Introduction to Intellectual Property

question from email

In your chart comparing trademark infringement to dilution, you say that 'likelihood of confusion' requires 'competing uses or goods,' but in Sleekcraft the court found that the product lines were 'non-competing' but 'extremely close in use and function.' (The court also suggested that there were other non-competitive areas where infringement might occur, such as between complementary goods or even if the goods were simply sold to the same class of purchasers.) Is this an area where dilution has superceded what courts might have previously evaluated as an infringement?

Well, I suppose it depends upon what you mean by 'competing': most courts read Seekcraft to in fact find a de facto competitive relationshiop between the products/uses, even though the opinion was a little wobbly on this. The point, however, of the box on the chart is much simpler: regardless of what you call it ('competing', 'compelementary', 'purchaser overlap'), a likelihood of confusion analysis requires a very close relationship between the goods/uses, while dilution (almost by definition, though cf Nabisco) does not.

question via email

To establish a mark as incontestable, you need to file an affadavit with the PTO stating that the mark meets all the criteria for incontestability, but I was wondering -- is the filing itself a criterion? That is, if Park 'n Fly meets all the requirements for incontestability, but the owner of the mark has not yet filed an affadavit with the PTO to that effect, and the mark is challenged, is incontestability still a viable defense?

As I read 15 USC 1065 (the relevant statutory section), the affidavit -- which must be filed within a year of the end of the five-year incontestability period -- is a formal requirement for incontestability status. So it would not be a viable defense if one overlooked the filing of the affidavit.

A clarifying note: during the review session I was asked whether incontestability attaches 'automatically' after the specified five-year period. I think I answered to the effect that there were no further requirements -- which may have been confusing. There are no further substantive requirements once the five-year period has ended, and there is no further examination or review of the mark at that time. The affidavit requirement is to give public notice of the mark's status rather than an additional hurdle.

q & a from patents

This question and answer is from the Patent Law blog. It touched on some issues raised in the review session today, so I thought I'd cross-post it here.

I have a question regarding third party uses of an invention and the prior public use bar whenever you have the chance.

In my notes I have written that if a third party uses an invention in
secret and sells the output, this would likely not constitute prior
public use because the actual inventor had not commercially exploited
the invention himself. However, elsewhere in my notes, I have that if a
third party reduces an invention to practice and uses it, the patent of
the inventor is invalid (Baxter International). Would it be possible for
you to briefly explain third party activity in regards to prior public
use because I am a bit confused what type of third party activity
constitutes prior public use... In the first case it seems like the
third party is taking the invention and exploiting it, whether as the
second case it seems as though a third party is actually coming up with
the invention on his own, simultaneously with the inventor.

The key is that the commercial activity in the first case is (a) not actually of the invention, and (b) is kept secret, and thus doesn't constitute the sort of 'public' use we think of in these cases. In the second, case, the use is both (a) of the actual invention and (b) not secret (or 'public').

The Written Description & Claims

We touched on this in the review session, but I'm still not clear on the relationship between the written description and claims.

Combining the holdings from the Gentry case, the Renishaw case (on page 217 and 221), and Johnson Worldwide, is it correct to say that a limitation may not be read into a claim from the written description, unless there is a term in the claim needing clarification?

So to modify the Segway example from the practice test, if there was a drawing and written description of a 4-wheeled vehicle, this might be limiting if the claim said something vague like "having some wheels," but would not be limiting if the claim more specifically read "having 2 or more wheels." Right?

question from email

im really confused with the question of 'prior art' and 'obviousness.' How exactly does the court define prior art? is it a previous product or elements of a previous patent?

Both, in some cases.

I guess the pumpkin garbage bag case confused me; the final decision was that because there was prior art that they couldnt patent the bag?

No. The opposite: the PTO didn't demonstrate the connections between the prior art that was available.

what do they mean by 'hindsight based obviousness?' and if this is established then the claim can be patented? if the answer is yes, then doesnt it invalidate the whole 'obviousness' consideration because anybody could claim that they needed to incorporate prior art to develop their product? maybe im just misunderstanding the whole thing.

Hindsight is an impermissible way of conducting the obviousness analysis. You are supposed to analyze obviousness as of the time of the invention, not later.

im refering to pg 190 "our case law makes clear that the best defense against the subtle but powerful attraction of hindsight based obviousness analysis is rigourous application of the requirement for the showing of the teaching or motivation to combine prior art references."

Yes: the court says that hindsight is impermissible, and that one important way to avoid it is to carefully show the links between pieces of prior art.

question from email

In regards to question 14 on the practice exam, you said that choice B (Cape Cod copying the catalog and putting it online was a transformative use), although not a great argument, was the best of the available choices. Based on a particular line in the fact pattern ("For simplicity, Cape Cod essentially mimicked the design of the Baldwin catalog when developing its web site: Both the text and photos associated with the Baldwin products were copied from the Baldwin catalog, and the overall look and feel evokes the catalog.") I thought the answer might at least plausibly be E (the 'catalog' design was like a Lotus menu structure), for the following reasons: everything in the fact pattern seems to indicate that Cape Cod was attempting to convey the exact same thing that the catalog conveys, affirmatively casting doubt on the argument that their use is transformative; meanwhile, although the fact pattern was silent on whether or not there was a utilitarian aspect to the design of the catalog, the fact that it has a particular "look and feel" seems to indicate that it had some aspect which purchasers of Baldwin products (Cape Cod's target consumers) had come to be familiar with (and thus might expect to see when purchasing Baldwin products). Admittedly, both of these arguments appeared to be dogs, but since the question called for the best of the possible choices, it seemed to me that it asked us to choose between B (where the abstract underlying argument -- transferring something to the web can be transformative -- seemed at least plausible, but the particular facts in the hypo argued against it) and E (where the abstract underlying argument -- a catalog design could be on par with a Lotus menu structure -- seemed less plausible based on common sense, but was not outwardly contradicted by any facts in the hypo, and was arguably supported (albeit weakly) by the notion that the catalog had a unique "look and feel.") The answer at the back of the exam didn't really go into the rationale, so I was wondering if I was approaching the problem the right way, and also what were the salient features of choice B that made it a better answer than E?

I think you're doing fine.

The reason B is a better choice than E in that question is for exactly the reason you suggested: that the shift from catalog to web form is at least plausibly transformative. Medium shifts are often considered to be transformative uses, though (as you note) the specific shift here -- without doing much to change the expression -- is not a good candidate for a finding of transformative use.

E is a worse answer, for two reasons: First, there is nothing in the fact pattern that would suggest anything akin to the competitive effects that the Lotus 'menu structure' had on the consumers. The argument that Baldwin's catalog design had important competitive effects on these facts would suggest that virtually any accused infringer in competition with the copyright holder could win on this basis. Second, the wording of the answer offered a (admittedly subtle) clue: it referred only to the 'design' of the catalog, when in fact Cape Cod copied more than the design--it copied the actual photos and explanatory text, too. So even if the argument sounded plausible with respect to the design, it seems even less plausible with respect to the other challenged copying. (Choice B at least provided a defense to all of the infringing acts.)

question from email

For question 6 on the practice exam, wouldn't photocopying only the recipe portions of the page still pick up some elements of formatting even if you remove the title and clip art (such as breaks in text, font choice, etc.)? I know this might seem like grasping at straws, but since the requirements for creative input are so low I thought when taking the test that this would put it above none - though I suppose it all hinges on the word likely.

Well, you've got a point -- one might imagine cases where there was sufficiently original choices in font or text layout to support some copyright infringement. But given the facts presented in that question, this is too speculative to support an answer.

question from email

The other day, walking down the street, I saw a truck hauling junk that seemed to be part of a nationwide junk-hauling business. The side of the truck was emblazoned with "1-800-Got-Junk". At first, I thought it was highly unusual that they hadn't had their pants sued off for dilution (I'm assuming they came after the "Got Milk" slogan, which has been around for more than a decade). But then I got to thinking: "Got Milk" is an extremely famous MARK, but almost nobody knows exactly whose mark it is (I think it's the "milk processing board" or something like that). It seems like the truck would satisfy the tests outlined for dilution, yet all the goodwill in the "Got Milk" slogan seems to bear on the generic product "Milk" rather than the producer. So: If a company is freeloading off a famous mark, but the original mark doesn't satisfy the trademark purpose of making consumers think of the PRODUCER, rather than the mark itself, has one diluted the mark at all? I doubt it makes any difference, exam-wise, but I was just curious.

[1] Got Milk appears to be a collective mark, so it's likely to be okay that the goodwill connects to the product or the producers generally rather than any specific producer.

[2] Because of #1 above, then you might well have a dilution claim under your hypo. In the more general case, remember that distinctiveness is a requirement for dilution to lie, so if the mark didn't connect its goodwill to anything, then you have no dilution (or, indeed, any infringement either.)

Audio Files

Several of the audio files on the web site seem to be missing or incorrectly linked. Specifically:

(1) the files for the two sessions of the 02/03/04 marathon of intellectual property are the same (both seem to be for the second session); and

(2) the links to the files for the session on 02/23/04 (Patent II: Disclosure) are nonfunctional.

Basic IP Questions

Please feel free to tell me that these can wait until the review session - but yes/no or really short answers are fine...thanks!

- (1) can you patent business methods? (I have conflicting information in my notes about this - at one point it was a judicially created exception to patentable subject matter, but now it is allowed?)
- (2) what exactly is the relationship between copying, improper appropriation, and substantial similarity for infringement?
- (3) what are the different rights that come into play for sound recordings and musical compositions - I know the rights are separable, but is the major difference just compulsory licensing?
- (4) is the focus on the patent enablement requirement just the prevention of undue experimentation?
- (5) for patent infringement, the analysis is claim by claim - just have to show all the elements (or equivalents) of a claim were present in potentially infringing device? So then does that infringing device simply have to get rid of that one claim and can keep everything else or is the whole product worthless?
- (6) for TM, geographically misdescriptive is okay with secondary meaning but geographically deceptively misdescriptive is not?
- (7) why does product design need secondary meaning and why can't it be inherently distinctive (I'm thinking of the classic coke bottle - but is that considered secondary meaning...it's not functional, right?)