Trademark/ Trade Dress
How did Wal mart v Samara decision modify the Two Pesos case?
-broke Trade Dress into 2 parts
1)packaging of a product = inherently distinctive
2) Design of product = never inherently distinctive
What is the test in Sony the court used to determine liability based on a party that supplied technology that facilitated copyright infringement?
-capable of substantial non-infringing uses
ie. if product is widely used for legit unobjectionable purposes then ok
What is the name of this test:
1) a product or process must be the subject of commerical offer for sale
2) invention is "ready for patenting" by either reduction to practice or preparation of drawings
Pfaff Test
In Omega Optical what element was found to be lacking in order to establish trade secret?
-Misappropriation
(bc there was no employee obligation to keep the secret and thus no breach)
Congress created an infringement liability to sue for a patented product solely to generate data to be included in submission of the FDA seeking approval to market a generic drug. WHAT IS THIS CALLED?
The Bolar Exemption
In LV v YSL (red bottom shoes) the court applied a tripart test for aesthetic functionality. What are the 3 parts?
1) essential to the use or purpose
2) affects the cost or quality of the product at issue
3) does it have a significant effect on competition?
In Warner Bros (movie character case) the court discusses the right of the public to make derivative works of works that are in the public domaine and how this can be limited by the existence of related works that are covered by CR. How is this limit placed on it?
The freedom to make new works based on public domain materials ends where the resulting derivative work comes into conflict with a valid Copyright
The Baxter court (new spine) the court discussed the "experimental use negation" of public use, what does this doctrine require?
- the totality of the circumstances and the policies underlying it
In the case Stampede Tool v May (jobber case) the court said that misappropriation can occur when an employee memorizes a trade secret and then uses it outside the scope of his employment. what was that trade secrete here?
-the customer list
In Larami (super soaker case) what did Larami need to demonstrate to prove no literal infringment of the patent?
-the water gun had a detachable water tank
In Playboy case the court discussed the Nominative Fair Use Defense. What are the 3 elements to this?
1) The product or service in question must be one not readily identifiable without use of the TM;
2)Only so much of the mark may be used as is reasonably necessary to identify the product or service; and
3) The user must do nothing that would suggest sponsorship / affiliation
In Capital Records v Thomas Rasset, why did the appellate court uphold the amount of statutory damages ?
-disliked the D alot
-statutory damages are made for cases like this
-the award was within the range the statute allowed for
-statutory damages are designed to discourage wrongful conduct!!!
In ZUP the court used these factors, what are the factors collectivly called?
1) level of the PHOSITA
2) scope and content of the prior art
3) differences between the claimed invention and the prior art
4) secondary considerations.
Graham Factors
In the Dippin Dots case what does the court determine in regards to if there were reasonable efforts to maintain secrecy ?
-there was NOT enough efforts to maintain secrecy.
Facts: P never told D it was a TS, no implied duty of confidentiality is real, no confidentiality agreement, no non-disclosure agreements
In the Campbell case (pretty woman) the court states the 6th cir. made an error which led to them to say it was not fair use. What was the error the 6th cir made that SC called them out on?
-6th cir. only looked to the 1st factor of FAIR USE to make its decision...within that factor they spent WAY too mcuh time on if commerical nature of the use
-also did not give enough consideration to the fact that it was a parody!
In Sleekcraft, the court held that Nescher has infringed the Sleekcraft mark. What remedy was given?
-limited mandatory injunction was warranted
-court said logo should appear in all ads, signs and promo materials
In Fonovisa v Cherry Auction (flea market) the court discussed the landmark case of vicarious liability "Shapiro" case. what were the 2 lines of cases the court in Shapiro discussed?
1) Land Lord / Tenant cases - LL who lacked knowledge of the infringing acts of its tenant and who exercised no control over the leased premies was not liable for infringing sales by its tenants
2) Dance Hall cases : the operator of an entertainment venue was held liable for infringing performances when the operator (1) could control the premises and (2) obtained a direct financial benefit form the audience who paid to enjoy the infringing performance
What was the issue in Dow Chem v Nova Chemical with the patent claim's "a slope of strain hardening coefficient?"
- there was 4 different ways a PHOSITA could have calculated this and the specification did not define which way to use it
In Rockwell (printing press parts and drawings) what standards is the judge using to assess if reasonable efforts were made?
-looked through the lense of economics and cost benefit calculations
-you only take precuations when the benefit outweighs the cost
In the Automotive Body Parts v Ford case, the court what the does the court say in regards to D's argument that the design of the parts are "aesthetically functional?"
the aesthetic appeal of a design to consumers is inadequate to render that design functional
In Peaches case, the court discussed the importance of the priority of use and the effect of the registration on priority. What is the importance and effect?
Prority use: user of a mark who registers it has prior use everywhere except where the other company that first used it is using it
Effect: the unregistered company's mark has a zone of reputation that cannot be touched by the registered mark owner
Why did the Star Athletica court reject Defendant (Varsity) argument that separability was not necessary to this case?
-the statute ยง101 literally requires a "separability analysis" for any PGS incorporated into the design of a useful article
In Apple v Samsung what does the Article of Manufacture mean ?
-its broad enough to embrace both the product sold and a component of the product whether sold separately or not
In the Buffets case the court considered if the recipes had sufficient economic value and if they were readily ascertainable and it the P took reasonable measures to maintain confidenatlity. Why was it necessary to consider the economic value?
-if the recipes derived any benefit from them being kept secrete then the economic value would be seen
-P failed to show that its competitors were having a lack of success due to the unavailability of the recipes
In Auto Tech v BMV (airbag case) the court discusses the Wand Factors, What are the factors?
1) factors of quantity of experimentation necessary
2) amount of discretion or guidance presented in the specification
3) absence of a working example