Sun, 07 Dec 2008

That's All. Good Luck!
The time to ask questions has now passed. There won't be any other entries posted to this website. If anything important is left to say, I will send it to you via e-mail.

Good Luck!

posted at: 13:40 | path: | permanent link to this entry

Dilution and "Actual Harm"
Q: I see on your grading rubric for Spring 2006 you gave a point for mentioning "actual harm" under trademark dilution. After addressing how the uses are blurring or tarnishing, where does the actual harm fit in? I don't have it in my notes on trademark dilution. Is this a prong we need to explore in any trademark dilution case?

A: Ignore actual harm. It is no longer good law. This has to do with the result of the Victoria Secrets case, and it was overturned by amendment by the TDRA (the law excerpted in your casebook) in 2006.

posted at: 08:16 | path: | permanent link to this entry

Sat, 06 Dec 2008

Enablement but not Written Description
Q: Could you give me an example of being in possession of something but not enabling?

A: Imagine you invent something nobody has ever seen before--imagine you invent velcro, let's say. Nobody else has ever seen anything like velcro before. You draft up a detailed patent application in which you describe velcro, but you omit the critical step--let's say it's the way you form the little hooks that give the velcro its gripiness. The hooks are the hardest part, and none of your competitors, even basing their work on your patent applications, can get the little hooks to work.

Your application is invalid because you haven't enabled PHOSITA on how to make velcro. In order to get from your application to velcro, one must engage in experimentation--and more than undue experimentation.

Yet nobody would accuse of you of failing the written description requirement. You've claimed velcro in the claims, and you have shown that you were in possession of velcro at the time of the application.

posted at: 19:06 | path: | permanent link to this entry

Copyright: Reproduction without Distribution
Q: I did have one question regarding the material in the test today: regarding the act of typing words into a computer from a book that you buy, that is an infringement on its own? In other words, if I purchased a book and typed all the words from it into my computer (let's say it was so that I could search the text of the book more easily for research), but I'm not disseminating that work to anyone or letting anyone else use it, that's an infringement that I could be liable for? I guess I can see how really you're creating a derivative work--it just seems like there must be some exception for a totally personal use like that!

A: I think the crux of your question is about reproduction (or preparation of derivative works) with no distribution. Yes, this technically falls within the section 106 rights, and might lead to infringement. The "personal" nature of the reproduction would cut in favor of fair use, however, so there might be a defense. Also, note that without distribution (or public display/performance) there is probably no damages over which to sue. That's why we rarely see cases involving reproduction but not distribution, although there are exceptions.

posted at: 19:04 | path: | permanent link to this entry

Copyright: Comparing Infringing and Infringed works
Q: When you look at what was taken in a copyright infringment suit, do you only look at what was taken of the infringed material or how much of the infringed material makes up the infringing material as well? Thank you.

A: Remember that these questions are important at two phases--the infringement analysis and the fair use analysis. In both phases, you ask these sorts of questions.

The answer is that both questions have been deemed important at both phases. In other words, for both infringement and for fair use, courts seem to care about both how much of plaintiff's work was taken by defendant and how much of defendant's work was based on plaintiff's work (or conversely, how much of defendant's work was NOT taken from plaintiff.)

But, the real oddity here is that in both infringement and fair use, courts have said that you ARE NOT supposed to look at both of these. Learned Hand said "no plagiarist can excuse the wrong by showing how much of his work he did not pirate." And in the statutory fair use factors, factor three talks ONLY about "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." So if you're discussing this kind of analysis on the exam, you might want to mention these countervailing "rules" that may or may not apply.

posted at: 07:44 | path: | permanent link to this entry

Independent and Dependent Claims
Q: If you have independent claim 1 comprising elements ABC and dependent claim 2 comprising of claim 1 plus additional elements DE. If your competitor makes ABCG, does the competitor literally infringe?

A: Yes. Claim 1 is literally infringed because the addition of G does not matter. Claim 2 is NOT literally infringed because D and E are missing.

posted at: 07:41 | path: | permanent link to this entry

Prosecution History Estoppel
Q: Are we responsible for prosecution history estoppel?

A: No. You weren't assigned the pages, and I gather that Professor Stacy mentioned it only in passing.

posted at: 07:38 | path: | permanent link to this entry

Tertium Quid
Q: In class during the review yesterday, you said that tertium quid can be inherently distinctive. However, from my notes during the semester, you said that tertium quid is protectable but you need secondary meaning. Can you clarify whether secondary meaning is required to find tertium quid or not?

A: At least two students asked me this, so I must've misspoke the first time we covered this. As I said in the review session, tertium quid can be inherently distinctive. Thus, for tertium quid, you may not need to show secondary meaning.

posted at: 07:37 | path: | permanent link to this entry

Thu, 04 Dec 2008

Moral Rights / VARA
Q: Are we responsible for knowing the VARA or any other specific doctrines having to do with moral rights?

A: Although you read the pages on VARA, we didn't discuss it in class, so it probably won't be on the test. You should know what moral rights are, however.

posted at: 19:29 | path: | permanent link to this entry

TM Distinctiveness of things other than words
Q: How do you measure the distinctiveness of non-word trademarks like logos? Do you use the arbitrary/fanciful/suggestive/descriptive/generic scale?

A: You don't apply the a/f/s/d/g scale directly--that is specifically tied to words. You do, however, analogize to that scale. So, to borrow from the example we discussed in Copyright, a very simply drawn house used as a trademark for a realtor might be too simple to be trademarked. You could support this argument by analogy to the "descriptive" quality of words.

Update 12/4 8:30pm: A student pointed out that I misstated the conclusion a bit. If the simple house is analogous to descriptive word marks, then it could probably be trademarked with secondary meaning. I simply meant that the logo might not be inherently distinctive, but I wasn't ruling out distinctiveness through secondary meaning.

posted at: 19:29 | path: | permanent link to this entry

Trademark Use
Q: Rescuecom????

A: We didn't officially cover trademark use in class (I discussed it in passing), so it won't be worth points on the exam.

posted at: 12:50 | path: | permanent link to this entry

Brandir
Q: How many of the tests of conceptual separability for the useful article rule in copyright do we need to know?

A: Not all of them! :) You should definitely know the majority's and dissent's tests. You should also have a list of other tests at the ready, in case you need to compare them closely to whatever fact pattern I might give you. It probably isn't worth spending a lot of your time before the exam trying to discern the subtle differences between the tests which, frankly, are all pretty similar to one another.

posted at: 12:47 | path: | permanent link to this entry

The Six Fair Use examples
Q: Before you get to the four factors to determine whether something is fair use, does the use need to be one of the six examples listed in the preamble to section 107? If so, I don't understand where Sony fits into the examples. Would it be research?

A: The phrase "such as" in section 107 is the tip-off. You don't need to be in the list of exemplary purposes. Many things that don't strictly fit in the list have been held to be fair uses (such as Sony) and sometimes, things in the list are nevertheless held NOT fair use. Still, it's very good for a fair use argument to be in the list.

posted at: 12:41 | path: | permanent link to this entry

Channeling Doctrines
Q: I don't really understand what channeling doctrines are and more importantly how they affect the analysis of a given IP problem. I pretty much just get that they involve the interrelationship between different forms of IP protection.

A: Channeling doctrines describe only a few rules that explicitly hold that you can't get IP protection X for a particular thing because policy considerations suggest that you should go get IP protection Y instead.

One good example of this is Baker v. Selden. In Baker, the court declined to extend Copyright to the blank accounting forms because it would protect an idea--the accounting method--that was more properly the subject of Patent law. Thus, one of the key reasons it denied Copyright protection was because of the existence of another, more restrictive IP.

The other good example we studied is TrafFix. The TrafFix court held found a heavy presumption against extend trade dress protection to a feature claimed in an expired utility patent. One of the reasons for this heavy presumption is it would take something that was supposed to be the subject of narrow patent protection and extend it using broad trade dress protection.

So channeling doctrines ARE NOT simply doctrines that allow you to compare/contrast different forms of IP. They are rules that force you to choose one form of IP by denying you another form of IP to resolve what would otherwise be a conflict between the two.

posted at: 12:40 | path: | permanent link to this entry

Aesthetic Functionality
Q: I don't understand aesthetic functionality!

A: Perhaps the biggest problem is the use of the word, "functionality." It isn't really about functionality at all. Instead, just think of it as a separate rule, and focus on the word "pleasing." Some things are just so inherently pleasing in its design, that if we let one competitor protect it as a trademark, we would be taking too much away from the other competitors. If we let you TM a heart-shaped chocolate box, we let you lock up too much IP, because there is something inherently pleasing about that design.

posted at: 12:38 | path: | permanent link to this entry

Parke-Davis
Q: I am confused about the Parke-Davis line of cases. My understanding is that the process for extracting and purifying is patentable, but the product (adrenaline) is not. Is this correct?

No, this is not correct. Parke-Davis held that a product extracted from nature is patentable if it is in a form that is purer than the form in which it exists in nature. By being purified, it is no longer considered a "product of nature."

posted at: 12:33 | path: | permanent link to this entry

Leftovers from the Review Session
We ended the review session without getting through all of the questions, so I will be populating this webpage with written Q&A covering most of the remaining questions.

posted at: 12:27 | path: | permanent link to this entry

Tue, 02 Dec 2008

Welcome.
Welcome to the student question and answer blog for Professor Ohm's 2008 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: 07:22 | path: | permanent link to this entry