Heald. International Intellectual Property. Oxford 2009.
From SeLawWiki
Class 1 Reading Notes
- International law is important because things have gone all global and stuff.
- Big debate over whether a country is better off by respecting IP rights and thus encouraging FDI (foreign direct investment) because companies will feel like their investments will be respected (think South Korea, Taiwan) or whether a country is better off pirating everything (China). These are successful economies practicing both, so the answer is not clear.
- FDI is like, the next big thing, bigger than exports and production, but i have no idea what "production" means.
- there's also some diagram that shows that the OECD countries, minus Mexico, Korea, and Turkey, have a shitload of high tech exports compared to other countries.
- US dominates with 58% of all copyright royalties
- no wonder everyone else wants to steal their shit, otherwise it's a big money funnel to the US, unless you think the FDI will funnel enough back. but couldn't a country just choose to only respect IP rights for IP that is A) not easy to steal or B) owned by companies investing in the country? best of both worlds!
jurisdiction to prescribe
- within own territory
- on nationals abroad
- maybe sort of sometimes in situations where there are effects within territory.
Subafilms, ltd. v. MGM-Pathe Communications Co.
MGM authorized piracy abroad, and the 9th circuit said they could do that as much as they damn well please because they're authorizing something which isn't illegal in the US. Under the auspices of territoriality.
There's also a ridiculous argument that this would upset other nations and be considered an extraterritorial exercise of power over their IP laws, as though the complainant should
- expect to somehow be able to sue MGM in another country and that country will then be able to collect a judgment against MGM, who, (surprise!) is in the U.S..
- sue MGM in all the countries throughout the world in order to collect each nation's share of ill-gotten-gains
the real justification, the only decent one, is that they wanted to leave it to congress. of course, that argument is always a bit silly, since they could just as easily find against MGM, and leave it to congress to change it back. "we don't think we're competent to decide this. here MGM, have ten million dollars."
Holding:"because we conclude that authorizing an act that itself could not constitute infringement of rights secured by those laws, and that wholly extraterritorial acts of infringement are not cognizable under the Copyright Act, we overrule Peter Starr."
Exceptions: If "one complete act of infringement took place in the US and such act enabled or facilitated the foreign infringement," then sue sue sue! Also, injunctions can be enforced extraterritorially "to prevent future infringement of a US patent in the US."
Treaties!
Paris convention: patents, trademarks, industrial property
Berne convention: copyrights
most nations treat them as non-self executing
largely superseded by TRIPs
TRIPs is big because it combines everything together and most importantly, it can actually be enforced by the WTO.
there are also agreements easing or eliminating application for IP right protection (e.g. obtaining a patent from various governments).
multilateral treaties, of which there are regional and international treaties. (p.27)
also bilateral treaties.
there's also customary international law, which is when states engage "in practices with a sense of legal obligation" but not because they formally agreed to it. i should look up examples of that later.
self executing and non self executing
se treaties require a court to apply international law, whereas nse treaties require a court to use their doctrines of statutory interpretation to apply the law that was passed by the state to meet the obligation of the treaty.
congressional executive agreements vs. treaties
cea's might not be constitutional (includes NAFTA) because US constitution requires 2/3 approval by senate of treaties. cea's are just passed with a congressional majority, and that includes TRIPs. but SCOTUS probably isn't going to mess with them because they don't ever seem to fool with congressional power over international trade if at all possible (e.g. Japan Line)
cultural problems
not everybody agrees on what IP rights even are, making it maybe impossible to craft a single rule for all states.
national treatment
used to be reciprocity, but that required states to give the protections granted by the foreign state to foreign patent holders, requireing them to interpret foreign law, so of course that was a big disaster.
then they moved toward agreements requiring the same protection granted domestically to domestic IP holders to foreign IP holders. this is national treatment.
TRIPs requires "treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property," AKA national treatment.
Phil Collins v. Imtrat Handelsgesellschaft GMBH
This is the ECJ interpreting the EEC treaty, article 7, which prohibits "any discrimination on grounds of nationality," which they used to require Germany to observe national treatment in its own copyright laws. Germany was giving German performers protection of all performances worldwide, and foreign perfoermers protection of performances only in Germany. Not good enough, says ECJ!
most favored nation principle
"MFN effectively prevetns a country from giving preferential treatment to one foreign country over others... within the trading group." If it gives benefits to one, it's gotta give benefits to the rest.
MFN treatment is in GATT/WTO.
TRIPs requires it, but grandfathers older treaties/agreements, allows a few other exceptions, see p. 40.
questions
book asks for situation where MFN would be violated, but national treatment would not. my answer:
Domestic protection of 50 years, protection to citizens of country B 50 years, protection to citizens of country C 100 years.
Book asks for situation where both would be violated, same as above but where country B has no protection (zero years).
January 6: Class 1 Notes
while the trade book has a traditional, technical final, with multiple choice questions and two single hour essays.
but the ip class is an open style seminar. the exam will be a one question essay that takes 90 minutes. the other half of the grade will be a presentation on any topic you want—the list is just a set of suggestions.
20 minutes. you want to teach us something. go beyond the text of the casebook to give us a bit fuller coverage, check out a treatise. there are a few where 25 minutes isn’t enough, and if you wanted to team up with someone else and do a 50 minute presentation you can.
in the us, when radios play music, the only people who get paid are those who wrote the composition, or the record company—nobody else gets anything. not true in europe—performers get 50 years of performing rights. pretty soon the beatles recordings are going to enter the public domain. ringo hardly wrote any songs, so he’s been getting money from neighboring rights in the EU as a performer.
traditionally, folklore is not protected by copyright law, but some indigenous populations are looking for protection for designs, totems, etc.
anti-circumvention rules—you’re not supposed to be able to rip a dvd. may be unconstitutional because it locks out people from public domain material.
copyright term rules-arcane, tax heavy?
don’t do paris telle quelle, too obscure
EU Community TM: file once, get protection everywhere
Famous mark doctrine: raises questions of extraterritoriality. you can get protection even if you never used it in the jdx. came up when mcdonalds boycotted south africa.
Geographical Indication proposals: parma ham, bordeaux wine, parmagian cheese.
Internet domain names. ICANN; almost all name disputes settled by arbitration done by a couple of private arbitration forms around the world. A wholly private setup not even mentioned in the GATT.
False advertising. One of Heald’s favorite topics. (don’t pick that)
Pharma and Ag data protection: “if we could protect our data we generate to get approved we could do without patent law.
TRIPs enforcement obligations – “you have to have this kind of judiciary, registration system, etc.
(maybe creative commons type disclaimers?)
Meet with Heald a week before the presentation to cut/add stuff.
Patent law and AIDS
The AIDS drugs are almost all patented. And too expensive for a lot of people with AIDS. With a patent you can charge a monopoly/supercompetitive price for your goods.
Why wouldn’t drug companies want to sell to Africa at a lower price?
- because they don’t want a Canada like situation, with drugs getting imported from Africa.
- remember, 800 million dollar investment per drug.
Example: $10 cost for mfg weekly dose. And the most a South African can pay is $12. With these bare facts, a company might as well sell the drug there for $12 a dose.
- Price discrimination! Here you can see a positive outcome, we want them to be able to charge an amount affordable to South Africans. But the drug companies still won’t do this, because of the fear that the drugs will not be consumed in South Africa and that people will engage in arbitrage, and they’ll be sold in competition with those sold to American consumers.
- Grey market
- if you’re smart, you’ll buy the drugs in South Africa and import them to America.
- so getting the drugs to Africa has very little to do with the fact that they’re patented, but rather, the difficulties in price discrimination. Drugs are small and easy to move.
Page 450, with article 31 of the TRIPs agreement, “Other Use Without Authorization of the Right Holder.” A compulsory licensing scheme. Generally frowned on by WTO. It’s when a government says a price is too high and forces it down. This article spells out the only time when a country can say screw you patent holder, we’re going to make something without your permission. Lots of restrictions.
- see section (f): interpreted to mean that you were authorizing a manufacturer within your borders; but a lot of countries don’t have drug manufacturing.
- so article 31 was amended. but it was only within the last year that any country tried to use it. this may be because a lot of western money poured in to make the drugs more affordable. also the drug companies started cooperating and developing systems to make reimportation harder.
international IP linked to trade law.
TRIPs is part of GATT, administered by WTO, which says the basic level of protection countries have to provide. USA tried to raise minimum standards for many many years. The Paris and Berne conventions had no dispute resolution mechanisms, they were completely toothless. So the Uruguay rounds were going on in the 80’s, and the US sought to get IP protections into the GATT, with all of the protections of the WTO.
can you characterize the failure to protect IP rights as a barrier to trade? or was the US just exercising political clout?
- aside from discouraging investment of IP holding firms? i dunno.
- there are no virgin or tower records stores in shanghai. why? you can buy any cd you want to for 50 cents. piracy!
- so, you could say, there’s like a sign at the border that says “NO RECORD STORES.”
- but what about McDonalds and KFC? Why are they everywhere?
- harder to copy. you can make a perfect digital copy of a CD. can’t make a perfect copy of a franchise fast food. also they’re not moveable. CD stands are hard to pin down, but brick and mortar stores wil get hit even with weak IP protection laws.
- Levi doesn’t sell jeans, too easy to get knockoff Levis there.
Book mentions two other kinds of international trade:
- knowledge and technology transfer
- foreign direct investment
- and of course, as we already mentioned, goods and services
how does lack of IP protection affect the transport of technology across borders? is it affected? what are you worried about?
- that your info will be stolen and exported, and that there won’t be any demand to begin with. this only applies to trade secrets. you want to draw a line between patented technology and unpatented know-how. moving patented technology in and of itself poses no risk. uspto.gov will give you everything you want to know. but the trade secrets are very vulnerable in some areas. so will a country do better to steal the value of whatever info they can, or to protect IP and encourage investors to come in, or to just protect the subject of investment (is that last option even possible?).
there was a survey that asked a 100 firms if the level of IP protection was important for investment. most said yes. us government took that survey to other countries, saying raising your own IP protection will have two benefits:
- your own inventors will have more motivation (not very persuasive for developing nations; patent law alone won’t turn farms into scientists)
- but if you crank up your patent law, factories will open up.
- but the survey asked generally about IP, not specifically about patent/trade secret/copyright protection. but we know from the firm answers that they all cared mostly about trade secrets.
- trade secret protection and contract law enforcement is relatively costless, and doesn’t raise prices, like patent protection does. so we want to be precise in discussing the trade benefits to nations of increasing IP protection.
the book’s own admission on page 14: it believes the Mansfield survey more than I do. bottom of page 14: “In 2002, China surpassed the United States to become the world’s largest recipient of foreign direct investment”. So the world’s largest pirate jdx has the world’s most FDI. so the benefits of ratcheting up IP protection might not be as great as we once thought.
- could it be good to deter Levis for a developing country? maybe so. you might not want to be the object of importation, watching your money going overseas.
what’s the cost of ratcheting up IP protection?
pay more for drugs
but what about copyright protection?
any reason a government should complain about that?
- enforcement costs? change law, training, etc.
- my response to that is to make the infringer pay the cost of such enforcement.
- any good protected by copyright law that you like to have free access to?
- textbooks!
- copyright law prevents you from doing translations
- what else would you really like cheap access to?
- software! perhaps part of the reason why open source is so big.
one of the results of enforcing copyright protection is to vastly decrease the market and availability of american culture. assuming you’re worried about cultural imperialism.
- which might encourage competition from domestic sources. if you’re a chinese artist, you can’t compete with the cheap american counterfeits. so you kill your own market when you become a pirate jdx.
any pain from ratcheting up trademark protection?
cuts down on income from foreigners buying knockoff goods.
might interfere with a cultural interest in socialism, they might not want the appearance of class stratification.
knockoffs seem to focus on the narrow band of high end things, watches, shoes, golf clubs. not as sympathetic as AIDS drugs.
and there’s a benefit to trademark protection in that you have improved marketplace information about what you’re buying.
go ahead and read the 20 pages on the syllabus. they go by quickly.
January 7: Class 2 Notes
Bodelian admission: we’ll be getting our ID cards! another law library induction the following tuesday. place is hard to find. convocation house. entrance to that is through a courtyard between sheldonian theatre and some other building. admissons on corner of broad and catt can give you directions.
several topics now claimed.
ip issues and the costs and benefits imposed on developing countries. the trips agreement looks a lot like us law. if you’re a developing country, it seems like the benefits of ip law are overrated, but the costs probably are too. for today, we’ll cover sources, regulation, the three substantive principles (territoriality, national treatment, most favored nation). And then a summary of US copyright law which will last two days.
you know the trips agreement is the IP portion of the gatt. the greatest innovation is the dispute resolution portion from the wto. you have reading in the book on the dispute resolution system. it has a three judge panel and a 3-6 month determination, which is incredibly quick. the order is that a country has to change its laws, and if it doesn’t, the country can make a monetary payment, which is what the US has to do for Bermuda and Antigua for violations of GATS by making internet poker illegal. we have no argument under gats, so we just pay troubled countries.
or think of brazil’s retreaded tires—maybe EU could tax import of Brazilian retreads. but maybe brazil doesn’t import tires—so maybe they could have cross sector retaliation.
the eu keeps discriminating against south american bananas, because they are preferencing former colonies in africa and southeast asia. so then they got the ability to copy or reproduce any european books that they wanted to.
conventions!
Paris convention
back in the late 19th century. completely toothless. but does contain national treatment principle. also priority rules if two people have patents on the same product.
berne convention
copyright law. toothless. but successful in creating uniformity of basic protection for authors.
both berne and paris administered by UN, in particular, WIPO.
other conventions
some make it easier to file applications around the world. there is no world patent office, or world trademark office; you have to register in all the different patent and trademark offices. there have been some attempts to streamline the process. uniform fee, set of approved languages, revision of priority rules (this is the PCT treaty).
madrid agreement
if you’re a US trademark owner, at the very end of filing for your trademark, you get a page that says “click these countries,” and the patent office will generate a form that goes to the national bureau in geneva, and it’ll then forward that to the countries. very easy. don’t have to hire local counsel unless you get turned down.
principles!
territoriality
suba films v. mgm
if suba films licensed rights to mgm, why are they suing? original license in 1967, and there were no video cassettes then. this is a recurring IP problem—technical changes are going to bring new modes of communication. mgm thought they had super broad rights which included video cassettes. suba said no, and subafilms prevails on that point.
so mgm is dead in the water domestically. but they don’t have to pay a penny for what they’ve encouraged and authorized overseas. why doesn’t the copyright act apply overseas?
- it’s the extraterritoriality principle. aramco gives a presumption against international application of US laws. why is our presumption that US laws don’t regulate overseas behavior?
- comity, we don’t want them doing it to us. (could it lead to a race to the bottom?)
- don’t want to deal with foreign citizen issues, that’s costly
- but could congress pass a law making MGM liable? sure! presumption in aramco can be overcome in three ways:
- the effects are within the US.
- there’s a trade case, involving antitrust laws over behavior entirely in england. court was fine with that. people conspiring against us outside our borders.
- but aren’t there strong effects within the US, assuming suba is an american corporation? well, the court doesn’t see it as a strong effect. but what if congress thought so? then you have the constitutional issue rise up, to decide whether the effects are strong enough to give congress the right to do this.
- a lot in copyright law suggesting that we don’t intend it to apply overseas, but trademark law does!
- it’s regulating its own citizens anywhere.
- MGM is a US domiciliary. congress could say that american companies couldn’t engage in copyright infringement anywhere in the world.
the effects doctrine is the problematic one, nobody has any issues with regulation of citizens or territory.
throughout the world, americans can’t traffic in drugs, engage in sex tourism, bribe foreign officials. that’s regulation of citizenry globally.
why does territoriality principle doom suba’s position?
- that might be too subtle a question.
suba can still sue in nations throughout the world. no problem with them going to thailand. but of course that’s expensive, and the southern district of california is probably friendly to copyright issues. also only one person to sue. you don’t have to find every video store in thailand. so in america, friendly forum, cheaper forum, single defendant, deep pocket.
there’s no territoriality provision in these treaties, it’s the custom of states. just the result of the way nations behave rather than some positive section of the agreements.
national treatment
phil collins v. imtrat handelsgesellschaft
germany was giving live performers better protections if they’re german than if they’re from somewhere else. an anti-bootlegging statute.
this is before the TRIPs agreement, which now has anti-bootlegging statutes. why doesn’t regular copyright law protect against bootlegging?
- copyright law only protects stuff fixed in a tangible means of expression. you can’t copy someone’s sheet music or recordings. a live performance isn’t fixed beforehand—the only ones doing the fixing are the listeners. sort of a loophole in copyright law that gets plugged by antibootlegging statutes. what does article seven of the EU treaty say?
- it’s a general principle on nondiscrimination.
- germany argues that this type of right is not covered under the EEC treaty. that it only applies to traditional property—copyrights, industrial property, etc. but as we just discussed, bootlegged performances were not a traditional right.
- court says that the effects are the same and thefore it’s covered by article 7.
could you discriminate in favor of foreigners?
- yes, under the national treatment principle. who knows under the EEC treaty-it seems like the EEC might actually prohibit it based on the language of the treaty on page 32.
there’s a big section of US copyright law that discriminates against residents. under the Berne convention, you don’t have to register anything. but we like formalities in the US, and we impose them on citizens. so if you’re a US citizen, you have to register your copyright before you sue. French citizens don’t have to do that. US Citizens have to give two copies to the library of congress.
most favored nation
you have to treat everyone as well as you treat your best trading partner. think of it in bilateral treaties, or the bilateral treaty with chile, and in it we say that chilean salmon producers don’t have to register their trademarks in the US trademark office, or that they get to patent their feeding apparatus under a lax standard. we have to give those to everybody, converting a bilateral agreement to a multilateral agreement.
(do those agreements apply to tax?)
we might some day agree with france that we’re not going to apply our ban on geographic indications to you—if we do that, we’ll have to let everybody protect their geographic indications.
what does MFN apply to?
it’s a general WTO principle, applying to GATT and TRIPs. the only tax provisions in the GATT for discrimination… also a bunch of exceptions for dates (pre 1994). So MFN generally only applies to goods, services, IP.
Class 2, part 2, US IP law
it helps to get a glimpse of american law, because that dominated the TRIPs agreement.
trade secrecy
the only thing that doesn’t involve the federal government.
if you have a client who wants to wina trade secret case, you have to allege and prove that:
- your client has information—could be a customer list, unrevealed ad campaign, any secret information that
- gives you some kind of business advantage. does not have to be 100% secret, just not generally known. two companies can possess the same trade secret simultaneously.
- the client is taking reasonable efforts to keep it secret
- this is also evidence that it’s not generally known and is valuable.
- the defendnant misappropriated the trade secret. reverse engineering is A-OK.
- trespass. can’t break into the factory, hack into their computer system, tap their phone line, etc.
- breach of confidentiality, either implied or express promise not to reveal. probably 90% of all trade secret cases, people who break a promise to keep something secret.
- implied promise when parties engage in sale or license of the secret. nobody will pay you until they find out the secret in the negotiation, and the potential buyer can’t take advantage of the secret, even if there’s no express agreement not to reveal.
- arises by implication with employment contracts.
- explicit non competition agreements. you can prevent an employee from working for a competitor. courts will, if they’re written in a reasonable way, enforce noncompete agreements.
- courts have implied non compete agreements where the employee would inevitably use the secret. fairly obscure.
- express promise not to reveal
- again, it’s totally ok to reverse engineer.
‘’Christopher’’ is a case where a competitor to Monsanto… competition hires someone to fly over the plant and photograph the factory while it’s being built. virtually the only example of trade secret misappropriation where they didn’t breach a duty or commit trespass.
- stupid case to put in a first case property textbook because it’s a far far far outlier. never been followed since 1978. no green flag in lexis or westlaw. there was a law firm that made me read every trade secret case from 1926.
remedies
we don’t see permanent injunctions in trade secret cases. courts understand that secrets eventually get out, or get independently invented.
in patents and copyrights, plenty of permanent injunctions. trade secrecy is the exception on this.
damages! : you have the right to recover lost profits… profits earned by defendant… the licensing fee for the secret… reasonable royalty (the same as licensing fee)… lost R&D expenditures… punitives.
trade secret owner had an employee post a trade secret on a large public web site. employee was on the verge of bankruptcy. could they prevent their competitors from using the trade secret? any remedy that the trade secret owner has from preventing competitors from taking advantage of disgruntled employee’s revelation?
- no. you can only allege it if, at the time, the secret is not generally known. the courts are consistent that there’s no remedy except against the employee. the misappropriation prong is met—if you know someone has stolen it, then you’ve misappropriated it. but it has misappropriated public knowledge, making it no longer protected.
no state agency for this, it’s purely a common law remedy.
yahoo’s not liable unless they had specific knowledge.
there actually is a federal criminal statute. if you engage in wilful trade secret misappropriation for profit, you’ve comitted a crime and can go to jail. i’ve met a lot of federal district attorneys, and they don’t ever seem to prosecute those.
- although if someone has more than 2k worth of knockoff bags, they will go after those people. someone did a search and found 12 cases of trade secret proseuctions over the last twenty years.
January 13: Class 3 class notes
TAKEN
folklore geographic indications
march 24 is a class presentation, but that's when we're going to london, so that's cancelled. aside from pushing everything up a day, there will be geographic indications day on march 17, and it'll be presentation based.
moral rights data protection eu comm trademark music issues anti-circumvention domain name disputes
American IP law!
patent law!
trade secret law is the only law protecting secret information.
patent law only protects ideas that have been operationalized in the form of a machine. so you have to keep your ideas secret until it takes the form of a machine. telling someone in a non-confidential relationship: does that really give up all rights to the idea?
trade secret review: you have to prove it was taken from you wrongfully, or there was a breach of contract.
trade secret law is highly efficient. you have to take precautions to keep the secret protected, and until there's damage, there's no expense. of course, the big problem with trade secret law is once your secret gets out, you're cooked.
lots of overlap with what can be protected with trade secret and patent law. compositions of matter, processes, etc. the only thing that doesn't overlap is a customer list, planned ad campaign, etc.
you have to choose between trade secret law and patent law. you can never be protected by both simultaneously. what do you have to do to get the absolute protection for a 20 year period? you have to tell the patent office your...
- usefulness (not a high standard) (but there is a high standard for gene sequences, DNA. you have to tell the patent office what the gene does. impedes people from patenting genes because they often don't know what genes do. so the utility requirement sometimes has bite.)
how does gene fall under process, composition of matter, etc.? the legislative history defines composition of matter as something a human has pushed together. so the geneticists took the argument that it's patentable if taken apart. so we're rewarding the work of isolating and identifying genes.
the third hurdle is novelty. america rewards the first true inventor, not the first one to make it to the patent office. we won't give a patent to anything that's known or used in the US, or published abroad.
embarrassing situation when a drug company patented turmeric, which is an antimicrobial agent, but those properties have been known in India for two thousand years. the patent stood until someone found an article in indian literature, and that disqualified the patent in the united states. so mere knowledge or use abroad would not qualify, it needs to be published.
american law gives you one year after making the invention public to get something patented. not true in the EU. in the EU if you publish before filing patent application, you lose all revenue. so advise clients who are academics not to present information in printed form or conference or you're cooked in the EU.
even a first inventor can lose ability to get patent if he/she is lazy in developing a working model, or suppresses or abandons the invention.
big problem: inventors don't work consistently between conceiving of the invention and then putting it into practice. you don't have to actually make a model--enrico fermi got a patent on the nuclear reactor without building a nuclear reactor. so reduction to practice doesn't mean making the invention, it means you've conducted enough experiments so you can write comprehensible instructions for building something.
- people who conceive early and are lazy can lose the patent race if they don't reduce their invention to practice before someone who conceives of the idea later but reduces it to practice earlier. the novelty requirement works for the public.
non-obviousness
if tweaking or minor improvements are obvious to someone skilled in the art, then no patent. this is where 90% of litigation is. enablement: description must be adequate enough for others to build whatever it is.
the bright side of patent law: the invention has to be useful. at least 95% of what's in the patent office is worthless because it's no better than the competition. you can create non-obvious things that suck.
infringement!
you can only sue if someone has copied every relevant aspect of your invention...
the specifications in the patent tell the world how to make the invention.
the claims section explains what you did that was a non-obvious advance. that's where you say what others can't do. if you come up with an invention that plays mozart at quadruple speed in the background of contracts, you can't sue if it's not contracts, not subliminal, not mozart, or not quadruple speed.
in order to sue someone for direct infringement, all of the elements must be present.
second kind of infringement: infringement by the doctrine of the equivalents. this prevents people from tweaking the patent a little bit to escape infringement, e.g. playing mozart at 3.8 times normal speed. not literal infringement, but they're being cute. we'll find that 3.8 is the legal equivalent of 4.0 and hammer the infringer with the doctrine of equivalents.
you can invent around the invention... if you say figure out that 100x speed also works. assuming that's not an obvious improvement.
obviously a huge part of infringement is going to be defining the meaning of words in claims. e.g. what does contract law mean? does that include secured transactions? judges decide this, not juries.
no rule against broad claims, as long as they're enabling.
you can be liable for inducing infringement, if you encourage someone to infringe... knowingly provide someone with the resources to infringe. if you know someone is producing infringing lawnmowers and you give him parts, you'll be contributorily infringing!
defenses
truly experimental use is ok. if the patent owner lied somehow. perhaps the patent owner violated antitrust law, which also voids a patent. and problems with the patent of course.
remedies
you usually get an injunction. lots of proof elements for lost profits/reasonable royalty. note that if you use reasonable royalty, you'll give the infringer the profit he would have gotten from negotiation.
many companies don't do patent searches, and they just wait to get sued. the danger there is sometimes injunctions are painful, i.e. when an infringer can't easily switch to a non-infringing substitute.
the blackberry inventors got hit with a $450 million dollar judgment for the reasonable royalty damages. they settled for 1.2 billion. reason: they had to pay for the right to use it in the future because there wasn't a cheap substitute they could switch to.
trademark law
no overlap at all between trademark law and patent/trade secret law.
trademark is both state and federal law, and they're almost exactly the same. so in every suit you'll see both a federal and state count. you tend to bring and concentrate on the federal count because it brings you into federal court. in the US you don't have to register your trademark to sue.
what do you have to allege and prove to win a trademark suit?
- anything that identifies the source of a product or good. sounds, words, colors, shapes, etc. anything that identifies the unique source of a good. roaring tiger for mgm.
must prove that it's a valid trademark. if you call your tires rhinoceros tires, you instantly have a trademark--trademarks can be arbitrary or suggestive. if the word is descriptive, you can only get a trademark if there's secondary meaning, i.e. an actual consumer connection. pizza hut is very descriptive--they'll have to show in litigation that when people hear "pizza hut," they think of a certain kind of business.
Priority: the first person who uses a mark in commerce gets priority. you can also file an intent to use application to get priority, but it only works if you follow it up with actual usage in commerce.
next you have to show that you were actually infringed on. it's permitted to use someone else's trademark for profit--you can say you're next to the mcdonald's on lexington. you're not confusing consumers as to the source of your goods. we only punish people who use trademarks to gain an unfair advantage over the trademark owner.
wagamama: noodle house. followed by rajamama. will people think that rajamama confuses the source? the answer is yes, in england anyway. makes people think it's a restaurant owned by wagamama.
trademark dilution: sometimes people with really famous marks will be permitted to prevent even non-competing, non-confusing uses of the mark. you can't open an Exxon pesticide service or a Kodak cafe. particularly famous trademarks only. courts hate it. i'm doing an empirical study to show that it's never actually happened.
defenses
we don't ever let trademark law protect something with a utilitarian function. we will let trademark law protect a shape (e.g. volkwagen beetle) so long as the shape serves no utility. but if you could show the shape was about the car's aerodynamicness, then trademark protection would be lost in that shape.
maybe the trademark owner stole the mark from someone else.
you can use someone else's trademark to describe their own goods. a guy bought chanel perfume in huge jugs and brought it back to the us and sold in small bottles. justice holmes said no problem: he was selling chanel #5 and calling it chanel no. 5. no problems.
we can use a trademark in its truly descriptive sense. Mamma Mia's could say they're the best pizza hut in town, so long as they're using it in a truly descriptive sense.
also trademark may have been abandoned.
First amendment will protect artists (well everyone) from anyone using zany dilution doctrine to quash artistic speech.
There's a big wild boar in Muppet Treasure Island, and the boar is named spam. Court laughs, says there's no consumer confusion, and there's artistic/parody reasons for calling a character Spam.
registration
you don't have to register.
you can't get a registration if the mark is deceptive, scandalous, immoral, or a deceptive geographical indication. you cant register a flag or emblem. can't register a mark that's primarily geographically descriptive. you get a certificate, in court that gives you the presumption that your trademark is valid and has priority.
only registered trademark owners get to contact the treasury dept and get counterfeit goods stopped at the border.
if your mark is registered for five years and descriptive, it's immune from validity challenges due to its descriptive nature. pizza hut doesn't have to make a descriptive defense.
you can also get, aside from damages done to you, profits earned by the infringer, so long as there's no duplication of damages.
copyright
purely federal law. no state copyright law. there is a copyright office run by the library of congress in washington, dc. if you're an american you have to register your copyright there and it's very easy and there are very few pitfalls. trademark officers shoot down a lot of trademark applications. no scrutiny for copyright applications. foreigners don't have to register to sue, americans do, we discussed that already. americans are protected the moment they put pen to paper. you just have to register the copyright before you sue. you also want to send a registered letter saying they're infringing, because anything they do after getting that letter is infringing.
the meat of copyright law is what constitutes infringment. validity and ownership requirements are easy to meet. the copyright act gives five rights to copyright owners. the most common is the right to copy. if you want to sue someone for infringing your right to copy, you have to prove that someone copied your work. if someone else wrote a similar poem without looking at yours, no problem. not true in patent law. 97% of patent cases involve innocent infringers, people who had no idea they were infringing on someone else's patent.
also have to prove that substantially similar. not only does the infringer have to copy, it needs to be substantially similar. i might copy a measure and nobody else can hear the similarity btween the two songs. no copyright problems. the substantially similar test applied wildly differently based on the kind of work. novels, poetry, movies, plays, choreography... ranging to maps, architecture, dictionaries. the more creative (high authorship) they get a really friendly infringement test, called the look and feel test. if it looks and feels like the plaintiff's work, defendant's got problems. words that are really functional get the ( altai? ) test. only the creative aspects get protected. the only overlap between patent and copyright law is software, which is protected by both.
patent law will protect a software company against competitors creating similar software. copyright law protects almost nothing except against outright piracy.
a high school history book, for example, will look very similar to others, and get the alltai test. only the creative stuff added by the author beyond just the facts gets protected.
right to perform': valuable for drama and music. bunch of statutory exceptions. churches dont' have to pay when they perform music. performing music not for profit, you don't have to pay. if you're a small shop owner in the US playing music over the radio, you don't have to pay for it.
display right never comes into play.
right to creative derivative works: exclusive right to create james bond sequels.
defenses
lack of originality. telephone white pages. simple recipes. car transmission model numbers.
not fixed: impromptu jazz. if you live over a stadium looking down, you can take all the pictures you want, because the game isn't scripted or fixed in a tangible form when they're recorded. query whether you can take pictures of professional wrestling.
copyright's expired: i'm not sure congress will ever let another copyright expire. but works before 1923 not protected... works between 1923 and 1976 require certain things to be protected (not renewed, no copyright symbol). the owners of It's a Wonderful Life forgot to renew their copyright.
no protection for short titles, slogans, phrases, typeface.
ownership: if you hire an architect, does the architect retain ownership over a design, or the person who hired the architect?
- i didn't copy
- it was fair use, including first amendment. e.g. copying a score for one page for your organ. you're not costing anyone a sale.
- idea/expression dichotomy: copyright law doesn't protect ideas. you can only protect an expression. so you can't use copyright law to get patent-like protection
- merger doctrine: sometimes so few ways to protect an idea that even the expression isn't protected. e.g. a plat map for real estate. you exercise no choice as to plat maps. because there's no room for expression, the idea for the plat map merges with the expression, so you can copy plat maps all you want.
- public domain extraction: you can always copy someone's work to extract the public domain information. so you can extract all the public domain stuff from the yellow pages.
- section 102(b) systems, processes, methods of operation... just more stuff to differentiate patents
damages
you can ask to recover the illegal gains of the offender.
you can also get statutory damages, between 500 and 100,000 because there's often no lost profits, and we still want to prevent copyright infringement. you have to choose between statutory damages and accounting.
no reasonable royalty damages.
January 15: class four (Sam's notes)
TRIPS agreement is on the WTO website.
Located in Geneva- large UN Bureacracy responsible for numerous conventions
Has roughly 2,000 employees
Many of the treaties are not important due to TRIPs out of the WTO
Why is this easy?
No administrative component at all. US is about the only nation with an agency these days.
Many of the differences and difficulties have been removed with TRIPs and Berne
While things like Berne did not have much in the way of teeth, people still complied. It wasn't hard, you just had to let people to sue those that copied their products.
Very broad compliance and uniformity with simple international rules.
Some exceptions
When copyright looks different from one country to another
Exceptions often deal with different conceptions of fair use (that case is coming next week)
Notion of when copying is OK and isn't.
Slight variations in what determines originality- Berne convention does not have this. US does, many nations do not.
Whitepages are not protected in the US, are protected in the UK
US imposes formalities when you want to sue domestically, that is not true elsewhere
Droite de suite
Moral Rights
Differences in remedies against reliance entities when dealing with a re-established copyright
Differences in term length. Minimum length is life of the author +50, US is LotA +70.
Some jurisdictions do not give any rights to sound performers
In the US, only parties that get royalties are the song writer and the recording company. Can circumvent in the US with a good K.
Database protections (might be a subsection of originality)
Article 9 of TRIPS incorporates Articles 1-21 of the Berne Conventions
Promises enforcement from TRIPs and the substance from Berne
Gives country to country enforcement, promises to enforce laws that are on the books
Berne Convention
Article 2 -
Laundry list of what you must protect. Similar to American law. Literary works, musical compositions, films/cinema, architecture, photographic works. - Missing software and sound recordings
May have a fixation requirement if you want. Can give protection to free jazz for example
Matter of legislation if you want copyright to protect legislation
Optional to protect industrial designs and models (toasters and waffle irons)
Article 3
Who is entitled to protection - natioanls of a country that sign the berne convention, and those that publish works in a nation that is a member of the Berne convention
Article 3.3 says that if a work is published in a country of the Berne convention requires a question of what constitutes publication to local rules - exception of perofrmances of plays, music, and films. None of that constitutes publication. Only published when you write the score down and sell it.
Article 5
National treatment provision
Ban on requiring formalities
Article 6
Allows you to retaliate against nations that are not following these rules
This is superceded by the WTO arbitration requirement, though it's not actually declared.
Article 7
Basic copyright is life of author +50 years which is like eternal protection.
Article 8
What rights do you get
Trasnlate, make copies, narrow fair use (narrower than US law),
Article 10
Examples of OK fairuse
Quotations for example
Article 11
Authors of public performance get the sole right to publicly perform
Authors have exclusive right to broadcast. Not a right for broadcasters.
Pulic recitation rights
Article 12
Author only may have derivative rights
Article 14
Sole right to distribute
Sole right to make a movie version of a literary work and to distribute that production.
Deals with who owns a copyright when there is a dispute.
In the US, if you work for Microsoft and write a new program, Microsoft owns that. In other European states, you would own that information. Berne say you can have different rules
Article 16
Copyright violations are subject to seizure, but is subject to the state law.
Now backed up by TRIPs
Article 18
If something falls into public domain, you can't get that.
Article 20
MFN status does not exist. You can deal with a state and get better deals with them.
TRIPs Copyright laws
Article 10.1
Plugs the hole of computer programs
Compilation of data is protected, but only if they are original to their design and selection.
Cannot prohibit people from extracting public domain information
Article 11
Rental rights
Can't rent records. Blockbuster can rent films, but not CDs. Nor can it rent software like TubroTax
Cinematic works also get that protection if the country is a pirate jurisdiction under Article 11. - If rental has resulted in widespread copying of the works.
How can you rent video games? Because you are allowed to rent things were the software is not the designed purpose (so you can rent a car with lots of computer programs in it), but the popular view is that a video game is not a software program for the purposes descibred, but instead is meant for things like Word.
Article 12
Term of protection
Life of the author +50 applies to every kind of work that is mentioned in the Berne convention
Software protection does not exist in Berne though.
Protection for sound recordings was not mentioned in the Berne convention.
If you have a term of protection not based on the life of the author (performers rights for example) then there is a minimum -50 years
Article 13
Fair use
Article 14
Plugs the hole in Berne convention for only author rights
Now others get rights
14.1 Performers get right to prevent fixation of their product - bootlegs.
14.2 Producers of records get rights in sound recordings - sound recordings are now under protection.
14.3 Broadcasting rights allow you to pursue pirated broadcasts.
Is publishing on YouTube a means of publishing of the purposes of copyright?
That may be up in the air.
MLK's I have a dream speech is not a publication
Had the speech been printed out and placed in a newsletter with MLK's permission that is available for public access.
Needed printed form with access to all
Needed author's permission
The rule is strange. The drive is perhaps musicians. It is a way of maintaining a perpetual copyright on very old works. You get eteranl protection because the musicians just rent out their music despite performing the work.
Copyright work and history
What is the purpose behind the Anglo-American use of copyright?
Promotes ideas and exchanges
Purpose for the French?
Moral right- right to prevent the use of your work by others
Integrity of authors - prevents alteration of their work (parodies are hard)
Attribution - Right to claim authorship
This is a very Lockean concept of natural law- if you create, you are protected against having your work modified from your artistic vision.
Marcel Duchamp placing a moustache on the Mona Lisa
The argument may also be the Personhood Theory - Hagel
Some things are so personal to you, that you cannot bear to have them harmed.
Locke talks about loss of something - say your diary. If that were published, you don't actually lose anything in Locke's view. But you suffer personal loss under Hegel.
Rules of Origin
Where the work originates, the country can place formalities on works originating in that country.
If a Frenchman creates a work that originates in the US, they have to deal with American law.
If an American published first in France, then the rules of the US do not apply to them.
If an American publishes a book in Mynamar, their work is still protected under 5.4.c because they are an American, and in that case, America is the country of origin.
Why else be interested in Country of Origin?
The rules might not apply at all. Mynamar author publishing in Mynamar
Retroactivity
US joined the Berne convention in 1989
Did the US have an obligation to respect works published in other nations before 1989?
While Vienna Convention says no retroactivity, TRIPs requires it and trumps Vienna.
A new nation to Berne will be subject to the laws in effect within other member nations.
In 1989, a book published in the UK in 1913 was available to fair use. However, the book may still be protected in the UK.
The US applied the law to those copyrighted products which had not expired in the US or in the UK.
What works get pulled out of the Public Domain in the US?
Works that are protected in a foreign nation, but were never protected in the US
- Protected in country of origin
- Failure to comply with US formalities (say failure to renew or other formality)
- Or not eligible - see Russian music that was ineligible because he was Russian - Go Cold War Go!
- Or Sound recording because these were not protected until 1972 and were thus in the federal domain.
The US was only willing to do this for foreign works. We did not want to do this with US products, and it's not likely that our partners in Berne were upset with this action. Seems to fit within the concept of American theories on copyright law.
January 20: class 5 ip class notes
reading assignment blissfully short. we'll have time to talk about terms and the powerpoint slide that i'm sending you.
treasure trolls!
we left off at retroactivity. and section 104(a).
sec 104a is one of those weird copyright statutes that only protects foreigners.
if your work is still protected in your home country, and if your work is in public domain in the united states for one of three reasons,
- failed to adhere to formality, e.g. (c) on work
- were discriminated against because of nationality
- sound recordings; federal law didn't protect until 1972, but CA and NY protected sound recordings before then. federal law essentially gave federal protection until 2047 (i missed some info about that).
you can resurrect it.
that includes things like the escher prints, when the escher family forgot to renew their copyright (which is how they ended up on a lot of college walls).
Shotakovich music composition, russian nationals didn't get protection before 104a.
so 104(a) allowed you to shut down sales a year after its passage. it also allowed you to file a document within a year in order to get a reasonable royalty from people exploiting derivative works. the composition itself, the written sheet music, is the original; recordings of symphony performances of the works, movies containing the music, etc. are derivative works. copyright owners couldn't step in and stop production of derivative works, but they could demand a reasonable royalty.
so it makes a difference what the market is doing. if the market is just copying, you have injunctive relief. if the market is exploiting derivative works, all you can get is a reasonable royalty.
and this is driving everything that's going on in the troll case.
the copyright owner lost the copyright for not putting a name and copyright symbol on the troll.
a year has already passed, so the plaintiff can get an injunction if it's a copy, and a reasonable royalty if the restored troll is instead a derivative troll.
why did america enact 104(a)? the answer is on page 100, the retroactivity portion of the TRIPS agreement. (ask yourself whether nations have to do the same with patents, e.g. when russia joins the wto and has existing public domain works and pharma patents.
"and which is protected in that member on the said date... copyright obligations with respect to existing works... article 18 of berne"
and you see from article 18 that russia is going to have to enforce copyrights. but russia is already a member of berne, so no problems for them.
how bout those patents?
lipitor is the most profitable drug in the us. billions of dollars a year. will russia have to recognize lipitor when they join the WTO? the answer is no, they don't. patent law is totally territorial. so what happens when they join the WTO and THEN the lipitor people show up and ask for a patent? does russia have to accept and process the application? well it all depends on what their patent requirements are. what are their novelty rules? the drug isn't new. if russia's smart, and russia is smart, they will adopt the EU novelty rule. and the EU novelty rule is one of absolute novelty. you have to go to the EU and apply for a patent before you publish or get a patent in some other jurisdiction. so countries when they join the WTO have to instantly recognize existing copyrights, but not patents.
but because there's consensus WTO decisions, nations might force "TRIPS plus" promises, which might include protection for existing American patents.
how bout those countries with no patent law or patent office when joining the WTO? they had a nice opportunity to avoid protecting existing patents at all.
1984 TRIPS gave developed nations 5 years to comply, and developing nations 10 years. but deadline for least developed nations extended to 2013. it's a self identification, and nobody has denied the others' self identification.
you'll see from TRIPS that there's no requirement for the novelty rule.
we've had two constitutional arguments to 104(a). what are they?
- i would say takings as one, and con requirement to encourage creation as the other.
heald: the word "author" has a meaning of creation behind it. so it means not creative in the lay sense, but some sense of origin with the person. so the word author presupposes some level of originality.
both times this argument has been made it's lost. courts have said that patents can't be reproprietized... also a suggestion that expiration of the term rather than formality violation can't be taken out of public domain.
One argument not worth listening to: because we're complying with a treaty, we have to abide by it, it has to be constitutional. If you read Reid v. Covert (sp?) you've encountered this. Part of the treaty said if Americans committed crimes on American bases, they would be tried in military tribunals. Reid was on trial for killing husband, court said she was a civilian, and civilians get jury trials. You can't just refer to a treaty requirement and let that override separate constitutional limitations.
better argument: congress screwed these people in the first place, and can unscrew them.
UK and New Zealand and reliance parties
final question with 104(a): how does this work in the UK and New Zealand?
how are reliance parties treated differently in the UK and New Zealand?
In the UK and New Zealand there's strong protection for reliance parties--if you've spent any money, you're totally protected, you don't have to pay a reasonable royalty. the only thing you get if you're the new copyright owner is an option to buy out the infringer. and there's no way exercising that buyout right is going to make any economic sense in 99.9% of cases.
of course, UK and New Zealand didn't have a lot of formalities that caused anything to fall into the public domain. so why would it ever come up there?
we didn't join the berne convention until 1986, so UK and New Zealand didn't recognize a lot of American works. that's what created the problem there for reliance parties--and perhaps that's why their laws provide so much protection for reliance parties!
Feist
What is Feist's business model here?
They're a telephone company that goes to the utilities and offers to pay for their whitepage listings and then puts a super-regional whitepages together. what did they do to upset the rural telephone company? rural was one of the only telephone companies that declined to let them use their info. so feist copied rural's white pages.
how many of the rural addresses find their way into the feist directory?
- 1300 of the 46,000. a small percentage. how many listings were in the rural phone book? 5000. so 25% of the rural listings were pulled for the bigger book. so feist didn't just copy the whole book, and the added some extra information.
are facts protected by copyright law? no. how are compilations of facts protected?
- that's what the case is all about--originality in the compiling itself, the way the facts are arranged and selected. examples of protected compilations? annotated casebooks. encyclopedias. dictionaries. imdb database.
does rural have sufficient arranging and selecting to qualify for protection?
- no.
- they would qualify under "sweat of the brow" doctrine... reverse phone dictionary in new york held an episode of copyright infringement... a learned hand case.
- must be a modicum of creativity.
Phrases O Connor uses on 135 and 136: "entirely typical," "obvioius," "garden variety," "common place", "practically inevitable," "expected as a matter of course".
any way to avoid the constitutional question here?
maybe you could make an antitrust argument--the utility is exploiting its monopoly position. that's a worry lurking in the back of this case. in england, white pages are protected, so are television listings. Reader's Guide not published here, because BBC is the author of its channel listings. so no readers guide, nothing that functions as such. you'd have to pay sky or BBC to tell you what's on TV tonight. the way UK courts have gotten around it a little bit, they function as an "essential facility." if you have sole control over what is an essential facility, you can charge a fee, but you can't use monopoly power to extort excessive rents.
originality is in the statute. the court could have just said that originality was required in the statute. and generlaly, you don't decide constitutional issues unless you have to. so why resort so quickly to the constitution here?
- originality requirement in statute
- fair use opinion
- 102 says facts are not protected
- substantial similarity requirement in statute too. the feist and rural phone books look completely different.
so there were plenty of choices for avoiding a constitution based decision.
post feist fallout, before we get to canada:
instantly, the national realtor's association tries to convince congress to pass a law protecting databases irrespective of whether they're original or not. instantly opposed by reuters, other large database owners. why would large database owners fight against database protection? because they compiled their databases from pulling from other databases. that's why the US is such a large provider of databases. the realtors are a special case and virtually insane, but almost everyone else is on the different side of this. and europe takes the opposite approach as we do. and congress couldn't get around feist anyway. or could they?
- realtors said they couldn't protect unoriginal databases through IP clause, but maybe they could via commerce clause! but that seems like a bit of a stretch. courts generally wont' read one constitutional provision to knock out the meaning of another one.
gibbons v. railway union
the railroad was going bankrupt, and the employees got a law that said they stood in line first in the bankruptcy proceedings--usually employees come last in bankruptcy proceedings. great bit of lobbying by railway union there.
the secured creditors got mad. they found the bankruptcy clause, and found that congress is authorized to pass "uniform" bankruptcy laws, and this law wasn't uniform. scotus agrees 9-0. union said, "that's fine, it's authorized by the commerce clause."
- and again, 9-0, rehnquist indignantly said you can't use the commerce clause to get around another constitutional clause.
slightly more complicated for IP since the word "original" doesn't appear in there.
Canada!
what's the originality requirement in canada?
"skill and judgment" test. UK don't require that.
what about feist? when o'connor gets down to brass tacks, it sounds like she's applying exactly the same test. i don't think there's any difference between the US and Canadian test.
case comes up again in 2nd circuit, Findlaw was copying f2d and f3d. they can't copy West headnotes, but they can copy the cases, even though West makes corrections to the cases, adding parallel cites, clerk names, etc.
West sued Lexis because Lexis was printing the [23] page numbers of the West reporters. Is Lexis appropriation of those page numbers a violation of some sort of copyright West has in the compilation they've assembled?
Normal 0 false false false EN-US X-NONE X-NONE
January 22: ip class 6
when i teach this course, i often spend only a week on international copyright, since there’s no formalities allowed. but there are some jurisdictional differences.
retroactivity/restoration for example. moral rights, presentation coming up on that soon. database protection. fair use broader in the US than elsewhere. term extension and duration.
database protection
we have a feel for how canada and us treats factual compilations / databases (the terms are interchangeable). canada thinks they have a different test with their skill and judgment requirement, but i think the test is pretty much the same.
a list of restaurants in athens would be unprotectable, but an edited list picking the best is protectable.
anyone get intrigued by the EU regime for database protection? (p. 149)
do databases have to be original to be protective under the EU directive? qualified no: sweat of the brow is enough. what are the magic words in the directive that basically get to the requirement? a “substantial investment.” what is an EU database protected from?
- extraction
- reutilization
what if just a tiny bit of your data is used? that’s ok. one way to get in trouble in the EU is to extract a “substantial” portion of someone’s database. but you can get in trouble for just taking a single datum if…
- you do it repeatedly. so if you visit the same database and take a tiny bit each time, that’s just as actionable. that makes it look a little more constraining when you can’t routinely go to someone’s database and take one or two items of data.
- database protection lasts 15 years, but if you update it you get an extra 15 years, so it’s functionally eternal protection. unless it’s a list of civil war battles.
any fair use provisions?
- no. there aren’t any.
you can be injoined from using someone’s data, even if it’s non profit, for education, science, whatever. no compulsory licensing provisions. why did the EU make a regime that makes it very expensive to mine existing databases for information and then use that information?
- because most of the big databases are american?
- we’re the king of databases. but if you want to take advantage of those and be a data pirate, then you wouldn’t want DB protection. or if you admire the US, maybe you would want to adopt the US legal regime. so why this protection?
the business model for databases is advertisement. the IMDB is a great free database, you just see a lot of ads to do it. if you can make money off your database without any technical protection, you’re doing well.
the preamble in the EU says they need to catch up in the database race… and then adopts a totally different DB setup. i talked to lawyers here, and they suggest that the laws are pretty much ignored. you’d have to pay money all the time to use anything. if you go to the white pages and look up the addresses routinely then you’re supposed to be paying a licensing fee. so they’re maybe not talking about it because it’s obviously not working. clients and lawyers aren’t doing anything differently.
the privacy regime though may be better than that in the US.
list of world cup games. in the EU if you go to the FIFA web site and look up scores a few times, you’re violating the EU directive about extraction. kind of silly and irrational.
fair use
some countries have no conception of fair use.
no copying whatsoever. you see in the reading in article 13, section 9-2 of berne, allows countris to make exceptions for political speeches, etc.
we have section 107 of the copyright act which says you can make fair use of a copyrighted work with a four factor test,
- nature of use,
- amount taken,
- effect on potential market
probably the broadest regime for fair use in the world. we’ll see on p199 that sec 107 may be in violation of our obligations under the TRIPS agreement.
we have the broad 107, then narrow things in 110. what are the exceptions in 110.5.a and b?
- First one is a home type receiver. boom box in your bar.
- second one is an exemption for places of a certain size with a certain number of speakers. you can have four loudspeakers, etc if you have less than X square footage.
how does TRIPS panel interpret section A? how does the court interpret 110(5)(a) so it’s an incredibly narrow exception?
- how can you say this is a precisely targeted exception? must be a “certain special” exception, certain meaning clear, special meaning narrowly defined.
- the panel interprets it to mean dramatic works: opera, operetta, and musicals. if you play one chunk of the opera though, it becomes a nondramatic work. so in order to take advantage of the exception, you have to play an entire musical on that boombox. so if you listened to a show with excerpts of a bunch of different musicals, that would count as a performance of a nondramatic musical work.
the only people who can take advantage of 110(5)(a) has to find a radio station (not a CD) playing an entire opera (and one still protected by copyright). not too hard to see that as a certain special exception. where in hell did the panel get that interpretation?
- they looked at subsection B, and read into subsection B the nondramatic musical exception, which to them meant that A only applied to dramatic works. as the book notes, nobody in the US reads the statute in this way. if every expert in the US thinks A applies to every kind of music, where did WTO get that? it’s a stipulation by both parties. why would the EU agree to that?
- this was probably an EU assumption that the US picked up on. that’s an EU way of statutory construction, reading sections in contrast. and that caused A to get saved through some sleight of hand before the WTO.
the panel says the other two parts of the test are also met—legitimate interests of owners, something something.
- seems hard to imagine that owners of copyrights of post 1923 operas are actually going to try to collect these license fees. “you’ve played my entire opera on a saturday afternoon!” the bar just won’t turn its radio to NPR for three hours in the afternoon. so they’re not really losing any money because of this rule, nor are they facing competition—nobody is going to a bar to listen to opera rather than going to an actual opera.
but the panel doesn’t like part B.
- more than half of establishments can take advantage of the exception. if it were only shoe stores that sold less than 300 pairs a month, and only 0.5% could have the exception, would that be enough?
- it’s odd because it’s not just the number of establishments, maybe the type of music also matters. but why should nondramatic vs. dramatic qualification fit in? (well they do have different markets and market forms).
there’s only three WTO copyright cases. in fourteen years we’ve had two.
we havent’ changed our law. congress thinks small business should be able to turn the radio on. EU wanted 25 million a year, and US wanted less than 1.2 million. the panel gave EU damages of a million a year, which lasted unti 2004, and the EU has flopped over.
CD is always bad, even if it’s a mom and pop shop. again, likelihood of getting caught pretty limited. ASCAP does go door to door.
last topic.
let’s calculate some copyright terms!
note the rule of the shorter term, the exception to national treatment. you want to find out if work X is protected or not. it’s origin is country A, with a term of life plus fifty, and we’re calculating the length of the term in country B, which has a term of life plus seventy. in country B, the term for X would be life plus fifty, since you can take the shortest term between the two nations.
initial reason for the shorter term rule was to encourage nations to extend their own terms.
in the US, anything published before 1923 is also in the public domain. which can make the US term a lot shorter than other nations. in simple terms, if it’s in the public domain in the country of origin, or in the country of use, you can use it. so there’s a lot of american works that would be protected in the UK, but aren’t.
of course, domestic laws have the option of protecting works they don’t have to. not against the berne convention to give more protection, but no incentive to do so.
policy question: extend copyright term for existing works?
term extension. mickey mouse would have fallen into public domain in 2005 if disney hasn’t obtained a 20 year extension. until recently the debate has been in an empirical vacuum.
if disney comes to you and says it’s critical that the terms be extended from 50 to 70. we know copyright incentives are gone, the work has already been created. there’d have to be some other justification for continuing the term.
theoretically, term extensions should lead to less availability and higher prices. are there good things that flow from giving copyright to existing works?
any bad things that happen when works fall into public domain? do works suffer?
orphan argument: nobody will maintain and exploit. (sounds ridiculous in the modern age.)
tragedy of the commons: too many people using the same work. which will make them less valuable.
porno mickey mouse will destroy the value of mickey mouse to us! if a work has an owner, it’ll be a good shepherd, keeping the work from being debased. (also ridiculous given remaining popularity of santa claus, etc.)
how does posner justify both under and over exploitation arguments at the same time? to resist empirical attack?
heald research suggests that songs used more often in movies after they enter PD.
January 27: class 7: Sam's notes
Berne convention is still pretty relevant for Patents. But Paris is more or less moot.
Paris never said that much interesting anything. In Berne, things were much clearer.
Paris Convention has two points of relevancy
Priority rules - <not in Berne>. Getting a registration in one country gets you an earlier priority date in a second, third, etc. country.
Emphasis on Territoriality - All patent enforcement rights stem from the rights of a particular state, always governed by that state. If you think you ar ethe victim of infringement in France, you have to have a patent there, sue in France, and be governed by French law. - Not at all like an international patent office.
Prior to Berne - Paris was meant for anti-discrimination. Just said whatever system you establish, you must apply to foreigners and domestics.
India and Brazil had no protection for pharmaceuticals which was fine, because their domestic engineers could not get a patent there either. TRIPS - Patent
- Basic standards for patentability. Similar to the US law. We comply with everything, which is why it looks so similar. - Protect processes and products. Protect inventions that are new, inventive step (non-obvious standard in international terms) and the industrial application (usefulness - must state what the product does). <No novelty rules here. Just says new, does not say what new means. In the U.S. you can keep a product secret for a time, and get a year to file from the moment you publish or make a commercial use. In the EU, you have to register before any of this. No definition of novelty, no priority rules…> Last sentence talks about inability to discriminate or require that products be imported or locally produced. A lot of countries had a requirement that if you patented there, you had to produce there. TRIPS ends this.
- Working which allows a state to ignore a patent when necessary for the state's health and safety. Final exception possibly for weapons use.
- Removes surgical method patents. Though therapeutic patents are maintained. Important because an original patent might be for the compound.
Example
1970 - Patent Prozac for the compound
1985 - Ask for Method for Treatment patent for depression - getting a new patent.
- Animal and plant products are not usually patentable. But you must protect some varieties under patent law. Just need an effective system for protection.
- If you have a patent, you have the exclusive right to use the invention. Offer for sale, exporting or importing.
- If you want a patent, you must reveal the patent. Must be done so clearly that another with the proper skills, can make the invention. May require the best mode for carrying out the invention.
- Exceptions to rights conferred. Fair use. Looks like copyright - reasonable without prejudice or confliction of patent owner's rights. "Limited Exceptions" which is different from "certain special cases" in copyright, so it's possible patent law is a bit broader in terms of use. Only fair use exception in the U.S. is to see if something works. Also pharmaceutical exception - can make a pharmaceutical to practice your attempt to get a generic product before the patent expires.
- Creates the possibility of a government granting the right of someone using your invention without your permission. Limited Compulsory License. Authorization must be on individual merits. Must be reasonable terms for requesting use from Patent owner. Domestic market only. Local production for local use. Appropriate remuneration.
- Deals with a special case. "Blocking Patent" Inventor A has created a compound called prozac. Inventor B has developed and gained a patent for the therapeutic use of prozac. However, Inventor B cannot use the patent without approval of A, but A cannot treat depresson with Prozac unless inventor B OK's this. The result is there will be a negotiation between A and B and find a way to share the profits.
Conditions
Governments cannot unblock patents like this, unless the second patent is a significant advance.
If Gov't does, B must give A a cross license.
Any assignment of the first patent must happen with the second patent.
Any third parties must get approval from all of them.
- Length of patent is 20 years from filing date. Similar to US, because we had 18 years from granting of patent. This old US system allowed for some games to be played.
File application in 1970. Don't persue, keep adding new claims, slowing the prosecution of the patent. Waits until 1988 to actually get moving to get the patent issued. What you are doing is waiting for the market to rely on your invention.
No rule on when to publish the patent.
- Process patents. Easiest patent to infringe. See a cool chemical process. If you are doing this behind closed doors, it's hard for other parties to know. This gives procedural rights when you think a company is producing something using your process. The defendant in the suit must show they are not infringing - forces discovery for sub-process patent owners.
Nothing about patent office procesures in Paris or TRIPS.
Some nations have opposition procedures. - If you think there was a fault in the application, you jump in and argue against the product. Other nations let the courts determine these issues later.
Nothing about costs and fees
Nothing to say what to do with those that lie to the patent office. - Say about what prior art exists.
Why does intenrational patent law allow for so many formalities, but not for copyright law.
Why these hoops with patents, as opposed to copyrights, which apply almost automatically?
Copyrights are a fixed expression. Patents are for an idea.
Patents involve an immense investment of resources- the process helps insure the validity of the patent.
Patent law protects ideas, while copyright protects just an expression.
Certainty in knowing what your rights are may be more important to patent owners than copyright owners.
Difference between one expression of an idea and an idea with global implications.
Patented material gets a super competitive price. Not the case with most copyrighted material as there is little price competition in relative value.
Why no natural rights theory for patent law, while we have it for copyright?
Why more immoral to copy a book or a song, than a patent?
95% of patent infringement in one study was shown to be parallel inventions, as opposed to copying/theft.
Obviously not something that we see with books. Interview with the Vampire doesn't happen with or without Ann Rice.
Looking at TRIPS through developing countries.
What is the best reason not to have patent law?
Access to tools of development without the costs of paying foreign states for their use.
Why strong patent law?
Protect and encourage invention in your state. Provides a source of revenue for your citizens if you get parallel protection.
You get more imports as well, because you attract others to your markets since they get to be the exclusive seller.
FDI Question
Research is highly contradictory. We are sure that wratcheting up trade secret protection improves matters in your country.
Some evidence that patent law strengthening attracts companies as well. Say if you export lots of widgets to a country, it might make sense to go to the market to produce locally if they will protect. Probably something big, like a truck tire, as opposed to a widget, like a pencil.
This is probably bogus though. If in the no patent state you have someone making the tires, then providing patent protection won't do much.
January 29: class 8: (Sam's notes)
Argentinian case
Sides with Mansanto
Roundup ready corn and soybeans
Made to be resistent to roundup
Do not have patent protection in Argentina
Might be because Argentina does not have protection for seeds.
Do have EU protection
Their argument is that their patents are available in the EU. Thus they should be able to get the EU to block the products at the border if other Argentinean companies send in patent breaking products.
EU has held that soymeal and soybean oil are not infringing because those components are inert.
This is not the case in the U.S. because you have the patent on the Gene, and the products with the gene carryover.
There is seemingly a hole in TRIPS that produces such a wide variety of responses.
How can you make a monopoly profit on your seeds to get something that looks like a protection?
Make use of a distribution agreement. If you sell products that infringe on our patents, we will revoke our agreements.
In theory, it's a violation of patent law to replant seeds in following years.
TRIPS
Novelty rules in the US - once you invent, you can publish which starts a 1 year clock ticking to get to the patent office. Forgiving policy.
In the EU it must be a secret up until you apply for a patent with the EU. Not even a little bit forgiving.
Why does a country care about what approach to take?
You can get a patent in anoter country even if you can't in your own country. So if you're French and screw up, you can still go to the US.
Adoption of the EU rule essentially casts all existing patented inventions into the public domain within your borders.
Absolute novelty means if published or patented elsewhere, you get no protection.
Means you only have to grant patents prospectively, not retrospectively. This is quite the advantage, because you don't have to recognize these patents in other countries, especially if you can make any of these things.
If you join the WTO, you accept Paris convention
Means you accept priority filing of other patent inventions made within the least year.
Will have to recognize patent applications in other countries filed in the last year. If someone filed in France in the last year, then you must hold that patent valid.
SO HOW DOES THIS DIFFER FROM JUST USING THE AMERICAN SYSTEM IF THE PARIS TREATY APPLIES?
If you're a pharmaceutical company, you'd want to lobby your government to compel that new nation to agree to a side deal- part of the WTO induction process.
Novelty
US has a weird rule - Invention is not new if it is known in the US or published or patented overseas.
Creates the possibility of an invention being known overseas, but not being published or patented. You can then get a patent. If say it's a relatively old community that does not publish works. If that's true, you can get a patent.
Natural isolates and life-forms
Don'te necessarily have to be protected in TRIPS.
US inclusion is permitted, but not required.
Doubtful a dispute panel would accept them as inventions
Purified versions of naturally ocurring substances
Again, a US thing.
One of the earliest instances was adrenaline.
Probably have a choice to deny such patents as another nation.
Exceptions for prior user rights
Concept developed to ameliorate the harshness of first to file requirement in the EU
EU rewards the person that is first to the office.
Don't want to hear from the person who claims they invented prior to this date.
So what do you do if a firm invents and makes use of a product for years. Then three years later, firm B goes to the patent office and gets a patent. Then firm B sues firm A for patent infringement. Nothing prevents this but for fair use exception which grants a privilege to the prior user to use the patent, even after a second party gains a patent. However, firm A can only use the patent in the manner it existed prior to the patent date by firm B.
Developing country - probably wants prior use so companies withinthe borders are not harmed by larger industries from outside.
Patent - Best Mode
Take one of chem A (12 types), one of chem B (15 types), one of Chem C (20 types) and heat between temperatute of 100-150 degrees. If the most of these work to get a result you say they will, then you have a patent, despite the fact that you have 180,000 patents here.
US requires that you also state the best combination of these. "Best Mode" Only requires that you know the best comination at the time of application for the patent.
US is the only country where this is true.
Best route for a developing nation?
Probably best mode requirement. Most foreign firms hate this, so you might deter patent application form foreign nations, and you get more information revealed within your market. That said, no other nation has followed this…so…
Means of breaking bio-piracy
A disclosure requirement explaining where you found the product originally.
This is something some developing countries may want to pursue to help enforce local prospecting rules and as a means of compensating nations.
TRIPS - can't require this kind of condition for a patent. Must only use fines.
Nothing in agreement says when a country can or should publish a patent application
Old US system was that a patent was never published.
New system has us publishing a patent within 18 months.
Developing country preference - probably as soon as possible, though if you're protecting local industry, then you may want to protect your products with longer publish date. But if your purpose is to prevent patenting in your country, then an immediate publication is better.
Why such a burden- because if the patent doesn't issue, you're in trouble immediately since you've disclosed everything.
Patent Opposition procedures
Some countries let a party to jump in immediately to fight a patent
The US does not, but we're moving towards that moment.
Is raises the costs of patenting in a jurisdiction when you have to fight opposition and the patent examiner.
Want to impose all administrative costs on those applying for patents. Since few locals will use this, the costs come onto foreigners. Nothing in TRIPS says that patenters must subsidize the cost.
How do you punish people that lie to your patent office?
You are generally required to present prior-art
Some of that may show that it is not an original development or non-obviousness.
In the US, if you lie, you lose the patent.
That hurts a little bit, but not that much.
Prozac - called an invalid patent because there was a double patenting. Just like it sounds. They patented in 1975, then again in 1990. In 2002 it was discovered. They get monopoly profits for 12 years, and get to keep all of it.
Price Controls
Seem to be understood by everyone to be OK.
February 3: class 9: (Sam's notes)
- alex was here that day, he just showed up late because he was being a big ho
New change - Reading for next class is 335-371
Drop 365-385
Pay Gillian Long by tomorrow
Remaining options for developing countries when they come into TRIPS
Plants
TRIPS says you do not have to protect plants in your patent system
US does do this. Plant patenting system (asexual and sexual) which is easier to get than utility patents which is stronger. Can also get utility patent as opposed to plant patent.
Want to maximize cheap availability of world's resource and lower costs of complying.
Want to legislate to you own strength if possible. Help your own inventors if possible.
US- Special protection for semi-conductors
US - Special protection for boat hulls - Yay lobbying.
If you are a developing country, you may want to look to your strengths- say carpet making.
Natural progression of things is protecting special areas, and then moving to opening borders when you have your own scientists and experts at which point, you want foreign protection of your goods.
What should you do as a developing state?
- Play to strengths. Many developing countries have specialized knowledge as to the use of plants. Tends to be in poor developing countries. Sui generous system to prevent that knowledge from leaking out.
- Local plant varieties tended and interbred for centuries. May want to consider these "local land races" as a protected group. No reason you can't provide sui generous protection for these categories.
- Probably smart to craft your own system for the protection of plants. May want strong protection for local knowledge and plants, with lower protection for genetically modified plants - Monsanto for example might get less protection.
- Might choose a short term of protection. Currently, the most popular protection system provides for 20 years. It may be you do not need 20 years to have efficient stimulation. Software seems to have an optimal protection of 18 months for example. Might find 10 or 5 years is sufficiently optimal
- Seed saving clause in your protection act. Farmers should have the right to save part of their seed to lower the cost for your farmers. This appears to be legitimate. Might want to look at whether contractual agreements like with Monsanto - saying that seed saving rights are inalienable.
- UPOV - No non-obvious requirement. Just need new and distinct. Do not need to show that it is a non-obvious requirement. Perhaps require that the owner show it is non-obvious
- Perhaps build into your plant system a "betterness" requirement saying that plants must be better in some area than existing strains. Why allow a patent on a new plant that is not any better than old plants.
- If the market were efficient, we would not need to worry about Monsanto getting new patents on plants that are no better than stuff that is falling into public domain. But the market is often not open or free. What American companies do is negotiate with local lenders so that the lenders promise not to lend unless buying from a US or EU company.
- Anti-trust law- designed to prevent the collusion that screws consumers as mentioned above. Very little anti-trust law in the developing world, yet it could do much to open up these markets. American and EU anti-trust law is much stronger. Cannot tie purchase of Windows with Windows Media player in the EU for example, which helps protect other media players.
India Case
India was given an extra ten years to develop an administrative procedure for patents.
2005 comes along and this system was not in place.
Only requires that they accept patents and a standard policy explaining what would happen to their patens.
Note that a lot of use of these patents may be past at the point you get protection.
India says that it does accept patents. But the panel here does not buy into what India says. Administrative history of India does not seem to show that they are so committed. Past governments have shown a desire to get different protection.
Rules have to be in writing, and while a procedure existed, it was an undocumented one.
Only existing written rules do not comply, which say there are no protections for pharma.
GATT requires that you should be able to look, see and find the rules.
When did the US have to comply with TRIPS?
One year
Developing countries got 5 years
Developing countries then got another 5 years for tech that was formerly unprotected in their jurisdiction - say pharma which had never been protected.
Least developed got 10 years for everything, and that was extended again until 2013
Priority
Between two inventions, which one was invented first.
Novelty
Requirement that an invention be new. (Possible that inventor A wins out against B for priority, but must show that invention is new)
Ownership
May be able to show priority and novelty, but might have a dispute over who owns it. Employer or employee.
US Patent Act
102 (a) and (b) are critical
Look at subsection g first.
- Who has priority under subsection g is what leads. Whoever has priority then moves up to sections a and b.
No definition of the moment of invention for each inventor.
Presumption is that you are entitled to a patent unless...
(g)(2) the invention was made by another who has not abandoned the patent.. But - in determining priority, we consider not just dates of conception and reduction to practice.
Conception - moment of the idea in your head.
Reduction to practice - moment when inventor figures out right amounts of these chemicals and whether other agents need to be added. What additions need to be made for functionality. Do not need to actually make the invention. Must describe the invention in such a way that another can make the product.
EXAMPLE
Sally conceives of idea Jan 10
Reduces to practice on June 1
Compare to three fact patterns with Sue
Fact pattern 1
Sue Con Feb 1
RTP July 1
Here, Sally wins because she reduces and conceives beforehand.
Exception is if Sally conceals or suppresses the invention or abandons. Not many cases showing what this consists of.
Fact Pattern 2
Sue conceives on Jan 1
RTP July 1
If Sue dillydallies like going on vacation, then Sally wins. Needs to show that Sue was reasonably dilligent between the date of conception and the date of implementation.
Fact Patter 3
Sue conceives on Feb 1
RTP on May 1
Same issue, but now we care about Sally's dilligence.
Paris
Sally files application in China on Jan 1
Files in the US on Dec 1 (11 months later)
Runs into Sue who invents in the US on Feb 1 and files in the US on June 1.
Who wins? Sally. Her patent in China is less than a year old.
Paris Convention gives you a 12 month lookback rule.
PCT
Sally files in China on Jan 1, 2005
Files PCT in EU on Dec 1, 2005
Files US application on May 1, 2007
PCT extends the look back a potential 30 months. Extends look back giving patentees an additional 18 months allowing time to decide whether or not they will patent around the world since it will cost several hundres of thousands of dollars for translations and administrative costs.
Can designate first filing as a PCT filing or in your second filing. Need to do this in the first 12 month period. Means that a later filing will still be accepted in a PCT country.
Look to page 301 to understand the PCT
Patent Cooperation Treaty
Gives a Benefit of a standard form and acceptable language in all nations.
Means fewer surprises in what is expected of you.
Note that the US patent Act disqualifies lots of prior art when someone describes an invention or has had the product in use for a period of time prior to arrival at the patent office.
102(a)
Stuff other people can do to destroy the novelty of your invention.
102(b)
Things you can do to screw up patenting your own invention - say double patenting, or describing the invention more than a year before the date of application.
Teets case
Basic shape of the American rule in determining who owns an invention (employer and employee)
Question is what the shape of the employment is. Was the person hired to create this invention for example.
If you were not hired to come up with a particular invention, you may have a claim even if you used the facilities of your company. But corporation has a shop right to use the product internally. It cannot sell that invention beyond the course of its own business. Shop right in inalienable.
If the invention came at home, then the university would have no right.
All of this comes apart if there is a K.
K can say who owns the invention. All scientists may sign K saying that all inventions on the school are University tools, but the inventor gets a share of the product.
From copyright statute, it would seem that all textbooks written by professors is owned by the university. This is shockingly different from the patent rules where the professors own rights to their patent products. However, there are circuit court decisions saying that professors own their own textbooks. When publishing a book, publishers never ask for permission from the university. Under copyright statute, they should talk to the school, and so practice follows Easterbrook and Posner rulings saying that there is an exception for professors.
February 5: ip class 10
patent law: you’ll need experts no matter what. when i first got in, patent litigation firms didn’t care if you had a science degree or an english degree. although they’ve gotten pickier lately, but i’m not sure why, don’t know if that’s really a wise move since it’s rare that you get something in your field of expertise.
if you represent a us investment fund, and you’re sent over to do due diligence and value the assets of the french or german target, and whether they own the assets they claim they own, you’ll need to know the rules, whether the company just has a shop right in a process because an employee invented and took ownership years ago.
so it’s sticky.
TRIPS is silent on the first to invent or first to file system… usually first to file with prior user’s rights to continue using the invention.
so you need to have a grip on those 102(g) rules to determine priority… remember you got crazy first to invent system here, first to file almost everywhere else.
in the US, contract controls if there is one. tends to make life easy. particularly since they’re often very prevalent. hard to find employment contract that doesn’t say who owns the invention. but if there’s no K, just an at will situation, there’s a tripartite situation; if employee hired to invent, then owned by employer, if hired to invent but not at the direction of the employer, then employer gets shop right. inventions at home ALWAYS owned by employee, even if there’s a contract. contracts cannot be written to include everything invented at home or after employment ends. (but be prepared to litigate the hell out of where something is invented.)
page 324: nakamura. is japan a more employer friendly jdx? more employee friendly jdx?
- japan is more employee friendly. how?
- inalieable reasonable renumeration right for invention.
- who presumptively owns an invention? the employee. if an employer wants to own an invention, there has to be a written contract. but at-will employment in japan is rare.
japan’s method: employee contribution multiplied by monopolized profit. even if there’s a contract assigning the patent right to the employer.
all a patent gets you is the right to preven others from exploiting the invention. say GM comes up with something that only works in GM engines, and it increases GM profits by 100 million dollars. nobody else will use the invention anyway, so there’s no profit derived from owning the patent. in that situation, the value of the patent is zero, even though the value of the invention is worth 100 million dollars. patents only valuable if you’re in a license arrangement.
So, other nations like france, germany, japan more friendly to employee inventors. which might encourage invention, but discourage tech FDI.
patentability
subject matter, usefulness, novelty.
the plasmid forms a kind of gate opener invention. this invention was incredibly valuable before the patent ran out. patent engaged in some serious overreaching. harvard would provide the oncomice, they didn’t want people involved with the mice production. they also made people promise cuts of any profits made from cancer cures. they got a strong negative reaction and had to ask for less, because they were taking heat for raising the price of cancer research. plasmid convinces egg to take up cancer causing gene (probably takes up the entire plasmid).
the supreme court of canada was unfriendly to the patenting of mice, but what happened at the court of appeal level?
- court of appeal considered it a “composition of matter” and thus patentable. why doesn’t the supreme court like that conclusion? composition of matter seems like the broadest way to describe anything on earth. why not a genetically engineered mouse?
- they didn’t like the idea of a higher life form being included in that definition.
they use the oxford english dictionary definition of “composition,” which is a mixture of different ingredients. but pretty much everything is a mixture of elements.
composition of matter generally understood to include chemicals. so the court didn’t want to pull this out into mice. what about the fertilized egg?
- apparently this is a composition of matter, it’s a mixing of the plasmid with the gene.
i’m less convinced this was an article of manufacture. what’s the court’s argument that this isn’t an article of manufacture? “manu” means made by hand. why isn’t this mouse made by hand? it doesn’t happen in nature. it’s made by “the application of physical labor or mechanical process.”
- but according to the court this isn’t the common vernacular understanding for a mouse.
- what does court worry about happening after patent of oncomouse? or patent of higher life forms generally?
- animals can self-replicate. people disturbed by genetic engineering are concerned about losing control over the technology, mouse might be released.
- is there a category of inventions which are patentable but cannot be legally sold? yes, anything not approved by the FDA. radar detectors in some states. weapons. you could come up with a new nuclear weapon device. so it’s hard to see the connection between letting harvard have a patent and worrying about renegage oncomice. they could always produce renegade oncomice regardless of patent status.
- if oncomice are patentable in canada, then harvard is the only person in canada who can make and sell the mice. 3 million potential exploiters in canada, down to one. patent should decrease number of renegade oncomice. although it might encourage creation of other transgenic animals.
what effect will this have on the biotech industry in canada? people seem worried about that. couldn’t it have a really positive effect? canada could become the cheapest oncomice research center around.
process vs. end product
harvard wasn’t able to patent the mouse, but it did succeed with the process by which the mice are produced. why did it fight so hard for the mouse itself?
- because mice reproduce like rabbits. you could just get daddy and mama oncomice to make zillions of them. nobody is going to use that process to make the transgenic mice just to make more oncomice. if you have a patent on the product itself, you can sue anybody who makes the product no matter how they make it, so even if they come up with an alternative method, like breeding cancer prone mice, irradiating mice, using a virus to transfer the gene, you can sue them all.
if you see the transgenic mice, you can get the infringer.
almost all the cases harvard has litigated they’ve won, but they didn’t litigate in a lot of countries because they knew they’d lose.
in the USA, this is not an issue. animals, plants, all patentable. you can’t patent a human, but that’s pretty much it.
business methods
until late nineties, biz methods weren’t patentable. but then things changed when informal ban lifted in late nineties. disaster at patent office which didn’t have any MBA’s to analyze validity of business method patent, and they couldn’t search prior business methods.
so all kinds of lousy applications come in and get granted. invalidation rate approaches 95% because they’re so obvious. are computer programs patentable in the US?
- yes. but under what restrictions?
- take google earth. if you were to write a patent for google earth invention, how would you go about it? how would you approach it as a method patent?
- i claim a method for… providing overhead satellite views. (but we know from weather on TV, there’s already a method for providing overhead satellite views.) to internet users. in an interactive fashion.
if you want to write it as a product claim, rather than a method, how would you pose it then?
- comprises (don’t say consist of, because then you’re limited to what you claim… comprises has same effect as “includes”) a visual device and a memory unit (rather than ‘computer’ so as to include phones, hard drive, scattered computing, etc.) and an arithmetic logic circuit telling the screen to display certain images at certain times, input device, server with satellite information.
- nobody ever claims software, because software by itself doesn’t do anything without a memory device or a way to manipulate the information with a logic circuit, a way to input information, an output device like a monitor, so the patent is really applying to a large apparatus scattered in different geographic places
- a lot of software patents that use this crazy language… ten million patents, and only a few hundred actually mention the word software. nobody really uses that word anymore.
you don’t claim your source code or object code in the patent. these method or obscurely worded product patents are what people are getting patents on.
anything that’s not patentable subject matter?
- humans
- formulas (pure equations)
- pure information (a CD with a list of addresses)
the EU doesn’t recognize business methods—there’s an express business method ban there. also a ban on computer programs in and of themselves. plain games. (you can get a patent on a game here.) aesthetic creations (lava lamp patentable in US, not in europe).
seems that the EU is significantly different from us.
- what’s the invention in the Hitachi case?
- method for conducting automatic dutch auction over the internet. why isn’t this invalid? it seems like business method. why not a very short opinion?
- it has a technical feature that could be regarded as an invention. EU usually lets you get away with that, so it’s unclear what the EU business ban extends to.
- any situation where the business method ban would have bite?
- maybe a method for advertising, something with no techinical character. maybe using a focus group. if i wrote it stupid enough, reading poetry, giving a hug, i could write a non-obvious patent on a method for firing an employee.
oh are you familiar with the way walmart does its inventory? they have a complex system for stocking stores without using a large inventory. if it could be done just as a pure method it would be patentable in the US but not in the EU. a lot of the delivery firms have complicated non-technical ways of getting goods around.
next week, biopiracy
famous international meltdown of a biopiracy concern. if i travel anywhere, and say university of goeriga, they ask me about mexico. Normal 0 false false false EN-US X-NONE X-NONE
February 10: ip class 11
business methods and software. latest word from the circuit.
if you read the wall street journal or law review articles you hear business method patent and software patent. this is really just an organizational paradigm cooked up by commentators. these two categories aren’t mentioned in the statute.
all the things we think of as business method claims are process claims. all so called software patents are machine patents or process patents.
following invented patent claim almost certainly invalid for obviousness, but think about the subject matter wording.
arithmetic device that allows you to file your taxes on a remote server.
copyright form will protect you from pirates, but patent prevents others from writing similar software. but note you don’t need to even mention the word software. why?
mostly because anybody skilled in this art can write software to do this. the only time that software/programming technique ever gets mentioned is when even a skilled programmer can’t do it.
this also allows people to get around business method patent restrictions, assuming it’s intimately tied up in your software.
huge debate in the UK about business method claims, but you can circumvent by not using the phrase “business method” by writing an appropriate machine claim.
not patentable
- math formulas
- found objects
- (…)
court case. arbitrary technique. patent was totally obvious. if it were granted i’m sure it would have been struck down. but the court didn’t want to go there. they instead said it wasn’t patentable subject matter, and they create another category of unpatentable subject matter.
“particular business systems” that “depend entirely on the use of mental processes”. sounds like a technical effect requirement. if it can all be done by shuffling papers, it’s not patentable. the patent office had said, sorry for rejecting business methods for 100 years, but now the federal circuit is restraining that.
hub and spoke mortgages. process was patented, federal circuit said eight years ago that said it was ok to patent it as it operates on a computer machine. and now, court saying that you can only block people from doing it on a computer, you can’t block people from doing things on pen and paper. it’s a similar line with math formulas—you can’t patent the formula, but you can prevent others from using your formula as part of a machine/system. case called 499 f3d 1365, enray kamiski. now puts us on almost exactly the same page as the EU.
biopiracy: i don’t want to teach my own stuff. anthropologist’s article. what is biopiracy?
- exploiting plant genetic material. how do they know which plant to test?
- examining how local communities used the plants. T.K.: traditional knowledge.
- the paper notes an incredibly important article, footnote 6 on page 461. rousel and small are not touchy feely anthropologists. they’re hardcore economists. they look at a petrochemical prospecting economic model.
- it’s a money loser to engage in bioprospecting if you don’t have any clues to go on. you’ll go broke without the research leads provided by the TK. much like you can’t keep drilling for oil without any other information about where oil might be.
any argument that an indigenous group has a protectable right in the traditional knowledge that they have? could they patent it? (they would have a novelty problem. although they could patent in the US if it were unpublished previously. but not in the EU.)
- they could try trade secrets, which may be a better choice than patent
- can’t patent plant, it’s a found object
- could patent method of using plant. couldn’t do it it own country, might be able to do it it in US if no anthropologist has ever described it in an article. but then you run into an inventorship problem: you didn’t invent the technique. so indigenous groups are out of luck in protecting the methods they have.
- any problems with trade secrecy?
- you have to make a reasonable effort to keep it secret—the entire community has to keep it to themselves. just blurting out the secret will lose it. hundreds of thousands of community members could know about it.
if the bioprospectors are just observing and reverse engineering, no protection there. they usually just talk to people. how about that plant genetic material?
- if a company extracts some alkaloid, it’s patentable in an isolated form. so a community could contract with a company to extract and patent the alkaloid.
contract law: always the way out.
sui generis property right. a property right that would provide some sort of right to holders of traditional knowledge. does the utilitarian view of property promote the use of a sui generis right to protect traditional knowledge? only if they’re going to be the best exploiters. and they’re probably not. the only reason i can see for the sui generis is a moral guilt about using indigenous people’s knowledge.
patent law right now provides enormous incentives for exploitation.
how about a tragedy of the commons? are we worried about plant genetic resources disappearing? student: i don’t see why giving indigenous culture the right would prevent the commons from disappearing.
mayans have a lot of community property, so you would expect over exploitation. but they haven’t had a tragedy of the commons. why not? how have they maintained the value of these community resources?
- religious mechanism. you don’t overruse the property because there’s negative spiritual consequences. you’ll piss off god if you over use the resources. when the farmers overgrazed in england, they didn’t pay any penalty at all. not the same cultural mindset.
any international treaty on plant genetic resources? treaty on biodiversity, one other treaty too. as a consequence of a UN minister public law treaty, who is presumptively the owner of the PGR and the TK? the state! in the two int’l treaties that talk about traditional knowledge and PGR is to create a property right held by the state. of course, in reality, states don’t have a good mechanism to enforce these rights.
- the US hasn’t signed that treaty. and they’re UN treaties, so break them all you want. and a lot of the countries at issue aren’t signatories. and the would-be treaty breakers are private companies, not nations. companies don’t have to respect the treaty. so the treaties are just hot air at this point.
if you’re an indigenous people, this is a terrible solution, since the state is usually oppressing you. any sort of Lockean arguments? natural law arguments?
- the indigenous people earned the property right through labor, as a moral right. there’s also been intentional programs over the centuries to increase the intensity or usefulness or effectiveness of various plants (like the breeding of dogs). problem is identifying an owner to reward. you can’t point to an owner.
can you buy into this idea of a unified mayan culture connected with itself with can invariably own a single property right as an identifiable group…
prime directive: no interference with local communities, you can’t step in if you see the locals killing each other. anthropologists have this prime directive which, like star trek, they break all the time. quantum mechanics: merely observing has an effect on what’s being observed.
anthropologists are like the opposite of lawyers: they see a problem and wring their hands and get stressed. lawyers say, “see problem, solve problem now.”
any good economic rationale to protect diaries with copyright law? mostly just for protecting privacy rights.
what are the indigenous people upset about? what’s their objection?
- billy: the community writing the law is not the mayans. the international community is most concerned with the appropriation of a resource. “misappropriating for personal gain”. why is it misappropriation?
complaint is about the privatization of seemingly public materials. they’re ok with giving information about it, but annoyed about 20 year private right being made out of it. what is the approach that ICBG Maya took? couple upset by biopiracy. what was their approach? what was their goal and their technique? they were going to try to exploit it but give a quarter back to the Mayans. state of the art attempt to defend against biopiracy, and they became the biggest villains of biopiracy. berlin. he had a draft for the conference to sign off on, what an ethical way of approaching bioprospecting, and the mayans showed up and the conference melted down. why is the UGA anthropology department the villains here? why not Monsanto?
idea: they’re not going to spend millions of dollars developing if they’re not going to get something back.
Tate: start from scratch. what could you do differently?
compitch said you need to talk to the mexican gov’t to set up rules for bioprospecting, but the mayans essentially at war with the mexican gov’t.
criticisms of the GA project really paternalistic. he’s painting this picture of a growing, changing, dynamic society, but he almost started this movement of people freaking out, modern technology meeting ancient culture that becomes a static dichotomy. he didn’t speak to the mayans actually participating in the project.
maybe desire among the mayans to have growth and knowledge brought to them. maybe the mayans should be writing the articles, or at least some of the articles, about what they want and need. they don’t need other people speaking for them.
skits seem awfully imperial, colonial guilt runs through.
costs about 500 million to get something approved by FDA; without a patent you’re not gonna spend that money. remember that conversation, if you could keep testing information private, you wouldn’t need patents. if you had a regime that protected you just for going the FDA hoops, then they might invest. and it wouldn’t offend the rest of the world. if you don’t have to reveal the lab results to anyone but the FDA, no probs for the drug companies.
australians biopirated some sunflower seeds at the bottom of the grand canyon. people at the bottom of the grand canyon just wanted to see what happened to the plants, didn’t care about anything else.
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February 12: IP law class 12
biopiracy
part of the outrage of anthropologists derives from anthropologists misperception that patent laws will prevent the indigenous people from using the plants as they always have.
this isn’t true. patent rights are totally territorial. these companies aren’t going to be able to get a patent in the jurisdiction. prior user rights, uses that destroy the novelty, intervening rights, etc. the practice of what the indigenous people are doing cannot be patented. not to mention that the chemical companies haven’t gotten a patent on the plant itself, nor on the process the indigenous people are using. they’ve only gotten a patent on the isolated chemical.
i’ve been to conferences where people don’t believe me, that drives a lot of the visceral reaction you see in the literature. what they all point to is this bad turmeric patent that stood up for a while. and i always ask if the company tried to get the patent in india, and if they tried to use it to stop people in india from doing what they’d always done?
contract between pfizer and indians in peru, so there has been some successful contractual solutions
trade secrecy project in ecuador. doesn’t sound promising to me.
opposite approach taken by india: publish everything online, so nobody can patent any of their shit. if your impulse is to share your knowledge, it certainly accomplishes that, and it definitely makes it a lot harder for people to patent anything close to your practice. if india is successful in putting all of their traditional knowledge out there, they’re putting it into the public domain.
non obviousness
the biggest source of patent law litigation worldwide.
USC 103. “subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.
is the invention an obvious outcome of prior art? how do we determine what the prior art is?
what the person in that field would know. but they’re also omniscient. an omniscient phosita. an ordinary person, with ordinary skills, and complete and total knowledge. what’s the cut off date? time of trial? time of application? time of invention?
- in the US, when the invention is reduced to practice, although sometimes the date of invention is construed as the date of filing.
- you can sort of imagine the mental gymnastics: someone skilled in the art, back in time, who knew about everything at the time, which in these cases may have been ten or 15 years ago, and hindsight bias as a problem, and this is a jury question. no other country in the world sits down 12 lay people and says “pretend to be a PHOSITA”. patent lawyers tend to settle a lot since it’s a total crap shoot. (person having ordinary skill in the art).
what’s Lee’s invention?
- combining TV menu with tutorial system.
- thunderchopper video game had tutorial system
- nortrup patent had TV menu
you saw this in pacman, the demonstration of how to play, along with plenty of other video games.
do you think the combination is obvious, in light of the two pieces of prior art before us? you as a law student, not even a phosita.
have you all ever seen a TV screen that had a menu along with a tutorial screen running alongside of it?
i think the board thought it was such a no brainer that they didn’t need to write a long opinion as to why it couldn’t possible be patentable. but an administrative agency is required to provide reasons/explanation.
do you think the patent was eventually issued?
- no. went back to the board, they did a better job of explaining, did another prior art search. i think our instinct even in the late nineties was that this was obvious.
KSR case
litigation over an issued patent, when we don’t have in the in re lee case, can the defendant offer and identify prior art that was not before the patent office?
is a defendant being sued allowed to argue that there was other prior art out there that the patent office never knew about, and that this patent should never have been issued.
- yes, that’s what they did. the asano patent which played such a big role was not before the patent office.
patent lawyers spend about 18 hours reviewing prior art to review a patent, so obviously there’s more stuff coming in during litigation. so this means district courts aren’t going to defer to the patent office, other than a bare minimum 51% initial presumption.
did you get a feel for what level of deference the appeals courts pay to district courts? remember there’s de novo review, abuse of discretion, clear error review. did you get a sense? district courts are hearing the testimony of the inventor, they’re making all sorts of factual determinations.
- it’s a legal question, so it’s de novo review. the supreme court can look at a district court’s determination, sift through the evidence, and then the district court’s decision is entitled to zero deference. you can see the supreme court will just look at lower cases and disagree, wearing the same PHOSITA hat, and that’s it.
what has Teleflex (and later KSR) invented? what’s special about this car pedal? two things.
- the car pedal is adjustable. if you’re short, you can move the pedal closer to you. i had a 4’6 friend with a two by four block screwed to her gas pedal.
- there’s a computer sensor in it. the sensor is also located on a non-moving part of the pedal, in the pivot point, to prevent wire chafage.
in earlier times, the pedal pulled on cables, which pulled parts of the engine, letting more air and gas go in. isn’t the way cars are built anymore.
supreme court mentions three considerations:
- commercial success
- long felt but unsolved needs
- failure of others
what’s the connection between commercial success and whether an invention is obvious or not? if it’s successful, it’s an indication that it’s new, an advance. but it could also be thought of as inevitable. so i personally feel that the long felt but unsolved needs, aka failure of others, is the biggest indicator.
proctor and gamble’s next soap will be a success because it has huge marketing behind it, not necessarily because it will be an advance.
if people have been trying to make it for a long time and failing, that’s good evidence that it was nonobvious, making that element probably more relevant than commercial success.
what’s the most relevant prior art here?
the asano prior art is an adjustable pedal where the pivot point stays fixed. so the pedal probably telescopes in some way.
the smith patent:taught that “to prevent the wwires connecting the sensor to the computer from chaping.. the sensor should be put on a fixed part of the pedal assembly rather than in or on the pedal’s footbad.” Rixon had put the sensor in the wrong place and the wires got dirty and chafed.
so if you combine asano and smith, you have the Teleflex pedal. so would a PHOSITA, encountering these two picees of prior art, know to put them together?
how was claim 4 originally written? it mentioned an adjustable pedal and a sensor. it was trying to patent all adjustable pedals with sensors. why was it forced to narrow the claim to adjustable pedals with the sensor located on the fixed point?
- asano is not before the patent and trademark office—if it was, patent never would have been issued. the only thing before the patent office was the REDDING and smith patent. redding has an adjustable pedal without a fixed pivot point. so the patent and trademark office was uncomfortable allowing a patent for an ajustable pedal with sensor, because it seemed like just a combo of the redding and smith patents. but when they narrowed the claim to an adjustable pedal with a fixed pivot point, it became a combination of the smith and ASANO patents. but the patent office didn’t know about asano, so the patent got through.
i’ll note that if Teleflex knew about asano and didn’t tell the patent office about it, they’re guilty of fraud and their patent is instantly invalidated.
district court said it was obvious, appeals court said it wasn’t, supreme court now says it’s obvious.
procedural posture: this is an appeal on summary judgment. exceedingly important to avoid going to trial in a patent claim, since juries are unpredictable.
patent owners and infringers tend to be the same parties. all the inventors are getting sued by other inventors. it’s thus better for them, as a group, to decide things on summary judgment, cause then they all get to pay smaller legal bills.
SCOTUS then knocks down the TSM test which required that the prior art had some kind of motivation or suggestion. instead, SCOTUS says not so much, the combination can be totally without published motivation and still be obvious, as long as the combination doesn’t have unexpected (beneficial) results.
“teaching, suggest, motivation” test. we know SCOTUS doesn’t like the test. the TSM test said, only if there’s some teaching or suggestion out there motivating the combination in the prior art universe, will it be held obvious. this is highly frustrating to someone like me—i’m not even a pedal designer, and when i look at this, with the two patents, it seems painfully obvious. you want an adjustable pedal, and you want an electronic sensor, so you include both in your pedal. patenting the combination is ridiculous.
example of prior teaching: a publication that says, “we haven’t tried combining hydrochloric acid and sulfuric acid, but it would probably be useful.” over the years, the federal circuit started to require that. TSM got calcified.
scotus sez: combination has to produce unexpected results.
on tuesday, we’ll hit II:A, third paragraph, the court summarizes Adams decision, and then Anderson. SCOTUS is brilliant to cite two of its prior precedents and come up with a much easier test for the future.
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February 17: ip class 13
there’s a hint in that indian patent case that the indians are in violation of 70.9 and i wanted to read that to you. if you want patent protection in india, you get approval from their version of the fda, and file for the patent, you get five years of exclusive rights to market your drug, provided that you’ve already gotten a patent and marketing approval in another country. so to get patent protection in india, must get patent in another country and marketing (e.g. FDA) approval first; and then after that you get marketing approval India. for example. you have to provide this protection under 70.9, although it only lasts five years.
two weird things about that system. there’s no provision for priority disputes, because it’s possible for two drug companies to comply with these requirements at the same time.
five years sounds short, but we learn in the canadian patent cases, once you jump through the regulatory hoops, you might only get 6-8 years in some other nations.
non-obviousness
i think there’s two kinds of non-obviousness cases, mainly. two kinds of fact patterns. one is where an inventor has changed one element in an existing convention (substitution).
say public domain chemical formula is (A+B+C+D+HCl). And say you instead do (A+B+C+D+H2SO4). You’ve replaced hyrdrochloric acid with sulfuric acid. You’ll have to get a chemist and ask them if this would be a standard substitution or a surprising one with unexpected results. is this substitution obvious to make or not?
- first case like this: a wooden knob, Hodgkiss vs. Greenwood, was known in the art. and the guy substituted ceramic for wood. so the alleged invention was a ceramic knob. is it obvioius in the art of knob making to sub ceramic for wood? court says yes. “would an ordinary mechanic know that subbing ceramic for wood would be obvious.”
the hardest part about patent infringement
say that instead of being in the public domain, this first chemical formula is patented.
(A+B+C+D+HCl). And say you instead do (A+B+C+D+H2SO4). Can you avoid patent infringement by replacing hydrochloric acid with sulfuric acid? “i didn’t do what’s written in the patent. i’m not an infringer.”
so we have a second kind of infringement, based on the “doctrine of equivalency.” it’s the doctrine by which we judge whether someone has made a minor change and whether they can get away with it or not. thankfully, we use the exact same test to determine whether something is worthy of a patent or not. so all patents have a penumbra of extra rights including obvious changes made to them.
that other type
combinations
non-obvious combinations:
1. the prior art teaches away from the combination
2. the prior art is two (somewhat obscure) subject areas. if subject areas in common knowledge of lay person, no dice.
X1 + X2 = X3
say X1 is lojack in a car. notice that my laptop has lojack on it. patent for laptop lojack? no. the prior art was in the common knowledge of a lay person.
returning to the gas pedal case
the court says the TSM framework is convenient to identify obvious cases, but it’s not required to make an invention be obvious. even if there’s no teaching or motivation, an invention can still be obvious. don’t want these patents clogging up the art.
supreme court’s new test:
- unexpectedness!
adams case, and blackrock case. a guy made a wet battery, even though prior art said it was a bad idea. and then there’s anderson blackrock case, a combination of a paving machine and a different kind of tar heater. the radiant heat burner is heating up like it always done, and the paving machine is heating up like it used to, so we don’t need to reward that kind of invention.
court talks about a “predictable variation”, whether something is more than a predictable use according to their functions. apparent reason prompting someone of ordinary skill to combine the elements? is the market itself driving the particular combination that’s allegedly patentable?
- granting patents that would happen in the ordinary course retards progress
result to heald: business method patents online are virtually dead.
- say amazon combines book shop and internet—could you patent that? if it could, then it becomes completely obvious to run your lemonade stand online, department store, whatever. takeaway that most patent lawyers got from this case was that these sorts of “i’m doing business online” patents, like ebay or priceline, are prbably obvious. they stooda better chance underthe old federal circuit limitation.
EU case.page 401. Sandoz: consistent with America.
- intense discussion of PHOSITA. could be a team of people, which has knowledge in a variety of different arts. PHOSITA is boring, all knowing, a nerd, unimaginative.
combination of preservatives that preserves EPO. EPO banned for athletes.
nobody had used this particular combination before. if everybody knows there’s some working preservatives, is it obvious to put some of them together? what if they work surprisingly well together? what if the preservatives don’t or barely work when alone?
case points out that none of the pharma companies to date had done this.
the fuzzier, seat of the pants approach they take here is like that of SCOTUS.
we don’t want overrewarding and overpatenting.
Pellegrini v. analaog devices, inc
this is a redux of the suba films case. but with patents, and a brushless motor system patented pretty much only in the united states. anyone around the world, even someone whose business is in the united states, can direct the copying an dmanufacturing and sale (abroad) of the device. the defendant was careful not to use the patented material within the border of the US.
we learn one way you can get in trouble even if you haven’t technically infriniged, which is to collect all of the individual parts of the patent in the US and then ship them to be assembled abroad, you’re liable as an infringer.
this is easy to get around in the united states: just have MOST of the parts manufactured in the US, a couple more in canada, and get ‘em all shipped to india to be put together. done and done.
canada-patent protection of pharmaceutical products
stockpiling exception
six months before patent expires, you could manufacture a bunch of stuff and sell it as soon as patent expires.
stockpiling exception violates TRIPS test because it’s not a limited exception, it’s an unlimited abrogation of the “making” right guaranteed by TRIPS. also the stockpiling exception applies to all patentees.
so, canada stockpiling regime gets shot down.
regulatory review exception
any patent invention that requires regulatory approval. in the united states that’s primarily drugs and pesticides, rodenticides.
why is the reg review exception ok?
we learn in the case that some jdx empathize with pharma companies when it takes a long time to get through the approval process, and some nations including the US give extra time to account for a lengthy reg approval process. but not all nations. so the WTO found it hard to argue that there was a normal expectation as to how much de facto exclusivity you should get.
most nations in the world have a reg review exception, so it would have been an earthquake in the patent world for the WTO to render it impermissible.
compulsory licenses
p. 450 and 451, you’ve read the compulsory licensing section already.
Had Brazil’s article 68 (p. 454) been litigated before the WTO, would Brazil have won or lost? Under Article 31 of TRIPS? a compulsory licensing scheme is never going to satisfy the limited exception scheme, but we do have Article 31.
a compulsory license is a license granted by a gov’t to a third party to manufacture against the wishes of the patent holder.
(First issue: statute hasn’t been invoked yet. does it actually need to be used before WTO proceedings? apparently not.)
Brazil’s 68 a mess. doesn’t provide for adequate renumeration, also seems to require manufacturing within brazil. no requirement that they try to negotiate with patent holder, no judicial review, etc. etc. disaster disaster.
so why wasn’t it litigated? they had a slam dunk, and the US didn’t like the law.
- public outcry
pharma wasn’t selling drugs at all, because they were worried about reimportation.
also US had a federal funding statute, sections 204 and 209 of the patent code, effectively covering almost all public universities, barring patent owners from letting shit get manufactured outside of the US . looks a little bit hypocritical, especially after the Bayer fiasco when we threatened a compulsory license on anthrax drugs.
would section 204 have survived? you have to dig back to international trade here a little bit. one thing to note: the US *could* do this by contract. you could just make everyone signing the forms for federal funding agree to only grant licenses to Americans. so if the gov’t can do it by contract, could it be impermissible to do via statute? federal gov’ts also have a lot of leeway in how they spend their own money. if US only wants to buy gravel from american suppliers, even if it could more cheaply from canada or mexico, nobody seems to think that’s a prima facie violation of GATT.
i don’t know the answer, it wasn’t litigated.
how bout the US and compulsory licensing
we don’t have a compulsory licensing scheme in the US, but they show up.
imagine a case where a court finds patent infringement, but doesn’t issue an injunction. supreme court just said that patent infringement doesn’t always mandate injunctions, and that monetary damages are adequate. so there are going to be a bunch of cases where a patent is infringed and there’s no injunction, and there’s instead a reasonable royalty. looks like a judicial compulsory license. embedded in our law of equity.
what does remedies section of trips say? if you read it in conjunction with article 31, you might be able to make an argument that we have an impermissible compulsory licensing scheme. although nobody has charged the US with that yet, maybe because the reasonable royalty really is reasonable. it’s what would have been negotiated (it serves more to prevent extortionary royalties after an infringer has built their plant around a certain patent/process).
doha declaration
what i find interseting is the vindication of our discussion on the first day of class. p. 463 section (b) is designed to let the patent holder know where the compulsory licensed drugs are. the different shape and labeling and web site publications attempts to guarantee that the drugs sold cheaply in brazil and south africa stay there and are used there and are not reimported. aside from discouraging users in the US or wherever (“this drug looks weird!”) it lets the drug companies check up on how many drugs are leaking out of the least-developed country.
canada term of patent protection case
we learn that for patents already in existence in 1994, they got an extra three years of protection, they go from 17 to 20. this is awfully good news if you’re a patent owner in canada: an extra three years.
- except… in canada, you got 17 years from the issuance of the patent. so it wasn’t actually three years, but really a little bit less.
in the US, not a big deal. the old term of protection in the US was 18 years from grant of the patent. TRIPS jacked this up to 20 from the application date. turns out that the average time it takes for an application to mature is 2 years, so pretty much a wash in the united states. not so in canada, so they effectively got one more year from the TRIPS agreement.
or… heald says canada was doing it from the application date, not grant of the patent.
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February 19: intellectual property class 14
our class cancelled on wednesday. i’m tempted not to have an official make up day because:
1.if we don’t make it up, then we fall one day behind, and our last class day on march 12 can chuck geographical indications. so we don’t actually lose any significant coverage if we don’t have that particular class session. in addition: the 25 minutes i’m giving you is never going to be enough, once we get into three presentations the classes are going to run over even more, so we’ll get the missing class sessions in because of all the time we’ve been running over.
wto web site has arguments from nations about what should be changed.
you’ll have a meeting with me the week before your presentation.
we’re done with patents.
trademarks!
if your mom asked you what a trademark was, what would you say?
what’s protectable or not?
any sign, slogan, advertising material, something that distinguishes the source of your product or service. (there’s a word called a service mark, but since they’re the same, enh.)
- example of a non-word that distinguishes a product or service?
- the green in qualitex dry cleaner pads
- there’s the graphic design of the NBC peacock
- what about a color standing alone?
- University of Texas orange, Tennessee volunteer orange.
- pink fiberglass by owens corning. they’re the only insulation company allowed to use pink fiberglass.
- sound
- harvey davidson
- mgm lion roar
- nbc chime
- smells
- plumaria blossoms on a type of thread
- smell of perfume not registerable. if someone can register plumaria blossom smell on thread, how come chanel no 5 can’t register its smell as a trademark?
- because it smells awful?
- no, no qualitative bar. same problem as harvey davidson. it can’t be functional.
- because it smells awful?
trademarks: the non-functional sign of a product’s source.
- we never let trademark law function like patent law, letting people trademark a product design, shape, function, etc. think of it in terms of cars: if you saw a silouhette of a volkswagen beetle, you’d recognize it. golden arches. the beetle body is protected as a trademark. legal proof that the shape of the beetle is a competitive disadvantage. it makes the car less aerodynamic. so if you have a car with a shape that helps it, you have to go through the patent office.
why don’t perfume manufacturers use the patent system?
- they could, but then after twenty years everyone could use chanel 5. which has been on the market for 75 years now. easier to protect perfume via trade secret.
so, pretty much anything can be a trademark. how do we tell who owns it?
- if i buy eggs from a farmer, and resell them as “heald’s best eggs,” then what?
- in the US and a bunch of jdx, it’s the first use in commerce that determines who’s the owner. in other jdx, it’s the first to register the trademark. the only pure race registration system i know of is japan. no use requirements in japan. you just have to come up with a cool word, register it, and you’re done. everything depends on the pure race system in a real property system.
- famously, before sprite and seven up got to japan, somebody literally sat down with a dictionary and registered every word that could describe an effervescent, lime drink. in an effort to bilk the companies out of licensing fees.
in most jdx, prior users always get a sort of shop right in their trademark, they can’t block others, but they can continue their prior use.
what sort of people can you successfully sue in federal court?
- people using the trademark to confuse consumers. (magic words: “likelihood of confusion”)
other requirements?
- trademark priority
why don’t we give trademark owners pure property rights? in trademark, they have to use something similar to your mark AND it’s likely to confuse consumers. why have that latter requirement? what are some permissible, unauthorized uses of a trademark?
- comparative advertising: you’re doing the coke-pepsi taste challenge. pepsi doesn’t have to ask coke if pepsi can use coke’s trademark. they just use it. why allow this?
- as long as it’s a truthful ad, then that’s more information for the consumer.
- “heald restaurant right next to mexican restaurant”: also ok. again, more information for the consumer. if you’re telling the truth, then you can pretty much use anybody’s trademark in any way you want to. news reporters, consumer reports reviewing quality of trademark goods. it’s easier to state the rule as, you can use the trademark however you want, as long as you’re not confusing consumers. a very narrow right.
in paragraph two, other cases where registration can be denied. you’ll get a handout from the us positions on denying trademarks.
use regime, but we also need to have parrallel registration system. you’re probalby more used to seeing trademarks than patents. there’s a lot of misconceptions about trademarks. you don’t have to register your trademark. there is no requirement whatsoever in the US. you can get a huge judgement without registering. i encourage people to register their trademarks without a lawyer on their own. you can apply as many times as you want if you get denied. so: why bother registering at all? if you get strong protection without registration? a few advantages:
1. only registered trademark owners can ask customs to stop importation of trademark goods at the border. whenever levis jeans come in, customs can call and ask if you authorized levis jeans.
2. shifting of burden of proof. if you walk into court and show registration certificate, you’ve got a prima facie argument that you have a valid trademark. burden is in your favor, although other party can certainly shift it, but with witnesses and consumer surveys and such.
3. there is a doctrine called incontestability, which you can only invoke if you have a registered trademark.
two categories of marks: those that are inherently distinctive, and those that have acquired distinctiveness. any clue as to what the difference is between these two?
- inherent: kodak has nothing to do with film. it’s made up. any goodwill they have comes from making up that term.
- acquired: not so creative, but they’ve used it for so long that people still associate that distinctive mark with the trademark owner.
think of the bicycle playing cards: a totally arbitrary word slapped on a product. why the heck is there a bicycle on these cards, if not to tell us they come from a single source? kodak is a coined mark, like exxon, words that are just made up.
suggestive marks: dim connection between word google and google search service. big number suggests mathematical searching power. still signals: “hi, i’m a trademark.”
but what about descriptive words, like pizza hut, taco stand, etc.? they didn’t start out distinctive. they acquired their distinctiveness.
if your mark is arbitrary , coined, or suggestive, your trademark is automatically valid. you win the first part of litigation:
CHECK: VALID TRADEMARK
but if you walk into court with a descriptive trademark, like, d’italia italian bread, you have to prove that when consumers see this weak descriptive mark, they actually think it’s a source identifier. you’ll need a consumer survey.
- pizza hut will win this. they’re going to be able to prove they have a valid trademark. “proof of secondary meaning” probably should be called the primary meaning doctrine, since you’re trying to prove that the trademark is the primary meaning, but whatever, we call it the secondary meaning doctrine.
if you use your registered descriptive mark for five years, it becomes incontestible. you’re immune from the challenge that your trademark is not valid. kmart still has to do it when they introduce new products that haven’t been on the market for five years. kmart robotic dogs.
priority rules
say we have a band playing in washington, and a band in florida, both called “squirrel.”
neither will have problems proving validity, unless they sing like squirrels. the name is arbitrary. it’s all about priority now.
if there’s no registration, then the common law rule is, it’s a race to establish your reputation in a particular area. so this band wins in the state of washington. if the washington squirrel plays in oregon, they’ll establish that territory. once florida squirrel starts playing in georgia, they can take over that territory.
but what happens if washington squirrel registers first?
- from that moment on, the florida band is frozen in its geographical area. the washington squirrel can’t kick florida squirrel out of florida, but they can prevent their movement into georgia. that’s the best thing about trademark registration:
REGISTRATION = FREEZING OF COMPETITORS
what happens if florida squirrel expands into alabama after washington squirrel as registered?
Dawn Donut: until there’s likely of confusion, e.g. overlap in jdx, there’s no cause of action. even if expanding in bad faith. it can’t be kicked out until washington squirrel actually expands into alabama.
what happens if they start selling music on squirrel.com? if washington squirrel sells CD’s online, it doesn’t automatically have reputation in alabama. there will have to be discovery. so if thousands of people in every state are downloading, they’ll have established their reputation everywhere, and can shut down bad faith expansion of florida squirrel in alabama.
y’all are too young to remember the sleazy seventies. studio 54 in new york city. its reputation extended to all fifty states, and it could shut down a studio 54 anywhere in the country, even though it only provided sleazy services in one small building in new york city.
in summary, four advantages:
- stop goods at border
- not have to prove secondary meaning
- freeze competitors where they are
- shift burden of proving non-validity and priority to the defendant in a trademark case
this is all ok under TRIPS. we have a registration system. use requirement is alright. publication required after trademarking. possibility of cancelling trademark registration. we also have a very rigorous trademark intervention system. the trademark office publishes a gazette of applying trademarks, and you can jump in and stop trademark registrations if you see an offending one. not required under the WTO, but we have it.
article 16 gives the basic right: ability to block if someone using your sign and confusing consumers.
article 16 wholly and utterly redundant. i won’t explain why, but you can just draw an X throug it. 16(3) does do somehting new though. it creates a cause of action (which already existed in the US) that even when goods and services are not similar, if they indicate a connection with the owner, there might still be a cause of action.
in simplest terms, georgia bulldogs is a famous football team. no other football team can call themselves the georgia bulldogs (although bulldog is a weak mark and other college teams can and do call themselves that).
- say someone sells a shotglass. probbably partially full of tequila. if all we had was section 16(1) which requires that goods be similar, no cause of action, or at least, no requirement that a WTO member provide a cause of action. but with 16(3), if you think of the university when you see this shot glass, you can intervene.
article 6bis imposes a confusion requirement.
and i hate to say it, but when people see a shot glass with georgia bulldogs on it, they assume that it’s affiliated with the university.
back in the 50’s and 60’s, this was not the rule. universities consistently lost. chapel hill case selling carolina blue gear. court laughed and said, NC is a school, nobody but an idiot would think NC would be a t-shirt seller. world has changed. consumer perceptions changed. Colleges are now t-shirt vendors.
article 17: there’s the fair use exceptions provision. notice it’s different here. note limited exceptions, taking into account legitimate interests of third parties. no normal exploitation language, or terms we saw in patents and trademarks. never been litigated, but i’ll mention the fair use of descriptive terms language.
imagine a coffee shop in columbus which advertises: “we have the best java beans.” who owns the trademark of java? sun microsystems! but they’ll have no luck suing the coffee shop. no likelihood of confusion. beyond that, it’s a fair use of descriptive terms. it’s a coffee shop talking about their java beans.
- we had to adapt our law there.
let’s take a look at article 19. this requirement of use gets us into why the American registration system looks the way it does. in the US, how do you file a trademark before using it? we’re a use jdx aren’t we?
- in US you have to file an ITU, intent to use application. obviously you have to tell what trademark you’re gonna use. what else do you have to include?
- affidavit promising you’re not infringing anyone’s rights if you haven’t used it yet
- promise to use the trademark within… six months.
if you’ve already used the mark, then you just provide an exhibit to the trademark office of how you used the trademark. a picture of a tv ad, newspaper clipping, whatevs.
as long as you use it within six months, you’re priority date is the time from when your ITU was filed. so by filing, you can get an earlier priority date. you can also extend the time to use by six more months, effectively giving you a year. and you can extend up to two more years with a showing of good cause, eg. strike in the factory, difficulties with the fabric. article 19 of the TRIPS agreement that explains why we have this tortured three year possible length of time. we promised that we wouldn’t cancel people’s applications.
- note that you can’t go crazy and sue infringers until you’ve actually used the mark.
article 20: must have been some jdx around the world that had special requirements, like a “TM” or something. under article 20, you can’t force jdx to do that. circle R means your trademark is registered. what does TM mean? (some ads are aesthetic nightmares because of these.) i have a tuxedo for singing. the trademark is Gianni. with a TM. that basically says they couldn’t get a registration. why couldn’t they get one?
because Gianni is made in Korea. trademark office will deny them since it’s not an italian firm and they’ve hinted that they are. so although Gianni does function as a trademark, they can’t register.
- a lot of companies will put TM on shit to try to scare competitors, even though the stuff they’re using can’t be used as a trademark (unlike gianni).
- trademark law: you NEVER have to use the ® symbol. lawyers are so risk averse that some lawyer had bad potty training and told their clients that they had to use the ® symbol even in situations where ad copy looks ridiculous. no legal requirement whatsoever to use the circle R.
one last trademark thing: no compulsory licensing ever ever ever. why compulsory with patents, but not with trademarks?
- they’re not functional, so there’s no good reason to publish them. “we have to know this trademark for the health of our populace!”
- it’ll destroy mnemonic device if people could snipe trademarks by taking advantage of others’ failure to register
yet another WTO requirement: companies can assign trademark use without selling business. a licensing provision. in the US, you can only license or sell a trademark *if* you give the licensee all the tools to make the same product. if you don’t supervise your franchisees or licensees, you lose your trademark. if the connection consumers have between the quality of your good and the trademark is destroyed through bad licensing agreements, you’ll lose the trademark.
if coke sold use of the name “coke,” it would have to transfer the coke formula. but not the businss itself.
the US wrote this part of the TRIPS agreement, so we’re in total compliance.
five minutes to talk about the paris convention
what’s the only ongoing relevance of the paris convention? the priority provisions. which say what?
each country can mostly make its own rules. except for one thing. if a country has a first to file date, they have to get constructive six months.
if you understand the patent priority, then you understand the trademark priority. if you file first in france, then you get six months to file in the USA. your USA priority date will be the filing date in the original country—a six month look back. with patents it’s 12 months. fairly straightforward.
Normal 0 false false false EN-US X-NONE X-NONE
February 24: IP 15
this is why i refuse to belong to a political party.
you know we have our word as a country to let mexican trucks in, and here’s another bill keeping mexican trucks out.
so remember, no reason to get into international trade unless you’re gonna make money. the process of making that decision will include various models of doing business internationally.
we heard already you can make your goods domestically and ship, or make them abroad, or license out the tech. assuming you can license it, ie. you have some sort of intelletcual property. to better manage risks of appropriation and reputation, you could enter a joint venture with a private firm or the gov’t of the foreign state. but of course, foreign governments can screw you. so a lot of this is about managing that risk.
you’re gonna have to value all of these models to see which one makes the most money. remember that local ip protection will determine the value of what you have to transfer. along with the cost of moving goods across borders; could be tariffs, quotas, technical barriers (likethe asbestos case), sanitary barriers (like EU beef hormone case). minor exception is trademark law, where american law will protect american trademarks a little bit.
there’s another potential bar: the bans imposed by governments on some gray market goods.
Gray market goods!
genuine goods imported without the permission of the trademark/patent owner.
Scenario 0.
US manufactures something sold in goods. And there’s an arbitrager. Arb buys goods in China, reimports them into the US. Potentially this makes them gray market goods. How can this ever be profitable? To pay for the transportation costs of shipping in both directions? Why aren’t these goods more expensive?
- because the manufacturer is using price discrimination to make the price lower for the exporting market.
Scenario 1
- currency fluctuations sometimes make it profitable to reimport goods. the smaller the good, the more likely arbitrage will be profitable.
What does the TRIPS agreement say in article 6 about grey market goods?
- ABSOLUTELY NOTHING. states can do what they want. there’s such a total lack of consensus that they couldn’t put anything in there. it came up during the uruguay round, and there was such little consensus that they put in a specific article saying there was no consensus about grey market goods. so each individual gov’t has a policy choice over whether to let these goods in or not.
- why doesn’t congress pass a ban on grey market goods? there’s a bill introduced on it every year, but it always dies. what are the political fault lines?
- presumably corporations like walmart with a lot of grey market goods want it, along with consumers. and they would be opposed by american manufacturers facing price competition from reimported goods.
what could manufacturers argue to get consumers on their side?
- warranty missing? what if they’re buying soap?
- be american! buy american! you’ll lose your job if you don’t buy our shit at our american price!
- environmental argument: big carbon footprint to ship shit twice: you’re being environmentally irresponsible!
- they used to be able to argue that it would benefit american shareholders, except public corporations can be owned by anyone worldwide now.
international exhaustion: what does that mean?
- means no barrier on grey market goods. once the goods are sold anywhere, rights are exhausted.
- two countries in the EU prefer international exhaustion: austria and sweden.
EU rule: if a french manufacturer sells in austria or GB, it loses all rights to prevent sales in the EU within the entire region. but if the goods are sold in china, they can be blocked from getting reimported from china
ray ban won’t sell to walmart or target. so how does cheap austrian kmart get these spectacles? the austrian manufacturer had sold the glasses to a place in bulgaria.
EU, article 7, basic regional exhaustion rule. any exceptions? in paragraph 2? exceptions to normal rule of exhaustion?
- legitimate reasons. like when the condition of the goods is changed or impaired after they’re put on the market.
- there was a real case—italian firm selling big parma hams to GB. arbiters slicing and packaging product, and the packager, although allowed to do that, wasn’t allowed to use the parma ham trademark because it was a different product by that point.
what’s austria’s argument that it should have international exhaustion if it wants to? and sweden too? they didn’t win, but what was the argument?
- directive didn’t say nothing about international exhaustion.
- but ECJ said the overall implication was a negative implication that international exhaustion is not ok. the directive is a harmonization directive. we want the same rules in every country. the purpose of the harmonization is to make sure there aren’t barriers within the EU to the free flow of goods. if things can get back into austria, but not into other EU nations, there’s an effective border around austria blocking goods. that’s abhorrent to the EU principle—they don’t want checkpoints, guards, etc.
despite the fact that the court finds austria needs to comply with the directive and forget about an international exhaustionr egime, the court doesn’t issue an injunction. what do you make of this discussion at the end which essentially remands the case back to austrian court?
what is it about austrian law that makes it tricky for an austrian court to grant an injunction? they don’t have an article 5. under austrian law you can get an injunction to prevent confusion in the marketplace. EU nations are suspicious of injunctions. but there’s no confused consumers here, so there’s no injunction under austrian law. court says a few things: austria has to provide for injunctive relief, and we remand hoping that the judges can manipulate austrian law somehow to get an injunction.
in the US, and you’re a trademark owner, only way to stop goods is if you’ve filed your registration certificate with treasury.
case zero isn’t discussed in the case: is it permissible for chinese to send goods manufactured in US back out of china to be sold in the US again?
- and where in particular are the goods being sold in this situation? are they getting sold in the US? or in china? when they’re manufactured in the US? i should think there’s some pretty messy case law in the EU over whether the goods were really first sold in bulgaria, or really first sold in italy and shipped to bulgaria, in which case the goods would be exhausted.
- i’m imagining fertile litigation on that point. i’ll make you all exceedingly happy by telling you that this doesn’t matter in the US. we don’t care where title passed. let’s hold off on this scenario and ask at the end.
scenario 1. look at tariff act on page 575. why isn’t this a complete ban on gray market goods? congress speaking in 1930. seems to require permission from trademark owner all the time. how does the customs service read that language and let gray goods in anyway? which they do.
what’s case number one?
face powder sold from france, american firm in charge of selling it in america. not a subsidiary of the french firm. indy firm has purchased the trademark from the french firm. what happens? the french firm sells all over the world. and it falls into the hands of an arbitrager, say french firm selling stuff in china. and arbitrager imports it to the US. before the court decided it, congress passed the tariff act, BLOCKING these kinds of goods. they passed the language at the top of page 575 in the blue trade book. justice holmes says just as a matter of trademark law, you can’t do this. so there’s consent among SCOTUS, congress, and customs.
SCENARIO 2A
scenario 2a. much like scenario 1, except the french firm has formed a subsidiary in America. no longer an independent seller in the US. french firm sells for lower price in france. can goods get in? YES! not only does customs allow the goods in, but SCOTUS says that’s a permissible decision for customs to make. “your interpretation of 1526 is proper.” what does the court see here in the language of 1526 which allows customs to let these kinds of gray market goods in when this language seems completely prohibitory of gray market goods? they look to the language of the statute and find it ambiguous: “owned by” and “foreign manufacture”. what’s ambiguous about “owned by”?
- only a prohibition on importation if the merchandise doesn’t bear a trademark owned by a corporation created or organized within the united states. the court is saying if it’s a wholly owned subsidiary, then it’s really the same firm… you could have maybe interpreted it to mean that the subsidiary could have kept goods out, but that’s now the way SCOTUS read it.
SCENARIO 2B
americna firm wants to manufacture overseas, like in china. nike sets up sub in china. sub sells goods locally and in united states, creating possibility for arbitrage.
does customs allow these goods in? yes.
so there’s common control, these three scenarios, is manufacture overseas, and sales domestically, and there’s shared control or ownership. that’s what was lacking in scenario 1, which had completely independent firms. why does justice scalia want to draw a line between scenario 2a and 2b/c?
- heald: “i don’t really see his argument.” horribly complicated reasoning, it won’t be on the exam. but you do need to know the bottom line that in all of these scenarios, there’s common control, and all of these goods get in. this is the enomrous floodgate for gray market goods.
SCENARIO 3
some sort of licensing agreement. firm licenses industrial foreign manufacturer. say phillip morris allows chinese manufacturer to make cheap chinese cigarettes. then arbitrager buys chinese cigarettes and attempts to reimport into US. circa customs 1987, those goods got in, but SCOTUS says that wasn’t ok, goods should be BLOCKED. customs lost that one. Brennan dissented on that round.
scenario 1 was why they passed the tariff act in the first place. that’s all congress meant to do, according to brennan, who’s dissenting.
RETURNING TO SCENARIO 0:
any instincts as to how scenario zero comes out? US manufacturer, goods sold in china, reimported to US. what then? manufacturer hasn’t licensed anything, it’s just a straight sale of goods and a reimportation. i think the statute provides the answer.
page 575, language in 1526 which gives us an answer.
“of foreign manufacture”. there’s no way to say that 1526 is relevant at all, given that the goods are manufactured in the US. so the answer is yes, the goods get in. creates another gaping hole in our borders to gray market goods. debate goes on as to whether this is a good idea. i’ve got a short slide show you can use as review. if you’re not very good at drawing.
i’ll flag the fact that i think our textbook is wrong about US patent regime. so more excitement on thursday.
february 26: (Sam's notes)
Gray Market Goods
Most involve same basic facts
US trademark owner
Seller in another country
Seller sells to Abitrager (middleman who reimports gray market goods into the US)
Scenario 0: Get in - when goods are manufactured in the US, then there is never a barrier raised at border. - Bright line test - in manufactured in US, it can always come back in.
Scenario 1, 3: Stay out. US TM owner and seller have no connection except they have agreed to sell to one another. Where there is no connection, these goods stay out.
Scenario 2: Get in - The seller could be a division, subsidiary, or owned by same parent company (parental control of affiliation). In this case, the goods also get in.
Lever Bros. Case
Importation of dish washing liquid and deoderant soap produced by Lever UK.
These goods are coming into the US - consumers thought they were the same good, but are physically different goods.
Both Lever UK and Lever USA are under common control of Lever International
Customs at the time did not block entrance into the US, since they were under the same TM.
Lever did not want to argue under 1520 of the Tariff Act, so it looks instead at 1124 of the Lanham act (1520 got nowhere in Kmart).
Why does 1124 not stop everything at the border - TM if genuine, get in. That's pretty basic, but TM owners thought they would get a second bite of the apple in Lanham post Kmart. Court says you can only be successful if the goods are materially different.
1124 - Does apply to UK shield - things that are not physically identical do not get access into the US. - This is under the language of "copy or simulate" If the goods are materially different or altered, then the TM are really just copies or simulations - they are not genuine goods, in the sense of consumer expectations.
Purpose of TM is to prevent confusion of consumers. Makes sense to interpret statute to keep out goods that are materially different that might harm consumer expectations.
Customs' response to regulation
They create the "Lever Exception"
Acknowledge that goods still should get in under Scenario 2, but requires that importers place a sticker which states that they are physically and materially different from the regular product. - These stickers are probably bad for sales, and so slow importation of goods into the country.
Patent Land
Situation in EU as shown in Merck
Merck wants to keep out pharmaceuticals that are being sold and marketed in Portugal and are then reimported into the UK
The goods are sold at a seriously reduced rate in Portugal, and the pharmaceuticals are not patentable in Portugal or Spain. - Now taken care of through TRIPS.
In the EU, the exhaustion restriction is for regional requirements.
Holding - Cannot restrict sale unless it is shown that they are required to sell in Portugal.
If Merck can show it was under a legal obligation to provide the goods in Spain or Portugal, then it could get a restriction ban on the imports to other EU Member states.
No known directive that would require Spain to limit pricing of pharmaceutical drugs. There is however some significant price regulation. You cannot use such regulation as an excuse to claim that your IP rights are not exhausted. However, if the prices were too low, then the pharma companies would refused to sell within the confines of the country.
Jazz Photo
US Rule - after first sale, if unrestricted, you exhaust your rights to restrict the sale of that patent.
Once cameras are sold overseas, you could break open a disposable camera and reconstruct them with new film and resell them. That was what Jazz did.
The US patetn law says you can only repair slightly. But you may NOT reconstruct.
Also have som unreferbished and unused cameras. These are then imported back into the US. These are genuine products, sold with permission of US patent holder. In this case, the first sale doctrine means that US patent rights are not exhausted under the first sale doctrine, and so the products are blocked at the border.
If good is manufactured and sold outside of the US (of foreign providence) then the US can keep the good out.
US patent rights are nnot exhausted by products of foreign provenance. To invoke the protection of the first sale doctrine, the authorized first sale must have occurred under the US patent - BOESCH v. GRAFF
Curtiss Wright Airplane Case
Canadian company manufactures airplanes
British government approaches them, makes a K which incorporates these planes under British ability to produce
Curtiss Wright is an American company
United Aircraft is a Canadian/British company, and gets a license from Curtiss Wright to build and sell these planes, primarily in Europe.
At the end of the war, there is an excess of airplanes. There is little demand, except within the U.S., but that will cheese off Curtiss Wright.
Holding of the Second Circuit - The planes get in.
If the planes had been built under a limited license or under a Canadian patent, then the US would keep the goods out.
This is the result of writing a bad K. The planes got in because there was no contractual restriction and the license was unrestricted.
Here, Boesch v. Graff is not even on point.
In Boesch, the party was making furnaces in the US and Germany with patents in both countries. Guy named Hecht in Germany was also making furnaces under prior user right, but that was the only place he had these prior use rights. Hecht then imports furnaces into the US. His furnaces of course get stopped at the border. In Curtiss Wright, the Canadian company paid money for a license.
Result of US law post Jazz Photo and Curtiss Wright
Unfocused, but no appellate court can challenge this, because Curtiss Wright came down under the Federal Circuit, which means it is the only court that can deal with Patent matters. ALL patent appeals go to the Federal Circuit
So what is the law? Are things of foreign manufacture kept our or let in?
What would SCotUS do?
HYPO Honda sells cars into the US, with hundreds of US patents
One of these patents is a harness for the CD player so it does not skip
American owner of this patent under Jazz could keep these Toyotas out of the US, unless they are paid
Jazz Photo cannot be right, and yet it is the only precedent available to any circuit court.
L'Anza case
Goods were made in the US. Go out of the US, then goods come back in.
If goods are manufactured within the US, they can always come back in.
Here, we are dealing with copyrighted goods, as opposed to TM goods.
If the goods are made with the permission of the copyright owner, they are lawfully made, and can be legally imported. - If goods made with consent of owner, they are lawfully made.
While it may be natural to read the statute as allowing the goods to enter the country, that may not be how the court reads the statement - instead, Ginsburg reads "lawfully made" not as with regards to consent, but with regards as to where they were made- normally the US.
In all cases, when copyrighted materials are made aborad, they can be stopped at the border, no matter whether there was granted permission
If outside of US, only come in with permission of US copyright owner.
march 17
you got the email about when presentations will be. so if there’s problems with the scheduling, let me know.
trademark law!
not a whole lot of variation internationally. american law is kind of the baseline, particularly for trips, as you probably noticed. i’ll point out where we’re different from other jurisdictions.
three primary elements, if a firm wants an injunction in region X.
- first thing, that the plaintiff firm has a valid trademark. we’ve mentioned two different routes that the firm can use to prove it has a valid trademark.
- the first is that the word the firm is using is inherently distinctive. maybe it’s arbitrary, like bicycle for playing cards. or coined words like exxon or kodak. suggestive words like ivory for soap (clearly not a truly descriptive word).
- you can also claim that the packaging for your product is inherently distinctive and therefore inherently protectible. think of the cow packaging for gateway computers.
- the second path is that the trademark has acquried distinctiveness. in reality, when people see the words “pizza hut,” they don’t think a hut selling pizza, they think of that particular store. ***how about product shape? kitchen aid proved that people associated the shape of their mixer with kitchen aid. but you have to have that kind of real evidence in order to prove that the shape, name, descriptive color, or word functions as a trademark (assuming it’s not coined.)
- second thing, priority. two kinds of priority. or two dimensions.
- temporal: first use in commerce, or intent to use application (assuming you eventually use the mark). advertising can also establish priority if you have actual use shortly thereafter.
- geographical extent of reputation. if you’re a radio station, your reputation might be in athens georgia, but your signal goes out fifty miles in all directions, bringing your trademark along with it. in order to prevail in region X, you have to be the first to use in that region, and you’ll only be entitled to an injunction in a location where the reputation extends. at common law, just a race. whoever establishes reputation in a particular place first wins. but if you register, you freeze the geographical area of other users.
- third, the likelihood of confusion. let’s break that down into three kinds of cases because we have three kinds of rules governing loc, depending on the facts. trademarks have to be similar of course.
- when they are on the same product, and this is mandated on the trips agreement, there’s a strong presumption of confusion. if you’re selling streetcar bread, and someone else is selling streetcarS bread, do we want courts spending a lot of time on the case? no. it’s technically possible to rebut it, but extremely unlikely.
- another scenario: similar trademark, and a related product. your trademark is fruity australian on shampoo. what if someone sells fruity australian conditioner? clark’s shoes, clark’s shoelaces. you’ll get protection for that too. consumer based test. when consumers would expect a series of related products, you’ll get protection as a trademark owner.
- finally, what happens if you’ve got a similar trademark and it’s used on an unrelated product. can you ever win when the person has used your trademark on an unrelated product? sometimes. particularly with sponsorships. take the atlanta braves baseball team. say someone started producing atlanta braves car fresheners. if atlanta braves can show that people interpret that to mean your air freshener is sponsored by the atlanta braves, they can shut you down. those cases are almost all sports team cases, university cases, fraternity/sorority cases.
- 7 to 12 factor test. strong presumption against confusion, but there’s definitely an opportunity, particularly for the sports teams and universities and groups that sponsor a bunch of shit like they do.
if you’re smart, you can prove trademark violations in state law. the state law is the same as the federal law, but wilfulness in state law allows punitive damages. so always had a state law claim in these lawsuits.
registration
differences among nations here.
in the US, if you register first, you freeze others. you shift the burden of proof to the defendant on two key aspects of your case; first, trademark validity (now the defendant has to prove your trademark is invalid). second, priority. burden is on the defendant if plaintiff has registered.
three, border control measures. only owners of registered trademarks can ask customs to keep knockoffs and trademarked goods out. secondary meaning. also after five years, you get immunity against the argument that your trademark hasn’t acquired distinctiveness.
there is an international system that helps you get registration in foreign countries. when you’re filling out the online form, you can check more boxes, pay more money, and the us trademark office will send your application to spain and on to lots of other places. the US is much harsher on trademark applications. even though you didn’t hire local counsel or translators, you’ll get a registration certificate from nations all over the world. woooo! easycakes.
cases: functionality and genericness
doctrine of functionality: you can’t trademark something functional. a patent, as we learned, is going to create a presumption of functionality.
the American formulation (not the EU rule): essential to the purpose of the article. 559: 1. essential to the use or purpose of the article, 2 affects its cost or quality, 3 if exclusive use of the feature would put competitiors at a significant non reputation related disadvantage.
how about utilitarian vs. aesthetic functionality?
the coke bottle is useful. it holds your coke. the recognition that trademark law might protect some useful designs led SCOTUS to break into de facto and de jure functionality.
as a matter of fact, coke bottle is functional. but that doesn’t lead court to conclude that as a matter of law it’s functional.
as for de jure functionality, we get to the three part test on page 559. examples include that Traffix stand.de jure functional. completely unprotectible. there’s a cool case involving a baby bottle that’s shaped different so babies can grip it. someone tried to trademark the ridges. but they were blocked, because it was functional. what’s the difference between a coke bottle and a baby bottle? it’s all about the alternatives competitors have. there are thousands of designs competitors could use for their bottles. so if we give the coke company the sole right to sell its product in this shape, it doesn’t really give them a competitive advantage. they’re not freezing anyone out of the bottle market. turns out not to be true with these baby bottles. relatively small number of designs. true in Trafix. three or four springs will be more expensive.
completely ornamental trademarks—why in heavens name could something totally ornamental, just an adornment, somehow be functional? it only makes sense if we can conveive a functionality in terms of its bottom line goal of preventing someone from getting competitive advantage through trademark protection. the RST example is pretty good:
- red, heart shaped boxes for chocolate. you can put boxes in any kind of box you want. a red heart shaped box is just an ornamental feature. the redness and heartshape is not useful. at all. but the restatement says someone would get a serious compettive advantage if only one person could sell red heart shaped boxes of chocolate.
- so we have a secondary doctrine. both serve exactly the same end. but make different aspects of product shapes and packaging unprotectible. that’s american law.
EU works a little differently in the remington case.
the threeheaded electric razor. we’ve seen them around.
let’s assume that consumers recognize this product design as originating from a single source. let’s assume people see this and think phillips razor. which means the only hope for the defendant in this case is that they have to deny protection based on functionality grounds.
does the EU court use the words de jure and aesthetic and de facto? no.
- ”nature of the goods” “non competitive value” “shape gives substantial value to the goods” etc.
how do you understand the first bar, that the shape results from the nature of the goods themselves?
- say you make the first windshield wiper and it’s straight. you don’t do anything special.
- how about that word “necessary” in the second formulation? that might create the division between de jure and de fact. the EU says the coke bottle is the result, but not the necessary result. who ultimately wins the suit in this case?
- we don’t know. it’s a case referred to the ECJ, and so they’re just deciding some questions of law sent to them by a national court.
what in the hell was the national court asking?
- whether article 3(1)(a) has any separate meaning apart from b, c, and d. and the court answers, “no.” this is interesting. american courts, you’ve seen, will work hard to give a statute some kind of meaning and not render it redundant or superfluous. ECJ perfectly willing to do that here. there’s nothing unprotected under A that would be protected udner B, C, and D.
i have a theory why the academics put in A. my reading would make it fit with american and english law. my guess is that they thought 3 1 a was going to prevent registration of generic trademarks, and b would block descriptive trademarks without secondary meaning. the US and english make that distinction, EU apparently doesn’t.
we find out it’s all about how consumers perceive it. under section b, generic words aren’t protectible either. a little bit technical and weird. i think you can forget this question as far as the exam goes. what’s question number TWO abouut?
whether you need some aesthetic flourish on a shape trademark to make it trademarkable. and do you have to?
- no. this is important for the kitchen aid mixer and the coke bottle. you don’t have to put any doodads on those.
what’s question number three about?
- where a trader has been the only supplier of a particular good, is extensive use of a sign that doesn’t include a capricious addition, sufficient… where a substantial proportion of the public associate the shape with the trader. well duh! of course we’re going to protect those people. this was the law of every country in the EU before the directive.
- i think what the court is trying to get at is that it wants to be reassured that the directive covers product shapes and not just words.
- and the answer to that question is YES
question FOUR: we start to get into it.
- whether having an alternative means to accomplish the same technical results means that you can keep the same trademark. if you’re the plaintiff in a suit like this, can you prevail simply by showing the defendant could use some alternative design?
- plaintiff’s attempted response: there were all sorts of alternative design the defendant could have chosen. what’s the answer the ECJ gives?
- the defendant doesn’t have to search around for alternative ways to make it if the essential functional characteristics are there solely to achieve a technical result. you can’t win just by saying there’s an alternative that can accomplish the same thing. does this answer necessarily mean that EU law is significantly different from american law?
the Weber kettle case. we’ve all had many delicious things cooked in Weber kettles before. the distinctive three leg design. the stupid legs that fall off when you try to drag it somewhere. weber kettle comes out like the coke hypo. weber kettle sued someone who made a similar looking kettle. defendant argued that everything about the design was functional. there were pictures of all sorts of alternative shapes. weber successfully proved that there were an almost infinite variety of shapes that cooked just as well. i always thought weber’s competitors should reproduce weber’s testimony that the shape contributes nothing to the cooking ability. and if that’s so, why not preserve the trademark capacity of the shape?
if that’s the law of the US, is there any way to read the ECJ’s answer to question four as not in conflict? bottom of p552 “which could achieve the same technical result”. anybody see a way for Weber to win in the EU? what i would argue if i was weber: that the ECJ is right, that a plaintiff shouldn’t be able to just point to some alternative design and deflect a functionality argument. but rather, that’s not to say the trademark owner can’t show there are numerous alternative designs that achieve the same technical result just as cheaply. if you look at the way the question is worded, it looks like what the court might be worried about is weber finding just one alternative design that’s more expensive, which would give weber a competitive advantage. i hope the court isn’t kiboshing the full blown weber kettle, kitchen aid, coke bottle argument that there are hundreds of other equally cheap, equally functional designs.
now some of you have been scratching your heads about the weber case in comparison to trafix. are we a jdx where alternative designs don’t matter? is this what trafix says? does trafix seem to support the strong interpretation we might get from the ECJ’s answer to question four, that alternative designs are irrelevant? anyone see any troubling language? “Other designs need not be attempted,” page 557. this has driven lawyers crazy over the last few years. everyone was convinced that the weber kettle approach was enough, that alternative designs were enough. the federal circuit has done its best to ignore this and keep weber kettle as good law. so you’ll be fine in the federal circuit, but you’ll need to work with it if you go up to SCOTUS. like the fact that there’s a patent in the trafix case, and no patent on the weber kettle design.
we know that to get a patent, you have to show your thing is non obviouis, non obvious, and USEFUL. good luck negotiating that! why not have a per se rule that anything protected by patent is unprotectible by trademark law? what’s the rule instead?
- we seem to have a presumptive rule, if not a per se rule.
if a feature is incidental, arbitrary, and ornamental, it shouldn’t be claimed as a patent. we do have a design patent—you can protect a hood ornament. this is highly annoying—it suggets that they slipped something past the patent office. but the patent office is not perfect, there’s some ornamental stuff that shouldn’t have been claimed.
it would make much more sense to say the court is worried about suprression of competition. if two spring designs works, more springs will be expensive. so would any device to hide the springs. and the visibility of the springs show that the product works. an easy case.
- but it does show that we should be concerned about alternative possibilities.
what if someone comes up with an eight spring sign? it’s crappy, expensive, a failed product. 98% of all inventions in the patent office fail commercially. if someone wants to get trademark protection on the eight spring design, why not give it to them? the reasons for trademark protection apply, and the reasons for patent protection don’t.
right about 98% of the patents are like that. something that’s decent enough, but not better than what’s out there.
i’ll adjust the reading for next time, because genericness is interesting. we’ll do it next time.
15 USC 1052. read that. look at the registration bars. we’ll have a short assignment for thursday. talk a little about trademark dilution. i’ll send it out on email.
see you back here at two.
march 19
very upscale law firm. they have to take a picture for a permit. evan harris, mp for oxford. think of one clever question to ask him from the internet or newspaper or whatever.
law firm tour starts at 5:00. we’ll arrive at 4:30. we’re just meeting with one person. he’ll talk to us about his international law practice. he does bilateral investment treaties. wooo! arbitration hearings before icsid. so we’re probably escaping at six…ish?
i want to finish up with functionality. talk about genericness. talk about this section 15 USC 1052. bars to registration in american law. and dilution.
how about functionality and colors, and the de jure vs. de facto distinction, and the utilitarian vs. aesthetic distinction.
how about colors that are de jure functional for utilitarian reasons? green for sunglasses-there are certain shades of green that reduce UV rays better than other colors.
brown on beer bottles—color prevents denaturing from sunlight. (i imagine brown is the cheapest. if i’m right that brown works better or is cheaper, that would be de jure functional utilitarian.)
orange on hunting jackets (pink might also work, but that’s ok. point is that there’s a limited number of options.) we wouldn’t let orange function as a trademark, EVEN IF you’re the first to use that color, and even if consumers associate your color with your product.
a psychiatrist failed, on functionality grounds, to trademark the light blue of his office.
how about de facto functional. bars paint their windows in detroit and racine. say a bar painted its windows a particular shade of hot pink and said, “this is our trademark.” if in fact any color will work, then it’s ok to allow freddy the pink painting bar owner to trademark the pink. that’s not the kind of function we’ll worry about protecting. “anything else will do.”
how about aesthetic functionality? couple of interesting cases. will deny protection to a color not because it serves a utilitarian purpose, but because consumers really like the color. it’s aesthetically pleasing in that it attracts colors for reasons beyond its source identifying function.
- black for outboard motors not protectible. black goes with virtually every other color. if you’re selling black outboard motors, the color black goes with every other color boat. same with black stereos. only value comes from consumer color preferences. we won’t let that advantage be obtained through trademark law. blue for boy baby clothes.
- john deere green is a famous color. john deere was able to get trademarks on their green tractors, but not on pull behinds. we’d give john deere an unnatural advantage if we let john deere extend that protection, because farmers like matching colors between their tractors and pull-behinds.
- supreme court case: green gold for dry cleaning press pads. green gold for press pads not functional. no advantage to being the sole purveyor of green gold press pads.
- pink for fiberglass protected. not utilitarian functional, and it’s inside walls so there’s no aesthetic issues.
- blue for sweet and lo packets. people don’t care what color their artificial sweetener comes in. (or do they? why do the colors all have the same lightness?
Otokoyama
the word otokoyama is generic in japan. what percentage of the american public knows that otokoyama means “manly sake”, or a just a kind of sake?
- probably not very many.
so why deny protection to otokoyama as a trademark when nobody in the states understands this not to be a trademark but rather a generic descriptor for sake?
- the policy for the doctrine of equivalents is that SOME consumers out there will confuse it, e.g. japanese tourists. might not be injuring the majority, but there’s some confused people out there who might want their manly sake. and can’t figure out where to get it outside of that brand.
we may be helping out the general japanese sake industry—but we could get valuabe reciprocity from japan, if japan respects english descriptors. this will help later businesses. what if india allowed a company to trademark “car” or “hatchback”. there could be an anticompetitive effect.
what’s odd about the case is that we seem uniquely willing to protect a small minority of people—generally the test is that a trademark or word is generic only if an appreciable number of consumers recognize that something is generic. we don’t have a definition of “appreciable number”. but hell, maybe that is the japanese tourists?
what study would you ask an expert to do?
- poll people who buy sake
the most accepted test was the teflon test. how do the teflon attorneys show that people think teflon is a brand name identifying something coming from dupont, rather than any old non-stick product?
so they tested the consumers. they had:
Chevy Car
_____ Coffee
McDonalds __________
then you give them a list and ask them whether the things are brand names or common names.
STP
Thermos
Margarine
Teflon
Jello
Refrigerator
Aspirin
Coke
STP: brand. Thermos: 51% brand name, 46% common name. Thermos was genericized. Margarine: common. Teflon 68% brand, 31% common.
So Teflon, a third of the public thinks it’s generic. how should the case come out? this is why i hate the otokoyama case being in here, when only a tenth of one percent will say generic. how should teflon come out? it was a resounding victory for teflon as a protected trademark.
Jello was 75% to 25%. Refrigerator was common. Asprin. in germany and canada aspririn is still protected, it was declared generic in the US in 1916.
coke: 24% thought it common. i asked for a coke in south georgia, guy said they had orange crush, sprite…
genericized: kleenex (hasn’t been litigated yet). yo yo, escalator, cellophane. Xerox. bandaid. xerox is interesting. my wifeasked if i had a kleenex, not to mean if i had something from the kimberly clark company. we’re able to be sloppy with our usage but still know that there’sa source identifying function. so there may be a category of words that serve both functions.
along with functionality, one of the two major defenses in the VALIDITY test is that the trademark has become generic. and note that 30% is not an appreciable number for that purpose.
international registration
in most places, registration is more important than in the US. in japan, you have to have a registration if you want to win. in the US, most trademarks are not registered.
the US, strangely, also gives the most scrutiny to trademark applications. around the world you’ll often see watered down registration systems of what we do.
15 USC 1052
this paper is a list of all the reasons the office can give to deny the registration, A-F after the word “unless”…
“Consists of or comprises immoral, deceptive, or scandalous matter;” think dirty words. instead of the polo insignia for shirts, the guy had a defecating dog. under US law, a defecating dog is protectible, you just can’t register it. so he could still win a law suit.
i had assumed that French Connection UK wouldn’t be able to register, but they were able to. FCUK.
- Also “deceptive” marks. say “injecto-clean gasoline”, but it doesn’t actually clean. “italian craftsman” would be deceptive, if no italians involved.
- “disparagement.” most famous case was the washington red skins. most people polled, 75%, feel that it’s disparaging. but the test is employed when the trademark is registered. so plaintiffs are still having trouble.
- “falsely suggest a connection with persons, living or dead”: heath ledger acting classes.
- or “geographical indication”. accomodates TRIPS agreement, which we’ll be hearing about. we’ll refuse to register a place name that misidentifies the source of the goods when it involves “wine or spirits.” you can misidentify cheese all day long in your registration.
- can’t use foreign nation’s flag. seems completely ignored by the trademark office. american flag. “old glory condoms” in the shape of an american flag. “preventing disease and pregnancy” is a patriotic purpose. courts and trademark office don’t seem to care about the state insignia bar.
- portrait of living individual not OK. dead ones are!
- (d) is where most denials occur: there’s a trademark that looks like the one you’re trying to register. no surprise there.
- i’ll add that the trademark office makes mistakes… all trademarks are subject to cancellation. for all of the reasons in 1052. so your trademark is always at risk of attack.
- so someone can later prove that you were the authentic first user of a trademark and cancel someone who got to the registration office first.
- (e) has five reasons to deny.
- “merely descriptive”, which makes sense. “tasty pizza.”
- e 1, 2, and 4 are the only reasons to deny registration which can be overcome with proof of secondary meaning. pizza hut can come back with evidence of consumer surveys that people interpret the merely descriptive “pizza hut” as a source identifier.
- you can also do that for e1 if your trademark has been identified as “deceptively misdescriptive.” why would we want to give those denials a second chance? and what’s the difference between a deceptive mark and a deceptively misdescriptive one?
- test for deceptive marks: 1. consumers perceive a claim, 2. they believe the claim, and 3. the belief in the claim affects their purchasing behavior. consumers would perceive “injecto clean gasoline” cleans their engine and are more likely to purchase the gasoline because of it. so if all three are met, the mark is deceptive, unregisterable, period.
- if only the first two points are met, then it’s deceptively misdescriptive. if the trademark registrant can prove it functions as a trademark, they can survive the denial. V-8 drink. people perceive that there’s eight vegetables in the drink. what if there’s really nine vegetables in there? who cares! you get nine instead of eight. if V-8 affects purchasing behavior, it probably drives it down. so if the lie is immaterial, we won’t eternally punish the trademark owner.
- e(2) refers to the possibility that the state of Idaho or the city of Vidalia can get together and collectively represent potatoes or onions.
- e3 cuban cigars that don’t come from cuba.
- e4: primarily a surname. you’ll get initially rejected until people perceive that name as a single source.
- e5: nothing functional. as you know.
- (f) gives you the rule that proof through secondary meaning can rehabilitate e 1, 2, and 4.
it’s the most strenuous examination in comparison to other nations.
dilution!
horrible place to end because it makes our whole trademark world fall apart.
i handed out the current dilution statute. the book is from 2006 but we’ve had some important revisions to the statute that you have there on page 605.
the main question is, when under american law can a trademark owner prevail in the absence of proving confusion? when can one successfully bring a trademark suit even in the absence of confusion?
you have to prove that your trademark is famous. also you have to prove a likelihood of tarnishment or blurring. so not everyone gets the protection of dilution, or rather tarnishment/blurring, just the famous trademark holders.
the defendant needs to USE IT IN COMMERCE. protestors with nike logo aren’t dilluting or tarnishing within the realm of the statute.
revised statute: “likely to cause dilution by blurring or dilution”. huge controversy resolved. the old statute didn’t have the word likely and courts didn’t read it in. so statute now requires likely dilution. what kind of evidence would you want to have to show that your client’s mark is famous? surveys! newspapers. magazines. advertising people can testify. quantity of sales.
is niche fame protected under the statute? lexis is famous among attorneys and accountants. does this statute protect lexis as a famous mark? niche markets have gotten protection—niche geographical or niche market fame? “a mark is famous if it is widely recgonized by the general consuming public of the United States”. so Varsity (not famous outside of Georgia) and Lexis (not famous outside of attorneys) not going to get protection under the federal statute. but states can implement greater protections.
- why aren’t they pre-empted? any suggestion that they are pre-empted in the statute?
- 6(A) protects Federally registered trademarks. pre-empted. state laws are clasically pre-empted in this context. the natural reading is that other state laws are OK. keep that in mind if you’re a trademark lawyer bringing both a federal and a state claim.
what does a dilution injunction get you? injunction against use of a mark that tarnishes or blurs. tarnishment is a bit easier to identify, tarnishment associates your trademark with something inappropriate. high class victoria’s secret didn’t want to get associated with a low class x-rated sex toy joint. almost all tarnishment has to do with poop or sex as far as i can tell.
banks in florida named its ATM machines. bank named its machines the cookie jar. right across from the street, someone opened a strip club called the cookie jar. nobody is going to be confused and think the source of the strip club is the bank. bank thought it was tarnished. bank won. kind of easy to see what the tarnishment branch is about. harder to see what blurring is. it’s some damage to the definition of the mark.
only hypo i’ve heard of relatively convincing: panavision provides cameras. cybersquatter registered panavision.com, took pictures of Pana, Illinois, and waited for Panavision to buy the .com site. panavision couldn’t get infringement, but they did win the blurring complaint.
only hypo i’ve heard of relatively convincing: panavision provides cameras. cybersquatter registered panavision.com, took pictures of Pana, Illinois, and waited for Panavision to buy the .com site. panavision couldn’t get infringement, but they did win the blurring complaint. their trademark no longer worked as well. it blurred its meaning, its workability for the public. the public is harmed when a trademark is blurred.
i’m not convinced blurring really ever happens empirically outside of that context.
what about an advertisement on paper: “Joe’s Strip Club is next to McDonald’s.” that’s ok, under the Fair Use exception in the dilution statute. the trademark has to be used by the defendant as their trademark. joe hasn’t used McDonald’s as his trademark.
what about a very good knock off of an Atlanta Braves t-shirt? why no dilution cause of action? there would be no tarnishment because it’s good quality. no blurring because it spreads the mark, more people know about it. you’ll lose on the infringement case of course. but not dilution because it strengthens consumer recognition of the mark.
pepsi-coke challenge: ok under fair use.
what about can of bud-weiser in a movie? what prevents this from being actionable? the real case this is based on was a bunch of caterpillar tractors attacking and crushing children.
why did Smuckers lose when they sued SNL for Fluckers jam? because parodies are excluded!
courts hate anti-dilution statutes, and they read them narrowly to find in favor of defendants.
i did a fifty year survey of dilution cases. only four cases where dilution was found, but not trademark infringement. so only four cases that do any work at all in those fifty years.
really weird: damages for trade dress violations. also weird that it refers to common law dilution when there is no common law dilution.
