Intellectual Property Law

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2015
ISBN: 9780327179559
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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.

Professors and adjunct professors may request complimentary examination copies of LexisNexis law school publications to consider for class adoption or recommendation. Please identify the book(s) you wish to receive, provide your institutional contact information, and submit your request here.


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 NON—TRADE 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 PROTECTION—STATUTORY 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 Non—Informing 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 ON—SALE NOVELTY DEFEATING EVENTS

Pfaff v. Wells Electronics, Inc.

Notes and Questions

Problems

§ 8.05 REMARKS ON THE OLD LAW—PRE—AIA § 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

Warner—Jenkinson 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

Burrow—Giles 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

Bobbs—Merrill 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. Acuff—Rose 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

Metro—Goldwyn—Mayer 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 Federal–State 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. Pro—Football, 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 "USE–BASED" 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 Twenty–First Century

Notes and Questions

§ 22.04 CONFUSION–BASED REMEDIES

[A] Defining the "Public" to Be Protected Against Likely Confusion

[B] Mapping the Limitations of Likely Confusion

McGregor–Doniger 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 Make–Up, 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

Coca–Cola 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 Twenty–First 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. Frito–Lay, 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

Wal–Mart 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