Sun, 16 Dec 2007

You're On Your Own. Good Luck!
The deadline for questions to the professor has passed. Also, I have posted all of the student Q&A's that I plan to post, so you need not check back here once you've seen this post.

Good luck everybody.

posted at: 13:18 | path: | permanent link to this entry

Flea Markets and Vicarious Liability
Question about 3rd party liability. Why would the landlord of a flea market stand be liable under vicarious liability but the landlord of an office space would not. Does it have something to do with the potential listeners? (I'm thinking of the music being broadcast through the office building vs. broadcast outside at the flea market).

A: The idea is that the landlord of the flea market gets a much more direct financial benefit from the copyright infringement (which involved selling bootlegged albums). For example, the flea market owner gets concession sales and ticket sales and parking sales. In contrast, the office landlord isn't really getting a "cut" in this way, aside from rent.

posted at: 13:18 | path: | permanent link to this entry

Bootlegs
Q: What happens when a work is bootlegged? Does no one get protection if the taping is unauthorized?

There is now a statute that prohibits bootlegging. (17 usc 1101).

Under traditional copyright, the sound recording is never fixed in a tangible medium, so it isn't protectable.

The owner of the musical work probably has a fixed copy somewhere, so they may have protection. But if the recording is extemporaneous (some long Jazz solo) then it may not be fixed anywhere.

posted at: 13:15 | path: | permanent link to this entry

Copyright Duration
Q: What is the duration for copyright protection? Is it life + 50 years for most works? I'm confused about whether the Sonny Bono Act added 20 years of protection to most works or just corporate/anonymous works.

A: Life + 70 for individually-owned works. 95 years from publication for corp-owned works. Sonny Bono upped all of the limits.

posted at: 13:09 | path: | permanent link to this entry

Sat, 15 Dec 2007

Chemical Patents, Utility, and Enablement
Q: Under utility for patents, is Brenner an outlier? And how does Amgen fit in with it if it says that you don't have to test everything?

As Note 5 after Brenner indicates, Brenner represents the "high water mark" for utility for these kinds of patents. Subsequent courts have been more forgiving, reading utility more broadly. Then again, Brenner is still considered good law and the last time the Supreme Court took on the issue, so it can't be dismissed as a complete outlier.

Think of Amgen only as an enablement case. Whether Amgen satisfied the utility requirement is separate. But Amgen stands for the proposition that, assuming you have an otherwise patentable invention, you still have to test and disclose enough sequences to show you have enabled.

posted at: 22:11 | path: | permanent link to this entry

Reverse Engineering
Q: Is buying a product publicly available and reverse engineering it considered acquisition through fair and honest means?

A: What you describe is usually perfectly legal under the reverse engineering defense. I'm choosing my words carefully, because reverse engineering is an affirmative defense, not "fair and honest means" which would suggest plaintiff's failure to meet one of the elements of the cause of action.

But sometimes what would otherwise look like reverse engineering is, in fact, considered a violation of some other law. I'm thinking principally of evading copy restrictions in violation of the DMCA. Although we discussed the DMCA on several occasions, it wasn't assigned in reading, and it's not fair game for the course.

posted at: 04:38 | path: | permanent link to this entry

Trademark Distinctiveness Scale
Q: Is it possible to use a descriptive or generic term in an arbitrary way for trademark - thus negating the need for secondary meaning? A friend of mine is starting a company named [company named deleted]. Turns out there is a company in California with the same name, and they have registered the name as a TM. Is this generic? arbitrary? descriptive?

A: There are two fundamental concepts here. First, words aren't simply "descriptive" or "arbitrary" on their own. You need to compare the word to the product or good. So, Apple Computer is an arbitrary name. Apple Produce would probably be a descriptive name, or maybe, maybe, weakly suggestive. "Apple" Apples would be generic.

So you can't just say that your friend's mark is a "descriptive or generic term" in a vacuum. It depends on the thing being sold!

The second concept is that under Sleekcraft, you only need to worry about infringement if you are selling the same or related goods or services. If your friend sells potato chips and the CA company sells running shoes, say, then TM infringement is extremely unlikely, even though they use the exact same name.

posted at: 04:36 | path: | permanent link to this entry

Wed, 12 Dec 2007

Trademark Dilution -- Blurring Factors
Q: I am confused as to whether the Nabisco case--particularly its factors for blurring--is still good law after the 2006 amendments, which give a different, shorter list of factors to consider in deciding if blurring exists.

A: The statute says that the court may consider "all relevant factors, including the following." This suggests that other factors can be considered, including the additional factors from Nabisco.

posted at: 15:31 | path: | permanent link to this entry

All-Elements and Comprising vs. Consisting Of
Q: If you have a claim that reads comprising of a,b,c,d, and ome else make a product with abcdef is that an infringment or an improvement patent. What about ABCegf improvement of infringment ---- If infringement what exactly is an improvement patent?

A: You have to separate the two questions. Whether or not you are an infringer, you might have the rights to an improvement patent. In more depth:

1. One who makes, uses, or sells ABCDEF is an infringer of the original patent.

2. One who makes, uses, or sells ABCEFG is not an infringer.

Both the person who makes ABCDEF and the person who makes ABCEFG can get a patent, provided their collection of elements is novel, nonobvious, useful, etc.

If ABCDEF is given a patent, it is known as an "improvement patent" because it is a complete superset of the ABCD patent. Thus, ABCDEF's patent holder can't practice the patent without a license from the holder of the ABCD patent and, likewise, the owner of the original ABCD patent can't practice the new ABCDEF innovation without a license from the new patent holder.

Follow-up Q: Yes, but one who makes, uses, or sells ABCEFG is not an infringer OK. Even if the claims say comprising of? If so how does the consisting of comprising dichotomy come into play.

ABCEFG does not infringe because it is missing element D. The all elements rule says that infringers must have every element claimed, and that's true whether it's comprising or consisting of.

ABCDEF would NOT infringe a "consisting of" patent claim with ABCD because the added elements--E and F--move it outside the scope of the "closed" claim.

posted at: 15:12 | path: | permanent link to this entry

Open Book Policy
Q: Does anything mean we can bring in study guides and hornbooks?

A: Yes.

posted at: 15:10 | path: | permanent link to this entry

Larami and Literal Infringement
Q: I'm looking over the Larami (super soaker) case right now. I'm confused about the effect that additional elements in the invention have on an infringement claim. Here, the infringing invention clearly doesn't contain all the elements of the original patent (lights, sound fx), yet the court doesn't throw the claim out. Can you please explain why?

A: The patent included one very broad independent claim that didn't recite lights and sound as elements. Although lights and sounds were mentioned in the specification, they weren't require in the claim at issue. No doubt, there were other claims that included lights/sounds that weren't raised in the complaint.

posted at: 15:09 | path: | permanent link to this entry

Effect of KSR
Q: Is it correct that KSR holds that the TSM test is too rigid and the Graham test should be used instead, or should we expect courts to use both after KSR, like the dist ct did in KSR? Is TSM just the first Graham step?

Along those same lines, since the prior patent in KSR was held to be too obvious, were you suggesting courts will be less likely to find infringement because of a relaxed suggestion requirement, unlike the pumpkin bag case? Does this mean courts no longer use the "clear and particular evidence" standard for whether the new invention is obvious based on prior art?

A: KSR definitely isn't disavowing the TSM test. In fact, on Page 5, in section B, the court notes that the test "captured a helpful insight." Later in that section, the Court says that TSM and Graham have "no necessary inconsistency."

By my reading, Graham is still the touchstone, but TSM can be part of the Graham analysis.

I was suggesting that more courts will find patents obvious under KSR because of the relaxed TSM requirement. Other commentators are more dubious about this. The question about "clear and particular evidence" wasn't answered by KSR.

posted at: 15:04 | path: | permanent link to this entry

Questions from the 12/05 Review Session
At the December 5th review session, I answered many questions. To help you reconstruct your notes from that session, I am posting some (but not all) of the questions I answered:

1. The copyright policy discussed in regards to the photocopying fair use (Texaco). I was confused on what the court was balancing; public interest, production of more information, access to information?
2. I'm confused between the difference between arbitrary and fanciful in relation to the establishment of trademark rights. Zatarain's seemed to treat the two as part of the same class of TM, however in class you seemed to treat them as separate. Could you clarify?
3. Useful Article Doctrine for PGS. You touched on it briefly in our last class, but how do I make sense of all these tests regarding conceptual severability? How would I approach a copyright issue in this area? My notes say: "many tests, hard to apply." What's the strategy here?
4. S/C/A: What's the difference between coordination and arrangement?
5. What does the patent law requirement of "written description" mean?
6. Fair Use -- which factors matter most?
7. Can you create a work for hire in copyright by contract if you're not within one of the nine categories listed in the statute?
8. Can you review the rule for business method patents?
9. What's the difference between Parke-Davis, Chakrabarty and Funk Bros?
10. Is presumption of irreparable harm following a clear showing of patent validity and infringement (Robertson v. United Steel Deck) still good law after eBay?
11. In copyrights, for copying infringement, what is the difference between copying and improper appropriation?
12. Is it true that there is no public performance right in a sound recording?
13. I was wondering, under the Idea-Expression element for copyrightability, what is "Hand's level of abstraction"?
14. What is the significance of the distinction b/t rivalrous and excludable goods as a theme for our purposes?
15. The current patent scheme does not require that the invention be non-serendipitous, correct?
16. How does something become part of the public domain and thereby and lose IP protection?
17. Are forms ever eligible for IP protection? If the answer is yes, under what circumstances?
18. Can you review "best mode"?
19. Are emails/blogs "fixed" for the purposes of copyright law?
20. Do courts that allow copyright protection for photos require that the photo meet certain threshold requirements or is any photo automatically copyrighted in those jurisdictions?
21. Do courts that allow copyright protection for photos require that the photo meet certain threshold requirements or is any photo automatically copyrighted in those jurisdictions?
22. How do cover versions of songs work?
23. I'm unclear about the definition of public performance. Presumably, a rock concert would qualify, but what about a piano recital or something?
24. For the purposes of derivative rights, what does it mean to recast something?
25. Is the rule for TM that w/o exception the party who is first to file with the USPTO gets protection or do they have to wait and see whether anyone contests the trademark name or symbol for 5 years?

Welcome.
Welcome to the student question and answer blog for Professor Ohm's Fall 2007 Introduction to Intellectual Property Course. During the exam period, I will post student questions with my answers on this page.

I am not posting every single student question. Instead, I am only posting student questions that I believe the class, as a whole, will benefit from hearing. Some questions are too basic to deserve attention. Other questions are too advanced and nuanced. So don't take it personally if your question doesn't appear here. (Do take it personally if I don't respond to one of your questions. I might have forgotten to get to it, so if you don't hear from me in a day or two, please ask again.)

posted at: 10:27 | path: | permanent link to this entry