to the design community or present in the marketplace: Any need
or problem known in the field of endeavor at the time of invention and addressed by
the patent can provide a reason for combining the elements in the manner claimed,
and thereby render the invention OBVIOUS.
3-Scientific literature and market demand driving design trends.
4-Background knowledge of a PHOSITA, as well as creative steps he would employ,
a. PHOSITA’s knowledge of uses of items beyond their primary purposes
5-Other independent inventors coming up with your invention at the same time you
did.
Maybe it’s NOT Obvious in light of:
1-Licensing or acquiescence of others to your patent
-We think people don’t want to pay for something if they can obviously get it
for free
-BUT: it could just be cheaper to license than develop yourself
2-Awards for your invention
3-Skepticism, teaching away, unexpected results for what you did (Predictable
Results corollary above)
4-Copying by others
5- Others have failed to solve the long felt need/problem known in the field that the
patent addresses.
6- Advances in collateral technology: are you creating a sphere of innovative
improvement?
OBVIOUS even if:
1-Applicant was trying to solve DIFFERENT PROBLEM from the patentee:
Identity of motivation, purpose or problem to be solved is NOT required to find that
an applicant’s invention is obvious.

28
 The problem the old and new patents attempt to solve need not be the same. The
objective outcome is the only important thing.
2- There are NO PRECISE TEACHINGS directed to the specific subject matter of
the challenged claim: court can take account of the inferences and creative
steps a PHOSITA would employ.
Policy: Preventing the issuance of a patent that would withdraw what is already known into
the field of its monopoly and diminish the resources available to resourceful men.
Notes: Congress cannot restrict access to what is already known. Can only grant patent
protection to advances. Can’t take anything out of the public domain. There is also a
qualitative requirement – has to bring some benefit in some way to the public... some real
addition to the sum of useful knowledge.

ENFORCING PATENT RIGHTS

-Presumption of Validity: A patent is enforceable from the date it issues and is presumed
valid under §282
Burden of Proof: Party challenging the patent must prove invalidity by clear&
convincing evidence.
Patent INFRINGEMENT Suit: Patentee asserts that his patent CLAIMS have been
infringed, NOT the commercial embodiment of the claimed invention.
Question #1: What do the claims MEAN?
Question #2: Does the accused product infringe the CLAIMS at issue?
#1: Claim Interpretation Starting Point: How would a PHOSITA understand the
claim term?
1-Context: PHOSITA is deemed to read the claim term not only in the context of the
particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification.
2-Customary Meaning: Determine if disputed terms have an ordinary or customary
meaning in field of art.
3-Idiosyncratic Meaning: Evaluate public sources for that suggest what a PHOSITA
would understand the disputed term to mean
4-Context of Claim term provides clues: e.g. “Steel Baffle” implies that not all
baffles are steel, otherwise including the word “Steel” in the term would be
unnecessary.
RULE: (Phillips) Intrinsic evidence given greatest weight in claim interpretation w/
support from extrinsic evidence
Intrinsic Evidence includes:
1- Claims: Terms and Phrases in the claims must have clear support in the
specification so the claims can be understood.
2- Specification: The Specification is always highly relevant to the
claim construction analysis. Usually it is dispositive; it is the SINGLE
BEST GUIDE to the meaning of the term.
3-Prosecution History: What did you argue that these claims meant?
Extrinsic Evidence includes:
1-Dictionaries/Encyclopedias: Technical or General Purpose
2-Treatises
3-Expert testimony: Can be problematic if it’s litigation generated evidence
—bias?
a-provides background on technology at issue
b-explains how the invention works
c-Ensure that the court’s understanding is consistent with that of a
PHOSITA.
d-Establish that a disputed term in the patent or prior art has

29
 particular meaning in the pertinent field.
#2—Literal Infringement: Accused device doesn’t have to use ALL the patented
invention’s CLAIMS, but P must prove that it includes elements Identical or equivalent to
Each and Every Element of the Claim it DOES utilize.
The absence of even 1 element of a patent’s claim in an accused product means
there is NO literal infringement
Ex: Supersoaker water chamber is external while TTMP’s claim 1 described a chamber in a
contained housing and Supersoaker doesn’t have light and sound covered by TTMP’s claim
1. SUPERSOAKER does not literally infringe
DOCTRINE of EQUIVALENTS (DOE): Infringing device/process does not
infringe on each and every limitation in the claim, but the part that differs is
“equivalent” to the omitted/altered limitation.
DOE is applied to each limitation, NOT THE INVENTION AS A WHOLE—
You can’t argue that D’s overall invention is an equivalent of yours b/c it does
the same basic thing the same basic way.
Considerations in Determining Equivalents:
1-Triple Identity Test: 1) Does D’s element perform 1) the same function
in 2) substantially the same way to 3)obtain the same result as the claimed
element?
2-Would PHOSITA know differing elements were interchangeable @ time of
infringement?
3-Will finding D’s element equivalent give patentee rights he wouldn’t have
been able to obtain
4-Was patented invention a breakthrough (equiv. more likely) or relatively
minor in broad field.
Question of FACT, not LAW: DOE questions ALWAYS go to the JURY.
Timing Distinction: Literal infringement v. DOE:
Literal: measured at the time of filing
DOE: measured at the time of infringement.
All-Limitations Rule: Under this rule, for there to be infringement under the DOE an
equivalent of each claim limitation must be found in the accused device.
Tricky Issue---what is an ELEMENT? Sometimes used to mean a single
limitation, sometimes used to describe a series of limitations making up a
component of the claimed invention.
When two elements of the accused device
perform a single function of the patented invention,
OR
when separate claim limitations are combined into a
single element of the accused device,
THEN
Finding DOE Infringement of the claim limitation isn’t
necessarily off the table
IF
the differences are INSUBSTANTIAL.
Policy FOR the DOE: After-arising technology—SCT says we don’t want the
inventor to have to predict what insubstantial equivalents/variations could arise as
the invention enters the marketplace or could be invented later. This wiggle room
allows capture for those things.
Policy AGAINST the DOE: are we allowing patentees to capture things they didn’t
enable in their application, giving more exclusive rights than we think he’s due? We
still want to encourage invention.
PROSECUTION HISTORY ESTOPPEL (PHE), Limits DOE: If you took a
position during prosecution with regard to scope of coverage of the claims, PHE
prevents you from taking an inconsistent position later in order to argue that

30
 something you changed or affirmatively gave up should be an equivalent.
SCT RULE (Festo): Rebuttable Presumption of PHE arises when an
amendment is made during patent prosecution that NARROWS THE
SCOPE of the claim to SECURE THE PATENT UNLESS:
UNLESS the patentee can show:
1-reason for amendment was NOT to avoid prior art or specific
concern eg: obviousness
2- equivalent he’s seeking to capture was unforeseeable @ time of
the amendment.
3-The claims of equivalence are for aspects of the invention that
have only a peripheral relation to the reason for the
amendment.
OR 4-Some other reason suggesting that the patentee couldn’t
reasonably be expected to have described the insubstantial
substitute in question.
BUT
-If the patentee is UNABLE TO EXPLAIN reasons for the amendment, Ct should
assume PTO had a good reason related to patentability to include the limitation: PHE
applies AND bars infringement thru DOE
PHE POLICY: Prevents a patentee who narrowed his claim during prosecution to
overcome a prior art rejection by recapturing the surrendered claim breadth during
litigation.
Contributory Infringement §271: 3rd party sale of a component for a patented
device or the sale of a component for use in practicing a patented process to someone other
than the patentee.
1-Component must be a non-staple item that is not suitable for substantial non-infringing
use.
2-Knowledge: seller under §271 must have knowledge that the component is especially
made or adapted for use in an infringement of a patent.
3-Direct Infringement Required: Contributory Infringement can only be found if there is
direct infringement.

DEFENSES to INFRINGEMENT
Public Dedication Rule: If you disclosed something in the specification but did not list it as
a claim, it’s dedicated to the public domain. You can’t win on infringement if someone
then uses the info in the specs that you didn’t claim!
First Sale Doctrine/Patent Exhaustion: Once lawfully sold, the Patentee is stripped of his
rights in that particular product embodying his invention leaving purchase free to use,
repair, modify, discard, and resell the product.
-To Invoke 1st Sale Doctrine the sale must occur in the US
-1st Sale Doctrine DOES NOT give purchaser a right to make a new article on
the template of the original.
REPAIR (OK) v. RECONSTRUCTION (NOT Ok):
Repair is an Affirmative Defense to Infringement: Once P establishes infringement,
the BoP is on D to prove by a preponderance of the evidence, that the activities
performed constitute REPAIR.
3 Primary Repair & Reconstruction Situations:
#1: Entire Patented item is spent and alleged infringer reconstructs it to make it
useable again.
#2: A spent part is replaced (See SCT test in Aro)—Repair
#3: A Part is NOT spent, but replaced to enable the machine to perform a different
function—kin to “repair”

31
Repair=Preserving Fitness for Use: SCT Common thread (according to Fed Cir.):
“license to use a patented combination includes the right to preserve its fitness for use.
Requires consideration of:
1-Remaining useful capacity of the article
2-Nature and role of the replaced parts in achieving that useful
capacity.
1-Repair Defined as:
-Disassembly and cleaning of patented articles
-accompanied by replacement of unpatented parts that are worn or spent
-in order to preserve the utility for which the article was originally intended.
-Replacement of unpatented parts, having a shorter life than is
available from the combination as a whole, is characteristic of
repair, not reconstruction.
-Large scale overhauling (assembly line, etc.) can be ok: Navy overhauled
patented gun mounts on an assembly line, deemed ok b/c assembly line approach
was simply a matter of efficiency and economy.
-Commercial Scale Overhauling can be ok: Company that acquired used clutches
and disassembled, cleaned and replaced the worn out parts
-Burden of Proof:
Reconstruction: Usually involves replacing/remaking the patented components once
they’re spent (at the point where a reasonable person would purchase a new one)
BUT: Patentee’s intentions for duration of use don’t factor into reconstruction
analysis. Just b/c patentee didn’t intend their item to be usable more than once doesn’t
mean refurbishing non-patented parts of the product for extended use constitutes forbidden
reconstruction—Fuji’s intent that their cameras be ‘single use’ didn’t really matter to the
court in deciding if Δ’s refurbishment was forbidden Reconstruction.
LICENSE: The license gained by purchase of a patented article is governed by the
laws of K.
Unless there are express conditions of sale which limit purchaser’s use of
the article, Seller’s intent for limited use won’t control.
The Use (and Misuse) of Contracts in Patent Law
Patent Misuse: (Morton Salt) Ct won’t hear infringement claim if P misuses patent
by conditioning sale of patented product on buying unpatented product
(Tying=patented item available in package deal only)
P must show correction of misuse and dissipation of consequences before the
court will hear it.
Permissible Field of Use Restrictions: (Mallinckrodt) P can limit use of patented
device by license or K.

REMEDIES for Patent Infringement

LOST PROFITS: P must show that “but for” infringement, P would have made the
lost profit. If successful, the burden is on D to show the damages are unreasonable. (Micro
Chemical)
Panduit Factors for LOST PROFITS-P must prove:
1-Demand for patented product
2-Absence of acceptable noninfringing substitute
-Lots of non-infringing alternatives it makes it hard to know what sales the
infringer captured
3-P’s manufacturing & marketing capability to exploit the demand
4-Amount of profit P would have made
REASONABLE ROYALTIES: Evidence that infringement caused industry-wide depression of
market for licensing P’s product is required to show that P should get “reasonable royalties”
in excess of what P actually charges for a license. (Trio)

32
  TRADE SECRETS

Three elements of a trade secret claim:
1-Subject Matter: information sufficiently secret to derive economic value, actual
or potential, from not being generally known to other persons who could obtain
economic value from its disclosure or use.
-Formula, pattern, compilation, program, device Customer lists, Business
plans/models, Marketing Strategies
2-Reasonable Precautions taken to protect: Info is the subject of efforts that are
consistently diligent and reasonable under the circumstances to maintain its
secrecy or confidentiality.
-Efforts only have to be reasonable, they don’t have to be perfect.
3-Wrongful Misappropriation: P must show information was acquired through
deception or theft
-Often results from breach of explicit and implied duties to protect secret.
-Improper Means: Industrial Espionage—Even though your shady practice might
not technically be breaking a law, “One may not avoid these labors by taking the
process from the discoverer without his permission at a time when he is taking
reasonable precautions to maintain its secrecy
IS IT A TRADE SECRET? Factors to Consider in Making the Determination:
(Issue of Fact=JURY QUESTION)
1- Is the info known outside Ᵽ’s business: If YES, to what extent?
-Not enough to be the 1st or only one to use info, if it’s generally known but
underutilized info ≠ TS.
2-Extent to which the info is known by employees and others involved in the Ᵽ’s
business
BUT, Note: a TS doesn’t lose its character by being confidentially disclosed to
agents or servants without whose assistance it could not be made of any
value.
3-PRESERVING SECRECY: Reasonable Efforts can be shown by AFFIRMATIVE STEPS
such as:
-Clear affirmative communication to all who have access that the info is
CONFIDENTIAL is critical
-Confidentiality Agreements: depending on circumstances, Oral confidentiality
agreements can be reasonably relied upon (e.g. business mtg in Playwood: parties
orally agreed to confidentiality)
-Jury can take into consideration size & sophistication of parties, as well as the
relevant industry.
-Weighs in favor of Ᵽ if D is big player and Ᵽ is small time relying in good faith
on D’s confidentiality.
-Confidential Relationship: Well established that the formation of a confidential
relationship imposes duty upon the disclosee to maintain the info received in the
utmost secrecy,
-Marking all proprietary info “Confidential”
-Limiting access to info only to employees who “need to know” for efficient
exploitation of the info
-Judiciously limit copying and electronic distribution
-Create passwords
-Adopt other traditional security methods, “lock and key”
-“Reasonable” determination includes cost/benefit approach in determining
sufficiency of P’s efforts.

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 -FAILURE to TAKE REASONABLE MEASURES: persuasive evidence that the info
has no real value to Ᵽ
The following is insufficient Proof of Secrecy (Timex):
-Keeping info “private” from others but w/ no formal “lock & key” system or
C&NDA’s.
-Evidence of trade practice that seems to support inference of
confidentiality.
4-Value of the info to the Ᵽ’s business and its competitors:
-Value of info NOT diminished by an idea not being fully developed at the
time Δ misappropriates it.
-Value is in the innovation: someone in the industry could probably refine a
misappropriated prototype.
In Playwood, the fact that the track prototype Δ took wasn’t fully workable yet
didn’t make it less valuable b/c it only needed tweaking to get right.
5-Amount of time, effort, and money expended by Ᵽ in developing the info:
-How hard and/or expensive it was to figure out, acquire, assemble, tells something
about how valuable it is (e.g. a customer list compiled after years of developing
contacts and pounding the pavement)
6-Ease or difficulty with which the info could be properly acquired or duplicated
by others:
BUT until disclosed by being put on the market, a concept should be entitled to TS
protection,
Distinctions Between Trade Secret & Patent
Duration: Trade secret protection can last in perpetuity as long as 1) info remains secret
2) info retains its value
Trade Secret is State Law, Patent is Federal
Info eligible for Trade Secret protection may or may not be eligible for patent protection.
BUT: Even if it is, obtaining a Patent destroys trade secret b/c the patent publicly
discloses info

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