P.N. Davis

Answer Outlines


I.  (30 min.)


trademark infringement:

- copying required - none here

            - Leno displays purchased products in original boxes

- the substitute boxes are not literal copies of boxes and have dissimilar marks

- thus, there is no trademark infringement

§ 43(a) unfair competition:

- use of a mark, device, designation, etc., that falsely designates origin or falsely or misleadingly describes or represents fact or quality of goods/services is prohibted

- includes tradedress

- limited to same or similar goods/ services, or those in likely expansion goods/services areas

- here, Leno made very clear in his narratives that his substitute product boxes & TM’s were different

- so, there should be no confusion about origin or product characteristics

§ 43(c) famous name dilution:

- use of a mark/tradedress which is likely to cause dilution of the distinctive quality of another’s mark/tradedress is prohibited

- covers dissimilar goods/services

- plaintiff’s mark must be “famous” – i.e., widely recognized by the general consuming public as a designation of the source of goods/services

- likelihood of consumer confusion or actual dilution not required

- Leno’s use of similar tradedress and tradenames might cause dilution

- but how likely that would be is debateable, since Leno stated that his were substitute TM’s

- but, it might be argued that his substitute product names impugn the quality and characteristics of the TM’d products

trademark fair use:

- the fair use doctrine is applied to trademarks (by case law)

- parody is a form of fair use

- is a humorous comparison for purposes of criticism

- the comparison requires that the original be conjured up in the mind of the viewer/reader/listerner

- but no more than necessary for such conjuring up is allowed

- not a problem here, because original is displayed

- noncommercial parody is allowed  [L.L. Bean, Mattel]

- absent disparagement of product or service quality

- here, Leno always states that the real products are good ones, and then says they ought to be renamed

- is this disparagement in spite of the disclaimers, or merely humor?


Bonus: discuss right of publicity re Janet Reno.

II.  (45 min.)

A.  “Copying” of lectures.

- Copyright Act does not apply to “unfixed” works, such as oral works, because they are not fixed in a “tangible medium of expression”

Common law copyright:

- do professors have a copyright in their oral lectures?

- most professors do not write the lectures and then read them in class

- instead, they lecture mostly extemporaneously using their lecture notes as guidance for the substance and order of their remarks

- thus, the lectures would be “unfixed” oral works

            - discuss Hemingway

- common law copyright may exist in unfixed works, such as extemporaneous speech & music, impromptu music & dance

- common law copyright in oral works requires delineation from ordinary conversation

- are the lectures “delineated”?

                        - lectures are inherently delineated

- transcribing & reproducing lectures would be literal “copying”

- probably, most of the student notes are not literal transcriptions of lectures

- but here, notes on lectures probably consist mostly of a combination of literal quotes, paraphrasing, and students’ summarizations of concepts

- close paraphrasing is “copying” - [case cites]

- some of the student notes would be close paraphrasing of professors’ remarks

- the remainder of the students’ notes would be preparation of derivative works

- both would be copyright infringement, if distributed

- copyright owner has exclusive rights of reproduction, preparation of derivative works, and distribution


- misappropriation is the taking of work product of another without consent for commercial advantage

- it has been applied to newspaper article rewrites [INS] and real-time Dow Jones average calculations [Chicago Bd. of Trade]

- work product in lectures is assembly of facts, case decision selection & quotation, analysis, and conclusions  [see Ehat]

- the facts themselves, and quotations from case decisions, are public domain and may be used without consent  [Ehat]

- student notes “take” that work product, even if they don’t literally quote the lectures

- note: misappropriation is not preempted by common law copyright

- however, there is preemption of misappropriation rights by the Copyright Act for “fixed” works


- professors’ lecture notes are “fixed” works and protected by federal copyright

- their oral lectures (as defined above) are “unfixed” derivative works (not covered by the Act)

- thus, state law would cover the students’ making of their notes (which themselves are derivative works)

B.  Derivative works

- students copious notes ought to be characterized as derivative works

- a derivative work is a work based on another work

- like abridgements or plot summaries

- since the students mostly paraphrase or summarize the lectures, they have sufficient “originality” to be copyrightable - they have more than a trivial variation from the original oral lectures

- thus, students have a copyright in their notes

- which they can assign to the online lecture note service

- note: the fact that they have a copyright in their notes does not automatically give them the right to reproduce & sell them (see below)

C.  Infringement

- can the students sell copies of their lecture notes?

- reproduction of derivative works requires consent of both the creator of the original work and the creator of the derivative work - [case cite]

- here, the professors have not consented

- professors’ consent is required, unless the students’ notes are “fair use”

D.  Fair Use

- § 107 allows a person to copy a reasonable amount of a copyrighted work w/o consent for purposes of education, comment/criticism, news reporting, etc.

- educational uses is an appropriate purpose for fair use copying

- professors give implied consent to their students to take notes of their lectures - that is part of the learning process

- this is an implied consent personal to each student

- the right to such copying and use of those student notes is not assignable

- but there is no implied consent to publish paraphrases/summaries of those lectures

- the academic educational context does not create such an implication

- two issues:

(1) amount of copying: “a reasonable amount can be copied w/o consent

- “copying” an entire lecture, or paraphrases/summaries thereof, is impliedly allowed to each student

- probably it is more than a reasonable amount for commercial reproduction purposes under the fair use doctrine

- even though the practice of one student lending his notes to another student for copying is common and is condoned

(2) purpose of copying: courts consider the purpose of copying in determining whether there is infringement

- students take notes of lectures to preserve for their personal use what a professor has said in class

- that is an educational purpose

- but, selling notes to many other students is a commercial purpose

- and not within the scope of the fair use doctrine

- the Publishers Guidelines for course pack copying and their purpose of preventing mass copying provide an analytical analog for the amount of commercial copying the students can do

- fair use analysis: the 4 factors - (1) purpose & character of use, (2) nature of copyrighted work, (3) amount & substantiality of portion used compared to entirety of copyrighted work, and (4) effect on potential market for work

- analyse

E.  Result:  the students’ online lecture note service constitutes infringement and can be enjoined


III.  (30 min.)


- Question states that invention is novel, nonobvious, and useful.

- only possible basis for invalidity is public use more than one year before Coleman filed his patent application.

- § 102(b) provides that an invention is not patentable if it has been been in public use (or on sale) for more than one year before the application date.

- here, that critical date is February 8, 1992 – any public use before that date renders the invention not patentable.

- the first test of the prototype was on October 27, 1990.

- this was in the presence of Karen Houston, computer technician.

- shortly thereafter, Coleman demonstrated the system to two other computer technicians in the laboratory.

- in 1991, the system was tested to access an offsite database, which was witnessed by many third parties.

- all these took place more than one year before the February 8, 1993, filing date.

- all of the elements of the invention recited in the patent application were present in the prototype system tested and demonstrated in 1990 and 1991.

- thus, no testing for operativeness was required after October 27, 1990.

- the October 27, 1990, test constituted a reduction to practice of the invention, and no further testing for operativeness was required in 1991.

- were these tests and demonstrations “uses in public”?

- Yes!  “Public use” under § 102(b) requires use by one person in a public forum.

- the one person can be either the inventor or a third party.

- accessing a remote, but onsite, database probably is a use in public.

- certainly, accessing a remote offsite database in 1991 is a use in public.

- presumably, these uses are corroborated by the computer technicians, since  defendants were aware of them.

- could these uses be considered “testing” and not “public uses”?

- No!  The first test apparently demonstrated operativeness, so the 1991 demonstrations were not needed for testing operativeness.  So, they were public uses.

- must the public be aware of the use?

- No! Use of the invention in the public as it is intended to be used is a “public use”, even if the public is not aware of the use.  Eyerman (corset stays).

- result: The 1990 test of the prototype and the 1991 test are public uses.  Hence, the patent is invalid.

Bonus: Bilski.

- Bilski rejects Fed. Circuit holding in State St. Bank [ “useful, concrete and tangible result” test] that all computer processes are patentable.

- Sup. Ct. held that some computer processes remain patentable even though they do not meet the “machine or transformation” or “Freeman-Walter-Abele” [mathematical/computer algorithm must be applied to an otherwise patentable process] tests

- it referred to Benson, Flook, & Diehr as guides for which computer processes are patentable

- this provides less than helpful guidance

- here, the computer process programs a computer to enable it to access databases located in other computers

- is this patentable under Bilski?


IV.  (45 min.)

Short Answer Questions

A.  Drill tip replacement

- purchase of patented item has a right to use and to repair it during its lifetime

            - these rights stem from the “first sale” doctrine.

- but the purchaser may not “reconstruct” the item.

            - because it the equivalent of buildiing a new copy of the item.

- the right to make the patented item remains with the patentee.

- here, does replacing the carbide tip on the drill constitute repair?

- the drill is referred to as a whole in the patent.  [see patent claim.]

- the drill tip is not patented separately.

- it is customary for worn carbide drill tips to be replaced because they wear out faster than the drill shank.

- this fact suggests that replacing the carbide tip here is repair.

- but, the carbide tip must be specially machined to the specifications in the patent

- thus, machining the carbide tip after it is brazed onto the drill shank could be considered the equivalent to making an entire new drill from component parts, with the shank component being used instead of new

- Decide. 


B.  Photo of President in advertising photo

Clothing advertisement by Onondaga Clothing of Pres. Obama in a leather jacket.

Lanham Act

- use of a living individual’s name or likeness w/o consent during his life is prohibited as a TM under § 2(c)

- use of US President’s name or likeness w/o consent during the his life or the life of his spouse is prohibited as a TM under § 2(c)

- purpose of § 2 (c) is prevent someone from adopting a trademark that is likely to be attributed to another

- since Pres. Obama’s likeness is not used as a TM, the Lanham Act does not apply.

right of publicity

- common law right of publicity

- defined as appropriation of a person’s name, likeness or characteristics without consent for commercial advantage


                        - such as unauthorized advertising testimonials

- recognition of celebrity is required

- many cases have enjoined ads containing the name, likeness, or identity of celebrities.  See Ford Motor (Midler sound-alike in TV ad). 

- thus, it should apply to the likeness of a living President in an advertisement.

- Pres. Obama is recognizable in the billboard photograph

- Pres. Obama did not give consent

- note:  this is a common law doctrine enforced by state courts

- note: § 43(c) “famous mark” dilution does not apply, because Pres. Obama does not have a TM


C.  Fair use doctrine

validity of copyright:

- a copyright subsists in any original work contained in a tangible medium of expression

- since the effective date of the 1976 Copyright Revision Act, the work need not be published

- since the effective date of the Berne Convention Implementation Act, a copyright notice need not be attached to the work as a prerequisite to protection

- thus, Brown has a copyright in his manuscript

fair use doctrine:

- a third party may make a copy of reasonable portions of a copyrighted work without consent [Copyright Act § 107]

- purposes of such copying:

- 7 purposes are listed, none of which encompass judicial proceedings

- but list is expressly exclusive, so other valid purposes can exist

- 4 factors:

- (1) purpose & character of use, (2) nature of copyrighted work, (3) amount & substantiality of portion used compared to entirety of copyrighted work, and (4) effect on potential market for work

            - here, excerpts were copied in the brief

            - the copying was not be a commercial purpose, but for use in a judicial proceeding

- judicial proceeding purpose ought to be favored

            - thus, Brown’s future publication market should be unaffected

- result: the copying is fair use.


V.  (30 min.)

            Briefly define the following terms:

(1)        staple item of commerce:  generic parts used in many machines & devices - sale & incorporation into an infringing machine/device does not create contributory infringement  [Sony]

(2)        obviousness – 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 to which said subject matter pertains  [Patent Act § 103];  combines more than one prior art reference

(3)        contributory infringer – person who induces another to infringe or materially contributes to such infringement

(4)        use in commerce – placing goods on the open market  [Lanham Act § 45]

(5)        process – act, operation, or step, or series thereof, performed on specific subject metter to produce a physical result 

(6)        misappropriation – taking the work product of another without consent for commercial advantage

(7)        incontestability – after 5 years use, a registered trademark is deemed to have acquired secondary meaning and cannot be declared invalid for lack or distinctiveness or is being a prohibited term

(8)        trade secret – secret information intended to remain secret which creates a competitive advantage

(9)        originality – author independently created the work  [Copyright Act § 102(a)]

(10)      concurrent use – use of same or similar marks on same or similar goods/services in separate geographic areas