The first assignemnt is now posted in the “Assignments” section of the syllabus.
This is a survey course in intellectual property law. You will learn the basic doctrines of the major federal and state IP regimes, including patent, trade secret, copyright, trademark, false advertising, and publicity rights. The first half of the course is a rapid survey of the different IP systems, emphasizing the kinds of material that each one covers and the nature of its tests for infringement. The second half of the course deals with cross-cutting issues that are common to many kinds of IP, including boundary problems between different IP systems, and how both litigators and transactional lawyers deal with IP issues.
The readings for this course are a bit unconventional. You will need the following:
It is your choice whether to do the readings digitally or in hard copy. Whichever you choose, however, you must bring the day’s cases, statutory sections, and problems with you to class, as we will refer to them frequently. It is not necessary to bring the Understanding treatise with you to class.
The diversity of sources may seem overwhelming at first. I have assembled them, however, with an eye toward making the subject less confusing rather than more. I do not expect you to learn the black-letter doctrines from studying cases. Save time and stress: consult the Understanding treatise for precise statements of doctrine. Rather, we read cases for the application of law to fact, so that you can see, by way of example, how these doctrines play out in practice. The questions on this syllabus are intended to direct your attention to those issues we will emphasize in class. We will not discuss the questions in the casebook unless I specifically note them here.
We meet Mondays 9:50 to 11:50 and Wednesdays 9:50 to 10:45 in room 460. Note that the meeting times are uneven: 120 minutes on Monday and 55 minutes on Wednesday. There will be a break in the middle of the Monday class so we can all stretch, use the restroom, etc.
Our coverage of each topic will generally follow a common pattern. First, I will give a concise lecture on the black-letter doctrines and the policies behind them. Then we will discuss the related case or cases, with an emphasis on the factual details and the problems that lawyers confront applying the black-letter doctrines to those facts. Finally, we will discuss the related problems, allowing you to try your hand at applying the law yourself.
Here are my policies about class:
There will be a 3-hour final exam on a date to be determined by the Registrar. It will be open-book and subject to a strict word limit. The precice format will be announced later in the semester. I may distribute a short file of materials a few weeks before the exam to provide a factual background for some of the questions.
I will grade the final examinations blind to determine preliminary grades. I may then adjust preliminary grades up or down by a third of a letter grade – or, in extraordinary circumstances, two-thirds of a letter grade – baed on class participation. Good participation is anything that helps your classmates learn; bad participation is anything that detracts from their education.
Previous exams and sample answers are available from the websites for previous editions of this course. As should be evident from the sample answers, I consider the application of law to fact – that is, the identification of relevant facts and the explanation of how and why they affect the legal outcome – to be the most important part of a good answer. I also recommend John Langbein’s advice on Writing Law Examinations.
Office: Room 231
Phone: (410) 706-7260
Email: jgrimmelmann at law.umaryland.edu
Office Hours: Thursdays, 10:00 AM to 12:00 PM
Email is the best way to reach me and will generally lead to the fastest response. I do not usually check my voice mail when I am not in my office.
My office hours are the times I reserve for student meetings, not the only times I am available. Appointments are recommended but not required. If my office hours are inconvenient for you, email me to set up another time or just drop by. If the door to my office is open, please feel free to come in.
We begin with a brief overview of the policies behind intellectual property laws. We will use a classic patent case, O’Reilly v. Morse, both to introduce the basic ideas of patent law and to think through the policy questions in a concrete setting. The case, because of its age, should not be relied on as an accurate statement of modern patent doctrine. Then we will take up the basic mechanics of modern patents using two simple examples: a measuring cup (in the casebook) and a technique for immobilizing earthworms.
Next, we consider what kinds of inventions can be patented, assuming that they are genuinely novel and that the inventor has satisfied the procedural requirements. Our goal is to understand what patents are “for” and what they are not. Today’s class considers computer- and business-related patents.
A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:
- a first step of receiving, from a content provider, media products that are covered by intellectual property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;
- a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;
- a third step of providing the media product for sale at an Internet website;
- a fourth step of restricting general public access to said media product;
- a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;
- a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;
- a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;
- an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;
- a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;
- a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and
- an eleventh step of receiving payment from the sponsor of the sponsor message displayed.
What kinds of activities would infringe this claim? Who might the patent owner sue? In light of Diehr and Bilski, is this claim directed to patenable subject matter?
The Representative has asked you to help her think through the policy and legal issues these patents raise. She wants to know whether they are valid under current law and whether they're contributing to tax evasion. If they're problematic, she would like your suggestions on possible legislative fixes (either to the Patent Act or to the Internal Revenue Code).
Today’s class continues our consideration of patentable subject matter by considering biotechnology patents. We also consider the extent to which moral considerations enter into patentability. Note that because Prometheus and Myriad post-date the latest edition of the Understanding treatise, it does not discuss them.
The specification for U.S. Patent Application No. 13/094,444, titled “Content Distribution Regulation by Viewing User,” explains, in part:
Consumer detector 106 works in conjunction with the camera or capture device 102 to determine the number of users or consumers within the display area 165 of display 105. In the example shown in FIG. 1, there are two users 162, 164, within the display area 165 of display 105. Using the imaging or other detection technology of the camera 102, the number of actual consumers of the content viewing the screen display 105 is determined for use by the license manager 104 (and/or 152) in enforcing the terms of the license.”
I have called the invention “literally Orwellian.” Do these concerns affect its patentability? Is this invention “useful” within the meaning of § 101?
Claim 1 of U.S. Patent Application No. 10/869,082, titled “Process of Relaying a Story Having a Unique Plot,” reads:
A process of relaying a story having a timeline and a unique plot involving characters, comprising:
indicating that a first character experiences deja vu to mask an actual event
The remaining claims are dependent on claim 1 and restrict it in various ways. For example, claim 7 adds further plot details: “a second character exploits said first character’s deja vu to at least one of commit a crime on said first character and frame said first character in a commission of a crime.” Claim 22 adds, “wherein said process is a process of displaying a motion picture having a timeline and a unique plot.” And claim 24 is directed to “An information storage medium containing information of a story having a timeline and a unique plot involving characters, said information comprising [plot in which deja vu would] cause said first character substantial emotional trauma; and be a reminder of a past traumatic experience of said first character.”
Are these claims directed to patentable subject matter? Is this invention useful? Can you think of any other problems with this patent application?
Now that we have a sense of what is potentially patentable, we consider the linked questions of when and by whom, in cases where more than one person might plausibly claim to have been first. These rules, which are variously considered in terms of “novelty,” “statutory bar,” “priority,” have changed strikingly with the passage of the America Invents Act. Our treatment will focus on the new rules, but be aware that the old rules will remain relevant both in interpreting the new rules and in dealing with patents filed before March 16, 2013.
Problem (Pleistocene Park):
Two biotechnology firms, Crichton Industries and Spielberg Genetics, have been attempting to clone a wooly mammoth (an elephant-like mammal that became extinct about 3,500 years ago) from scattered preserved DNA fragments. The teams made only slow progress at first; the available mammoth DNA fragments were too short and too numerous to combine into a complete DNA sequence using standard laboratory techniques.
Then, on January 1, 2004, mathematician Rube Goldblum published an academic paper describing efficient ways to arrange books in libraries. Crichton’s lead researcher read the paper on February 2, 2005 and realized that the method Goldblum was describing could be used to arrange DNA fragments and compile complete DNA sequences.
Goldblum published (on March 3, 2006), a follow-up academic paper explaining how to apply his book-sorting method to the problem of DNA compilation. An executive at Spielberg read the paper on April 4, 2007, and decided to try the technique on the wooly mammoth problem.
On May 5, 2013, in a Crichton laboratory, a modern elephant implanted with a wooly mammoth embryo using standard artificial insemination techniques gave birth to a live wooly mammoth. On June 6, 2013, a Spielberg elephant successfully gave birth to a wooly mammoth. Because both teams started from the same, publicly available sets of wooly mammoth DNA fragments, their DNA sequences were identical. The next day, June 7, 2013, Spielberg held a press conference to announce the birth; it showed video of the baby mammoth and its scientists passed out CDs with the DNA sequence.
On July 12, 2013, Spielberg filed a patent application claiming “a wooly mammoth, having the DNA sequence . . .” Crichton filed its own patent application on August 20, 2013 with an identical claim.
You are an examiner for the USPTO, which has declared an interference between the two applications. Which application, if either, should you allow, and why?
Nonobviousness fits hand-in-glove with novelty, and it draws on very similar sources in the prior art. But an invention can be obvious even though it is not described in any single prior art reference.
What is the problem the Lukehart patent tries to solve? Would you have framed the problem in this way? What is the method the patent describes for solving that problem? Would you have thought of that method? Having had the method described to you, would you have expected it to work? How much testing would be necessary to discover whether it works or not? Is the invention something that someone who was not specifically searching for a solution to this problem might nonetheless stumble upon?
Problem (claim charting): In relevant part, claim 4 of the patent in suit in KSR comprises:
The Court had before it a number of pieces of prior art, and had to decide whether claim 4 was obvious in light of them. Please look closely at the Court’s descriptions of the following prior art:
Which of the characteristics of claim 4, as listed above, do each of these prior art references disclose? Make a chart. What improvements, if any, does each prior art reference suggest to a person having ordinary skill in the art. Using your chart as a guide, explain whether the Supreme Court’s analysis is persuasive.
The material in this section considers the process of applying for a patent. An applicant must satisfy various procedural requirements imposed by the PTO, draft claims that will define the scope of her rights, and provide an acceptable specification that provides the public with sufficient information about the invention to justify granting her a patent. We will focus on definiteness and enablement.
In a wheel chair having a seat portion, a front leg portion, and a rear wheel assembly, the improvement wherein said front leg portion is so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof … Is the italicized langauge indefinite in light of the substantial variation in automobile sizes and designs?
Finally, we deal with patent infringement. Deciding whether a defendant’s activities come within a patent’s claims requires two distinct steps: understanding what the claims mean (“claim construction”) and comparing the so-called “accused device” (or process, etc.) to that meaning. We consider each in turn, along with some further issues about the scope of infringement.
Problem (Super Soaker):
This is claim 1 from U.S. Patent No. 4,239,129:
[a] toy comprising an elongated housing [case] having a chamber therein for a liquid [tank], a pump including a piston having an exposed rod [piston rod] and extending rearwardly of said toy facilitating manual operation for building up an appreciable amount of pressure in said chamber for ejecting a stream of liquid therefrom an appreciable distance substantially forwardly of said toy, and means for controlling the ejection.
Does the Super Soaker 50 literally infringe this claim? Note that to use a Super Soaker, one fills it with water through the orange cap at the back top. Sliding the yellow handle back and forth along the white barrel pumps air into the green part. Pulling the trigger opens a valve that causes the air to press water forward, resulting in the Super Soaker’s famed superior soaking ability. (Conventional water pistols didn’t store up compressed air; they drove water out the barrel using the force of the trigger pull itself.)
Next, we turn to a (mostly) state-law field of IP: trade secrets. As the first reading from the casebook suggests, there is a close kinship between trade secrets and patents: consider the extent to which trade secrecy is the default when patents are unavailable for one reason or another. This section deals with the protectability side of trade secrecy; the material in the next section deals with the infringement side. As always, our questions are (1) what kinds of information can qualify as protectable trade secrets in principle, and (2) what steps must an owner take to ensure that particular information is a protected trade secret in fact?
Problem (Flaming Moe’s):
Moe Szyslak is the owner of Moe’s Tavern, where the specialty drink is a “Flaming Moe.” Moe mixes the drinks in a back room, then sets them on fire in front of customers.
- Representatives from Tipsy McStagger’s Good-Time Drinking and Eating Emporium meet with Moe to discuss licensing the recipe. As part of the negotiations, Moe tells them how it’s made. Tipsy McStagger’s breaks off talks and start selling its own version. What result?
- A Tipsy’s employee orders a Flaming Moe, pours it into a thermos, and uses a gas chromatograph to analyze its chemical composition. By so doing, he learns that the secret ingredient is cough syrup. What result?
- A Tipsy’s employee goes to Moe’s Tavern and bribes a bartender to tell her the formula. What result?
- Same facts as in (3), except that anyone who tastes the drink can recognize that it’s cough syrup. The Tipsy’s employee still bribes the bartender to tell them. What result?
- Woud Moe be better off trying to patent the formula for the Flaming Moe? What are the advantages and disadvantages for him? For society?
We round out or brief coverage of trade secrets with a discussion of infringement. Unlike patent law, trade secret law is highly relational: defendants are found liable for “misappropriation” of a trade secret because they violated legal expectations of how they would behave in their relationship to the plaintiff. Some of these violations sound more like torts, others sound more like breaches of contract: consider, as you read, whether trade secret law is doing any work of its own, or is merely relying on tort and contract.
You represent the Chicago Lock Company, whose “Ace” series of locks is used in vending machines, burglar alarms, and other high-security settings. Ace locks use an unusual cylindrical key that requires specialized equipment to cut. Each lock has a serial number printed on it; the company uses a secret formula to translate the configuration of tumblers inside the lock into a serial number. The company’s policy is that it will sell replacement keys only to the registered owner of a lock with a given serial number. All Ace locks and keys are stamped “Do Not Duplicate.”
For years, locksmiths have known how to analyze Ace locks. After a few minutes poking at the lock with their tools, they can write down the configuration of pins and tumblers inside the lock. They can then go back to their toolkits and grind a replacement key, which will open the lock. If the locksmiths keep the configuration information on file, they can grind replacement keys in the future without needing to go back to the lock and analyze it again. Individual locksmiths have, for years, kept such files for their local customers.
Recently, Morris and Victor Fanberg, two locksmiths, published a book entitled “AA Advanced Locksmith’s Tubular Lock Codes.” They asked locksmiths around the country to send them lists of Ace lock serial numbers and the corresponding tumbler configurations. Based on that information, they were able to program a computer to reconstruct Chicago’s secret formula. The book contains a table that shows how to turn an Ace serial number into a key configuration, which any locksmith with the proper equipment could then use to cut a key opening the lock with that serial number.
Because the serial numbers on Ace locks are frequently printed on the outside, Chicago is concerned that the publication of this book will undermine the security of Ace locks. It has asked you whether it can and should sue the Fanbergs for damages and to halt publication of the book. What is your advice? Is there anything further it would be helpful for you to know? Are there changes that Chicago Lock can and should make to its procedures in the future?
We start our study of copyright by asking the same question we asked when we started our study of patent law: what kinds of information is copyright meant to cover? The answer is strikingly different. Moreover, it blends seamlessly into the next question: which specific works of that type are actually protected? Copyright answers its coverage and protection questions the same way: original works of authorship are covered, and they are protected to the extent that they are original.
Fixation questions: Which of the following are sufficiently fixed to be copyrightable? In each case where your answer is “yes,” identify the material object.
Problem (Arrows Logo):
Is this logo (for a professional sports team) sufficiently original to be copyrightable?
Problem (Baby in a Box):
Look at the photograph in the “Course Materials” section of Blackboard titled “Baby in a Box.” Is it sufficiently original to be copyrightable? Identify all the aspects of the photograph that you believe would qualify as “original” for copyright purposes.
Problem (Monkey Selfie):
A monkey in Indonesia picked up a tourist’s camera and pushed the button, resulting in this photograph. Is it copyrightable? If so, who owns the copyright?
Problem (Baseball Card Price Report):
The Baseball Card Price Report is a comprehensive printed list of collectible baseball cards sold between 1909 and 2011. It lists 32,000 baseball cards and a market price for each of them. The market price is determined by obtaining transaction lists from several dozen large dealers and averaging the sales prices for the card over the past year.
The Report is organized by year: it has a section for 1909, a section for 1910, and so on. Each section is subdivided into a list of manufacturers (Topps, Upper Deck, and so on). Each manufacturer’s list is then divided by teams, and players are listed alphabetically by last name within a team section. For each card, the Report gives prices for mint, excellent, very good, good, and fair condition cards. In addition, about 9,000 of the cards are noted with a star to indicate that they are “premium” cards. These cards are considered especially valuable beacuse the player is in the Hall of Fame, played for a famous team, or some other reason that makes the card especially scarce or especially prized by collectors.
An entrepreneur calling himself Tyrone Tyrannosaurus has started a website called the “Collector’s Cheat Sheet.” The front of the site consists of three drop-down menus: year, team, and player name. Once a user selects all three, he is taken to a page that lists all of the companies that made cards of that player in that year. If a card is considered “premium” by the Report, the Cheat Sheet lists the card in bold.
You represent Mr. Tyrannosaurus, who has received a cease-and-desist letter from the publisher of the Report claiming that the Cheat Sheet is infringing on a copyright in the Report. What is your advice to your client?
Just as important as the question of what is copyrightable expression is the question of what is not. This class examines the crucial but elusive “idea/expression dicohotomy” that separates uncopyrightable idea from copyrightable expression.
Problem (Cooking for Kids):
Missy Lapine is the author of The Sneaky Chef: Simple Strategies for Hiding Healthy Foods in Kids’ Favorite Meals (published 2007), which “presents over 75 recipes that ingeniously disguise the most important superfoods inside kids’ favorite meals.” Jessica Seinfeld is the author of Deceptively Delicious: Simple Secrets to Get Your Kids Eating Good Food (published 2008), which “is filled with traditional recipes that kids love, except they’re stealthily packed with veggies hidden in them so kids don’t even know!” Infringement? Are there further facts it would be helpful to know?
On Blackboard, in the “course materials” section, there are a photograph and a stained glass image of a hula dancer. The dancer’s pose (kneeling, with right arm extended, etc.) is traditional. So is her dress (including the lei, etc.). Does the stained glass infirnge on the photograph? Are there further facts it would be helpful to know?
Your client, Thoth Software, would like to create and sell a version of Tetris for the Digix gaming console. What aspects of the game can Thoth imitate without fear of liability? The name? Falling blocks? The shapes of the blocks? Their colors? Lines that disappear when completely filled in? The music? The graphics around the play field?
Now we turn to infringement. As in trade secret, the protectability and infringement questions in copyright are closely interwtined. “Substantial similarity” between plaintiff’s and defendant’s works are the touchstone of infringement, but not all similarities count.
Problem (Bee Gees):
Here are the facts from a lawsuit by Ronald Selle against the Bee Gees. Read them, and listen to the plaintiff’s and defendant’s songs (on Blackboard, in the “course materials” section). The jury found for the plaintiff, but the District Court judge entered judgment notwithstanding the verdict for the defendants, and the Court of Appeals affirmed. Who was right: the jury or the judges?
Problem (New Yorker):
On Blackboard, in the “course materials” section, you will find a cover from the New Yorker and a poster for the movie Moscow on the Hudson. The copyright owners of the former have sued the producers of the latter for copyright infringement. You are the judge assigned to the case, which you have conducted as a bench trial by the consent of the parties. The defendants concede access. Write the portion of your opinion finding substantial similarity or the lack thereof. Be as specific as you can.
Copyright has an all-purpose, all-things-considered defense with no good equivalent in patent or trade secret. Fair use is notoriously difficult to pin down, but perhaps that reputation is a bit undeserved?
Fair Use Checklist:
The four fair use factors are a checklist of questions to ask about the facts in a given case, not a majority vote. As you see from the readings, they interrelate, and they are not all of equal importance. I find it helpful to break the factors down into a slightly more detailed checklist:
Factor one (“purpose and character of the [defendant’s] use”):
- Is the use for criticism, comment, or another use specifically mentioned in the flush text at the start of section 107?
- Is the use commercial or noncommercial?
- Is the use transformative?
Factor two (“nature of the [plaintiff’s] copyrighted work”):
- Is the work primarily informational or primarily expressive?
- Is the work published or unpublished?
Factor three (“amount and substantiality of the portion used”):
- How much did the defendant copy quantitatively from the plaintiff’s work?
- How qualitatively important were the copied portions to the plaintiff’s work? [Ed: why the plaintiff’s work and not the defendant’s?]
- How extensive was the defendant’s copying in light of any proffered justifications?
Factor four (“ effect of the use upon the potential market”):
- What is the relevant market, and is it one the plaintiff can legitimately claim a right to?
- Did the plaintiff suffer losses because the defendant’s work substituted for her own, or from some other reason?
- Did the defendant give appropriate attribution to the plaintiff’s work as a source?
- Did either party engage in any dishonest or illegal conduct that bears directly on the copying?
- Is there anything else significant in the facts not already accounted for? [Ed: this should be rare; it something seems relevant, ask again where else it might fit in.]
Problem (Chicago HOPE):
Compare Shepard Fairey’s famous Obama “HOPE” poster with the photograph he used as a starting point. Assume that the photograph’s copyright is owned by the Associated Press, which used it to illustrate a new story about a campaign event and then was offered for licensing through a stock photography bureau. Assume further that Fairey created the poster to support Obama, that he then licesned it for free to the Obama campgian, that the campaign has given out tens of thousands of prints to supporters and it has been distributed widely for free online. And finally, note that Fairey became significantly more famous as a result of the psoter and the publicity it received, and that he initially lied under oath in trying to conceal the fact that he had used the photograph as a source. Fair use?
Problem (Literally Unbelievable):
Watch the Literal Video Version of Total Eclipse of the Heart. Compare it with the official version. Is the LVV fair use as against the official version?
Even when two works are substantially similar, not all activities infringe. If I buy a book at a bookstore, the book’s text may be identical to the manuscript the author wrote, but I am not an infringer. Copyright has an intricate system of exclusive rights; today’s class gives you a taste of how they interlock.
Problem (DVR in the Cloud)
The Knowledge Channel (NYSE: KNOW) is a cable channel that airs a wide range of award-winning documentaries and reality programming. They have retained your firm as litigation counsel for a suit against Cablelopolis, a cable television operator in eight states in the Midwest.
Approximately eight months ago, Cableopolis announced a new feature. For $19.99 a month, its cable customers could subscribe to Re:Watch, a new “virtual VCR.” The way it works from the customer’s point of view is that at any point while watching live TV (or by setting a time in advance), the customer can push a “record” button on her remote control. When she does, Cableopolis immediately begins storing the video and audio of the specified channel to a hard drive in one of its regional offices. (Each customer is assigned a personal hard drive, which no one else has access to. If six customers, say, want to record the same program, Cableopolis will record it to all six of the hard drives assigned to them.)
Later, the customer can use the Re:Watch menus to select a previously recorded program. When she does, Cableopolis immediately begins streaming the video from the hard drive assigned to her, to the cable box on top of her TV set, which plays the program she previously asked to record. The set-top box stores ten seconds of the video at a time in a “buffer”; as the video is played for the customer, that portion of the buffer is emptied and made available for more video to be added to the buffer. (The buffer ensures that playback will continue to be smooth even if the connection is temporarily interrupted.)
When it heard about Re:Watch, The Knowledge Channel took the position that it would lead to copyright infringement of its original programming. While The Knowledge Channel was open to negotiating permission, for an additional fee to be agreed upon, Cableopolis flatly refused. Negotiations have broken down, and The Knowledge Channel intends to file suit against Cableopolis.
You have been asked to draft the complaint. Which theories of infringement will you include? For each theory of infringement, identify the exclusive right in question and the acts giving rise to liability. Are there any affirmative defenses you expect Cableopolis to raise in response to particular theories? (Hint: work slowly and carefully. The problem touches on almost every doctrine in the readings for this hour.)
Finally, we consider copyright’s Byzantine system of secondary liability. The readings for this class are short, as is the problem. We will use this class to catch our breath and catch up.
Problem (DVR in the Cloud, Revisited)
Consider again the DVR in the Cloud problem, this time with an eye on secondary liability. Are Cableopolis’s users direct infringers? If so, of which of the exclusive rights? Do they have a fair use defense? And, mst importantly, if the users infringe, is Cableopolis secondarily liable? Be sure to consider vicarious, ocntributory, and inducement liability.
Trademark law serves a different set of functions than the systems we have studied so far. It tries to prevent consumers from being confused about which products they are buying. This difference is reflected not just in the infringement tests, but in the basic question of what can be protected as a trademark and under what circumstances.
We start with the fundamental basis of trademark rights: associations in consuemrs’ minds between a trademark, the trademark’s owner, and the owner’s goods. We start by asking which words and phrases have the capacity to serve as trademarks–and which ones do not.
Problem (Drug Stamps):
Drug dealers in many cities sell heroin in single-dose bags for about $10. Frequently, the bags are labeled with a “stamp”: a phrase, image, or both.stamps include EXORCIST, FLATLINE, and GET HIGH OR DIE TRYING (this last one is laced with fentanyl). Viewers of The Wire may remember PANDEMIC, WMD, and RED TOPS, among others. Why would drug dealers mark their bags in this way? What functions do the stamps serve? Does it matter whether these are legally enforceable trademarks?
Today’s class takes up a series of illustrative problems in distinctiveness: nontraditional marks like sounds and colors, trade dress, names, and geographic terms.
Problem (Melting Bad)
You are the general counsel of Blancorp, a medium-sized scientific and industrial chemical supply firm named for its founder and CEO, Walter Blanco. He has been hoping for years to break in to the snow-and-ice melter market with his own line of salts for homeowners, businesses, and cities to spread on streets and sidewalks after snowstorms. Blancorp’s research chemists have been studying a type of naturally occurring rock salt from the area around Chamonix in France. Known locally as le loup bleu (French for “the blue wolf”), this particular variety is notable for its cobalt blue color and its remarkable resistance to clumping. (Some other melters are either naturally or dyed blue, but they all have lighter shades, Blanco assures you.)
Blanco has informed ou that his chemists have succeeded in replicating le loup bleu in the lab, with high purity, the same blue color, and the same resistance to clumping. He has asked them to start full-scale production immediately, and has come to you to discuss potential trademarks. Give Blanco your advice on which of the following marks for the salt would be good choices from a legal and business perspectives:
Problem (Bilgewater Bill’s):
Consider the following sequence of events:
Who has priority in Baltimore? In Seattle? In Chicago?
Consider the following sequence of events:
Who has priority in Baltimore? In Seattle? In Chicago?
Consider the following sequence of events:
Who has priority in Baltimore? Who has priority in Seattle? Who has priority in Chicago?
Consider the following sequence of events:
Who has priority in Baltimore? Who has priority in Seattle? Who has priority in Chicago?
Consider the following sequence of events:
Who has priority in Baltimore? Who has priority in Seattle? Who has priority in Chicago?
Problem (Trademark Throwback)
In 1984, to great local anger (about which we will have more to say later), the Baltimore Colts of the National Football League moved to Indianapolis. In 1993, a team in the Canadian Football League proposed to play in Baltimore and to call itself the “Baltimore CFL Colts.” The NFL Colts sued, and won an injunction against the CFL Colts’ use of the name. Properly decided? Does it matter whether the NFL Colts were selling merchandise with the old team name and insignia? If the defendants proposed instead to open up a bar in Baltimore under the name The Baltimore Colt?
The test for trademark infringement is deceptively easy to state: is there a likelihood of consumer confusion? Every circuit assesses this likelihood using its own multifactor test. As with substantial similarity in copyright, there is no substitute for practice applying the factors.
Problem (Cheat Sheet)
Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 Cal. L. Rev. 1581 (2006) reports on an empirical study of 331 litigated trademark cases and concludes that the factors do not have equal importance. According to the article, the following flowchart correctly decides every case in the sample set:
- Are the marks similar? If NO, then the defendant wins.
- Did the defendant act in bad faith? If YES, then the plaintiff wins.
- Was there actual confusion? If YES, then the plaintiff wins.
- Were the goods proximate? If NO, then the defendant wins.
- Is the plaintiff’s mark strong? If YES, then the plaintiff wins; if NO, then the defendant wins.
How should Professor Beebe’s findings influence our thinking about trademark infringement? Should it change how lawyers argue cases, how judges decide them, or how we study them in class?
Read the excerpted facts from Banfi Products Corp. v. Kendall-Jackson Winery, available on Blackboard. Who is the plaintiff? Who is the senior user? And assuming a bench trial, how should the judge rule on the multi-factor test for trademark infringement?
In the last half-century, courts and legislatures have developed a remarkable range of theories to justify finding a violation of a trademark owner’s rights under circumstances in which traditional consumer confusion about source at the point of sale is missing. Our class today is a rapid-fire survey of these theories, with an emphasis on sponsorship confusion and dilution.
Problem (Baseball Caps)
￼If you want to manufacture and sell caps with the Baltimore Orioles logo on them, do you need permission from the Orioles? Why or why not? Should you?
Problem (Do Something Infringing)
Britney Spears’s music video for “Do Something” features a flying pink Humvee. A shot in the video shows that the dashboard is covered in a fabric bearing the well-known Louis Vuitton print. LV sued her record label in a French court and won. Would the case have been decided the same way in a United States court?
Problem (Dilution Lightning Round)
On Blackboard, you will find a document with a few visual examples of possible dilution. For each, decide whether this is better described as dilution by blurring or dilution by tarnishment, and whether you think it is an easy plaintiff win, an easy defendant win, or a hard case.
Finally, we consider some of the most significant defenses to trademark infringement. Confusingly, two different defenses include the words “fair use”: descriptive fair use and nominative fair use. But it is a third defense, rooted in the First Amendment, that most closely resembles copyright’s fair use defense.
Problem (Trademark Defenses Lightning Round)
On Blackboard, you will find a document with a few visual examples of possible trademark infringements. For each, explain what defense or defenses the creators of these uses could raise to the inevitable trademark lawsuit, and which, if any, will succeed. Consider descriptive fair use, nominative fair use (including comparative advertising), and parody/First Amendment defenses.
Having completed our survey of the three major federal IP regimes–patent, copyright, and trademark–we are now in a position to reflect on what they have in common and what distinguishes them. This unit considers how they deal with “industrial design”: the creation of objects that are both useful and beautiful.
Copyright is the most-hands off in protecting designs. The “useful article” doctrine denies copyright to objects that have a utilitarian function unless that function can be clearly separated from their aesthetic appeal.
Problem (Coke Bottle)
This is the Coca-Cola Bottle by Earl Dean. Is its design copyrightable?
Problem (Eames Chair)
This is the Eames Lounge Chair by Charles and Ray Eames. Is its design copyrightable?
Trademark takes a more generous approach. The design of a product is a form of trade dress, and hence potentally source-identifying. But trademrk uses several doctrines to limit its coverage. The trademark owner must provide secondary meaning, and no protection is available for functional features of the design.
Problem (Bottle and Chair II)
Look again at the Coke bottle and Eames chair. Are their designs protectable trade dress?
Make yourself familiar, if you are not already, with PEZ dispensers. To what extent can Patrafico AG (the PEZ corporate parent) obtain trademark or trade dress protection in the appearance of PEZ dispensers? Can it trademark the spring-loaded flip-top design? The number of candies in a pack? The fluted front and footed base of a dispenser? Does it matter what heads the PEZ dispensers have? Against what products and uses will these rights be effective?
Patent offers the most expansive protection for designs. Not only do utility patents, which we have already studied, protect the useful features of an object, but a separate category of design patents protects “any new, original and ornamental design for an article of manufacture.” Some familiar doctrines from utility patents carry over directly to design patents; others require extensive modification.
Problem (Bottle and Chair III)
Look again at the Coke bottle and Eames chair. Are their designs protectable using design patents?
Please read Design Patent 604,305. Note the assignee. On Blackboard, I have posted images of an iPhone and five other smartphones. Do any of the others infringe on the ‘305 patent?
Problem (Video Bonanza)
I have posted three videos to Blackboard. In each case, has there been a right of publicity violation?
- Ad for Oldsmobile ‘88. The plaintiff is Kareem Abdul-Jabbar, born Ferdinand Lewis (“Lew”) Alcindor, Jr.,
- Ad for Mercury Sable. The plaintiff is Bette Midler. She recorded a well-known version of the song (“Do You Want to Dance”) featured in the commercial. The commercial uses a different recording, one featuring Ula Hedwig (a former backup singer for Midler). The producers of the commercial fully licensed the song from its copyright owners, and copyright law does not prohibit the creation of sound-alike recordings.
- Ad for E*Trade. The plaintiff is Lindsay Lohan.
Does this bobblehead doll violate Arnold Schwarzenegger’s right of publicity. As a reminder, following his action-movie acting career, Schwarzenegger went into politics and served as Governor of California from 2003 to 2011.
Problem (Tony Twist)
Mobster Antonio Carlo Twistarelli a/k/a Tony Twist is a villain who appears in thirty-six issues of the Spawn comic book series by Todd McFarlane. (Here is a picture.) MacFarlane has sometimes given away copies of Spawn comic books as promotions at hockey games.
Anthony Rory Twist was a hockey player who played for the St. Louis Blues and the Quebec Nordiques. He was known as an “enforcer” who would pummel players from the opposing team if they disrespected or acted too aggressively toward his teammates. (Here is a picture.)
Does Anthony Twist have a right of publicity case against McFarlane?
Problem (Satellite TV)
On Blackboard, you will find images from an advertisement for DirecTV. The advertisement ran on the Internet; it was shown to customers in markets served by Time Warner Cable. Some of Time Warner’s channels are analog; others are digital HD. DirecTV offers only digital HD channels. The parties agree that the HD channels are equivalent in quality. They also agree that the pixelated portions of the ads are not accurate depictions of cable TV signals, either digital or analog. Is the advertisement actionable?
Problem (Innocence of Muslims)
Cindy Lee Garcia, an actress, agreed to appear in a film being produced by Nakoula Basseley Nakoula, which was described to her as a sword-and-sandals desert epic titled “Desert Warrior.” There was no written contract. Following filming, Nakoula redubbed the movie in Arabic so that it was a strongly anti-Islamic film entitled “The Innocence of Muslims,” which portrays the Prophet Mohammed as a child molester and Garcia’s character as a fierce critic of his. Islam forbids visual depictions of the Prophet, making the film profoundly offensive on multiple counts. Following its release online, “Innocence of Muslims” led to great anger among many Muslims around the world, including death threats against Garcia.
Garcia has sued Nakoula for violating her right of publicity. Can she prevail under this, or any other, state-law theory?
Problem (Children’s Book):
You are law clerk to a jduge hearing a copyright infringement case. that the plaintiff’s work is a children’s book, and that the allegedly infringing work is a G-rated animated movie. The defendant admits that the plaintiff’s book was widely distributed but denies having copied from it, and argues that any resemblance is coincidental or the result including stock plot elements in children’s literature, like magical talking animals. The plaintiff has offered an expert witness who has made a chart of 83 alleged similarities; the defendant has offered an expert witness who will testify that the book primarily appeals to “verbally oriented” children aged 9-11, while the movie primarily apeals to “visually orented” children aged 6-8.
Will you restrict the jury pool to children? To parents? What special instructions, if any, will you give the jury regarding its task of assessing similarity? Will you allow the plaintiff’s expert to testify? The defendant’s? If you allow either of them to testify, what will you instruct the jury regarding the relevance of the opinions they offer? How will you allow the parties to present the works to the jury during the trial? Will you allow the jury to have copies of the book and a DVD of the movie with them during deliberations?
For this class, focus on the problem. Consult the readings (especially the cases) to understand the damages Jones might receive. The Understanding material is repetitive because it is divided among multiple sections; read the copyright material and then skim to see what is different in the other areas.
Problem (Noon Heartache)
Laura Jones, a jazz pianist and singer, self-records an album of twelve original songs that she titles Noon Heartache. She owns all of the relevant copyrights. She is paid roughly $500 per concert to perform at jazz clubs, which she does roughly ten times a month; her act is a mixture of jazz standards and songs from Noon Heartache. She sells copies of the Noon Heartache CD at her concerts for $15 each; the CDs cost her $5 in materials and duplication. Her sales in January, February, March, April, May, and June were 100, 90, 105, and 105, 85, and 75 CDs, respectively.
A hard-rock band, Skeletor, performs roughly twenty concerts a month, with an average attendance of 1,000 and an average ticket price of $25. Skeletor spends about $250,000 a month to rent venues, pay roadies, replace blown-out speakers, etc. The band’s setlists are typically about 16 songs long. In May and June, Skeletor began performing death-metal covers of four songs from Noon Heartache as part of its standard setlist.
Tom Tapedeck (not his real name) sells unauthorized CDs of Noon Heartache in the parking lot at Skeletor concerts. In May and June combined, Tapedeck sold 1000 CDs at $20 each. Because he uses home equipment, his duplication costs are higher than Jones’s: $8 per CD.
Jones sues for copyright infringement. Skeletor defends on the grounds of transformative fair use; Tapedeck asserts that Jones verbally granted him a license. Both of them lose in a bench trial. The court concludes that Skeletor’s covers are a mere change in genre that do not comment on the original, and it enters findings of fact that Tapedeck’s testimony is not credible given his demeanor and his inability to answer multiple questions on cross-examination.
What damages is Jones entitled to against the defendants?
Again, focus on the problem, consulting the cases as necessary to understand Jones’s remedies. Again, it is okay to move quickly through the Understanding material.
Problem (Noon Heartache II)
Review the facts of the Noon Heartache problem. Is Jones entitled to an injunction against either or both defendants? If so, what activities should it cover? Are either of them potentially liable to criminal chages for their activities?
Yet again, focus on the problem. The two copyright cases are useful in understanding the issues involved. The Understanding material on copyright is mostly redundant with the casebook, but look at the sectons on patent to understand the analogous test used there.
You represent Shelbyville Stages, a concert promoter. You have booked the eccentric pop musician Plastica for a twelve-city tour in the Northeast. The marketing staff at Shelbyville have recently discovered an image online that they think would be perfect for using on the concert posters. It features Plastica stepping down the landing ramp of a flying saucer, backlit, carrying a pair of cheerleader’s pompoms, with a guitar slung over her back, and wearing her trademark disinterested scowl.
A similar photograph was the cover of this month’s Them, a celebrity fashion magazine. An unknown party or party unknown, however, extensively Photoshopped it to make it look like a faded, weather-beaten Old West “WANTED” poster. The marketing staff tell you that this was a stroke of genius; the combination of the antique look with the kitschy futuristic technology gives the whole thing what they call a “neo-horsepunk flying-car feel” and the outlaw theme plays off Plastica’s expression. Their research has determined that the following people were in some way connected with the image:
- Plastica herself, who has spent years crafting her stage persona, which might be described as “heroin-ravaged all-American girl from outer space.”
- Plastica’s hair-stylist, Alicia Abt, who produced the complicated multi-layer updo in which she appears in the photograph, with a single side ponytail and a Statute-of-Liberty-style ring of spikes.
- Plastica’s personal trainer, Ben Boardwell, who has spent years working with her to develop her musculature to combine strength with a suggestion of wasted potential.
- A celebrity photographer, Charles Carmack, who decided on the flying-saucer theme, chose the placement of props, and instructed Plastica on how to pose.
- Carmack’s salaried assistant, Denyse Dozier, who operated the camera and pushed the button that took the photographs.
- A fashion designer, Edgar Eames, whom Carmack paid $1000 in cash for the day, who designed, sewed, and altered the tartan jumpsuit Plastica wears in the photograph.
- A toy designer, Frederick Fong, who created the 12” flying saucer toy that served as the backdrop for the photograph., and which Carmack purchased at a toy store the day before the shoot.
- A Photoshop expert, Gennifer Graham, on the staff of Them magazine for six years, who made the 12” toy look like it was 25’ tall, instead, and who digitally smoothed out the wrinkles in Plastica’s face, extended her neck by two inches, and made a hundred other similar tweaks.
- Them magazine, where the modified photograph ran.
- Some unknown person with the username SeePeteyPhotoshop, who added the Old West theme and uploaded the modified photo to the photosharing site AwfulThings.com.
Based on these facts, advise Shelbyville Stages on whether it will be possible to obtain sufficient permissions to use the Old West version of the photo for the concert posters, and, if so how to go about it.
This section is short, and I expect we may need to use some of the day to catch up. The Understanding material is important; the cases can be read more quickly.
Problem (International Man of Mystery)
Imagine that you are the general counsel for Dr. Evil and have been asked to draft an employement agreement for Number 2, who has been working for Dr. Evil for the past five years under an oral agreement. What clauses should you include? How do you expect Number 2 to respond, and how can you address his concerns? Does the answer depend on the state of employment?
We start with some licensing essentials: licenses versus assignments, exclusive versus nonexclusive licenses, transactional formalities, competing chains of title, licensee estoppel, and standing to sue. Focus on the cases; the Understanding material consists of things I want you to have seen, but that are less critical.
Now, we put some of these concepts to work in a real-life setting. Read over the problem materials before class, but do not focus on working out an answer. There will be time in class to discuss the issues with your classmates.
Your firm represents Prof. Charles W. Kingsfield, Jr., a professor at Patapsco Law School, on an informal basis (he is an old friend of one of the senior partners). He teaches legal history and local government law, is apparently both loved and feared by his students, and doesn’t know the slightest thing about intellectual property. He has recently approached the partner with a question about an email he received from the Social Science Research Network (SSRN), a website where he posts his articles for download. At the partner’s request, he provided a copy of the email, his contract with the law review that published his most recent article, and a printout of SSRN’s terms of service. The partner has asked you to sort out the legal implications for Kingsfield of SSRN’s new plan to sell bound copies of articles. Do so. (The relevant documents are posted on Blackboard.) You will have an opportunity to ask some follow-up questions of Professor Kingsfield in class.
Trademark’s basis of protection is distinct enough that it raises some unique transactional problems. What is it about trademarks that prevents them from being bought and sold as easily as copyrights and patents? Read the Understanding treatise sections, which are not long, and then look at the cases more quickly for interesting examples. The problem is fun, and I think it sums up trademark law in a vivid way; do take some time to think it through.
￼The Mongols Motorcycle Club is a group of motorcyclists based in Southern California. Its 500–1,500 loosely affiliated members have created an unincorporated association, Mongol Nation, which has registered the collective mark MONGOLS for “association services, namely promoting the interests of persons interested in the recreation of riding” and an trademark consisting of an individual riding a motorcycle with the letters “M.C.” for use on “jackets and t-shirts.” Group members often wear leather jackets bearing either the word MONGOLS, the image, or both. The group has also manufactured a number of T-shirts with these images for sale, although they have not particularly targeted the general public.
You are an Assistant U.S. Attorney for the Central District of California. Your office has been investigating the Mongols for drug trafficking, extortion, and murder, and is preparing to bring a RICO indictment against approximately 75 members of the Mongols. Your boss, the U.S. Attorney, has proposed that you also seek a seizure of the Mongols’ trademarks. By seizing the marks, he explains, your office will be able to immediately arrest anyone wearing a Mongols jacket and impound the jacket. Explain to him whether the plan will work. Assuming the seizure is authorized under RICO, what legal effects will it have?
For our review, we will do an in-class exercise: a protectability problem that ranges across the entire course. I will also give a brief summation lecture about what we have covered in the course and how it hangs together. Finally, there will be plenty of time for questions about anything and everything we have covered in the course.
Problem (Magic Trick)
On Blackboard you will find a “Magic Trick” problem and a supporting document. You knw the drill.