Intellectual Property University of Maryland James Grimmelmann Fall 2014 Coursepack INTELLECTUAL PROPERTY 2 1. Introduction .............................................................................6 • Apfel v. Prudential-Bache Securities, Inc. • Bizarro World Problem 2. Trade Secret ...........................................................................10 A. Subject Matter, Ownership, and Procedures 10 • Restatement (Third) of Unfair Competition • Uniform Trade Secrets Act • Restatement of Torts • Economic Espionage Act B. Infringement and Defenses 11 • Uniform Trade Secrets Act • Restatement (Third) of Unfair Competition • Economic Espionage Act • Kamin v. Kuhnau • Flaming Moe’s Problem • Locksmiths Problem: 3. Patent .....................................................................................18 A. Introduction 18 • Worm Patent B. Subject Matter 18 i. Statutory Subject Matter • Tax Planning Patent Problem ii. Utility C. Procedures 19 i. Patent Prosecution ii. Claims • Salt Shaker Problem iii. Enablement • Plastic-Sorting Problem D. Ownership 21 i. Novelty • Pleistocene Park Problem ii. Nonobviousness • KSR Problem iii. Joint Invention E. Infringement 23 i. Similarity • Super Soaker Problem ii. Prohibited Conduct F. Defenses 24 3. Copyright ...............................................................................25 A. Subject Matter 25 i. Originality INTELLECTUAL PROPERTY 3 • Arrows Problem • Kevin Garnett Problem ii. Idea/Expression • Blehm v. Jacobs • Cooking for Kids Problem • Hula Problem • Baseball Card Price Report Problem B. Ownership 38 • Pickett v. Prince • Monkey Selfie Problem • Photoshoot Problem C. Procedures 42 • Fixation questions D. Infringement 43 i. Similarity • Sheldon v. Metro-Goldwyn Pictures Corp. • Arnstein v. Porter • Boisson v. Banian, Ltd. • Bee Gees Problem • New Yorker Problem • Children’s Book Problem ii. Prohibited Conduct • UMG Recordings, Inc. v. Augusto • DVR in the Cloud Problem iii. Secondary Liability • DVR in the Cloud Problem, Revisited E. Defenses 62 • Fair Use Checklist • Chicago HOPE Problem • Literally Unbelievable Problem 4. Trademark ..............................................................................64 A. Subject Matter 64 i. Distinctiveness: In General • Drug Stamps Problem ii. Distinctiveness: Special Cases • David B. Findlay, Inc. v. Findlay • Guantanamera Cigar Co. v. Corporacion Habanos • Melting Bad Problem B. Ownership and Procedures 73 • United Drug Co. v. Theodore Rectanus Co. • Galt House Inc. v. Home Supply Company • Boogie Kings v. Guillory • Bilgewater Bill’s Problem • Duff Problem • Trademark Throwback Problem INTELLECTUAL PROPERTY 4 C. Infringement 83 1. Likelihood of Confusion • Virgin Enterprises Ltd. v. Nawab • Cheat Sheet Problem • Boats Problem • Confusion Problem ii. Dilution • Dilution Lightning Round D. Defenses 97 • Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. • New Kids on the Block v. New America Pub., Inc. • Trademark Defenses Lightning Round 5. False Advertising ...................................................................107 • Jack Daniel’s Problem • McNeil-PPC, Inc. v. Pfizer Inc. • Satellite TV Problem 6. Right of Publicity ....................................................................117 A. Subject Matter 117 • Video Bonanza Problem B. Infringement 117 C. Defenses 117 • CBC Distribution and Marketing, Inc. v. Major League Baseball Advanced Media • Governator Problem • Tony Twist Problem 7. Design ...................................................................................122 A. Copyright: Useful Articles 122 • Meshwerks Inc. v. Toyota Motor Sales USA Inc • Coke Bottle Problem • Eames Chair Problem B. Trademark: Trade Dress 128 • Coke Bottle Problem, Revisited • Eames Chair Problem, Revisited • Pez Dispenser Problem C. Design Patent 128 • Coke Bottle Problem, Re-revisited • Eames Chair Problem, Re-revisited • Smartphone Problem 8. Software ................................................................................131 • Tetris Problem INTELLECTUAL PROPERTY 5 9. Jurisdiction ............................................................................132 A. Federal-State 132 • Facenda v. NFL Films Inc. B. State-State 140 C. International 140 10. Remedies .............................................................................141 A. Monetary 141 B. Non-Monetary 141 • Noon Heartache Problem 11. Transactions ........................................................................143 • Effects Associates Inc. v. Cohen • Sugar Busters LLC v. Brennan • Barcamerica Int’l USA Trust v Tyfield Importers, Inc. • Mongols Problem INTELLECTUAL PROPERTY 6 1. Introduction Readings • Casebook §§ 1.A (overview of policies) and 1.B (overview of IP) Apfel v. Prudential-Bache Securities, Inc. 81 N.Y.2d 470 (1993) Simons, Judge: Defendant, an investment bank, seeks to avoid an agreement to purchase plain- tiffs’ idea for issuing and selling municipal bonds. Its principal contention is that plaintiffs had no property right in the idea because it was not novel and, therefore, consideration for the contract was lacking. For reasons which follow, we conclude that a showing of novelty is not required to validate the contract. The decisive question is whether the idea had value, not whether it was novel. I In 1982, plaintiffs, an investment banker and a lawyer, approached defendant’s predecessor with a proposal for issuing municipal securities through a system that elimi- nated paper certificates and allowed bonds to be sold, traded, and held exclusively by means of computerized “book entries”. Initially, the parties signed a confidentiality agreement that allowed defendant to review the techniques as detailed in a 99-page sum- mary. Nearly a month of negotiations followed before the parties entered into a sale agreement under which plaintiffs conveyed their rights to the techniques and certain trade names and defendant agreed to pay a stipulated rate based on its use of the techniques for a term from October 1982 to January 1988. Under the provisions of the contract, defen- dant’s obligation to pay was to remain even if the techniques became public knowledge or standard practice in the industry and applications for patents and trademarks were denied. Plaintiffs asserted that they had not previously disclosed the techniques to anyone and they agreed to maintain them in confidence until they became public. From 1982 until 1985, defendant implemented the contract, although the parties dispute whether amounts due were fully paid. Defendant actively encouraged bond issuers to use the computerized “book entry” system and, for at least the first year, was the sole underwriter in the industry employing such a system. However, in 1985, following a change in personnel, defendant refused to make any further payments. It maintained that the ideas conveyed by plaintiffs had been in the public domain at the time of the sale agreement and that what plaintiffs sold had never been theirs to sell. Defendant’s attempts to patent the techniques proved unsuccessful. By 1985, investment banks were increas- ingly using computerized systems, and by 1990 such systems were handling 60% of the dollar volume of all new issues of municipal securities. Plaintiffs commenced this litigation seeking $45 million in compensatory and pu- nitive damages. They asserted 17 causes of action based on theories of breach of contract, breach of a fiduciary duty, fraud, various torts arising from defendant’s failure to obtain patents, and unjust enrichment. … INTELLECTUAL PROPERTY 7 On this appeal, defendant’s principal contention is that no contract existed be- tween the parties because the sale agreement lacked consideration. Underlying that argu- ment is its assertion that an idea cannot be legally sufficient consideration unless it is novel. Defendant supports that proposition by its reading of such cases as Downey v Gen- eral Foods Corp. (31 N.Y.2d 56), Soule v Bon Ami Co. (201 App Div 794, affd 235 N.Y. 609), and Murray v National Broadcasting Co. (844 F.2d 988). Plaintiffs insist that their system was indeed novel, but contend that, in any event, novelty is not required to validate the contract at issue here. II Defendant’s cross motion for summary judgment insofar as it sought to dismiss the first cause of action alleging breach of contract was properly denied. Additionally, plaintiffs’ motion to dismiss the lack of consideration defenses and counterclaims should be granted. Under the traditional principles of contract law, the parties to a contract are free to make their bargain, even if the consideration exchanged is grossly unequal or of dubious value. Absent fraud or unconscionability, the adequacy of consideration is not a proper subject for judicial scrutiny. It is enough that something of “real value in the eye of the law” was exchanged. The fact that the sellers may not have had a property right in what they sold does not, by itself, render the contract void for lack of consideration. Manifestly, defendant received something of value here; its own conduct estab- lishes that. After signing the confidentiality agreement, defendant thoroughly reviewed plaintiffs’ system before buying it. Having done so, it was in the best position to know whether the idea had value. It decided to enter into the sale agreement and aggressively market the system to potential bond issuers. For at least a year, it was the only underwriter to use plaintiffs’ “book entry” system for municipal bonds, and it handled millions of such bond transactions during that time. Having obtained full disclosure