Glossary of Cincinnati Reds

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Art. I § 8 Cl. 8
Congress may "promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries"
Copyright v. Patent
Copyright protects expression; patent protects utility and ideas. To be protected, a work of utility must be patented.
Merger doctrine and utility
merger doctrine prevents protecting utility via copyright (would be protecting the idea instead of the expression)
Creativity in
(a) Copyright
(b) Patent
(c) Trademark
(a) modicum of creativity required
(b) novelty required
(c) no creativity required
Rationale for TM in Lanham Act (generally) § 1127
seeks to prevent consumer confusion by protecting any "word, name, symbol, or device or any combination thereof" used in commerce by any person to identify his or her goods and to indicate the source of the goods"
Purposes of TM protection (3)
1. protect the goodwill of businesses
2. prevents counterfeits from benefiting from the goodwill of others
3. protect consumers from deception or confusion as to the source of goods
Requirements of TM protection (4)
1. Mark must be capable of distinguishing a source, either through inherent or acquired distinctiveness
2. It must b so used in commerce
3. Must not already be subject to confusingly similar use by others
4. must not be functional as to the goods or services it denotes
TM = Spectrum of distinctiveness
1. Generic term: never protected
2. Descriptive term: secondary meaning
3. Suggestive term: Always protected
4. Fanciful or arbitary term: strongly protected
TM - Generic Term
- one that refers, or has come to be understood as referring, to the genus of which the particular product is a species
§ 14(c) provides for the cancellation of a registered mark if at any time it becomes the common descriptive name of an article.
How to avoid genericide (4)
- advertising to inform consumers about brand name and correct generic name
- efforts to make media and trade pubs aware of the brand name
- use of the brand name on other products to heighten brand recognition
- vigorous enforcement against infringers
TM - Descriptive term
Term is descriptive if it conveys an immediate idea of the ingredients, qualities or characteristics of the goods.
Only protected if acquired secondary meaning under §1052(f)
TM - suggestive term
Always protected. Term is suggestive if it requires imagination, thought, and perception to reach a conclusion as to the nature of the goods -- in other words if it immediately has a secondary meaning. Thus entitled to registration without proof of secondary meaning
TM - Fanciful terms
No association with product marketed - strongly protected. Marks created to serve as trademarks
TM Registration - marks that can be registered (6)
1. Descriptive, suggestive, arbitrary
2. Surnames (same as descriptive)
3. Colors, sounds, scents
4. Service marks
5. Certification marks
6. collective marks
Surnames -- registerable?
Yes. Treated same as descriptive marks. Can do business under your own name unless it produces confusion.
Someone else's surname -- registerable?
No. Generally §2(c) prohibits registration of the name of a living person as a TM w/o that person's consent because it violates that person's right to publicity
Colors, Sounds, Scents -- registerable?
Yes. TM extends to "any word, name, symbol, or device, or any combination thereof" that is capable of distinguishing goods or services in the marketplace.

NOTE: only limitation is if color or fragrance is functional -- then NOT registerable, b/c fair use.
Service marks -- registerable?
Yes, unless service is 'expected or routine' in sale of goods.' The rendering of a service which is normally 'expected or routine' in connection with the sale of one's own goods cannot be registered. Promotional activities that are "ordinary or routine" cannot be registered unless some extra benefit to the public."
Certification marks -- registerable?
Yes. But, may be cancelled if the mark is not used exclusively as a certification mark. Cannot be used additionally as a TM or service mark. See §1064(e)(1) - (3)
Registrant must control the use of the mark.
Collective Marks - Registerable?
Yes. Collective marks which are used by members of a coop, assoc. or other collective group to show membership are registerable. Compare to certification marks (if no membership by organizations, certification)
Marks excluded from registration under §2 (5)
1. Functional marks - subject to fair use to ensure fair comp.
2. Scandalous marks
3. Deceptive marks
4. Geographically misdescriptive marks
5. Confusingly simliar marks
Functional marks -- registerable?
No. Under §2(e)(5) a product feature cannot serve as a TM if "functional" or essnetial to the use or purpose of the article.
Scandalous marks -- registerable?
No. An "immoral, deceptive, or scandalous" mark cannot be registered as a TM under §2(a). Scandalous means "shocking to the sense of truth, decency, or propriety; disgraceful, offensive; disreputable"
Deceptive marks -- registerable? Test? (3 steps)
No says §2(a). Such a mark cannot acquire distinctiveness. Three questions:
1. is the term misdiscriptive of the character, quality, function, composition or use of the goods?
2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
3. If so, is the misdescription likely to affect the decision to purchase?
Geographically misdescriptive marks -- registerable?
No. If a locality identified by a geo. name or term is known for the production of goods and purchasers are moved by the name to buy the goods in the blief that they originate in the locality name, the name or term is deceptive.
Confusingly similar marks -- registerable?
No per §2(d). If so similar to an existing mark that the new mark is likely, when used with the good or service to cause confusion.
TM -- Savings Clause -- §2(f)
Restores eligibility for marks that have achieved secondary meaning
NOTE: does not apply to deceptive or confusingly similar marks or primarily geographically misdescriptive (unless secondary meaning prior to NAFTA implementation) or functional marks.
TM Ownership requirements
Mark must be used in commerce for it to receive protection
1. state common law: incorp. doesn't create prop. interest in mark until business conducted
2. Under federal law, can file "notice of intent to file
TM Ownership -- Incorporation enough?
No. Elements of unfair competition are absent because there can be no public confusion b/t existing businesses nor is there any infrigement upon the good will and reputation of an existing business
TM Ownership -- Federal law "intent to use"
Under state law, it's first use. Under federal law (15 USC §1051(b) enable a party to obtain temp. preemeptive rights to a mark that it intends in good faith to use in commerce in the reasonably foreseeable future." 6 to 24 month window.
Why federal registration for your trademark? (2)
If mark is registered, it serves as constructive notice to would-be infringers of that mark. It also affords incontestability as to its validity (for descriptiveness) after 5 years of continuous use.
NOTE: exceptio for senior user
Constructive Notice & Incontestability
CN: reg. gives registrant nationwide rights in his mark (§1072). Registrant has preemptive rights over any post-reg. user of confusingly similar TM, with exception to prior users.
INC: Five years after reg. mark becomes incontesable (§15) meaning validity is established as a matter of law. After five years, a prior user cannot attack a descriptive mark as lacking sufficient secondary meaning bear a tm.
Exceptions to inconstestability doctrine for federal registration (3)
Can federal marks be defeated by state law?
Nope -- state law must yield to the superior federal law. Remember, TM is commerce clause issue.
Test for trademark infringement
Likelihood of confusion -- polaroid test
Polaroid test (8)
Test for likelihood of confusion for TM infringement. Weighing:
1. Strength of the mark
2. degree of similarity between the two marks
3. "proximity" of the two marks
4. likelihood that the junior user will bridge the gap
5. Evidence of actual confusion
6. Junior user's bad faith
7. Quality of the junior user's mark
8. Sophistication of the relevant consumer group
Polaroid factor 1: Strength of the mark
...its tendency to identify goods sold as emanating from a particular source. In judging strength of the mark, courts will consider whether it is descriptive, distinctive, or arbitrary or fanciful
Polaroid factor 2: Similarity of the two marks
Court must asses the "overall impression" created by the two marks. A proper analysis of similarity includes examining the pronunciation, appearance, and verbal translation of conflicting marks
Polaroid factor 3: "Proximity" of the two marks
measures whether it is likely that consumers will assume either that the junior user's product is associated with the senior user or is a product of the senior user. Court will consider: content, geographic distribution, market position, and audience appeal.
Polaroid factor 4: "Bridging the gap"
whether the senior user of the mark is likely to enter the market in which the junior user is operating. TM law protects user's right to enter into a related field in the future (CBS)
Polaroid factor 5: "Actual confusion"
not required, although it is especially important when it does exist
Polaroid factor 6: "Junior User's Bad Faith"
more likely to be demed infringer if JU adopted it's mark with the intention of capitalizing on the plaintiff's goodwill. (doesn't tell us anything about confusion -- only reflects increasing power of the wrongheaded 'appropriation' theory of trademark)
Polaroid factor 7: "degree of consumer sophistication"
The less care that a purchaser is likeli to take in comparing products, the greater the likelihood of confusion. Where a product is inexpensive, purchasers are less likely to exercise a great deal of care in determining origin of the product (blockbuster)
Trademark Dilution
Under §43(c) mark holder may enjoin another person's commercial use of his "famous" mark if the use "causes dilution of the distinctive quality of the mark"
Trademark Dilution Test (Ringling Bros.)
requires proof that:
1. a defendant has made use of a junior mark sufficiently similar to the famous mark to evoke in a relevant universe of consumers a mental association of the two that
(2) has caused...
(3) ...actual economic harm to the famous mark's economic value by lessening it's former selling power as an advertsing agent for goods and services.
Trademark Dilution Factors (Sec. 43(c))
1. degree of inherent or acquired distinctiveness of the mark
2. the duration and extent of use of the mark in connection with the goods or services with which the mark is used
3. duration and exent of advertising and publicity of the mark
4. geo. extent of trading area in which the mark is used
5. channels of trade for the goods or services with which the mark is used
6. degree of recognition of the mark in the trading areas and channels of trade used by the marks' owners
7. nature and extent of use of the same or similar marks by third parties
8. Whether the mark was registered
(mead, Wawa)
Dilution through Blurring
Used mark so much it begins to lose it's ability to identify product. Factors:
a. Similarity of the marks
b. similarity of the products
c. sophistication of the consumers
d. predatory intent
e. renown of senior mark
f. renown of junior mark
(see mead data central v. Toyota)
Dulution through Tarnishment/Parody
Coca-cola case
Tarnishment cases involve humorous (satire or parody) uses of well-known marks.
Federal unfair competition - §43(a)
43(a) protects even unregistered trademarks if they meet section 2 requirements.
§43(a) Right of Attribution
When work departing from original presented as p's, claim exists. When edited, without p's consent, into a fomr that departs substantially from the origanl work.
Trade Dress defined
"the total image of the business including size, shape, color, color combinations, texture, graphics, sales techniques" Must be inherently distinctive
Test for "inherent distinctiveness" in trade dress
Only if a product's features almost automatically tell a customer that it refers to a brand is it "inherently distinctive." (wal-mart). Therefore, product design or product color along cannot be inherently distinctive. (ambig. trade dress should be product design and therefore secondary meaning required)
To prevail on TD infringement
...a plaintiff must establish that there is a likelihood of confusion among consumers as to the source of the competing products.
False Advertising
Lanham Act prohibts false or misleading advertising under 43(a)(1)(b): any person who uses in commerce any false or misleading description of fact, or false or misleading description of fact, which in commercial ad. or promotion misrepresents his or another person's goods...shall be liable in civil action.
Must show to make False Advertising Claim
1. Must demonstrate advertisement is either literally false or (though literally true) likely to mislead and confuse consumers.
2. When df's ad claims that its product is superior, plaintiff must affirmatively prove pl. product equal or superior. Where df's ad represents that tests prove its product superior, pl satisfies burden by showing that the tests did not establish the proposition for which they were cited.
Protecting Personal Identity
Right of publicity is not liited to the appropriation of name or likeness. If a celebrity's identity is commercially exploited, there has been an invasion of his right whether or not his "name or likeness" is used. Must show cause for confusion AND no artistic relevance
State law cause of action. The damage is the unauthorized use of the goodwill earned by another, and the state objective is to avoid likelihood of consumer confusion (INS v. AP).
State's interest is protecting customers NOT incentive to create like federal law.
Passing off
State law cause of action. Occurs when the df tries to pass off its prodcut as the plaintiff's product. (Ex: inducing a computer store to represent that computers are made by apple when they are not) [also REVERSE PASSING OFF]
Misappropriation Factors (3)
1. It has created a valuable intangible
2. The df has appropriated that intangible w/o permission and for profit
3. The df's taking has harmed the pl economically.
Passing off considerations
Consider: motive, effect of entry, number of competitors, conduct, and actual harm to competitor.
Defenses to TM Infringement (9)
1. Parody
2. Descriptive fair use
3. Comparative advertising
4. Use and reconditioned goods
5. Immunity
6. Abandonment
7. Genericide
8. Consent
9. Laches
Parody as TM Inf. defense
Fed Courts have not be uniform in treatment of parody. Some have held that a mark holder can enjoin a parodic use of his mark (consistent with 1st amd) so long as "adequate alternative channels of communcation exist." Better approach recognizes the 1st amd. commandds more tolerance of confusion when a mark is parodied.
Descriptive fair use as TM inf. defense
Alleged infringer must establish that its use of a registered mark was (1) not as a trademark, (2) "descriptive of" the defendant's goods or services, and (3) fair and in good faith. See STW, Abercrombie.
Comparative advertising as TM inf. defense
use of another's TM to identify the TM owner's unpatented product in comparative advertising is not prohibited. Limitations: (1) cannot create likelihood of confusion (2) statement cannot be untrue (see 43(a))
Used and reconditioned goods as TM inf. defense
Used goods can be sold with original mark, if not sold as "new". Requirements:
1. The identity of the repairer is made clear
2. The fact that the product is used is well marked
3. the repair was not so extensive as to make any reference to original manufacterer misleading.
Immunity as TM inf. defense
11st Amd. cases provide sovereign immunity b/c the SI of a state was neither validly abrogated by the TM Remedy Clarification ACt nor voluntarily waived vy the state's activities.
Abandonment (by disuse) as TM inf. defense
Disue of a mark w/o intent to resume use is abandonment (PF after 2 years). See §1127. §45 of LA defines "use of commerce" as "the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in the mark..."
Abandonment but resumption of use? Valid?
No. Abandonment, once established, is not cured by a resumption of use. Upon resumption of use of a mark the holder's rights flow from the date it resumes.
Abandonment by assignment in gross as TM inf. defense
the transfer of a TM apart from some goodwill of the business which it represents is an invalid "naked" or "in gross" assignment which passes no rights to the assignee.
Deliberate abandonment as TM inf. defense
Abandonment can occur by deliberate action, as when the owner announces that it is ceasing use of a mark.
Genericide as TM inf. defense
§14(3) of the Lanham act provides for the cancellation of a registered mark if at any time it becomes the common, descriptive name of an article or substance.
Consent as TM inf. defense
It is a defnse that the actor's use is within the scope of the owner's consent as manifested by an agreement between the parties or by other conduct from which the owner's consent can reasonably be inferred.
Laches as TM inf. defense
Requires df to prove that:
1. The pl had knowledge of the defendant's unauthorized use of a confusingly similar mark.
2. the pl. unreasonably delayed taking action.
3. The defendant was unduly prejudiced as a result of the plaintiff's delay.
Secondary liability contributory TM infringement
Distributor is liable for knowingly providing product to infringer. If manufacturer (1) intentionally induces another to infringe a mark or if it (2) continues to supply its product to one whom it knows or has reason to know is engaging in TM infringement, the manufacturer is secondarily liable.
Remedies for TM infringement
1. Injunctive relief
2. Award of profits, if just
3. Additional penalties for counterfeiting
Injunctive relief as remedy for TM infringement
Most common form of TM inf. relief. Provided for by §34 of LA.
Profits as remedy for TM inf.
IF just (per §35). At the discretion of the judge. Different rationales: unjust enrichment, deterrence, and compensation
Trade secrets
Advantages: can be protected almost indefinitely. Three questions:
1. Is the material a trade secret?
2. Has a misappropriation occurred?
3. What type of relief is appropriate
Trade secrets -- what is a trade secret?
Two criteria:
1. must be sufficiently secret that the firm derives some economic value from the info not being generally known by others.
2. the firm must make reasonable effors to maintain its secrecy or confidentiality
Trade secrets -- was it misappropriated?
"Knowingly improper acquisition." By means which the person knows or has reason to know are improper or devious.
Trade secrets -- appropriate relief?
Injunction lasts until proper means would result in discovery. Max appropriate duration is the amount of time which the misappropriator would have needed to discover the trade secret using proper means (reverse engineering or ind. development)
Non-compete agreements reasonable?
Yes, but only if:
1. from the standpoint of the employer, it is reasonable in the sense that it is no greater than necessary to protect the employer
2. from the standpoint of the employee, the restrain is reasonable in the sense that it is not unduly harsh and oppressive in curtailing his legitimate efforts to earn a living
3. The restraint is reasonable from the standpoint of public policy.
Protecting Ideas -- Ok? And how?
Law does not protect ideas, but law in many states protect ideas indirectly, via contract or unjust enrichment law.
1. Misappropriation
2. Express or Implied contract
3. Unjust enrichment
Protecting ideas -- misappropriation
No action for misapp. unless:
1. The idea was novel
2. The idea was in a concrete form
3. The defendant makes use of the idea
Protecting ideas -- express or implied contract
An idea can constitute consideration under normal contract rules. To be subject matter of a contract idea ned not be novel or concrete
Protecting ideas -- unjust enrichment
No legal contract here. To recover, idea must be:
1. novel
2. concrete
3. disclosed under circumstances such that df. expected to pay
4. value must accrue to the user against which damages can be measured
If p fails at TS claim, can he claim unjust enrichment?
Nope. When an adequate remedy at law is available, the court may not resort to principles of equity. This, if p fails on TS claim, court may not entertain claim of unjust enrichment.
Patentable subject matter
Whoever invents or discovers any new or useful process, machine, manufacture, or composition of matter, or any new useful improvement thereof, may obtain a patent (§101)
Patent -- "manufacure"?
Read broadly - court has read this term in sec 101 to mean "the production of articles for use from raw or prepared materials by giving these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery"
Plant patents
35 USC §161: "Whoever invents or discovers and asexually reproduces any distinct and new variety of plant...may obtain a patent..."
Process patents
Process or business method is patenable if useful. Algorithms themsevles are not patentable because they are abstract ideas. HOWEVER, if the algorithm is applied in a useful way, it may be reduced to some type of practical application
What Subject matter is unpatentable?
1. Laws of nature, natural phenomena, and abstract ideas.
2. Algorithms are not patentable subject matter to the extent that they are merely abstract ideas.
Ornamental design patents
35 USC §171: whoever invents any new, original or ornamental design for an article of manufacture may obtain a patent therefor. (If beautiful may be patented)
PTO's definition of Design
Design of an object consists of the visual characteristics or aspects displayed by the must be a definite preconceived thing, capable of reproduction and not merely the chance result of a method.
If you have a copyright, can you get a patent?
Yes. But not vice versa. An author-inventor may elect to secure exclusive rights by both modes but MUST GET COPYRIGHT FIRST.
Can you patent a gene?
No. The "laws of nature, physical phenomena and abstract ideas have been held not patentable." In theory you cannot patent a gene if the gene occurs in nature. But, a gene patent can see the result of something that results from the gene.
Utility patents
Invention is not "useful" until refined so that specific benefit exists. Under §101, an invention must be useful to be eligible for patent.
Design patents
Primarily functional design CANNOT receive design patent. A work will bear a design patent only if it was created for the purpose of ornamenting. If "primarily functional" no design patent. BUT, if functional aspect could be accomplished in many other ways, this is enough to destroy the claim that the design is primarily functional
Patent - Novelty requirement
A person shall be entitled to a patent unless the invention was known or used by others in this country. An invention is not patentable unless it differs from all products and processes in existence at the time it was invented; invention cannot be "anticipated by" the prior art. §102(a)
Does publication negate novelty?
Yes, if (1) disseminated or (2) available. see §102(b)
Does prior invention by another negate novelty?
Yes, according to §102(g). A person cannot get a patent is someone establishes that he made it first and did not abandon, suppress or conceal the invention.
Conception = inventor?
Yes. See §102(f). A person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented. The person who CONCEIVES of the invention is the inventor, even if it is someone else who reduces his idea to practice
Prior inventor -- but too long a delay?
May bar inventor from winning priority contest. See. 102(g). In determining priorty of invention, dates of conception and reduction to practice shall be considered, as well as the REASONABLE diligence of one who was first to conceive and last to reduce to practice. P
Patent if prior inventor applied for or was granted patent first?
No. See 102(e). No person shall be entitled to a patent when the invention was described in an application for patent by another filed in the US before the invention of the application.
What is novelty in a design patent?
Design patent is novel when average observer takes for different. The novelty of a design patent is to be considered in light of the impact of the design upon the ordinary observer. This condition is met when the "average observer takes the new design for a different, and not a modified already existing design"
What is novelty in a plant patent?
must have characteristics clearly distinguishable from those of existing varieties and it is immaterial whether the judgment of the patent office the new characteristics are inferior or superior to thsoe of existing varieties.
Nonobviousness requirement for patent
17 USC §103: Patent may not be obtained if invention obvious from the prior art.
Nonobviousness and Graham Factors
(1) the scope and content of the prior art
(2) the differences between the calims and the prior art
(3) the level of ordinary skill in the partinent art
(4) secondary considerations, if any, (see notes)
Are prior inventions by same inventor part of 'prior art'?
No. Patent applications or patent grants are not prior art for section 103 purposes if the SM and the claimed invention were owned by or subject to an obligation of assignment to another person
Biotech product and process patents in the same filing
103(b)(1) prohibits obviousness rejections of process patent applications for biotech processes using or resulting in a novel and nonobvious composition of matter if:
1. the product and process claims are the same application and have the same filing date
2. The prod. and process claims were owned by the same person when they were invented.
Biotech product and process patents (policy argument)
without a process patent, domestic biotech companies could not prevent overseas parties from mkaing the same unpatentable end products by the same process and importing them into the United STates.
Obviousness of Design Patents
In order for a design to be unpatentable because of obviousness, there must first be a basic design reference in the prior art, the design characteristics of which are basically the same as the claimed design. NOTE: a finding of obviousness cannot be based on selecting features from the prior art and assembling them to form an article similar in appearance to the claimed design.
Obviousness of plant patents
We might ask about (1) the characteristics of prior plants of the same general type, both patented and nonpatented, and (2) the differences between the prior plants and the claims at issue.
Statutory that negative novelty (4)
1. Public Use - one year
2. On same - one year
3. abandonment and forfeiture
4. Foreign patent bar
Public use as a statutory bar that negatives novelty
Inventor is entitled to commercial use up to one year w/o filing (102(b)). "A person sshall be entitled to a patent unless the invention was in PUBLIC USE (used for competetive advantage in the market place) more than one year prior to the date of the application for patent in the US. (NOTE: if private enjoyment...can be more than one year)
'On sale' as a statutory bar that negatives novelty
There is no protection for a patentable item on sale for more than one year (102(b)). Two conditions:
1. The product must be the subject of a commercial offer for sale
2. The invention must be ready for patenting. (satisfied by either proof of reduction to practice or by proof that prior to the date, the inventor had provided drawings sufficiently specific to enable a person skilled in the art to practice the invention.
Abandonment and forfeiture as statutory bars that negative novelty
Inventor abandons patents by dedication to the public (102(c)). To abandon the invention the inventor must intend a dedication to the public. This intent may be express, as by a declaration by the inventor, or implied as by his actions or inactions.
foreign patent as a statutory bar to negative novelty
Not entitled to a patent when patented abroad (102(d)). (12 month window)
Patent application must be...
...specific with enabling disclosure, drawings, and oath
Patent specification in patent application
A patent application must include a specification, a drawing and and oath. (111(a)(2)). The specification must be "enabling" meaning sufficient to allow a person skilled in the art to make and use the claimed invention. Two part test:
1. delimit the scope of the claimed invention.
2. Look to the disclosures made in the patent to ascertain whether, given that level of disclosure, a person skilled in the art could successfully reproduce the claimed invention in its enture scope. Because only the claimed invention receives patent law protection, the disclosures need generally be no greater than the claim.
Patent specification and best mode
§112 requires that "the specification...set forth the best mode contemplated by the inventor of carrying out the invention." The court will find non-compliance only if the patentee has concealed, whether knowingly or unwittingly, his preferred embodiment of the claimed invention.
Curing problems in patent applications
One can seek to amend an application for a patent and add new claims, fix defects, join joint inventors
Continuation application to add new claims while patent application still pending
§129, A patent applicant may file a second app containing the same disclosure as the parent application while receiving the benefit of teh earlier filing date. Receives benefit of eariler date only if:
1. it contains the same disclousre under sextion 112 para 1
2. it is filed while the parent app is still pending
3. it specifically corss-references the parent application
4. At least one of the inventors named in the parent app is also named in it
Reissue applications to fix defects in the patent specification or claims
When a patent is found to a result of defects in the specification, or claims that are too broad or too narrow, a patentee may obtain a corrected, or "reissue" patent for the remainder of the term, provided that the defects in the original were the result of error not "deceptive intention". NOTE a patentee may not use thsi procedure to introduce new matter into the patent specifications.
Provisional patent applications
§111 Inventors may file provisional patent applications, which require specifications and drawings but no claims. The app must be followed by a complete app within one year (or it is deemed abandoned). Filing date of the PA will apply to the complete application, if filed within one year.
Double patenting
Persons are not entitled to two patents for either (a) the same invention or (b) an "obvious" modification of the same invention. Inquiry is whether the claimed invention in the application for the second patent would have been obvious from the SM of the claims in the first patent, in light of prior art
Terminal Disclaimer
§253. Whenever, w/o any deceptive intention, a claim of a patent is invalid, the remaining claims shall not thereby be rendered invalid. Guarantees that the second patent would expire at the same time as the first patent. NOTE: only available for obvious double patent
Terminal Disclaimer -- policy
because it Guarantees that the second patent would expire at the same time as the first patent, it's consistent with the policy that the public should be free to use the invention as well as any obvious modifications at the end of the patent's term.
Double patenting may be found in different patent types
DP can exist between a design patent and a utility patent despite differences in the SM with which each type of patent is concerned. Test is whether the patents "cross read" ie. claim the same thing. "to say that patents cross-read means that a device embodying the patentable design of the design patent must infringe the utility patent
Joint inventors -- patent
Must COLLABORATE on invention §116. May apply jointly even though
1. they did not physically work together at the same time
2. each did not make the same type or amount of contribution
3. each did not make a contribution to the SM of every claim of the patent.
NOTE: each JI must generally contribute to the conception of the invention.
Ownership in the employment setting
A. Worker must assign patent to employer if employment contract so specifies.
B. Employer has "shop right" to use patents developed at work. (even if employer doesn't maintain the patent)
Term of Utility and plant patents
§154. Term for both lasts 20 years from filing, with EXTENTIONS for up to five years where prosecution of a patent is delayed by interferences, appeals, or secrecy orders.
Term of design patent
§173 - Term of protection for design patents is 14 years from the date of issue.
Patent holders exclusive rights (4)
1. Design or utility patentee may exclude others from use, sale, or offer (§154)
2. Process patent holders can exclude products produced by process. (§154)
3. Patentee may prevent exporting components to infringe abroad (§271(f)-(g))
4. plant patentee may exclude others from asexual reproduction and sale (§163)
Patent infringement - Claims construction (two steps)
The determination of patent infringement is a two-step process.
1. the meaning of the claims in issue must be determined by a study of all relevant patent documents (claim, drawings, wrapper, etc.)
2. The CLAIMS must be read on the accused structures. Little value that they read literally, what is crucial is that the structures must do the same work in substantially the same way, and accomplish substantially the same result to constitute infringement
Patent infringement -- 'doctrine of equivalents'
under DI, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is "equivalence" between the elements of the accused product or process and the claimed elements of the patented invention. "if it performs substaintially the same function in substantially the same way and for substantially the same purpose as the claims set forth"
Patent infringement -- 'doctrine of equivalents' applied to each element NOT THE WHOLE
each element is deemed material to defining the scope of the patented invention and thuse the DI must be applied to individual elements of the claim, not to the invention as a whole.
patent infringement - file wrapper estoppel
Applied only where claims have been amended for a limited set of reasons. Patentee is rebuttably presumed to have abandoned not only the literal territory surrendered as to the claim but all equivalents. W/O any explanation, cour should presume that the PTO had a substantial reason related to patentability for including the limiting element added by amendment. (and would therefore bar application of doctrine of equivalents)
doctrine of equivalents -- known interchangeabilty at infringement
Known interchangeability of substitues for an element of a patent is one of the express objective factors noted in GRAVER TANK as bearing upon whether the accused device is substaintially the same as the patented invention. Proper time for evaluating equivalence is at TIME OF INFRINGEMENT not at time patent issued
doctrine of equivalents -- range of equivalents
depends upon degree of invention. A "pioneer" patent is entitled to a broader range of equivalents than a patent for a narrow improvement
reverse doctrine of equivalents
Literal infringement may be okay if a device is so far changed in principle that it performs the same or similar function in substantially the same way.
Means plus function claim
§112 p6. A patent app. may express an element in a combination claim as a means for performing a function. The app. must describe in the patent specification some structure that performs the specified function.
Infringement of a means plus function claim
The accused device must employ means identicla to or the equivalent of the structures, material, or acts described in the patent specification.
Infringing Activities -- repair
Repair of patented item does not infringe, unless a new article is made. Factors: nature of the actions by the defendant, the nature of the device, how it is decised (whether one of the components of the patented combination has a shorter useful life than the whole), whether a market has developed to manufacture or service the part at issue and objective evidence of the intent of the patentee
Infringing Activities -- contributory infringer
Requires intent, or active inducement (§271(b),(c),(f)(1-2)). Sale of a component to permit buyer infringement is contributory infringement
Infringement of design patents
Infringes when (1) substantially the same as (2) point of novelty. Design patent infringement requires that the accused product appropriate the novelty in the patented device that distinguishes it from the prior art. Patentee must prove both substantial similarity and appropriation of the point of novelty.
Infringement of plant patents
Plant infringed only by patented specimen's actual asexual progeny.
Defenses to Patent Infringement Actions (9)
1. Invalidity
2. Prosecution history estoppel
3. Assignor Estoppel
4. Implied License
5. First Sale Doctrine
6. Patent Misuse
7. De minimis use
8. Inequitable conduct
9. Laches
Defense to PI - Invalidity
- Challenger of patent bears burden of proving it's invalid. (35 USC §282)
- Party estopped from claiming patent after it has been invalidated. (you can't re-llitigate the issue of validity)
Defense to PI - Prosecution history estoppel
The patent holder bears the burden to establish the reason for an amendment required during patent prosecution. The court will then decide whether that reason is sufficient to overcome PHE as a bar to application of DoE to the element added by the amendment.
Defense to PI - Assignor Estoppel
A party that has assigned a patent right for valid consideration may submit evidence to help construe or narrow the claims of the assigned patent, but may not challege the patent's validity. (NOTE: estoppel less harsh to assignor when rights assigned before patent issues)
Defense to PI - Implied License
Buyer of unfinished patented article has license to finish article. Two part test: requirement for the grant of implied license by virtue of sale of non-patented equipment used to practice a patented inventoin:
1. equipment must have no infringing uses
2. The circumstances of the sale must plainly indicate that the grant of a license should be inferred.
Defense to PI - First sale doctrine
Under the "first sale" doctrine, the sale of a patented article is said to "exhaust" the patentholder's rights to that item. The use or resale of a patented article by the pruchaser does not infringe.
Defense to PI - Patent Misuse
'Tying' sale of patented material to sale of other is patent misuse. If a patentee has used his patent as (1) leverage to fix resale prices, or has (2) tied another product to his patent, the patentee is precluded as a matter of law from maintaining an infringement action (at least until the illegal restrain is removed)
Defense to PI - De Minimis use
Small scale non-commercial use of another's patent is de minimis. Used mostly when purpose is for experimentation or research.
Defense to PI - Inequitable conduct
Fraud in application renders patent invalid or unenforceable. Ex: intentional misrepresentations, omissions, misleading statements...etc...
Defense to PI - Laches
Unreasonable, inexcusable delay causing prejudice bars filling of suit.
Infringement Adjudication - Jurisdiction?
Under 28 USC §1338(a), federal district courts have exclusive original jurisdiction over claims of patent or plant variety infringements and suits for declaratory judgments of invalidity or non-infringement regarding patents or plant variety protection.
Infringement Adjudication - Standing?
Standing to bring an infringement claim is limited to patent owners, their assignees and their exclusive licensees. Where rights were transferred, standing belongs to the party that owned the rights at the time of infringement
Infringement Adjudication - standing when patent is co-owned?
When parties share undivided co-ownership of patent rights, the traditional rule is that an infringement action can proceed ONLY IF all co-owners join voluntarily as plaintiffs.
Infringement Adjudicaton - infringement by federal government?
Under 28 USC §1498, a patentholder's exclusive remedy for infringement by or for the federal government is a suit for reasonable compensation in the court of federal claims.
Remedies - Infringement Plaintiff entitled to...
...lost profits. Burden shifts to defendant. Under §284, courts shall award claimants "damages adequate to compensate for the infringement." To recover lost profits damages, the patentee must show a reasonable probability that "but for" the infringement, it would have made the sales that were made by the infringer.
Remedies - Lost profits test
Panduit test:
1. demand for the patented product
2. absence of acceptable non-infringing substitues
3. manufacturing and marketing capability to exploit the demand
4. The amount of the profit it would have made.
(when patentee satisfies this test -- burden shifts to the infringer to show that the inference is unreasonable for some or all of lost sales).
Remedies - Damages for lost sales of unpatented device caused by patent infringement
An infringement plaintiff may show lost profits even in an unpatented device if those lost profits were foreseeably due to infringement of another patented device.
Remedies - Damage for lost sales of unpatented part when part of 'functional unit'
When P seeks damages for unpatented components sold with a patented apparatus, courts have applied 'entire market value rule': allows recovery on sales of unpatented components sold with patented components, only when the components function together such as to be analogous to components of single assembly or parots of a complete machine, a functional unit.
Remedies - Infringer must pay damages only after...
...D received notice of patent. If the patentee does not mark patented articles pursuant to §287(a), the damages may be recovered only for infringements that occur after the infringer receives notice of infringement.
Remedies - time limit?
§286 bars damages awards for infringements occuring more than six years before commencement of the infringement suit.
Remedies - permanent injunction?
While not a matter of right, a permanent injunction for the remaining terms of the infringed patent is routinely granted once infringement liability is established, absent a sound reason for denying it.
Remedies - standard of review (Patents)
The proper standard for a court reviewing findings of fact made by the PTO is set forth in the APA. A reviewing court can set aside an administrative agency's findings of fact only where such findings are arbitrary, capricious, an abuse of discretion, or unsupported by substantial evidence.
Requirements for copyright
Copyright seeks to encourage creative expression by giving anuthors monopolies on their works for a limited period of time. Copyright protection subsits in "original works of authorship fixed 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 (§102)
Copyright - the fixation requirement
Work is 'fixed' when embodied for more than transitory duration. (§101) A work is "fixed in a tangible medium of expression when its embodiment is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise coomuncated for a period of more than transitory duration.
Copyright - the fixation requirement for works consisting of sounds, images, or both that are being transmitted
..."fixed" if a fixation of the work is being made simultaneously with its transmission.
Copyright - idea/expression dichotomy
Expression bears copyright; facts and ideas do not. §102(b) makes clear that (c) production does not extend to any IDEA, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
Copyright doesn't extend to historical theories
Claims of copyright infringement where works of history are at issue are rarely successful.
Can standard elements be copyrighted?
Nope. "Scenes a faire," incidents, characters, or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic are not copyrightable b/c it would be virtually impossible to write about a particular historical era w/o employing certain "stock" or standard literary devices
Copyright of comic characters
Comic characters are more copyrightable than literary characters. While many literary characters may embody little more than an unprotectable idea, a comic book character, which has physical as well as conceptual qualities, is more likely to contain some unique elements of expression.
Copyright - Merger
No copyright when idea can be expressed only one way. When it is difficult to distinguish between an idea and its expression, the two are said to merge and copyright protection is denied.
Copyright - Merger Test
Court must:
1. Identify the idea that the work expresses, and then
2. determine whether there is another way to express the idea.
If not, there ia a merger and the expression may not be copyrighted.
Copyright - Merger rationale
By denying protection to an expression that is emrged with its underlying idea, the court prevents an author from monopolizing an idea merely by copyrighting a few expressions of it.
Copyrights of compilations?
In compilation, original arrangement - but not facts - protectable. Facts, whether alone or as part of a compilation are not orginal and therefore may not be copyrighted §102(b). A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the (c) is limited to the particular selection or arrangement.
Copyright of compilations of "soft ideas"?
In cases of wholesale takings of compilations, a selection application of the merger doctrine - withholding its applciation as to "soft ideas" infused with taste and opinion and applying it to "hard ideas" used to understand phenomena or solve a problem - will cary out the statutory policy to protect innovative compilations w/o impairing the policy that requires public access to ideas of a more important and useful kind.
Originality for derivative works
A derivative work is a work based on one or more preexisting works such as a translation, mutual arrangement, dramatizaton, sound recording, art reproduction, or any other form in which a work may be recast, transformed, or adapted (§101). The quantum of originality needed for a DW is a "sufficiently gross difference" or substantial, not merely trivial originality between the underlying and the derivative work to avoid entangling subsequent artists depicting the underlying work in copyright problems. (no longer any "distinguishable variation" test -- clap of thunder)
Originality in computer software
Screen displays and sounds may be protectable as audiovisual works, so copying the screen display w/o copying the software would still constitute infringement (stern)
Originality in computer software - Abstraction-Filtration-Comparison Test
1. First, a court should dissect the allegedly copied program's structure and isolate each level of abstraction contained within it.
2. Second, examine each structural component at each level of abstraction to determien whether its particular inclusion was "idea" or scenes a faire or elements from the public domain
3. Third, focus on whether the df copied any "golden nuggets" of protected expression.
Originality in architecture
Works of arch. containing elements physically or conceptually separable from their utilitarian function would be protected to the extent of their separability. Two step analysis:
1. Determine if there are original design elements present
2. are the design elements functionally required.
Exceptions from copyright protection - Useful articles
Congress sought to distinguish between protectable "works applied art" and "industrial designs not subject to copyright protection" in the 1976 Act. Under current law, an element in question is not copyrightable if it makes the article function or function better
Are US Gov't works protectable?
No. §105 of the 1976 Act makes clear that the US govt cannot own a copyright and works prepared by an officer or employee of the government as part of that person's official duties cannot be copyrighted.
(c) Ownership - Joint Authors
A work is a joint work under §101 only when:
1. both authors intended, at the time the work was created, that their contributions be merged into inseparable or interdependent parts of a unitary whole
2. The contributions of both authors were independently copyrightable.
(c) Ownership - Works made for hire
Master is "author" of servant's work, but Ind. Cont. owns work, absent agreement.
Notice - Pre-1978
To prevent a work from entering the public domain upon publication under the 1909 Act, §10 required the copyright owner to affice notice to each copy thereof published or offered for sale in he US
Notice - 1978-89
Under §405(a)(2) failure to affix proper notice will not result in forfeiture if, w/i 5 years, the work is registered at the (c) office and a "reasonable effort" is made by the author to add notice to all copies distributed to the public after the omission has been discovered.
Notice - Post 1989
Omission of notice does not lead to lose of protection at all. Copyright commencs with fixation rather than publication.
Notice - Post 1989 - Incentives to register
1. Notice may preclude a df from invoking the "innocent infringement" defense in mitigation of statutory damages
2. registration may be prerequisite to filing an infringement claim
3. registration is PF evidence of claimant's valid copyright
4. helps establish the date of creation
5. prerequisite to obtaining relief against importation of infringing items from the US customs service
Publication Today
Historically, unpub. works were protected under state law. Published works were protected under federal law. As of 78, fed. copyright prot. became available for unpub works. For works authored after 1978, the concept of publication is now of only minor significance.
Publication under 1909 Act
Mere offer to sell or distribute a work to the public was publication.
Publication under 76 Act
An offer to distribute "for purposes of further distribution, public performance, or public display" constitutes publication.
Does "limited distribution" count as publication?
No. Limited distributions are made to a 'definitely selected group for a limited purpose and w/o the right of diffusion, reproduction, distribution or sale. The circulation must be restricted both as to persons and purpose, or it cannot be called a private or limited publication.
Public performance as publication?
No. Public performance or display of a work did not constitute publication under the 1909 Act or under §101 of the 1976 Act.
Term of copyright ownership
Under 1909 Act, protection began on the date of publication and continued for 28 years from that date, it could be renewed for a second 28 years making for a potential 56 year term.
-For works published after 1976, protection lasts until 70 years after the author's death.
Renewal under 1909 Act - death of author
If author dies before renewal period arrived, his executor was entitled to the renewal rights, even though the author previously assigned his renewal rights to another party.
Renewal for works between 1963-77
Works automatically renewed. Applies only to those works that are still in their first 28 year term of protection on the date the bill became law. Works that acquired a first term between 63 and 77 and that are eligible for registration renewal between 1991 and 2005, will benefit from the automatic renewal provisions
Alienability of copyright
Copyright, or part of copright, transferable like other property §201(d). Any of the exclusive rights can be transfered.
How to transfer a copyright
Copyright transfer must be written except non-exclusive licenses. §204. But not "nonexclusive licenses." If a person hands over a manuscript intended for publication that, if published, would infringe the person's copyright, that person impliedly gave a license to use the articles.
Termination of copypright
35-40 years after transfer or license, author or heirs can terminate grant. §203. This right CANNOT be waived in advance or contracted away. The grant must be terminated during the 5 years following the expiration of a period of 35 years from the execution of the grant.
If terminated, does derivative work infringe?
No. Under §203(b)(1), a derivative work prepared before a termination may continue to be utilized under the conditions of the terminated grant; this privilege HOWEVER is not broad enough to permit the preparation of other derivative works.
Termination, derivative work exception, chain of agreements included?
Where multiple levels of licenses govern use of a derivative work, the "terms of the grant" encompass the original grant from author to publisher and each subsequent grant necessary to enable the particular use at issue. DURING the post-termination period, the panoply of contractual obligations that governed pre-termination uses of derivative works by derivative wrok owners or their licensees is preserved.
Copyright - Exclusive Rights (4)
1. Reproduction
2. Preparation of derivative works
3. Public distribution
4. Public performance and display
Exclusive right - reproduction
17 USC §102(a) grants the owner of a coprighted original work that is fixd in any tangible medium of expression the exclusive right to reproduce the copyrighted work in copies
Infringement of exclusive right of reproduction
First ask: Has there been a reproduction of the work? If so, does the reproduction fall within the §107(4)-121 exceptions? Was there enough taken to be substantially similar? Was there an emplied license (203(c))? Did it fall within the 1909 act and was it for personal use (this would allow an exception).
1. How much is taken?
2. Was it substantial?
3. Is it actionable?
4. Is there a savings under §107(4)-121?
5. Is there fair use nonetheless?
Regarding reproduction - what is a copy?
A fixed object from which work can be communicated. Copies are material objects in which a work is fixed by any method now known or later developed and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device?
Can still photographs be "copy" of choreography?
Yes. Choreography represents a related series of dance movements and patterns organized into a coherent whole. Still photographs can infringe choreography.
Can a copy infringe even if it is not distributed?
Yes. Copyright infringement occurs whenever an unauthorized copy is made, even if it is used solely for the private purposes of the reproducer.
Does a copy exists when it was not intended to fill demand for the original?
No. In determining whether a use constitutes a copy, the courts look to a functional test to see whether the use has the "intent or effect of fulfilling the demand for the original".
Does loading software into Computer's RAM constitutes §106 Copying?
Exclusive rights - the preparation of derivative works
The modification right is the right to modify the work to create a new work. A new work that is based on a preexisting work is known as a "derivative work." In order to have a right to create a derivative work, the new author must have a license from the author of the preceding work. Otherwise the new author of the antecedent work is merely an infringer.
Can derivative works infringe, even if not fixed in tangible form?
Yes. Under 76 Act, the exclusive right to prepare derivative works overlaps, but is broader than the right of reproduction, in the sense that reproduction requires fixation in a copy, whereas the preparation of a derivative work, such as a ballet, pantomime, or improvised performace, may be an infringement even though nothing is ever fixed in tangible form.
Must a derivative work be fixed to be protected?
Yes. The Act's definition of "derivative work" lacks any reference to fixation. It makes no difference that the derivation may not satisfy certain requirements for statutory copyright itself. A derivative work must be fixed to be protected under the act but not to infringe. BUT a derivative work must incorporate a protecte work in some concrete or permanent form.
Derivative works right not infringed unless original enough to support new copyright.
Change in a work's appearance may infringe the exclusive rigth under 106(2) only if the alteration is original enough to support an independent copyright.
Exclusive right of public distribution
First ask, has it been published? Performance rights must always be published before displayed.
Copyright owner has exclusive right of distribution
§106 establishes the exclusive right of publication , the right to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership. Any unauthorized public distribution of copies or phonorecords that were unlawfully made would be infringement BUT THIS ONLY EXTENDS TO TEH FIRST SALE!.
Is an ISP's storage and transmission of infringing copy infringement?
Not a direct infringement (DMCA).
Exclusive right - public performance and display
Are more than your friends watching? Is it being transmitted publicly? Is it an exception under sound recording? (106(4))
What is a public performance under 106(4)?
Under the "public place" clause, a performance is public if it occurs at a place open to the public or to any place where a substantial number of persons (outside of friends and family) is gathered.
Under the "transmit" clause, a performance is public if someone transmits or otherwise commuicates a performance or display of the work to a place specified by clause 1 or to the public by means of device or process.
Is there an exclusive public performance right in sound recording?
No. In the case of sound recordings, §114 defines the exclusive rights to reproduce a work and to incorporate it in derivative works more narrowly than in the case of other works. 109(a) and 114 clarify that there is no exclusive public performance right in sound recordings. However, owners of copyrights in sound recordings have a public performance right limited to performances via transmission by digital subscription services. CAn get a compulsory license via §115.
NOTE: a sound recording is protected from distribution, but it gets no protection for performance rights
§106(b) as limited by §114, means that a sound recording is only protected to the extent that the appropriator or pirate engages in a physical re-mixture of the sounds originally fixed in the phonorecord.
Specific limitations on the §106 rights
the exclusive rights under 106 are subject to a number of limitations and compulsory licenses set forth in 108-120 and 1001-101. ALSO, all of the rights under section 106 are subject to the more broadly-defined fair use provisions of section 107.
Specific limitations: Section 109
First sale rule. The exclusive statutory right to "distribute" under 106 applies only to the first sale of the copyrighted work.
Specific limitations: Section 110
Merely turning on a radio or TV in public creates no liability.
Specific limitations: non-profit usage
The following are not infringements of copyright:
1. performance by instructors or pupils in a nonprofit educational institution.
2. performance that is a regular part of the instructional activities of a government body or nonprofit educational institutional, directly relating to the teaching comment.
Specific limitations: small merchants
Small commercial establishments whose proprietors merely bring onto their premises standard TV or radio equipment are exempt unless the proprietor has a commercial "sound system." The size, physical arrangement, noise level also will be considered in decidiing whether the use is exempt.
Specific Limitations: Section 117
§117 permits an owner of a program to make a copy of that program in his harddrive provided that the copy is created as an essential step in the utilization of the computer program.
Specific limitations - Section 108
Libraries may make copies for ligitimate purposes like repairing damaged works, making archival copies, and making interlibrary loans.
Avoiding the cost of purchases or subscriptions is NOT a legitimate purpose. Also, the libraries must be open to the public or to persons conducting research in a specialized field.
Specific limitations - Section 115
Compulsory license to "cover" musical work once distributed; provided that they notify the copyright owner as required by 115(b) and provdied that they pay the royalty specified in 115(c)(2). (Grateful Dead example)
Specific limitations - Sections 1001-10
Audio Home Recording Act. Consumers are permitted to make non commercial recording of music. Note: §1002 prohibits the manufacture distribution or importation of any recording device that fails to incorporate an effective means of preventing serial copying of digital works.
Specific limitations - Section 120
Legal w/o authorization to make, distribute, or display pics, paintings or other representations of architectual work that is orginarily visible from a public place.
Subsection (b) permits the owner of a building to "make or authorize the making of alterations to such building or to destroy it."
Moral Rights - Copyright
In America, where copyright is premised on economic rather than personal rights, such rights like attribution and integrity, have not been recognized. (but see Lanham Act claim for attribution)
Fair USE
§107. The fair use of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement of copyright.
Factors considered in fair use analysis
1. The purpose and character of the use (is it of a commercial nature)
2. The nature of the copyrighted work
3. The amount and substantiality of the portion used in relation to the copyrighed work as a whole
4. and the effect of the use upon the potential market for the value of the copyrighed work.
Scope of fair use for unpublished works
The fact that a work is unpublished shall not itself bar a finding of fair use if such a finding is made upon consideration of all the factors. NOTE however, that the scope of fair use is narrower with respect to unpublished works.
Fair use factor 1
For-profit prupose might suggest work not "transformative". Central purpose of factor 1 is to see whether the new work merely supersedes the object of the original, or instead adds something new. It asks, in other words, whether and to what extent the new work is "transformative."
Fair use factor 2
Lesser protection for factual works. The law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy
Fair use factor 3
Amount and substantiality. no plagiarist can excuse the wrong by showing how much of his work he did not pirate. The expressive value of the excerpts taken will be considered in judging whether the taking was substantial. This factor calls for thought not only about the quantity of the materials used, but about their quality and importance too.
Fair use factor 4
Effect on market. To negate fair use one need only show that if the challenged use should become widespread, it would adversely affect the potential market for the copyrighted work. Parody can DESTROY the market for the original, so long as it doesn't supplant it.
Fair use and parody
When parody takes aim at a particular original work, the parody must be able to "conjure up" at least enough of that original work to make the object of its critical wit recognizable. Copying does not become excessive in relation to parodic purpose merely because the portion taken was the original's heart.
Copyright infringement generally
The unauthorized exercise of one of the rights reserved to the copyright owner under sections 106, unless the activity falls within the exceptions set forth in sections 107-121 and 1008.
To prevail on an action of copright infringement a plaintiff must prove...
1. Ownership (by producing the register of copyright with is PF evidence of ownership
2. Access (although if coincidental duplication appears unlikely enough, a jury can infer that the author had access to the earlier work and drew from it.
3. Appropriation
4. that the appropriation is substantial
Determining if appropration was "substantial"
two steps
1. whether there is substantial similarity in ideas (the extrinsic test)
2. Whether theire is substantial similarity between the expressions (the intrinsic test).
Fragmented literal similarity
Circumstances in which some of the actual content of original work has been appropriated. If this amount is impermissibly large, there will be a judgement of infringement

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