Intellectual Property Law
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In Intellectual Property Law, the authors have included a balanced coverage of the "old chestnuts" in intellectual property law as well as the recent cases and "hot topics" covered in mainstream media. Apart from trade secret, patent, copyright, and trademark laws, significant portions are devoted to other issues that tend to get short shrift in an intellectual property survey course, such as the right of publicity, protection of product design, and the limits on intellectual property protection.
This casebook includes several unique features. First, each section starts with a box question that enables students to stay focused when reviewing materials before class. Second, statutory provisions are included in separate boxes to make it easier for instructors to cover the materials. Third, where available and relevant, historical or contextual background information has been provided alongside the case excerpts. Such information will enable students to better understand the included appellate cases, which often briefly recite the facts or have been edited down to enhance teaching effectiveness. Fourth, the book includes a wide variety of notes, questions, and problems to make it suitable for different pedagogical approaches and assessment needs. Finally, the materials seek to highlight the unique features of U.S. intellectual property laws. The study of these features will pave the way for more advanced coursework in the intellectual property area.
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Table of contents
Part I INTRODUCTION AND OVERVIEW
Chapter 1 INTELLECTUAL PROPERTY AND COMPETITION
§ 1.01 THE PROBLEM OF COPYING
International News Service v. Associated Press
Notes and Questions
§ 1.02 THE PUBLIC DOMAIN
§ 1.03 AN OVERVIEW OF INTELLECTUAL PROPERTY
§ 1.04 THE GENERAL TORT OF MISAPPROPRIATION
[A] Misappropriation Today
U.S. Sporting Products, Inc. v. Johnny Stewart Game Calls, Inc.
Notes and Questions
[B] Misappropriation of Ideas
Alevizos v. John D. and Catherine R. MacArthur Foundation
Notes and Questions
§ 1.05 FEDERALISM ISSUES IN U.S. INTELLECTUAL PROPERTY LAW
[A] Allocating Legislative Power
[ 1 ] Limits on Congress's Power to Enact Intellectual Property Laws
[ 2 ] Limits on State Legislative Authority in Light of Federal Law
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.
Notes and Questions
[B] Allocating Judicial Authority in Intellectual Property Cases
[ 1 ] Trial Court Jurisdiction
Notes and Questions
[ 2 ] Federal Appellate Jurisdiction
Notes and Questions
Chapter 2 TRADE SECRET LAW: THE ELEMENTS OF A CLAIM
§ 2.01 SUBJECT MATTER OF TRADE SECRET LAW
[A] Information That Qualifies as a Trade Secret
Stenstrom Petroleum Services Group, Inc. v. Mesch
Notes and Questions
[B] Reasonable Efforts to Preserve Secrecy
[C] Whose Knowledge Is It?
McClain v. State
Notes and Questions
SI Handling Systems, Inc. v. Heisley
Notes and Questions
Problems
§ 2.02 MISAPPROPRIATION OF A TRADE SECRET
[A] Accident or Mistake
[B] Breach of a Duty
Ed Nowogroski Insurance, Inc. v. Rucker
Notes and Questions
[C] Improper Means
BondPro Corp. v. Siemens Power Generation, Inc.
E.I. duPont de Nemours & Co. v. Christopher
Notes and Questions
[D] Proving Misappropriation
Problems
Chapter 3 ADDITIONAL ISSUES IN TRADE SECRET LAW
§ 3.01 REMEDIES
Notes and Questions
§ 3.02 PROTECTING TRADE SECRETS BY CONTRACT
Victoria's Secret Stores, Inc. v. Mays Department Stores Co.
Notes and Questions
§ 3.03 MISAPPROPRIATION OF NONTRADE SECRET CONFIDENTIAL INFORMATION
Pestco, Inc. v. Associated Products, Inc.
Notes and Questions
§ 3.04 TRADE SECRETS AND CRIMINAL LAW
Notes and Questions
§ 3.05 PREEMPTION
[A] UTSA Displacement of Other Claims
Hecny Transportation, Inc. v. Chu
Notes and Questions
[B] Federal Preemption
Kewanee Oil Co. v. Bicron Corp.
Notes and Questions
Part II THE PROTECTION OF USEFUL INVENTIONS
Chapter 4 INTRODUCTION TO THE PROTECTION OF INVENTIONS AND THE PATENT SYSTEM
§ 4.01 REQUIREMENTS FOR PROTECTIONSTATUTORY SUBJECT MATTER
Diamond v. Chakrabarty
Notes and Questions
§ 4.02 INFRINGING ACTS AND IMPLICATIONS FOR RESEARCH
Madey v. Duke University
Notes and Questions
Problems
§ 4.03 REMEDIES AND COMMERCIAL IMPACT
eBay Inc. v MercExchange, L.L.C.
Notes and Questions
§ 4.04 OTHER TYPES OF PATENTS
Chapter 5 THE PATENT INSTRUMENT
§ 5.01 CLAIMS AND CLAIM SCOPE
§ 5.02 THE PATENT DOCUMENT
Notes and Questions
§ 5.03 CLAIM INTERPRETATION
Phillips v. AWH Corp.
Notes and Questions
Problems
Chapter 6 DISCLOSURE SUFFICIENCY DOCTRINES
§ 6.01 DEFINITENESS
Nautilus, Inc. v. Biosig Instruments, Inc.
Notes and Questions
§ 6.02 ENABLEMENT
CFMT, Inc. v. Yieldup International Corp.
Notes and Questions
§ 6.03 WRITTEN DESCRIPTION
Atlantic Research Marketing Systems, Inc. v. Troy
Notes and Questions
§ 6.04 ADIEU BEST MODE
Problems
Chapter 7 STATUTORY SUBJECT MATTER AND UTILITY
§ 7.01 STATUTORY SUBJECT MATTER
[A] "Product" Claims
Association for Molecular Pathology v. Myriad Genetics
Notes and Questions
[B] Process Claims
Alice Corp. v. CLS Bank International
Notes and Questions
§ 7.02 UTILITY
Juicy Whip, Inc. v. Orange Bang, Inc. .
Notes and Questions
Problems
Chapter 8 NOVELTY
§ 8.01 PRIOR ART REFERENCES AND THE ANTICIPATION RULE
In re Hall .
Notes and Questions
§ 8.02 NOVELTY DEFEATING DISCLOSURES AND PRIORITY
§ 8.03 PUBLIC USE NOVELTY DEFEATING EVENTS
[A] Public Use of a NonInforming Technology
Egbert v. Lippmann
Notes and Questions
[B] The Experimental Use Negation of Public Use
City of Elizabeth v. American Nicholson Pavement Co.
Notes and Questions
§ 8.04 ONSALE NOVELTY DEFEATING EVENTS
Pfaff v. Wells Electronics, Inc.
Notes and Questions
Problems
§ 8.05 REMARKS ON THE OLD LAWPREAIA § 102
Chapter 9 NONOBVIOUSNESS
§ 9.01 USE OF MULTIPLE PRIOR ART REFERENCES
§ 9.02 THE GRAHAM ANALYSIS
[A] The § 103 Statutory Standard
Graham v. John Deere Co.
Notes and Questions
[B] Revisiting the § 103 Standard
KSR International Co. v. Teleflex Inc.
Notes and Questions
§ 9.03 "SECONDARY" CONSIDERATIONS
§ 9.04 ANALOGOUS ART
In re Bigio
Notes and Questions
Problems
Chapter 10 INFRINGEMENT
§ 10.01 LITERAL INFRINGEMENT
Larami Corp. v. Amron
Notes and Questions
§ 10.02 INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS
WarnerJenkinson Co. v. Hilton Davis Chemical Co.
Notes and Questions
§ 10.03 SOME LIMITATIONS ON THE DOCTRINE OF EQUIVALENTS
[A] Dedication of Disclosed but Unclaimed Embodiments
Johnson & Johnston Associates Inc. v. R.E. Service Co.
Notes and Questions
[B] Estoppel Limitations Based on Prosecution History
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
Notes and Questions
Problems
[C] Other Limitations on the Doctrine of Equivalents
§ 10.04 SECONDARY LIABILITY AND EXTRATERRITORIAL ENFORCEMENT
§ 10.05 DEFENSES AND REMEDIES
[A] Inequitable Conduct
[B] Other Defenses
[C] Injunctions
[D] Damages
Part III THE PROTECTION OF CREATIVE EXPRESSIONS
Chapter 11 INTRODUCTION TO COPYRIGHT LAW
§ 11.01 HISTORICAL DEVELOPMENTS
Peter K. Yu, The Copyright Divide
Notes and Questions
§ 11.02 JUSTIFICATIONS
Mazer v. Stein
Notes and Questions
§ 11.03 TECHNOLOGICAL CHALLENGE
A&M Records, Inc. v. Napster, Inc.
Notes and Questions
§ 11.04 DURATION
Eldred v. Ashcroft
Notes and Questions
Chapter 12 STATUTORY SUBJECT MATTER
BurrowGiles Lithographic Co. v. Sarony
Notes and Questions
Bleistein v. Donaldson Lithographing Co.
Notes and Questions
Feist Publications, Inc. v. Rural Telephone Service Co.
Notes and Questions
Baker v. Selden
Notes and Questions
Chapter 13 AUTHORSHIP AND COPYRIGHT OWNERSHIP
§ 13.01 AUTHORSHIP
James D.A. Boyle, The Search for an Author: Shakespeare and the Framers
Notes and Questions
§ 13.02 JOINT WORKS
Thomson v. Larson
Notes and Questions
§ 13.03 WORKS MADE FOR HIRE
Hays v. Sony Corp. of America
Notes and Questions
§ 13.04 COLLECTIVE WORKS
New York Times Co. v. Tasini
Notes and Questions
Chapter 14 FORMALITIES AND OTHER REQUIREMENTS
§ 14.01 FIXATION
Problems
§ 14.02 FORMALITIES
Hasbro Bradley, Inc. v. Sparkle Toys, Inc.
Notes and Questions
§ 14.03 PUBLICATION
Chapter 15 THE SCOPE OF COPYRIGHT
§ 15.01 THE REPRODUCTION RIGHT
Grand Upright Music Ltd. v. Warner Bros. Records, Inc.
Notes and Questions
§ 15.02 THE DERIVATIVE WORK RIGHT
Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc.
Notes and Questions
§ 15.03 THE DISTRIBUTION RIGHT
BobbsMerrill Co. v. Straus
Notes and Questions
§ 15.04 THE PUBLIC PERFORMANCE RIGHT
Twentieth Century Music Corp. v. Aiken
Notes and Questions
Problems § 15.05 THE PUBLIC DISPLAY RIGHT
Notes and Questions
§ 15.06 THE DIGITAL TRANSMISSION RIGHT
§ 15.07 MORAL RIGHTS
Gilliam v. American Broadcasting Companies
Notes and Questions
Chapter 16 FAIR USE AND OTHER DEFENSES
Sony Corp. of America v. Universal City Studios, Inc.
Notes and Questions
Harper & Row Publishers, Inc. v. Nation Enterprises
Notes and Questions
Campbell v. AcuffRose Music, Inc.
Notes and Questions
Chapter 17 COPYRIGHT INFRINGEMENT
§ 17.01 DIRECT INFRINGEMENT
Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp.
Notes and Questions
Three Boys Music Corp. v. Bolton
Notes and Questions
§ 17.02 INDIRECT INFRINGEMENT
[A] Contributory and Vicarious Infringement
Fonovisa, Inc. v. Cherry Auction, Inc.
[B] Inducement
MetroGoldwynMayer Studios Inc. v. Grokster, Ltd.
Notes and Questions
§ 17.03 INTERNET SERVICE PROVIDER SAFE HARBOR
Jennifer M. Urban & Laura Quilter, Efficient Process or "Chilling
Effects" ? Takedown Notices Under Section 512 of the Digital
Millennium Copyright Act
Notes and Questions
Chapter 18 CONTRACTS AND TECHNOLOGICAL ADJUNCTS
§ 18.01 CONTRACTS
ProCD, Inc. v. Zeidenberg
Notes and Questions
§ 18.02 TECHNOLOGICAL MEASURES
Stefan Bechtold, Digital Rights Management in the United States and Europe
Universal City Studios, Inc. v. Reimerdes
Notes and Questions
Chamberlain Group, Inc. v. Skylink Technologies, Inc.
Notes and Questions
Part IV THE PROTECTION OF MARKS, BRANDS, AND OTHER COMMERCIAL INDICIA
Chapter 19 THE NATURE, POLICIES, AND HISTORICAL FOUNDATIONS OF TRADEMARK PROTECTION
§ 19.01 TRADEMARKS TODAY
[A] Terminology
[B] Sounding Like a Practitioner
[C] The Function of Trademarks: Symbols, Psychology, and Information
Mishawaka Rubber & Woolen Manufacturing Co. v. S.S. Kresge Co.
Notes and Questions
Doris Estelle Long, Is Fame All There Is?: Beating Global
Monopolists at Their Own Marketing Game
Notes and Questions
David B. Findlay, Inc. v. Findlay
Notes and Questions
Problem
Mattel, Inc. v. Walking Mountain Productions
Notes and Questions
In re Morton Norwich Products, Inc.
Notes and Questions
§ 19.02 THE HISTORY OF TRADEMARKS: CONSUMERS, AUTHENTICATION, AND PROPERTY
[A] The Philosophical Basis for Protection: Property Rights or Unfair Competition
[B] Trademarks and the Commerce Clause
[C] A Brief Introduction to the Lanham (Federal Trademark) Act
[D] The FederalState Dichotomy and Federal Preemption
[E] Administrative Procedures and Regulations Governing Trademark
§ 19.03 PROTECTABLE TRADEMARKS UNDER U.S. LAW
[A] Trademarks and Other Protectable Commercial Symbols
[B] The Special Nature of Service Marks
[C] Certification Marks
[D] Collective Marks
Problems
Chapter 20 STATUTORY BASES FOR TRADEMARK PROTECTION
§ 20.01 THE CRITICAL ROLE OF DISTINCTIVENESS AND SOURCE DESIGNATING FUNCTION
[A] Picking a Mark That Matters
[B] Categorizing Levels of Distinctiveness Abercrombie & Fitch Co. v. Hunting World, Inc.
Notes and Questions
§ 20.02 DISTINCTIVENESS IN MOTION, FRAGRANCE, SOUNDS, AND OTHER "DEVICES"
The Rock and Roll Hall of Fame and Museum, Inc. v. Gentile
Productions Notes and Questions
Problem
§ 20.03 ACQUIRED DISTINCTIVENESS AND SECONDARY MEANING
[A] The Market Impact of Acquired Distinctiveness
[B] The Growing Impact of Secondary Meaning in Protecting Trademarks
[C] Proving Secondary Meaning
Notes and Questions
Problem
§ 20.04 GENERICIDE
A.J. Canfield Co. v. Honickman
Notes and Questions
Problems
Chapter 21 SCANDAL, DECEPTION, AND OTHER BASES FOR REFUSING PROTECTION
§ 21.01 DECEPTIVE MARKS
In re Budge Manufacturing Co.
Notes and Questions
Problem
§ 21.02 SCANDALOUS AND DISPARAGING MARKS
In re Old Glory Condom Corp.
Notes and Questions
Harjo v. ProFootball, Inc.
Notes and Questions
Problems
§ 21.03 THE SPECIAL PROBLEM OF GEOGRAPHIC MARKS AND THE GLOBAL ECONOMY
[A] The Special Role of Geography in Today's Market
In re California Innovations, Inc.
Notes and Questions
Problem
§ 21.04 SURNAMES, CONFUSION, AND OTHER GROUNDS FOR
REFUSAL
Notes and Questions
Problems
Chapter 22 THE REQUIREMENT OF USE
§ 22.01 USE IN COMMERCE AND THE REGISTRATION "GAME"
[A] The Critical Role of Use Versus Creation/Appropriation
Maryland Stadium Authority v. Becker
Notes and Questions
Problem
[B] Geography and Prior Use Rights
Thrifty Rent a Car System, Inc. v. Thrift Cars, Inc.
Notes and Questions
Problems
§ 22.02 ABANDONMENT, RESIDUAL GOODWILL, AND OTHER "USEBASED" CHALLENGES
[A] Abandonment and Residual Goodwill
Exxon Corp. v. Humble Exploration Co.
Notes and Questions
[B] Naked Licenses, Assignments in Gross, and Other Exploitation Problems
Barcamerica International USA Trust v. Tyfield Importers, Inc.
Notes and Questions
Problems
§ 22.03 TRADEMARK VIOLATIONS
Doris Estelle Long, Rebooting Trademarks for the TwentyFirst Century
Notes and Questions
§ 22.04 CONFUSIONBASED REMEDIES
[A] Defining the "Public" to Be Protected Against Likely Confusion
[B] Mapping the Limitations of Likely Confusion
McGregorDoniger Inc. v. Drizzle Inc.
Notes and Questions
[C] Reverse Confusion
Harlem Wizards Entertainment Basketball, Inc. v. NBA
Properties, Inc.
Notes and Questions
Problems
[D] The Critical Role of Surveys in Protecting Trademarks
DORIS ESTELLE LONG, UNFAIR COMPETITION AND THE LANHAM ACT
Notes and Questions
Problem
§ 22.05 COUNTERFEITING: THE OTHER "CONFUSION"
Notes and Questions
Problem
§ 22.06 THE PROTECTION OF FAMOUS MARKS: REDEFINING THE PUBLIC INTEREST?
[A] Dilution
Visa International Service Association v. JSL Corp.
Notes and Questions
[B] The "Famous Marks" Doctrine
ITC Ltd. v. Punchgini, Inc. .
Notes and Questions
Problems
§ 22.07 THE REMEDIES PROBLEM
Problems
§ 22.08 THE LIMITS OF REPUTATIONAL CLAIMS
Dastar Corp. v. Twentieth Century Fox Film Corp.
Notes and Questions
Chapter 23 LIMITATIONS AND EXCEPTIONS
§ 23.01 FAIR USE
[A] Classic Fair Use
KP Permanent MakeUp, Inc. v. Lasting Impression I, Inc.
Notes and Questions
Problems
[B] Nominative Fair Use
New Kids on the Block v. News America Publishing, Inc.
Notes and Questions
Problems
§ 23.02 GRAY MARKET AND PARALLEL GOODS
Lever Bros. Co. v. United States
Notes and Questions
Problem
§ 23.03 FREE SPEECH AND PARODIES
CocaCola Co. v. Gemini Rising, Inc.
Notes and Questions
Problems
Chapter 24 TRADEMARKS IN THE DIGITAL ENVIRONMENT
§ 24.01 NEW COMPETITIVE SPACES ON THE INTERNET
§ 24.02 THE INTERNET
[A] Use Revisited
Rescuecom Corp. v. Google Inc.
Notes and Questions
Problems
[B] Domain Names
Harrods Ltd. v. Sixty Internet Domain Names
Notes and Questions
Problems
Planned Parenthood, Inc. v. Bucci
Notes and Questions
Problems
§ 24.03 FUTURE DIRECTIONS
Doris Estelle Long, Rebooting Trademarks for the TwentyFirst Century
Notes and Questions
Part V THE PROTECTION OF OTHER INTELLECTUAL ASSETS
Chapter 25 THE RIGHT OF PUBLICITY
§ 25.01 OVERVIEW OF THE RIGHT OF PUBLICITY
Allison v. Vintage Sports Plaques
Notes and Questions
§ 25.02 ADDITIONAL ISSUES IN THE RIGHT OF PUBLICITY
[A] Personality Attributes Protected by the Right
Wendt v. Host International, Inc.
Notes and Questions
[B] Federal Protection of a Person's Name, Likeness, and Persona
Waits v. FritoLay, Inc.
Notes and Questions
[C] Descendability of the Right of Publicity
Herman Miller, Inc. v. Palazzetti Imports and Exports, Inc.
Notes and Questions
§ 25.03 CONSTITUTIONAL LIMITATIONS ON THE RIGHT OF PUBLICITY
[A] Federal Preemption
Laws v. Sony Music Entertainment, Inc.
Notes and Questions
[B] Free Speech Issues
Toffolini v. LFP Publishing Group, LLC
Winter v. DC Comics
Notes and Questions
Chapter 26 PROTECTING PRODUCT DESIGN UNDER THE PATENT ACT
§ 26.01 BASIC DIFFERENCES BETWEEN DESIGN AND UTILITYPATENTS
§ 26.02 ORNAMENTALITY VS. FUNCTIONALITY
High Point Design LLC v. Meijer, Inc
Notes and Questions
§ 26.03 DETERMINING NOVELTY AND NONOBVIOUSNESS OF DESIGNS
In re Nalbandian
Notes and Questions
§ 26.04 DESIGN PATENT INFRINGEMENT
Egyptian Goddess, Inc. v. Swisa, Inc.
Notes and Questions
§ 26.05 DESIGN PATENTS: CLOSING THOUGHTS
Chapter 27 OTHER MEANS OF PROTECTING PRODUCT DESIGN
§ 27.01 DESIGN PROTECTION UNDER COPYRIGHT LAW
Mazer v. Stein
Galiano v. Harrah's Operating Co.
Notes and Questions
§ 27.02 DESIGN PROTECTION UNDER TRADEMARK LAW
Qualitex Co. v. Jacobson Products Co.
Notes and Questions
WalMart Stores, Inc. v. Samara Bros., Inc.
Notes and Questions
TrafFix Devices, Inc. v. Marketing Displays, Inc.
Notes and Questions
§ 27.03 SUI GENERIS DESIGN PROTECTION
[A] The Push for a Sui Generis System
[B] A Case Study in Design: Fashion
Part VI LIMITS ON INTELLECTUAL PROPERTY PROTECTION
Chapter 28 COMPETITION LAW RESTRICTIONS ON INTELLECTUAL PROPERTY RIGHTS
§ 28.01 ANTITRUST LAW AND INTELLECTUAL PROPERTY
U.S. DEP'T OF JUSTICE & FEDERAL TRADE COMMISSION, ANTITRUST
GUIDELINES FOR THE LICENSING OF INTELLECTUAL PROPERTY
Notes and Questions
§ 28.02 PATENT AND COPYRIGHT MISUSE
Lasercomb America, Inc. v. Reynolds
Notes and Questions
TABLE OF CASES
INDEX