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Intellectual Property

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What is the primary significance test for trademark distinctiveness?   a term is a protected trademark rather than a generic term when its primary significance to consumers is to indicate the source of the goods rather than simply to identify the goods themselves.  
When is a non-word mark protected?   The non-word mark is protected when it is non-functional AND 1.inherently distinctive; OR i.Product design (Wal-Mart) & Color (Qualitex) can’t be inherently distinctive 2.acquired distinctiveness (secondary meaning)  
What is “use” for trademarks   Qualitative use – likely to regard as indicating the source of the user’s goods Quantitative use – how many people received it. Need to distinguished actual use from pre-marking activities and token uses  
What factors to look at to determine market penetration by senior user   Dollar value of senior user’s sales at time of entry; # of customers compared to sales; length of time since significant sales; need not to be large penetration, but must be such that confusion generated.  
What is the 2 Prong Test for finding trademark infringement   • Plaintiff (mark owner) proves ownership and validity (presumed if registered); AND • D using mark to sell product in a way that creates likelihood of confusion between the products  
Polaroid factors to determine likelihood of Point-of-Sale CONFUSION, these factors are flexible and no one factor is dispositive.   1. Strength and similarity of marks 2. Proximity of product sold 3. Differences between products 4. Actual confusion 5. Sophistication of customers 6. D’s good or bad faith 7. Quality of D’s products  
Contributory infringement for trademark   one who intentionally induced another to infringe a trademark, or continues to supply it product to one whom it knows or has reason to know is engaging in trademark infringement (eBay)-- must have specific knowledge of direct infringement.  
Vicarious liability for trademarks   some agency or partnership relationship involving control; authority to bind in 3rd party transactions; or joint ownership or control over the infringing parties  
Cybersquatting trademark cause of action factors   1.a valid trademark 2.Its mark is distinctive or famous; 3.The defendant’s domain name is identical or confusingly similar;and 4.the defendant used, registered, or trafficked in the domain name 5. With a bad faith intent to profit.  
Cybersquatting -- Courts have looked to these factors to find bad faith:   i.D had no intellectual property rights in the domain name ii.D has never actually used the site iii.D’s never claim that they used the side for “fair use” stuff iv.It can be inferred that the D intended to divert customers from the P’s website  
Three conditions to sustain fair use defense for Trademarks   1.Infringer must use the other’s name, term, or device otherwise than as a mark 2.The alleged infringer must use the term or device only to describe the goods and services; and 3.The alleged infringer must use the term “fairly and in good faith”  
When raising a nominative fair use defense for Trademarks, need to ask:   -Whether the produce was readily identifiable w/o use of the mark -Whether D used more of the mark than necessary; or -Whether D falsely suggested he was sponsored by the trademark holder  
To be copyrightable   • The work must be original; • Must be fixed in some tangible form; and • Must consist of “expression” rather than ideas, procedure, process, system, method of operation, concept  
Copyrightability of facts/data needs (Feist)   • the selection, coordination and arrangement.  
Arguments to Make for PGS   (1) Is this a product we want to protect? (2) Does the designer need the incentives offered by protection to induce production? (3) Does a competitor need to be able to copy this product or idea to be able to compete in the marketplace  
For copyrightable works made for hire:   1.manner and means by which the product is accomplished; 2.The skill required; 4.The location/duration/ of the work/relationshp 7.discretion over when and how long to work; 9.role in hiring and paying assistants;  
The Right to Distribute Copies of the Work (London-Sire Records)   Infringers are liable when they distribute the work and were unauthorized to do so, even if they were unaware the distributed item was an infringing work (strict liability). * Actual distribution or making available  
What does public mean for Copyrightability?   (1) Public place; (2) semi-public place; (3) transmission to public place; (4) transmission to semi-public place; (5) transmission to public even if recipients are not in place at same time  
What are the factors to determine if public use in non-traditional locations? (Red Horne & Cartoon Network)   -will hinge on the size and composition of the audience, -the amount of control the audience has, -how much it resembles a private display -how much it is available to the public,  
Vicarious Liability for copyright (Cherry Auction)   (1) supervision or control over someone who directly infringed a copyright in a way that (2) financially benefitted the controller, even though they were ignorant of the infringement.  
Contributory Liability for Copyright (Cherry Auction)   (1) knowingly act in a way that personally facilitates (directly assisted) infringement, even when there is no financial benefit to the contributor, or (2) knowingly provide the infringer with the means to infringe (indirectly assisted).  
Intent to Induce Infringement for copyright (Grokstar)   A person is liable for intent to induce infringement when they have the subjective goal to promote copyright infringement (such as clear expression, or affirmative steps taken to foster infringements). Subjective intent, not outcome.  
What are some fair uses of copyrightable material   criticism, comment, news reporting, teaching, scholarship, research  
What are the factors to examine fair use for copyrights? (Harper & Row; & Pretty Woman Parody)   i. The Purpose and Character of the Use: ii. The nature of the copyrighted work: iii. The substantiality of the portion used in relation to the copyrighted work as a whole: iv. The effect on the potential market for or value of the copyrighted work:  
§112 of patent law   - Claim interpretation (Markman hearing) -Enablement *undue experimentation (Wands factors) & commensurability requirement (Morse) -Best Mode -Written Description (Ariad)  
What are the Wands factors for undue experimentation in enablement   -quantity of experimentation needed, -the amount of direction given in the application, and -the presence or absence of working examples, -the nature of the invention, -the relative skill of those in the art, -the predictability of the art and  
Best Mode 2 prong test   •Subjective – at the time of filing the inventor knew of a mode of making and using his invention that he considered best? If yes then look at objective part • Objective – compare what the inventor knew with what he disclosed  
§101 patents   •Anything under the sun (Chakrabarty) •But not - Laws of nature, physical phenomena, and abstract ideas are not patentable.  
One way to know if an abstract process or business model is eligible for patent protection is the   • machine-transformation test: where the proposed patent is either tied to a machine or apparatus, or transforms one thing into something else. (Bilski)  
§ 102 patents   •Novelty (known or used prior art) i.Strict Identity: All the elements must be represented in one prior art or publication. •Priority •Statutory Bar (more than one year from filing date)  
Ways to find prior art and what is known or used   • Printed Publication (anywhere) • Public knowledge or use (in US only) • Sale or offer for sale (US only) • Patent (anywhere) • Patent application (anywhere)  
Factors for establishing that prior art was known or used?   • (1) reduced to actual practice, • (2) was used in the manner intended, and was • (3d) accessible to the public – but public doesn’t have to know about it, just can’t be kept secret.  
Determining Priority for patents   a RTP is prima facie evidence of the date of invention. However, an inventor who was first to conceive but second to reduce to practice can gain priority if he can show he was reasonably diligent and did not abandon, suppress, or conceal  
Definition of conception for patent priority:   Definite and permanent idea of the complete invention. Complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be required to reduce the invention to practice, w/o undue experimentation  
Definition of Reasonable diligence for patent priority (Kanamaru)   (1) steady, industrious efforts; (2) any break in activity required explanation; (3) case-by-case determination.  
What are the 3 types of statutory bars under 102(b) that triggers 1 year   • On-sale bar (Space System) • Public Use bar (Egbert & Rubic Cube) • Printed Publication (In re Klopfensein)  
What are the elements of a public use bar for patents?   inventor slept on his rights by giving the invention to another party that used the completed, operative invention in the way that was intended, and that person was under no obligation to keep the invention secret.  
What are the elements of On-sale bar for patnets?   when it is (1) ready for patenting, and (2) the subject of a commercial offer for sale (under contract law, where there is a binding contract with offer, acceptance, and consideration).  
What is the exception to the public use bar and what are the factors to look at?   Experimental use (Lough) (1) number of prototypes, (2) duration of testing, (3) records of progress, (4) existence of secrecy or confidentiality agreements, (5) whether compensation was given, (6) extent of control inventor retained  
What are the elements of printed publication for patent statutory bar trigger?   *sufficiently accessible to the public interested in the art. --must be enabling --Sufficient access factors:(1) the length of time displayed, (2) the expertise of the audience, (3) reasonable expectations of confidentiality, (4) easy to copy?  
What is in the new §102   • First to file • 1 year grace period from file date  
§103 patents   • Non-obviousness  
What is the test for obviousness factors for patents (Graham)   -what is the scope of the pertinent prior art, and -differences between prior art and claim at issue, when taking the invention as a whole, and -what is the ordinary skill level Can utilize secondary considerations opposing obviousness  
What are the secondary considerations one can utilize in opposing obviousness   has great commercial success, was long-felt but unsolved need in the art, was failure of others, were awards or praise for invention, was skepticism prior to the invention, prior art taught away, were unexpected results, if there is copying by others  
What are the two tests for obviousness for patents?   • Graham factors • Teaching-suggestion-motivation test  
What are the two types of patent infringements and the exceptions?   • Literal infringement • DOE • Exceptions i. Prosecutorial History estopple (Festo) ii. Public dedication rule  
What is insubstantiality test for DOE?   One clue about whether the difference is insubstantial is the FUNCTION-WAY-RESULT TEST, which asks whether the infringing element (a) performs substantially the same function, (b) in substantially the same way, (c) to yield substantially the same result.  
What are the three ways under Festo that can rebut presumption that amendement was related to patentability?   • Equivalent was unforeseeable • Rationale underlying amendment was indirectly related to equivalent • Some other reason  
What are the 6 common law factors that courts look to to determine trade secret protection? (Learning Curve)   -How widely the information is known -How many measures were taken to keep secret -How valuable the information is to climant and comp -How much time, effort, and money was spent -How difficult it would be to acquire or duplicated  
What are the improper and proper means of midappropriation of trade secrets?   •improper means include theft, bribery, breaches of duty, espionage •Proper means include inspection, analysis, reverse-engineering, and independent creation  


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