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Abstraction filtration comparison (to determine copying)
-
Country Kids v. Sheen, 77 F.3d 1280 (10th Cir 1996),
Because the idea/expression distinction is somewhat elusive, courts often adopt an ad hoc approach, eschewing the application of any bright
line rule or any clear formula.
-
Close to My Heart, Inc. v. Enthusiast Media LLC,>, 508 F. Supp. 2d 963 - Dist. Court, D. Utah, Central Div. 2007.
At the abstraction step, we separate the ideas (and basic utilitarian functions), which are not protectable, from the particular expression of the work.
Actual Confusion
-
Jordache Vs Hogg Wyld, 828 F.2d 1482 (10th Cir. 1987),
The marks "must be compared in the light of what occurs in the marketplace, not in the courtroom."
Acquiescence
-
Creative Gifts v. UFO, 235 F.3d 540 (10th Cir. 2000),
Acquiescence is an affirmative defense that requires a finding of conduct on the plaintiff's part that amounted to an assurance to the defendant,
express or implied, that plaintiff would not assert his trademark rights against the defendant.
Application of a Mechanical Operation (cutting fabric)
-
Baker v Skeldon, 101 US 99 (1879),
Their practical use could only be exemplified in cloth on the tailor's board and under his shears; in other words, by the application of a mechanical
operation to the cutting of cloth in certain patterns and forms.
Award of Fees (trademark)
-
JCW Investments v Novelty, Inc., 482 F.3d 910, (7th Cir, March 20, 2007) (Abv only),
Under the Lanham Act, attorneys' fees are awarded only in "exceptional cases" and enhanced damages are awarded "subject to principles of equity."
Cancellation of Trademark
-
Zatarains, Inc. v. Oak Grove Smokehouse, 698 F.2d 786 (5th Cir, 1983),
This circuit has held that when a court determines that a mark is either a generic term or a descriptive term lacking secondary meaning, the purposes of the
Lanham Act are well served by an order cancelling the mark's registration.
Categories of Trademarks
-
Equine Technology v Equitechnology, 1995, 1st Circuit Court of Appeals,
a reviewing court must consider the mark in its entirety, with a view toward "what the purchasing public would think when confronted with the mark
as a whole.
-
Abercrombie & Fitch v Hunting World, 537 F.2d 4 (2nd Cir 1976),
the Lanham Act identifies four different categories of terms with respect to trademark protection.
Complete Control Over Product (copyright)
-
Lee v. Deck the Walls, Inc, 925 F.Supp. 576 (N.D.Ill.1996),
It is well established that copyright protection "has never accorded the copyright owner complete control over all possible uses of his work."
Conceptual Separability (copyright)
-
Galiano v Harrah's, 416 F.3d 411 (5th Cir 2005),
Conceptual separability exists when the artistic aspects of an article can be "conceptualized as existing independently of their utilitarian function."
Conduct of Plaintiff
-
Matrix Essentials v Quality King,, 522 F.Supp.2d 470 (2007),
L'Oreal's attempt to involve federal law enforcement authorities in this matter was, at best, disingenuous.
Confusion (trademark)
-
WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir, 1991),
The trademark statute does not give the appellants any "property right" in their mark except "the right to prevent confusion."
-
Hasbro, Inc., vs Clue Computing, Inc., (2nd Cir 1999) 52 U.S.P.Q.2d 1402 (Abv only)
Furthermore, to the extent that Ms. Magestro's and Mr. Britt's affidavits show actual confusion, they do not show reasonable
confusion, which is required to find infringement.
-
What-A-Burger of Virginia, Inc. v. Whataburger, Inc. of Corpus Christi, Texas, 357 F.3d 441 (4th Cir. 2004) (Abv only),
no confusion found because the parties used the marks in distinct geographical markets.
Confusion, Presumption of .
-
WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir, 1991),
when a manufacturer intentionally uses another's mark as a means of establishing a link in consumers' minds with the other's enterprise, and
directly profits from that link, there is an unmistakable aura of deception.
Contract formation
Contributory Infringement, Copyright
-
Matthew Bender & Co v West Publishing, 158 F.3d 693 (2nd Cir. 1998),
a party "who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another, may be
held liable as a 'contributory' infringer."
-
Fonovisa Inc. v. Cherry Auction, 76 F.3d 259 (9th Cir. 1996),
courts have long recognized that in certain circumstances, vicarious or contributory liability will be imposed.
-
Fonovisa Inc. v. Cherry Auction, 76 F.3d 259 (9th Cir. 1996),
Contributory infringement originates in tort law and stems from the notion that one who directly contributes to another's infringement should be held
accountable.
Contributory Infringement, Trademark
-
Fonovisa Inc. v. Cherry Auction, 76 F.3d 259 (9th Cir. 1996),
Just as liability for copyright infringement can extend beyond those who actually manufacture or sell infringing materials, our law recognizes liability for
conduct that assists others in direct trademark infringement.
-
Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949 - Dist. Court, CD California 1997 (Abv only),
As to contributory infringement, there are two potential bases for liability. First, a defendant is liable if it intentionally induced others to infringe a mark.
Second, a defendant is liable if it continued to supply a product to others when the defendant knew or had reason to
know that the party receiving the product used it to infringe a mark.
-
Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949 - Dist. Court, CD California 1997 (Abv only),
Contributory infringement doctrine has always treated uncertainty of infringement as relevant to the question of an
alleged contributory infringer's knowledge.
Copying
-
Yankee Candle Co. v. Bridgewater Candle Co, 259 F.3d 25 (1st Cir. 2001)
applying the doctrines of "merger" and "scene-a-faire," the court determined that, to prevail, Yankee had to show that Bridgewater's
labels were "nearly identical" to Yankee's.
-
Folio Impressions, Inc. v. Byer California, 937 F.2d 759 (2d Cir. 1991),
Thus, the issues before us are narrowed in the first step of our analysis to considering whether there is substantial similarity between the works,
and whether there was independent origination for the work
-
Ty v. Publications International, 292 F.3d 512 (7th 2002),
copying that is complementary to the copyrighted work is fair use, but copying that is a substitute for the copyrighted work or for derivative
works from the copyrighted work, is not fair use.
-
Country Kids v. Sheen, 77 F.3d 1280 (10th Cir 1996),
the question of whether Defendants infringed on Plaintiff's copyright turns on whether Defendants' product is substantially similar to
the protectable elements of Plaintiff's product.
Copyrightability
-
Kemp & Beatley v Hirsch, 34 F.2d 291 (E.D.N.Y. 1929),
articles such as dress patterns do not present copyrightable subject-matter.
-
Earth Flag Ltd. v. Alamo Flag Co., 154 F. Supp. 2d 663 (S.D.N.Y. 2001) (Abv only)
Court refused to give plaintiff a monopoly on the of idea of flag with photograph of Earth.
-
Oriental Art Printing, Inc. v. Goldstar Printing Corp., 175 F. Supp. 2d 542 (S.D.N.Y.2001) (Abv only),
Court found that photographs of food contained in plaintiffs' work served purely utilitarian purpose and lacked requisite originality to be copyrightable.
-
Gracen v. The Bradford Exchange, 698 F.2d 300 (7th Cir. 1983)
At issue in such a case is not the right to copy the underlying work but whether there is enough difference between the derivative and the
underlying work to satisfy the statutory requirement of originality and thus make the derivative work copyrightable.
-
Publications Intern., Ltd. v. Meredith Corp., 88 F. 3d 473 (7th Circuit 1996),
Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted.
-
Ets-Hokin v Skyy Spirits, 225 F.3d 1068 (9th Cir. 2000),
To put our holding in context, we summarize the historical treatment of photographs both as artistic expression and as the
proper subject of copyright protection.
-
Country Kids v. Sheen, 77 F.3d 1280 (10th Cir 1996),
a wooden doll is a non-copyrightable idea.
Copyrightability of clothing
-
Jack Adelman, Inc. v. Sonners & Gordon, Inc, 112 F.Supp. 187 (SD New York 1934),
plaintiff secured no exclusive monopoly of the dress shown in the drawing.
-
Jack Adelman, Inc. v. Sonners & Gordon, Inc, 112 F.Supp. 187 (SD New York 1934),
There are no provisions in the Copyright Law for protecting fashions for dresses.
-
Jack Adelman, Inc. v. Sonners & Gordon, Inc, 112 F.Supp. 187 (SD New York 1934),
To give an author or designer an exclusive right to manufacture the art described in the certificate of copyright registration, ... would unjustly
create a monopoly and moreover would usurp the functions of letters-patent.
-
Mary Muffet v. Budget Dresses, 30 F. Supp. 872 (SD New York 1939).
The design patent was held to be invalid by the court because there is "no inventive act in applying a well-known lace to a
well-known cut of garment."
-
Whimsicality v Rubie's Costume Co, 891 F.2d 452 (2nd Cir 1989),
We have long held that clothes, as useful articles, are not copyrightable.
-
Morris v. Buffalo Chips Bootery, Inc., 160 F. Supp. 2d 718 (S.D.N.Y. 2001) (Abv only)
Since items of clothing are uncopyrightable useful articles, copyright in clothing design can exist only if elements are physically or conceptually
separable from article.
-
Galiano v Harrah's, 416 F.3d 411 (5th Cir 2005),
copyright law does not allow one to copyright "clothing designs" in which the artistic and utilitarian qualities are indivisible.
-
Express v Fetish Group, 424 F. Supp. 2d 1211 (C.D. Cal 2006),
As a general rule, items of clothing are not entitled to copyright protection.
Copyrightability of clothing designs
-
Galiano v Harrah's, 416 F.3d 411 (5th Cir 2005),
a clothing design that is intended to be used on clothing is copyrightable only to the extent that its artistic qualities can be separated from the utilitarian nature
of the garment.
Copyrightability of costume noses (utilitarian function)
-
Masquerade Novelty v. Unique Industries, 912 F. 2d 663 - Court of Appeals, 3rd Circuit 1990 (Abv only),
since the only utilitarian function of the nose masks qas in their portrayal of animal noses, the court concluded that they were copyrightable.
Copyrightability of cutouts and shapes
-
Yankee Candle Co. v. Bridgewater Candle Co, 259 F.3d 25 (1st Cir. 2001),
The district court determined that the "rectangular, gold-bordered name plate, [the] full-bleed photos, and [the use of] similarly sized labels," were "crude,
physical elements [that] do not enjoy copyright protection,"...
-
Ellison Equioment v AccuCut Systems 769 F. Supp. 1090 - Dist. Court, D. Nebraska 1991,
As previously noted, the designs are merely silhouettes of ordinary, common items which are generally readily identifiable by even young children.
Copyrightability of product pictures and text
-
My Web Grocer v. Hometown Info, , 375 F.3d 190 (2nd Cir. 2004).
The facts in a description of a product's brand, manufacturer, or name are not copyrightable.
-
My Web Grocer v. Hometown Info, , 375 F.3d 190 (2nd Cir. 2004).
A compilation of non-protectible facts is copyrightable if it "features an original selection or arrangement of facts."
-
Custom Dynamics v Radiantz LED Lighting 535 F. Supp. 2d 542 (E.D. NCar W.D. 2008),
If Custom is claiming a copyright in the ability to show product-description photographs and technical details of aftermarket motorcycle lights in general,
Custom's claim is weak because it is essentially an attempt to copyright an idea.
-
Custom Dynamics v Radiantz LED Lighting 535 F. Supp. 2d 542 (E.D. NCar W.D. 2008),
Custom's claim is weak because its images and descriptions do not satisfy the standard for originality.
Copyrightability of recipes
Copyrightability of toys
-
Gay Toys v Buddly L, 703 F.2d 970 (6th Cir. 1983) (Abv only),
This provision applies only to items that are first, as a whole, disallowed copyright protection as "useful articles," and thus has no application
to the present case."
Copyright Infringement
Copyright Infringement, Intent
Copyright Invalidation
-
Whimsicality v Rubie's Costume Co, 891 F.2d 452 (2nd Cir 1989),
the court held that Whimsicality, because of its misrepresentations, does not have valid copyrights capable of enforcement.
-
Tripoli Co. v. Wella Corp, 425 F.2d 932, 941 (3d Cir. 1970) (Abv only),
The requirement by a producer or manufacturer that the purchaser of his product may not resell it to certain classes of purchasers is by now recognized
as a serious restriction on freedom of trade and competition which the antitrust laws are meant to preserve.
Copyright Misuse
-
Lasercomb America v. Job Reynolds, 911 F.2d 970 (4th Cir. 1990),
misuse of copyright defense is inherent in the law of copyright just as a misuse of patent defense is inherent in patent law.
-
Lasercomb America v. Job Reynolds, 911 F.2d 970 (4th Cir. 1990),
we have discovered only one case which has actually applied copyright misuse to bar an action for infringement..
-
Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 520 (9th Cir. 1997) (Abv only),
On the undisputed facts in the record before us, we conclude the AMA misused its copyright by licensing the CPT to HCFA in exchange
for HCFA's agreement not to use a competing coding system.
Copyright Monopoly
-
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F. 2d 738 (9th Cir 1971),
What is basically at stake is the extent of the copyright owner's monopoly -- from how large an area of activity did Congress intend to
allow the copyright owner to exclude others?
Copyright Registration, lack of
-
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F. 2d 738 (9th Cir 1971). (Abv only),
the registration of the collective works in which Morris's articles initially appeared did not satisfy her registration requirement for the purposes
of maintaining an infringement action,
-
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F. 2d 738 (9th Cir 1971). (Abv only),
registration of the collective works in which they appeared do not satisfy § 411(a)'s requirements with respect to Morris
Copyright Registration Rights Conferred
-
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F. 2d 738 (9th Cir 1971),
Copyright registration, on the other hand, confers no right at all to the conception reflected in the registered subject matter. "Unlike a patent, a
copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea -- not the idea itself."
Creative spark
-
Ets-Hokin v Skyy Spirits, 225 F.3d 1068 (9th Cir. 2000),
In assessing the "creative spark" of a photograph, we are reminded of Judge Learned Hand's comment that "no photograph, however simple, can be
unaffected by the personal influence of the author."
Declaratory judgment
Degree Of Care by consumers
-
Jordache Vs Hogg Wyld, 828 F.2d 1482 (10th Cir. 1987),
a high degree of care in purchasing clothing that costs between fifteen and sixty dollars.
-
Sally Beauty Company v. Beautyco, 304 F.3d 964 (10th Cir 2001),
little care in the selection of inexpensive items that may be purchased on impulse.
Descriptive Trademark
-
Abercrombie & Fitch v Hunting World, 537 F.2d 4 (2nd Cir 1976),
the Lanham Act, 15 U.S.C. § 1052, forbids the registration of a mark which, when applied to the goods of the applicant, is "merely descriptive,"
with a few exceptions.
-
Zatarains, Inc. v. Oak Grove Smokehouse, 698 F.2d 786 (5th Cir, 1983),
A descriptive term "identifies a characteristic or quality of an article or service," such as its color, odor, function, dimensions,
or ingredients. Descriptive terms ordinarily are not protectable as trademarks
Derivative
-
Woods Vs Bourne, 60 F. 3d 978 (2d Cir. 1995),
In order for a work to qualify as a derivative work it must be independently copyrightable.
-
Precious Moments v La Infantil, 971 F. Supp. 66 (D.P.R. 1997),
the necessary element of originality is absent from the items manufactured for La Infantil from the Precious Moments fabric.
-
Gracen v. The Bradford Exchange, 698 F.2d 300 (7th Cir. 1983)
it is a painting of Judy Garland as she appears in photographs from the movie and is therefore a derivative work, is beyond question.
-
Lee v. Deck the Walls, Inc, 925 F.Supp. 576 (N.D.Ill.1996),
It is well established that copyright protection "has never accorded the copyright owner complete control over all possible uses of his work."
-
LEE v A.R.T. Company, 125 F.3d 580 (7th Cir. 1997),
The district court concluded that A.R.T.'s mounting of Lee's works on tile is not an "original work of authorship" because it is no
different in form or function from displaying a painting in a frame or placing a medallion in a velvet case.
-
Ty v. Publications International, 292 F.3d 512 (7th 2002)
Ty acknowledges as it must that a collectors' guide to a series of copyrighted works is no more a derivative work than a book review is.
-
Ets-Hokin v Skyy Spirits, 225 F.3d 1068 (9th Cir. 2000),
We need not, however, decide whether the label is copyrightable because Ets-Hokin's product shots are based on the bottle as a whole, not on the label.
Derivative copyrightability
-
Lee v. Deck the Walls, Inc, 925 F.Supp. 576 (N.D.Ill.1996),
The court finds the Second Circuit to support its finding that an alleged infringing "derivative work" must contain sufficient creativity and originality
to deem it a copyright infringement.
-
Gracen v. The Bradford Exchange, 698 F.2d 300 (7th Cir. 1983),
whether there is enough difference between the derivative and the underlying work to satisfy the statutory
requirement of originality, see 17 U.S.C. § 102 (a), and thus make the derivative work copyrightable.
-
LEE v A.R.T. Company, 125 F.3d 580 (7th Cir. 1997),
To prevail Lee must show that A.R.T. altered her works in one of the ways mentioned in the first sentence [of the statute].
-
Ets-Hokin v Skyy Spirits, 225 F.3d 1068 (9th Cir. 2000)
It is also significant that the Copyright Act specifically limits the scope of copyright protection for derivative works (and compilations).
Devriative defined
-
Lee v. Deck the Walls, Inc, 925 F.Supp. 576 (N.D.Ill.1996),
A "derivative work" is a "work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization,
fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be
recast, transformed, or adapted."
Dilution see Trademark Dilution
Disclaimers
-
Precious Moments v La Infantil, 971 F. Supp. 66 (D.P.R. 1997),
court required disclaimer on tags attached to the bedding because it was being sold in a store.
-
Scarves By Vera, Inc. v. American Handbags, Inc, 188 F. Supp. 255 - US: Dist. Court, SD New York 1960.
[disclaimers are] wholly permissible so long as plaintiff is not identified with the manufacture of the handbag.
-
Charles Of The Ritz Group Ltd v Quality King Distributors, Inc, 832 F.2d 1317 (2nd Cir, 1987)
minimum to moderate amount of consumer confusion found by district court could be cured effectively by the use of a disclaimer.
-
Home Box Office v Showtime, 832 F.2d 1311 (2d. Cir. 1987)
Although we have found disclaimers to be adequate in certain cases, each case must be judged by considering the circumstances of the
relevant business and its consumers.
-
Soltex Polymer Corporation v. Fortex Industries, Inc., 832 F.2d 1325 (2d Cir. 1987),
the court required defendants to use a disclaimer in conjunction with the FORTIFLEX mark and logo on its industrial container line.
-
Rosenfeld v. WB Saunders, 728 F. Supp. 236 - US: Dist. Court, SD New York 1990,
The Second Circuit has repeatedly recognized that an effective disclaimer can significantly reduce the potential for consumer confusion
caused by an infringing product if it clearly designates the source of the product.
-
CM Paula v Logan, 355 F.Supp. 189 (ND TX 1973),
Court required a disclaimer on the back of all of products upon which appear any of plaintiff's copyrighted artworks, by plainly visible label or
stamp in easily readable letters of the same size.
-
Westchester Media Co., L.P. v. PRL USA Holdings, Inc, 214 F.3d 658 (5th Cir. 2000),
Disclaimers have frequently been approved by this court and others when trademark and First Amendment interests intersect.
-
Graham Webb Intl v Emporium Drug Mart 916 F.Supp. 909 (E.D. Ark 1995),
a disclaimer expressly declaring that the seller is "not affiliated" with the owner of the trademark or is "not an authorized distributor" of the
trademark owner's products has been held to be an effective means of preventing confusion in the minds of consumers as to affiliation with the
owner of the trademark.
-
Conopco, Inc. v. May Dept. Stores, 46 F. 3d 1556 - US: Court of Appeals, Federal Circuit 1994 (Abv only),
the district court specifically found that consumers rarely, if ever, pay attention to disclaimers.
Distinctiveness of Trade Dress
-
Sally Beauty Company v. Beautyco, 304 F.3d 964 (10th Cir 2001),
A trade dress is inherently distinctive if its "intrinsic nature serves to identify a particular source."
Diversion
-
Matrix Essentials v Quality King,, 522 F.Supp.2d 470 (2007),
The court found that L'Oreal had not engaged in activities aimed at large scale termination of distributors so as to end the process of diversion.
-
John Paul Mitchell v Quality King,, 106 F.Supp.2d 462 (2000),
Essentially, JPMS did not demonstrate that diversion hurts its product's reputation, but only proved that diversion can cause
salon owners to stop carrying the Paul Mitchell product.
-
John Paul Mitchell v Randalls Food Markets, 17 S.W.3d 721 (TX 2000),
Paul Mitchell is one of many manufacturers that wants its hair care products sold only by salons.
Diversion, legality of
-
Matrix Essentials v Quality King,, 522 F.Supp.2d 470 (2007),
The resale of such genuine goods does not create consumer confusion and supports neither a claim of infringement nor unfair competition.
Dress made from copyright pattern not covered by copyright
-
Baker v Skeldon, 101 US 99 (Supreme Cour 1879),
Surely the exclusive right to this practical use was not reserved to the publisher by his copyright of the chart.
-
Baker vs Selden , 101 US 99 (Supreme Court 1879),
"no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein".
End User License Agreement (EULA)
Exclusive Distribution Agreements
-
John Paul Mitchell v Quality King,, 106 F.Supp.2d 462 (2000),
courts have been suspicious of the claim that disruption of these exclusive distribution arrangements causes any pecuniary injury, let alone irreparable damage.
Exhaustion, Patent
-
Aro Mfg. Co. v. Convertible Top Replacement Co., 377 US 476,497 - Supreme Court 1964 (Abv only),
When the patentee has sold the patented article or authorized its sale and has thus granted to the purchaser an "implied license to use," it is clear that he
cannot thereafter restrict that use; "so far as the use of it was concerned, the patentee had received his consideration, and it was no longer within the
monopoly of the patent."
Existing Contracts
-
Matrix Essentials v. Cosmetic Gallery,, 870 F. Supp. 1237 (D.N.J. 1994),
A plaintiff may not maintain a tortious interference action "where there is no specific contractual provision barring the behavior at issue."
Fair Use, Copyrights
-
Ty v. Publications International, 292 F.3d 512 (7th 2002),
The defense of fair use, originally judge-made, now codified, plays an essential role in copyright law. Without it, any copying of copyrighted material
would be a copyright infringement.
-
Campbell v. Acuff Rose Music, 510 U.S. 569 (1994),
The language of the statute makes clear that the commercial or nonprofit educational purpose of a work is only one element of the first factor
enquiry into its purpose and character.
Fair Use, Trademarks
-
WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir, 1991)
the use of words for descriptive purposes is called a "fair use," and the law usually permits it even if the words themselves also constitute a trademark.
-
Car-Freshner v S.C. Johnson, 70 F.3d 267 (2nd Cir 1995) (Abv Only),
The principle is of great importance because it protects the right of society at large to use words or images in their primary descriptive sense,
as against the claims of a trademark owner to exclusivity.
-
Zatarains, Inc. v. Oak Grove Smokehouse, 698 F.2d 786 (5th Cir, 1983),
the fair use defense prevents a trademark registrant from appropriating a descriptive term for its own use to the exclusion of others, who may be
prevented thereby from accurately describing their own goods.
-
ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003),
A celebrity's name may be used in the title of an artistic work so long as there is some artistic relevance.
-
New Kids v News America, 971 F.2d 302 (9th Cir 1992),
Thus trademark law recognizes a defense where the mark is used only "to describe the goods or services of [a] party, or their geographic origin."
Fair Value Received
-
Burke & Van Heusen v Arrow Drug, 233 F.Supp. 881 ( E.D. PA 1964),
For the ultimate question under the "first sale" doctrine is whether or not there has been such a disposition of the copyrighted article that it may
fairly be said that the copyright proprietor has received his reward for its use.
-
Sebastian Intern., Inc. v. Consumer Contacts (PTY) Ltd.,, 847 F.2d 1093 (3d Cir. 1988),
the ultimate question under the `first sale' doctrine is whether or not there has been such a disposition of the copyrighted article that it may fairly
be said that the copyright proprietor has received his reward for its use.
False Advertising
-
Clorox v Proctor & Gamble, 228 F.3d 24 (1st Cir. 2000),
either that an advertisement is false on its face or that the advertisement is literally true or ambiguous but likely to mislead and confuse consumers.
-
Pizza Hut v Papa Johns,227 F.3d 489 (5th Cir 2000),
A prima facie case of false advertising under section 43(a) requires the plaintiff to establish: (1) A false or misleading statement of fact about a product;
(2) Such statement either deceived, or had the capacity to deceive a substantial segment of potential consumers; (3) The deception is material,
in that it is likely to influence the consumer's purchasing decision; (4) The product is in interstate commerce; and
(5) The plaintiff has been or is likely to be injured as a result of the statement at issue.
False Designation of Origin
-
ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003),
A false designation of origin claim brought by an entertainer is equivalent to a false association or endorsement claim and the "mark" at issue is the
plaintiff's identity
First Amendment
-
ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003),
The protection of the First Amendment is not limited to written or spoken words, but includes other mediums of expression, including music,
pictures, films, photographs, paintings, drawings, engravings, prints, and sculptures.
-
Ayres v City of Chicago, 125 F.3d 1010 (7th Cir 1997),
there is no question that the T-shirts are a medium of expression prima facie protected by the free-speech clause of the
First Amendment, and they do not lose their protection by being sold rather than given away.
-
Mattel vs MCA Records, 296 F.3d 894 (9th Cir. 2002),
The First Amendment may offer little protection for a competitor who labels its commercial good with a confusingly similar mark, but "[t]rademark
rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view."
-
Cardtoons v. Major League Baseball Players Assn, 95 F.3d 959 (10. th. Cir. 1996),
Speech that entertains, like speech that informs, is protected by the First Amendment.
First Sale Doctrine, copyrights
-
Bobbs-Merril vs Straus, 210 U.S. 339 (1908),
In our view the copyright statutes, while protecting the owner of the copyright in his right to multiply and sell his production, do not create the
right to impose, by notice, such as is disclosed in this case, a limitation at which the book shall be sold at retail by future purchasers, with whom
there is no privity of contract.
-
Burke & Van Heusen v Arrow Drug, 233 F.Supp. 881 ( E.D. PA 1964),
It was held that since the copyright proprietor had transferred title to the copies of the copyrighted work, he could not by virtue of the
copyright statutes restrain the sale of the copies, but was limited to his remedies for breach of contract.
-
CM Paula v Logan, 355 F.Supp. 189 (ND TX 1973),
"It is clear that once the copyright proprietor consents to the sale of particular copies of his work, he may not thereafter exercise the right to
vend with respect to such copies."
-
American Intl Pictures v Evan H Forman, 576 F.2d 661 (5th Cir, 1978),
After the first sale of a copy the copyright holder has no control over the occurrence or conditions of further sales of it.
-
Sebastian Intern., Inc. v. Consumer Contacts (PTY) Ltd.,, 847 F.2d 1093 (3d Cir. 1988),
The court concluded that, having sold its goods with copyrighted labels to foreign distributors, the manufacturer is barred
by the first sale doctrine from establishing infringement through an unauthorized importation.
-
Step-Saver Data Sys., Inc. v. Wyse Tech.,, 939 F.2d 91 (3d Cir. 1991),
When these form licenses were first developed for software, it was, in large part, to avoid the federal copyright law first sale doctrine.
-
Sebastian v Longs Drug Stores, 53 F.3d 1073 (9th Cir 1994),
The "first sale" rule is not rendered inapplicable merely because consumers erroneously believe the reseller is affiliated with or authorized by the producer.
-
Lee v. Deck the Walls, Inc, 925 F.Supp. 576 (N.D.Ill.1996),
ART made no changes, alterations, reproductions, transformations, or adaptations of the notecards and, instead, resold the
same notecards using a different method of display. This resale is permissible under the Copyright Act.
-
LEE v A.R.T. Company, 125 F.3d 580 (7th Cir. 1997),
Now one might suppose that this is an open and shut case under the doctrine of first sale, codified at 17 U.S.C. sec. 109(a).
-
Novell, Inc. v. Network Trade Ctr., Inc., 25 F. Supp. 2d 1218 (D. Utah 1997)
Software is sold, not licensed.
-
Allison v Vintage Sports, 136 F.3d 1443 (11 Cir. 1998),
Any other rule would extend the monopoly created by the intellectual property right so far as to permit control by the right-holder over the
disposition of lawfully obtained tangible personal property.
-
Quality King Distributors, Inc. v. Lanza Research Int, 523 U.S. 135 (1998),
The whole point of the first sale doctrine is that once the copyright owner places a copyrighted item in the stream of commerce by selling it,
he has exhausted his exclusive statutory right to control its distribution.
-
Softman Products v Adobe Systems, 171 F. Supp. 2d 1075 (C.D. Cal. 2001),
"Software vendors are attempting en masse to 'opt out' of intellectual property law by drafting license provisions that compel their customers to
adhere to more restrictive provisions than copyright law would require."
-
Action Tapes vs Kelly Mattson 462 F.3d. 1010 (8th. Cir. 2006),
The response was a limited statutory exception to the first sale principle that prohibits a person in possession of "a particular copy of a computer
program" from disposing of that copy for commercial gain by "rental, lease, or lending," unless authorized to do so by "the owner of copyright in
[the] computer program."
-
UMG Recordings vs Troy Augusto 558 F. Supp. 2d 1055 - Dist. Court, CD. California, 2008,
Although this statutory limitation is commonly referred to as the first sale doctrine, its protection does not require a "sale." The doctrine applies after the
"first authorized disposition by which title passes."
First Sale Doctrine, trademarks
-
Major League Baseball Players Assoc v Dad's Kid, 806 F.Supp. 458 (SD New York 1992),
...baseball players have little if any continuing publicity rights with respect to the use and reuse of their pictures on cards by subsequent
purchasers and sellers of duly licensed baseball cards following a perfectly proper first sale into commerce for which the players get a royalty.
-
Matrix Essentials v. Cosmetic Gallery,, 870 F. Supp. 1237 (D.N.J. 1994),
Trademark rights are `exhausted' as to a given item upon the first authorized sale of that item.
-
McDonald's v Shop At Home, 82 F.Supp.2d 801 (MD TN 2000),
It does not matter that the owner of the trademark objects to the use of its mark, as long as one approved sale has already occurred.
-
John Paul Mitchell v Randalls Food Markets, 17 S.W.3d 721 (TX 2000),
Furthermore, the "first sale" doctrine precludes appellant from recovery under trademark infringement or unfair competition. Once Paul Mitchell
sold its product to an authorized distributor, placing it into the stream of commerce, it had no right thereafter to control the distribution of its
trademarked products.
-
Belltronics USA v Midwest Inventory, 562 F. 3d 1067 (10th Cir 2009), (Abv Only),
Those who resell genuine trademarked products are generally not liable for trademark infringement.
For Profit Use, see Profiting
Fraud
-
John Paul Mitchell v Pete N Larry's,, 862 F.Supp. 1020 (W.D.N.Y. 1994),
There are four elements to a claim of fraud: misrepresentation, concealment or non-disclosure of a material fact; intent to deceive on the part
of the defendant; justifiable reliance upon the misrepresentation by the plaintiff; and injury to the plaintiff as a result of such reliance.
Functional Features
-
Job's Daughters, Inc. v. Lindeberg and Co, 633 F.2d 912 (9th Cir 1980),
Trademark law does not prevent a person from copying so-called "functional" features of a product which constitute the actual benefit that the
consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.
Generic Trademark
-
Abercrombie & Fitch v Hunting World, 537 F.2d 4 (2nd Cir 1976),
A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species.
-
Dial-A-Mattress v Page, 880 F.2d 675 (2nd Cir 1991),
Dial-A-Mattress could not claim trademark rights in the word "mattress" used solely to identify its company or its product.
-
AOL v AT&T, 243 F3d 812 (4th Cir, 1999),
Generic marks are the last, and by far most important category. A mark is generic when it "Identifies a class of product or service, regardless of source."
-
Zatarains, Inc. v. Oak Grove Smokehouse, 698 F.2d 786 (5th Cir, 1983),
A generic term is "the name of a particular genus or class of which an individual article or service is but a member."
-
Bath & Body Works v Luzier Personalized Cosmetics, 76 F.3d 743 (6th Cir. 1996),
If a trademark has been registered, there is a presumption that term is not generic and the defendant must overcome the presumption.
-
Ty v. Ruth Perryman, 306 F.3d 509 (7th Cir. 2002),
We surmise that what Ty is seeking in this case is an extension of antidilution law to forbid commercial uses that accelerate the transition from trademarks
(brand names) to generic names (product names).
-
CD Solutions v Tooker, 15 F. Supp. 2d 986 (D. Or. 1998),
The term "Cds" (not "CDS") is generic, and a holder of a trademark must be denied protection if the mark becomes generic and is an expression
that does not relate exclusively to a trademark owner's property.
-
Creative Gifts v. UFO, 235 F.3d 540 (10th Cir. 2000),
When the relevant public ceases to identify a trademark with a particular source of a product or service but instead identifies the mark with a
class of products or services regardless of source, that mark has become generic and is lost as an enforceable trademark
Genuine Goods
-
John Paul Mitchell v Pete N Larry's,, 862 F.Supp. 1020 (W.D.N.Y. 1994),
as a general rule, trademark law does not prohibit the sale of genuine goods bearing a true mark even though the sale is not authorized by the mark owner.
-
Iberia Foods v Rolando Romeo,, 150 F.3d 298 (3rd Cir 1998),
As a matter of doctrine, a trademark owner attempting to use § 32 to prevent an infringement must establish that the products sold by the alleged
infringer are not "genuine."
Gift Under Federal Law
-
UMG Recordings vs Troy Augusto 558 F. Supp. 2d 1055 - Dist. Court, CD. California, 2008,
This merchandise "may be treated as a gift by the recipient, who shall have the right to retain, use, discard, or dispose of it in any manner he sees
fit without obligation whatsoever to the sender."
Gray Goods
-
PPS, Inc. v. Jewelry Sales Representatives, Inc.,, 392 F. Supp. 375 (SD NY 1975),
a manufacturer cannot, by obtaining a copyright upon one design of a jeweled pin, exclude all others from manufacturing jeweled pins.
-
Computer Associates Intern., Inc. v. Altai, Inc, 982 F. 2d 693 (2nd Cir 1992) (Abv only),
It is a fundamental principle of copyright law that a copyright does not protect an idea, but only the expression of the idea.
-
Franklin Mint Corp. v. Nat. Wildlife Art Exchg, 575 F. 2d 62 (3rd Cir 1978),
To reconcile the competing societal interests inherent in the copyright law, copyright protection has been extended only to the particular
expression of an idea and not to the idea itself.
-
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F. 2d 738 (9th Cir 1971),
A finding that defendants "copied" plaintiff's pin in this sense, however, would not necessarily justify judgment against them. A copyright, we have
seen, bars use of the particular "expression" of an idea in a copyrighted work but does not bar use of the "idea" itself.
-
Mazer v. Stein, 347 US 201 (1954) (Abv only),
Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea-not the idea itself.
Implied License
-
Gracen v. The Bradford Exchange, 698 F.2d 300 (7th Cir. 1983),
We do not say she actually had the right, but only that there is a genuine issue of material fact concerning the scope of her implied license to
make a derivative work.
Indicia of Origin
Intentional Defacement (trademark)
-
Matrix Essentials v. Cosmetic Gallery,, 870 F. Supp. 1237 (D.N.J. 1994),
even intentional defacement will not create a likelihood of consumer confusion unless it: (1) causes consumers to believe that
the seller is authorized to distribute the product, when it is not; or (2) compromises the manufacturer's quality control standards.
Items made using copyrighted information are not covered by the copyright
-
Baker vs Selden , 101 US 99 (Supreme Court 1879),
"no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein".
Jurisdiction
-
Dudnikov v. Chalk & Vermilion Fine Arts Inc.,, 514 F.3d 1063 (10th Cir. 2008),
whether plaintiffs' "injuries arise out of" defendants' contacts with the forum jurisdiction.
-
Dudnikov v. Chalk & Vermilion Fine Arts Inc.,, 514 F.3d 1063 (10th Cir. 2008),
Defendants did not merely inform plaintiffs of their rights and invite settlement discussions prior to potential litigation, but took affirmative steps
with third parties that suspended plaintiffs' ongoing business operations.
Knowingly Misrepresent
-
Online Policy Group v. Diebold, 337 F.Supp.2d 1195 (N.D. Cal 2004) (Abv only),
the U.S. District Court of the Northern District of California held that the copyright holder, Diebold, Inc., had violated the DMCA by sending a
false takedown notification.
Labeling (trademark)
-
Polymer Technology Corp. v. Mimran, 214 F.3d 658 (5th Cir. 2000),
Polymer claims that the sale of a product in the retail market which is specifically marked "For Professional Distribution Only" will cause consumer confusion
about the "legality and safety of the product."
License
-
UMG Recordings vs Troy Augusto 558 F. Supp. 2d 1055 - Dist. Court, CD. California, 2008,
Finally, the only benefit to a license for UMG is to restrain transfer of its music. This purpose was rejected 100 years ago by the Supreme Court.
License, Implied, see Implied License
License, Naked
-
Creative Gifts v. UFO, 235 F.3d 540 (10th Cir. 2000),
permission to use the mark without attendant provisions to protect the quality of the goods bearing the licensed mark.
License - Wording not a license
-
UMG Recordings vs Troy Augusto 558 F. Supp. 2d 1055 - Dist. Court, CD. California, 2008,
In determining whether a transaction is a sale or a license, courts must analyze the "economic realities" of the transaction.
Licensing
-
Softman Products v Adobe Systems, 171 F. Supp. 2d 1075 (C.D. Cal. 2001),
When these form licenses were first developed for software, it was, in large part, to avoid the federal copyright law first sale doctrine.
Likelihood of Confusion (trademarks)
-
Hasbro, Inc., vs Clue Computing, Inc, 52 U.S.P.Q.2d 1402 (2nd Cir 1999) (Abv only),
the affidavits show actual confusion, they do not show reasonable confusion, which is required to find infringement.
-
CD Solutions v Tooker, 15 F. Supp. 2d 986 (D. Or. 1998),
determining likelihood of confusion requires consideration of six factors: 1) the strength or weakness of the marks;
2) the similarity in appearance, sound, and meaning; 3) the class of goods in question; 4) the marketing channels;
5) evidence of actual confusion; and 6) evidence of the intention of defendant in selecting and using the alleged infringing name.
Likeness Not Protectable
-
ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003),
Images and likenesses of [Tiger] Woods are not protectable as a trademark because they do not perform the trademark function of designation.
-
ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003),
We hold that, as a general rule, a person's image or likeness cannot function as a trademark.
-
ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003),
In Estate of Presley v. Russen, the court rejected a claim by the estate of Elvis Presley that his image and likeness was a valid mark.
Literal Falsity
-
Clorox v Proctor & Gamble, 228 F.3d 24 (1st Cir. 2000),
Whether an advertisement is literally false is typically an issue of fact.
Making New Product, (trademarks)
-
Graham Webb Intl v Emporium Drug Mart 916 F.Supp. 909 (E.D. Ark 1995),
the product itself did not appear to be compromised in any of the bottles and the minor aesthetic damage, which if anything consisted
of almost imperceptible scratches on the bottom of the bottles, did not in any manner create a likelihood that consumers would think that
Graham Webb intentionally distributed shoddy goods.
-
John Paul Mitchell v Randalls Food Markets, 17 S.W.3d 721 (TX 2000),
Nor does the removal of batch codes alone establish a material difference due to lack of quality control.
-
Softman Products v Adobe Systems, 171 F. Supp. 2d 1075 (C.D. Cal. 2001),
In this case SoftMan's conduct goes beyond the mere resale of trademarked goods.
-
Nitro Leisure v Acushnet, 341 F.3d 1356 (Fed Cir 2003),
The Champion Court recognizes that consumers do not expect used or refurbished goods to be the same as new goods and that for such goods,
"material differences" do not necessarily measure consumer confusion.
-
Belltronics USA v Midwest Inventory, 562 F. 3d 1067 (10th Cir 2009), (Abv Only),
It logically follows that the first sale doctrine is not applicable "when an alleged infringer sells trademarked goods that are materially different than those
sold by the trademark owner."
Merger Doctrine, Scenes a faire (copyrights)
-
Yankee Candle Co. v. Bridgewater Candle Co, 259 F.3d 25 (1st Cir. 2001),
When there is essentially only one way to express an idea, the idea and its expression are inseparable and copyright is no bar to copying that expression.
-
My Web Grocer v. Hometown Info, , 375 F.3d 190 (2nd Cir. 2004).
The merger doctrine bars a copyright of even original expression "when there is essentially only one way to express an idea"
and thus "the idea and its expression are inseparable."
Mirage
Naked License
-
Creative Gifts v. UFO, 235 F.3d 540 (10th Cir. 2000),
anyone attempting to show such [trademark] abandonment via naked licensing faces a stringent burden of proof.
Nominative Fair Use (trademark)
-
Scott Fetzer Co. v. House of Vacuums Inc, 381 F.3d 477 (5th Cir. 2004) (Abv only),
defendant's use of KIRBY did not suggest affiliation or endorsement.
-
New Kids v News America, 971 F.2d 302 (9th Cir 1992),
Such nominative use of a mark--where the only word reasonably available to describe a particular thing is pressed into service--lies outside the
strictures of trademark law
Notice Of Claimed Infringement (NOCI)
-
Dudnikov v. Chalk & Vermilion Fine Arts Inc.,, 514 F.3d 1063 (10th Cir. 2008),
Defendants' NOCI went well beyond providing notice to plaintiffs of the claimed infringement and seeking settlement; it purposefully caused the
cancellation of their auction and allegedly threatened their future access to eBay and the viability of their business.
on Mirage & Munoz
-
Precious Moments v La Infantil, 971 F. Supp. 66 (D.P.R. 1997),
Mirage and its progeny have been criticized by others as well.
-
Lee v. Deck the Walls, Inc, 925 F.Supp. 576 (N.D.Ill.1996),
this court disagrees with the Munoz court; the court finds the proffered distinctions between framed art and "tiled art" unconvincing and
without support.
-
Mirage Editions, Inc. v. Albuquerque A.R.T. Co, 856 F.2d 1341 (9th Cir. 1988),
bad case law concerning derivatives.
-
Mirage Editions, Inc. v. Albuquerque A.R.T. Co, 856 F.2d 1341 (9th Cir. 1988),
Mirage has been disclaimed by most other circuits and by many legal scholars: including Nimmer.
on 9th Circuit
-
Lee v. Deck the Walls, Inc, 925 F.Supp. 576 (N.D.Ill.1996),
the Ninth Circuit ignores the definition of a "derivative work" found in § 101, in which Congress specifically included an originality requirement.
-
LEE v A.R.T. Company, 125 F.3d 580 (7th Cir. 1997),
Scholarly disapproval of Mirage Editions has been widespread.
Ordinary observer test
-
Yankee Candle Co. v. Bridgewater Candle Co, 259 F.3d 25 (1st Cir. 2001)
"The test is whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant
unlawfully appropriated the plaintiff's protected expression by taking material of substance and value."
-
PPS, Inc. v. Jewelry Sales Representatives, Inc.,, 392 F. Supp. 375 (SD NY 1975)
whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.
-
Folio Impressions, Inc. v. Byer California, 937 F.2d 759 (2d Cir. 1991),
This test for illicit copying to prove infringement of another's copyright demands that the similarities relate to protectible material; the test asks
whether "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal
as the same."
-
Country Kids v. Sheen, 77 F.3d 1280 (10th Cir 1996),
whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude
that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value.
Originality
-
Batlin Vs Snyder, 536 F.2d 486 (2d Cir. 1976),
Originality means that the work owes its creation to the author and this in turn means that the work must not consist of actual copying.
-
Folio Impressions, Inc. v. Byer California, 937 F.2d 759 (2d Cir. 1991),
It must be kept in mind that the scope of copyright protection for Folio's fabric design found above is narrow, extending only to the work's
particular expression of an idea, not to the idea itself.
-
Gracen v. The Bradford Exchange, 698 F.2d 300 (7th Cir. 1983),
We agree with the district court that under the test of Batlin Miss Gracen's painting, whatever its artistic merit, is not an original
derivative work within the meaning of the Copyright Act.
-
Ets-Hokin v Skyy Spirits, 225 F.3d 1068 (9th Cir. 2000),
In view of the low threshold for the creativity element, and given that the types of decisions Ets-Hokin made about lighting, shading, angle, background,
and so forth have been recognized as sufficient to convey copyright protection.
Ownership
-
UMG Recordings vs Troy Augusto 558 F. Supp. 2d 1055 - Dist. Court, CD. California, 2008,
describing a person's "degree of ownership of a copy" as "complete" when "he may lawfully use it and keep it forever, or if so disposed, throw it in the trash"
Parody
-
Louis Vuitton Malletier v Haute Diggity Dog, 507 F.3d 252 (4th Cir 2007),
"[a] `parody' is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with
the idealized image created by the mark's owner."
-
Smith v Wal-Mart Stores, 537 F.Supp.2d 1302 (ND GA 2008),
it is clear that Smith's concepts are parodies of the registered Wal-Mart marks.
-
Ty v. Publications International, 292 F.3d 512 (7th 2002),
the difference between parody (fair use) and burlesque (often not fair use).
-
Mattel vs MCA Records, 296 F.3d 894 (9th Cir. 2002),
The song does not rely on the Barbie mark to poke fun at another subject but targets Barbie herself.
-
Jordache Vs Hogg Wyld, 828 F.2d 1482 (10th Cir. 1987),
is an attempt "to derive benefit from the reputation" of the owner of the mark.
-
Cardtoons v. Major League Baseball Players Assn, 95 F.3d 959 (10. th. Cir. 1996),
Parodies of celebrities are an especially valuable means of expression because of the role celebrities play in modern society.
Patents Rights Conferred
-
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F. 2d 738 (9th Cir 1971),
The owner of a patent is granted the exclusive right to exploit for a period of seventeen years (a maximum of fourteen years for design patents)
the conception that is the subject matter of the patent.
Patterns not copyrightable
-
Kemp & Beatley v Hirsch, 34 F.2d 291 (E.D.N.Y. 1929),
articles such as dress patterns do not present copyrightable subject-matter.
-
Baker v Skeldon, 101 US 99 (Supreme Court 1879),
Surely the exclusive right to this practical use was not reserved to the publisher by his copyright of the chart.
-
Baker vs Selden , 101 US 99 (Supreme Court 1879),
"no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein".
Polaroid Test
-
Charles Of The Ritz Group Ltd v Quality King Distributors, Inc, 832 F.2d 1317 (2nd Cir, 1987),
Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of
similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and
the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.
-
Soltex Polymer Corporation v. Fortex Industries, Inc., 832 F.2d 1325 (2d Cir. 1987),
In a comprehensive analysis of the factors enumerated by this court in Polaroid Corp. v. Polarad Elecs. Corp., Judge McLaughlin considered
whether Soltex had demonstrated, as a result of defendants' use of the mark FORTIFLEX, that "an appreciable number of ordinarily prudent
purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question."
Potential Market
-
Campbell v. Acuff Rose Music, 510 U.S. 569 (1994),
The fourth fair use factor is "the effect of the use upon the potential market for or value of the copyrighted work."
Preexisting Works (copyright)
-
Ets-Hokin v Skyy Spirits, 225 F.3d 1068 (9th Cir. 2000),
Under the Copyright Act, a work is not a "derivative work" unless it is "based upon one or more preexisting works" and, in order to qualify as a
"preexisting work," the underlying work must be copyrightable.
Products made from copyrighted information not covered by copyright
-
Baker v Skeldon, 101 US 99 (1879),
"...no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein."
Professional Consultation (cosmetics)
Profiting
-
American Footwear Corp. v. General Footwear Co. Ltd.,, 609 F.2d 655 C.A.N.Y., 1979,
one can capitalize on a market or fad created by another provided that it is not accomplished by confusing the public into mistakenly purchasing
the product in the belief that the product is the product of the competitor.
-
Smith v Wal-Mart Stores, 537 F.Supp.2d 1302 (ND GA 2008),
the t-shirts were "a medium of expression prima facie protected by the free-speech clause of the First Amendment, and they do not lose their
protection by being sold rather than given away."
-
ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003),
Speech is protected even though it is carried in a form that is sold for profit.
-
Ayres v City of Chicago, 125 F.3d 1010 (7th Cir 1997),
there is no question that the T-shirts are a medium of expression prima facie protected by the free-speech clause of the
First Amendment, and they do not lose their protection by being sold rather than given away.
-
Ty v. Publications International, 292 F.3d 512 (7th 2002),
by developing or licensing a market for parody, news reporting, educational or other transformative uses of its own creative work, a copyright
owner plainly cannot prevent others from entering those fair use markets.
-
New Kids v News America, 971 F.2d 302 (9th Cir 1992),
Where, as here, the use does not imply sponsorship or endorsement, the fact that it is carried on for profit and in competition with the trademark
holder's business is beside the point.
-
Cardtoons v. Major League Baseball Players Assn, 95 F.3d 959 (10. th. Cir. 1996),
The fact that expressive materials are sold neither renders the speech unprotected nor alters the level of protection under the First Amendment.
-
Campbell v. Acuff Rose Music, 510 U.S. 569 (1994),
The language of the statute makes clear that the commercial or nonprofit educational purpose of a work is only one element of the first factor
enquiry into its purpose and character.
Product Consumed (copyright)
-
LEE v A.R.T. Company, 125 F.3d 580 (7th Cir. 1997),
An alteration that includes (or consumes) a complete copy of the original lacks economic significance.
Protected Elements (copyright)
-
Leigh v Warner Brothers, 212 F.3d 1210 (11 Cir. 2000),
the elements of artistic craft protected by Leigh's copyright were the selection of lighting, shading, timing, angle, and film.
Protected Expression
-
Tiffany Design v Reno-Tahoe Specialty, 55 F. Supp. 2d 1113 (D.Nev. 1999),
It is basic copyright law that a photograph possesses a wide range of protectable elements, including the posture of subjects, lighting, angle, selection
of film and camera, the collective arrangement of points of interest to create pleasing configurations and the evocation of desired expressions or appearances.
Public Domain, objects in (copyrigh)>
Puffery
-
Clorox v Proctor & Gamble, 228 F.3d 24 (1st Cir. 2000),
exaggerated advertising, blustering, and boasting upon which no reasonable buyer would rely.
-
Pizza Hut v Papa Johns,227 F.3d 489 (5th Cir 2000),
"advertising that is not deceptive for no one would rely on its exaggerated claims."
Quality Control
-
Polymer Technology Corp. v. Mimran, 214 F.3d 658 (5th Cir. 2000)
Goods, however, that do not meet the trademark owner's quality control standards will not be considered genuine goods, and their sale will
constitute trademark infringement
-
Bumble Bee Seafoods, L.L.C. v. UFS Indus. Inc., 71 USPQ2d 1684 (S.D.N.Y. 2004) (Abv only),
no right to assert quality control over the composite product.
-
A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc, 237 F.3d 198 (3d. Cir. 2000) (Abv only),
Reverse confusion occurs when 'the junior user saturates the market with a similar trademark and overwhelms the senior user.'
-
Citizens Financial Group Inc. v. Citizens Nat'l Bank of Evans City, 383 F.3d 110 (3d Cir. 2004) (Abv only),
the issue was whether confusion was likely in the senior user's market, not in the larger market of the junior user.
Restrictions on use (copyright)
Right of Publicity
-
ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003),
The right of publicity is an intellectual property right of recent origin which has been defined as the inherent right of every human being to
control the commercial use of his or her identity.
-
Cardtoons v. Major League Baseball Players Assn, 95 F.3d 959 (10. th. Cir. 1996),
the business right to control use of one's identity in commerce.
Scenes a faire, Merger Doctrine (copyrights)
-
Yankee Candle Co. v. Bridgewater Candle Co, 259 F.3d 25 (1st Cir. 2001),
When there is essentially only one way to express an idea, the idea and its expression are inseparable and copyright is no bar to copying that expression.
-
My Web Grocer v. Hometown Info, , 375 F.3d 190 (2nd Cir. 2004).
The merger doctrine bars a copyright of even original expression "when there is essentially only one way to express an idea"
and thus "the idea and its expression are inseparable."
Secondary Meaning
-
Yankee Candle Co. v. Bridgewater Candle Co, 259 F.3d 25 (1st Cir. 2001)
The only direct evidence probative of secondary meaning is consumer surveys and testimony by individual consumers.
-
Shelby Ford v Superperformance, 251 F. Supp. 2d 983 (D. Mass. 2002),
Proof of secondary meaning entails "vigorous evidentiary requirements."
-
American Footwear Corp. v. General Footwear Co. Ltd.,, 609 F.2d 655 C.A.N.Y., 1979,
The doctrine of secondary meaning requires not only that the mark have a subordinate meaning, but also that the Primary significance of the mark in
the minds of the consumers is the identification of the producer, not a designation of the product.
-
AOL v AT&T, 243 F3d 812 (4th Cir, 1999),
generic marks, with secondary meaning are still not entitled to protection.
-
Zatarains, Inc. v. Oak Grove Smokehouse, 698 F.2d 786 (5th Cir, 1983),
The concept of secondary meaning recognizes that words with an ordinary and primary meaning of their own "may by long use with a particular
product, come to be known by the public as specifically designating that product."
-
Sally Beauty Company v. Beautyco, 304 F.3d 964 (10th Cir 2001),
A descriptive trade dress, however, is not entitled to trade dress protection unless it has acquired secondary meaning in the marketplace.
Shrinkwrap Licenses
-
Softman Products v Adobe Systems, 171 F. Supp. 2d 1075 (C.D. Cal. 2001),
The Court finds that the circumstances surrounding the transaction strongly suggests that the transaction is in fact a sale rather than a license.
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Softman Products v Adobe Systems, 171 F. Supp. 2d 1075 (C.D. Cal. 2001),
Whether contracts such as Adobe's EULA, often referred to as "shrinkwrap" licenses, are valid is a much-disputed question.
Software Sold, not licensed
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Advent Syatems v Unysis Corp, 925 F.2d 670 (3rd Cir 1991),
The fact that some programs may be tailored for specific purposes need not alter their status as "goods" because the Code [UCC]
definition includes "specially manufactured goods."
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Novell, Inc. v. Network Trade Ctr., Inc., 25 F. Supp. 2d 1218 (D. Utah 1997)
Software is sold, not licensed.
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Softman Products v Adobe Systems, 171 F. Supp. 2d 1075 (C.D. Cal. 2001),
A number of courts have held that the sale of software is the sale of a good within the meaning of Uniform Commercial Code.
Substantial Similarity (copyrights)
-
Matthew Bender & Co v West Publishing, 158 F.3d 693 (2nd Cir. 1998),
If the similarity concerns only noncopyrightable elements of [a copyright holder's] work, or no reasonable trier of fact could find the works
substantially similar, summary judgment is appropriate.
-
Leigh v Warner Brothers, 212 F.3d 1210 (11 Cir. 2000),
plaintiff must establish specifically that the allegedly infringing work is substantially similar to the plaintiff's work with regard to its protected elements.
Tortious Interference
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John Paul Mitchell v Pete N Larry's,, 862 F.Supp. 1020 (W.D.N.Y. 1994),
In order to succeed on a claim for tortious interference with contract, a plaintiff must prove the existence of a valid contract between it and a
third party, the defendant's knowledge of such contract, the defendant's intentional procuring of the breach thereof by the third party and resultant damages.
-
Advent Syatems v Unysis Corp, 925 F.2d 670 (3rd Cir 1991),
To prevail on a claim of intentional interference with prospective contractual relations under Pennsylvania law, plaintiff must show the following:
(1) a prospective contractual relationship; (2) a purpose or intent to harm plaintiff by preventing the relationship from occurring; (3) the absence of privilege or
justification on the part of the defendant; and (4) occurrence of actual damage.
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Graham Webb Intl v Emporium Drug Mart 916 F.Supp. 909 (E.D. Ark 1995),
The basic elements of tortious interference are (1) the existence of a valid contractual relationship or business expectancy; (2) knowledge of the
relationship or expectancy on the part of the interferer; (3) intentional interference inducing or causing a breach or termination of the relationship
or expectancy; and (4) resultant damage to the party whose relationship or expectancy has been disrupted.
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John Paul Mitchell v Randalls Food Markets, 17 S.W.3d 721 (TX 2000),
A necessary element of the plaintiff's cause of action is a showing that the defendant took an active part in persuading a party to a contract
to breach it.
Trade Dress (see also Distinctiveness and Secondary Meaning)
-
Yankee Candle Co. v. Bridgewater Candle Co, 259 F.3d 25 (1st Cir. 2001)
The primary purpose of trade dress protection is to protect that which identifies a product's source.
-
Shelby Ford v Superperformance, 251 F. Supp. 2d 983 (D. Mass. 2002)
The Supreme Court recently held that trade dress, in the form of a product's design (as opposed to packaging), can never be inherently distinctive as a
matter of law.
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Sally Beauty Company v. Beautyco, 304 F.3d 964 (10th Cir 2001),
The trade dress of a product is its overall image and appearance, and may include features such as size, shape, color or color combinations,
texture, graphics, and even particular sales techniques.
Trademark, Animating Principles
-
Societe Des Products Nestle v Casa Helvetia 982 F.2d 633 (1st Cir 1992),
Every product is composed of a bundle of special characteristics. The consumer who purchases what he believes is the same product
expects to receive those special characteristics on every occasion.
Trademark Categories see Categories. Trademarks
Trademark Definition
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ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003),
The essence of a trademark is a designation in the form of a distinguishing name, symbol or device which is used to identify a person's goods
and distinguish them from the goods of another.
-
Rock and Roll Hall of Fame and Museum v. Gentile Productions, 134 F.3d 749 (6th Cir, 1998),
It is well established that "[t]here is no such thing as property in a trademark except as a right appurtenant to an established business or trade in
connection with which the mark is employed."
-
Ty v. Ruth Perryman, 306 F.3d 509 (7th Cir. 2002),
The fundamental purpose of a trademark is to reduce consumer search costs by providing a concise and unequivocal identifier of the particular source of
particular goods.
-
Job's Daughters, Inc. v. Lindeberg and Co, 633 F.2d 912 (9th Cir 1980),
A trademark owner has a property right only insofar as is necessary to prevent consumer confusion as to who produced the goods and to
facilitate differentiation of the trademark owner's goods.
-
New Kids v News America, 971 F.2d 302 (9th Cir 1992),
A trademark is a limited property right in a particular word, phrase or symbol.
-
Davidoff v PLD International, 263 F.3d 1297 (11th Cir. 2001),
Congress' purposes for enacting trademark legislation.
Trademark Dilution
-
Smith v Wal-Mart Stores, 537 F.Supp.2d 1302 (ND GA 2008),
A claim of dilution applies only to purely commercial speech.
-
AutoZone, Inc. v. Tandy Corp, 373 F.3d 786 (6th Cir. 2004) (Abv only),
AUTOZONE and POWERZONE were dissimilar and the plaintiff failed to introduce evidence of actual dilution as required.
-
Ty v. Ruth Perryman, 306 F.3d 509 (7th Cir. 2002),
But what is "dilution"?
Trademark Infringement
-
Home Box Office v Showtime, 832 F.2d 1311 (2d. Cir. 1987),
The Lanham Act creates a claim for trademark infringement when a trademark holder can demonstrate that the use of its trademark by another is likely to
confuse consumers as to the source of the product.
Trademark, Animating Principles
Trademark Misuse
-
Sebastian v Longs Drug Stores, 53 F.3d 1073 (9th Cir 1994),
'[a] trademark is misused if it serves to limit competition in the manufacture and sales of a product.'
Trademark Tarnishment
-
Smith v Wal-Mart Stores, 537 F.Supp.2d 1302 (ND GA 2008),
tarnishment caused merely by an editorial or artistic parody which satirizes [the complainant's] product or its image is not actionable under an
anti-dilution statute because of the free speech protections of the First Amendment."
Trademark, Territoriality
Transfer of Title
-
Softman Products v Adobe Systems, 171 F. Supp. 2d 1075 (C.D. Cal. 2001),
The reality of the business environment also suggests that Adobe sells its software to distributors.
Unauthorized Distribution (trademark)
-
Polymer Technology Corp. v. Mimran, 214 F.3d 658 (5th Cir. 2000),
a distributor's failure to observe a restrictive condition on the sale of a product can only constitute trademark infringement if the trademark
owner can prove consumer confusion, the hallmark of any trademark infringement claim.
Unfair Competition
Uniform Commercial Code § 2-207 (UCC)
Used Goods (trademark)
-
Nitro Leisure v Acushnet, 341 F.3d 1356 (Fed Cir 2003),
For used or refurbished goods, customers have a different expectation. They do not expect the product to be in the same condition as a new product.
-
Champion Spark Plugs v Sanders, 331 U.S. 125 (1947),
The issue before the Supreme Court was simply whether the lower courts erred in not requiring the accused infringer to remove Champion's
trademark name from the repaired and reconditioned spark plugs.
-
Champion Spark Plugs v Sanders, 331 U.S. 125 (1947),
Inferiority is immaterial so long as the article is clearly and distinctively sold as repaired or reconditioned rather than as new.
Useful Article (copyright)
-
Superior Form Bldrs. v. Dan Chase Taxidermy, 74 F.3d 488 (4th Cir. 1996) (Abv only),
Because these animal mannequins were designed to portray the appearance of animals through artistic features introduced by the
author in their creation, we hold that they are not "useful articles".
Using Another's Mark, allowed (trademark)
-
Scarves By Vera, Inc. v. American Handbags, Inc, 188 F. Supp. 255 - US: Dist. Court, SD New York 1960,
A trade-mark only gives the right to prohibit the use of it so far as to protect the owner's good will against the sale of another's product as his.
Utilitarian Works (Copyright)
-
Computer Associates Intern., Inc. v. Altai, Inc, 982 F. 2d 693 (2nd Cir 1992) (Abv only),,
the copyright of a work cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams
which he employs to explain them, so as to prevent others from using them whenever occasion requires.
-
Masquerade Novelty v. Unique Industries, 912 F. 2d 663 - Court of Appeals, 3rd Circuit 1990 (Abv only),
since the only utilitarian function of the nose masks qas in their portrayal of animal noses, the court concluded that they were copyrightable.
Vicarious Liability
-
Fonovisa Inc. v. Cherry Auction, 76 F.3d 259 (9th Cir. 1996),
Our conclusion is fortified by the continuing line of cases, starting with the dance hall cases, imposing vicarious liability on the operator of a business
where infringing performances enhance the attractiveness of the venue to potential customers.
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