IP Final Flashcards

Question

Improper Means (Trade Secret Misappropriation)

Answer 1

Includes theft, bribery, misrepresentation, breach, or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means. Note: Reverse engineering or independent derivation alone are not improper means.

Answer 2

Renting a plane and taking aerial shots of a building for reasons of finding out "secrets" is not a proper means of independent research. This type of act is unlikely and unexpected and would require additional expenses to protect. Not a reasonable expectation.

Answer 3

Court analyzed the multi-factor test to determine that the realistic looking/sounding toy track is a secret. Reasonable measures were taken to preserve secrecy and the concept could not have been acquired or duplicated through proper means.

Answer 4

Court analyzed factors. There must be reasonable steps to maintain secrecy. There was a confidentiality agreement, however, the idea was generally known to other businesses and another company developed a different method.

Answer 5

All forms of trade secret legislation require the trade secret owner to take reasonable measures to maintain secrecy.

Answer 6

Everything an employee acquires by virtue of employment, with exception of their compensation, belongs to the employer.

Answer 7

There was a reasonable non-compete clause in the Defendant's work contract, so it was enforceable. Defendant's work required confidential information and trade secrets after considering the employee's ranking, process, and access to data. Note: Reasonableness of non-complete clauses varies upon jurisdictions.

Answer 8

Copyright protection exists in ORIGINAL works of authorship, FIXED in any tangible medium of EXPRESSION, now known or later developed, form which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

Answer 9

- Originality and authorship - Fixation - Expression

Answer 10

- Must be independently created (material must owe it's origin to the author) - Must have minimum quantum of creativity (minimal degree of creativity -- like arrangement, selection, coordination, lighting, angles, etc. and must not be mechanical or routine)

Answer 11

In copyright, the court will only assess whether the work has a minimal spark of creativity, not whether the work is highly artistic or mundane. Think: Circus case - copying poster advertisements for circus. Court did not analyze whether the advertisements reached a level of art, just that they were copied.

Answer 12

Originality exists in the selection, arrangement, and coordination of the facts. No copyright is awarded for "hard work", there is no sweat of the brow theory. Think: Feist (Phonebook case) Phonebooks are not original because they fall below the level of creativity. The selection/coordination of facts are not original.

Answer 13

Duplications do not constitute independent creations. Think: Meshwerks v. Toyota case - Meshwerks created digital wire frames of Toyota vehicles. Court said they were not independent creations, just "good copies". No discernible decisions made.

Answer 14

The work is fixed in a tangible means of expression. - It is sufficiently permanent or stable to permit to be perceived, reproduced, or otherwise communicated for a period more than a transitory duration; and - Fixation must have been by or under the control of the author. Two aspects of fixed: attached to a physical object and/or static over time.

Answer 15

Copyright on the audiovisual effects (images/sounds perceived through projector) The repetitive images of a video game is fixed despite the player causing images to change. Sequences regardless of player control are fixed.

Answer 16

- Literary works - Musical works - Dramatic works (and accompanying music) - Pantomimes and choreographic works (fixed in a tangible medium) - Pictorial, graphic, and sculptural work - Motion pictures and other audiovisual works - Sound recordings - Architectural works

Answer 17

Musical Composition - the writing of the song/music Sound Recording - the actual recording of the song

Answer 18

The expression of an idea is copyrightable, but the underlying ideas are not. In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described or explained.

Answer 19

A book made on how to make bookkeeping charts and the charts made based on teachings were not copyrightable. The accounting system itself is an idea/abstract idea, and thus cannot be copyrighted. The underlying ideas/teaching of a book are not copyrightable, but actual words (expression) contained in the book are. Thus you can follow the instructions of the book to make the thing described, but you cannot copy the instructions. Concept of merger - if the expression is so indispensable to the statement of the idea that the two merge, it cannot be protected.

Answer 20

Where only a finite number of ways exist to express an idea, the idea and the expression merge into an non-copyrightable whole.

Answer 21

Facts are not copyrightable (compilations may be) Think: Nash v. CBS, Inc. Rights belong only to expression. Stating they were facts put them in the public domain.

Answer 22

The "sequence" is determined to be an idea, healing art (which can be secured only by patent), a process, system, and not a compilation of choreography, and those nut protectable by copyright. It is essentially an idea.

Answer 23

The books here were sufficiently original in their selection and coordination o f the facts and the professional opinions on how a value will be in a current market. Thus, the court says, these valuations are the original creation of Maclean. The fact that an arrangement of data responds logically to the needs of the market for which the compilation w as prepared does not negate originality.

Answer 24

If design elements reflect merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian aspects. Where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists.

Answer 25

Only the separable elements of a useful article are subject to copyright protection. Analysis: - Is the item a pictorial, graphical, or sculptural work? If yes, then... - Is the item useful? If yes, then move onto a separability analysis If no, then it is copyrightable.

Answer 26

An article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information

Answer 27

Where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists. An expressive element of a useful article is physically separable if it can stand alone from the article as a whole and if such separation does not impair the utility of the article.

Answer 28

Primary purpose of the belt buckle was ornamental and not functional so copyrightable. Conceptual separation evidenced by the fact they were displayed in a museum and could be worn as jewelry.

Answer 29

A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature: (1) can be perceived as a work of art separate from the useful article; and (2) would qualify as a protectable pictorial, graphic or sculptural work -- either on its own or fixed in some other tangible medium of expression -- if it were imagined separately from the useful article into which it is incorporated. The test is satisfied here.

Answer 30

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. Must satisfy the same level of requirements for copyright. Only the expression added to the original works are copyrightable.

Answer 31

The owner of a copyright has the exclusive rights to do, authorize, and prepare derivative works based upon the original work.

Answer 32

Photos of Thomas the Train toys were derivative works because they portrayed him in scenes and the company gave permission to create the derivative work.

Answer 33

The employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright A work made for hire is: 1. A work prepared by an employee within the scope of his or her employment….”; or 2. A work specially ordered or commissioned for use as a contribution to a collective work….”as [one of nine categories]and agreement in writing that work is a WMFH

Answer 34

- Hiring party's right to control - The skill required - The source of the instrumentalities and tools - The location of the work - The duration of the relationship between the parties - Whether the hiring party has a right to assign additional projects to the third party - The extent of the hired party's discretion over when and how long to work - The method of payment - The hired party's role in hiring and paying assistants - Whether the work is part of the regular business of the hiring party - Whether the hiring party is in business - The provision of employee benefits - The tax treatment of the hired party

Answer 35

Artist created nativity sculpture of homeless people was not a work for hire because he was not an employee. Own tools, own studio, own time, typical compensation for independent contractors, no payroll or taxes.

Answer 36

Anyone who violates the exclusive rights of the copyright owner is an infringer of the copyright.

Answer 37

The right: - To reproduce the copyrighted work - To prepare derivative works - To distribute copies - To perform the copyrighted work publicly - To display the copyrighted work publicly - To preform the copyrighted work (in digital audio transmission)

Answer 38

1. Establish ownership of a valid copyright; and 2. Establish an unauthorized exercise of a §106 right (aka copying) by showing: a) Copying in fact i. Direct evidence (admission, documentary) or ii. Circumstantial evidence * Access; AND * Similarity (extrinsic test (objective) (expert testimony) AND intrinsic test (subjective) (reasonable person standard) b) AND improper appropriation (is what was copied protected; improper copying or substantial similarity)

Answer 39

Plaintiff must articulate to court what it exactly is seeking protection in. There wasn’t substantial similarity here as the literary devices were ideas and too abstract, old stereotypes.

Answer 40

Evidence of wide dissemination, sold fabric in the same area, both based in L.A. Color and shape not exactly the same, but the arrangement and coordination substantially similar. Ultimately, the intrinsic test is for the jury.

Answer 41

Must exist in concrete or permanent form, and is substantially incorporating protected materials from the preexisting work. Duke Nukem game, derivative work infringed because no license. Objective elements from the story itself as well, where the MAP files recreates that expression.

Answer 42

Access can be proven by particular chain of events or wide dissemination and subconscious copying. It was more probable than not that Bolton had heard the song.

Answer 43

Copyright owner has the exclusive rights to do this.

Answer 44

- To perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or - To transmit or otherwise communicate a performance or display of the work to a place or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times

Answer 45

Public performance regardless of being in a private room, same time or different times. The copyright owner gave no rights to perform publicly the copy of the movie. - Public store - Anyone can walk in - Performance - Transmission

Answer 46

Broadcasting television over the internet was violation because people were capable of viewing at the same time. Shows or displays images, transmission. Even though just supplying the equipment (warehouse with antennas), and going to an individual’s laptop, still public. Entity communicates the same contemporaneously perceptible images and sounds to multiple people

Answer 47

Contributory Liability - Knowingly participating in the infringing conduct of another (providing the equipment for the manufacture of infringing goods) Vicarious Liability - Benefiting financially from infringement that one has the right and ability to prevent (Think: Fonovisa, flea market case) Inducement of Infringement: Taking active steps to encourage direct infringement (Think: Grokster case, distributing a device to encourage copyright infringement) Note: Secondary liability requires a direct infringer

Answer 48

- To punish one who unfairly reaps the benefit of another's infringement - Requires: Right and ability to control/supervise the direct infringer AND direct financial benefit from the infringement (Knowledge not required)

Answer 49

The defendant has knowledge (actual or constructive) of infringement AND the defendant induces, causes, or materially contributes to infringement. (Supply to infringer of something necessary to infringe might equal material contribution)

Answer 50

Swap meet hosts defendant vendors, collecting fees and benefitting while vendors sell copyright materials. Cherry controls the premises, supervise infringing activities, and financially benefits. Sufficient for vicarious and contributory.

Answer 51

Direct infringers are people copying the videos and uploading them. However, did not invite people to post, not facilitating the infringement, users are going on and doing it.

Answer 52

Defendants had software to get around infringement. Used the infringement case of Napster for popularity, encouraging infringement with active steps. Intent mattered here, advertising for users to infringe.

Answer 53

A defense against a claim of copyright infringement. Fair use is the use of copyrighted material for specific purposes such as criticism, comment, news reporting, teaching, scholarship, or research. A "fair use" of copyrighted material is not an infringement.

Answer 54

- The purpose and character of the use (including whether such use is of a commercial nature or is for nonprofit education purposes or similar) - The nature of the copyrighted work (creative or non-creative (facts); published or not) - The amount and substantiality of the portion used in relation to the copyrighted work as a whole (quantity and quality as a whole) - The effect of the use upon the potential market for or value of the copyrighted work Note: Also ask, "was it transformative?"

Answer 55

The fair use is more likely to be fair if it is transformative. A work can be transformative when: something new has been created by adding new expression to the original work OR when the work serves as a whole new and different function and is not a substitute for the original

Answer 56

- Is it a new work? - Is it in the same market? - Does it have the same meaning? - Is it expressing or commenting on something else?

Answer 57

Parody of the original; fair use analysis. Parody is recognized as a fair use subject. Analysis: Purpose & Character of Use - Can parodic character be reasonably perceived? Criticize or comment? Nature of Underlying Work - Not important in parody analysis Amount & Substantiality Used - Parody goes to the heart... but is it excessive? Effect on Potential Market - Transformative - Doctrine is key in this case

Answer 58

- Defendant work must be aimed, at least in part, against accusing work - Defendant’s work may take from underlying work at least enough to “conjure up” - No presumption of “unfair use” if commercial - Weakened weight of factor 4 of §107 ($) - Recognized doctrine of “transformative use”

Answer 59

Concert posters reproduced in reduced size in biography. Fair use factors analyzed, as well transformative doctrine, fair use applied.

Answer 60

Copyright holders must first consider whether potentially infringing material is a fair use before issuing a takedown notice.

Answer 61

Safe Harbors shield qualifying online service providers from monetary liability for copyright infringement based on the actions of their users, in exchange for cooperating with copyright owners to expeditiously remove infringing content and meeting certain conditions.

Answer 62

Any word, name, symbol or device, or any combination thereof: - Used by a person in commerce, or - Which a person has a bona fide intent to use and registers the mark to identify and distinguish goods from those manufactured or sold by others and to indicate the source of the goods aka The Lanham Act

Answer 63

Protects: - Consumer Interests - by helping to avoid consumer confusion about source and quality of goods - Producer Interests - by helping producers prevent others from profiting from their own reputation and quality through misappropriation or misidentification of goods Also: Encourages companies to make goods of a high quality and prevent the dilution of famous marks through tarnishment or blurring

Answer 64

After 5 years of continuous use after registration, a mark is deemed "incontestable" - To the extent that the right to use the registered mark has become incontestable, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark.

Answer 65

A mark may be deemed distinctive. Distinctiveness arises out of use. Some marks are inherently distinctive.

Answer 66

Generic Marks - Cannot be protected. (e.g., Aspirin) Merely Descriptive Marks - Must have secondary meaning. (e.g. International Business Machines) Suggestive Marks - Evoke the product indirectly. (e.g. Microsoft) Arbitrary Marks - English words, arbitrarily applied. (e.g. Apple computers) Fanciful Marks - Words that are made up. (e.g. Exxon, Xerox, Kodak)

Answer 67

Inherently Distinctive Marks - Arbitrary marks - Fanciful marks - Suggestive marks - Some unique, eye-catching abstract designs (capable of protection upon use, no secondary meaning required) Marks that are Capable of Becoming Distinctive - Descriptive marks - Geographically descriptive marks - Surname marks - Common or simple abstract designs or colors (only capable of protection upon acquisition of secondary meaning) Marks that are Incapable of Becoming Distinctive - Generic words and symbols

Answer 68

- The length and manner of the mark - The volume of sales under the mark - Survey evidence

Answer 69

Courts have used several tests to see if a mark is descriptive as opposed to suggestive. The Dictionary Test - is the dictionary definition of the mark a description of the product? The Imagination Test - Does the term require some imagination or deduction to determine what product it is suggesting? Do Competitors Need to Use the Mark? - Is the mark highly useful to competitors to describe the product? Extent of Use by Competitors

Answer 70

The use of the name, term, or device charged to be an infringement is a use… which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.

Answer 71

Fish-Fri has secondary meaning but fair use applied to describe goods or services. Chick-Fri did not have valid trademark - no secondary meaning.

Answer 72

Protects the design of the packaging, and the design of the product itself, if these serve as source identifiers. These are non-word marks. e.g. The shape of the Coca-Cola bottle is trade dress. Trade dress can be inherently distinctive and not require secondary meaning; or it can acquire distinctiveness through secondary meaning by means of usage.

Answer 73

The store's trade dress was inherently distinctive and thus no need to require secondary meaning for inherently distinctive trade dress protection. The dress here is somewhere in between packaging and the design of the product itself -- the venue

Answer 74

Trade dress can include color. Color can be trademarked and serve as an identifying symbol if: - The color has developed a secondary meaning; and - It is not functionally required Depletion of colors will trigger functionality requirement. Almost must not harm valid competition.

Answer 75

Color can indicate things. For trademark protection, it must develop a secondary meaning. Color of green and gold iron pads was found to be a valid trademark. Distinguishes product from other brands. Not necessary for other brands to be green, plenty of other colors to choose from.

Answer 76

Product packaging can be inherently distinctive (the package the product is contained in) Product design needs secondary meaning in order to be distinctive (the actual design of the product) Note: Two Pesos is somewhere in between. Courts should generally classify ambiguous trade dress as product design.

Answer 77

Issue on whether a design of clothing line inherently distinctive or needed secondary meaning. Design of a dress needs a secondary meaning in order to be considered distinctive.

Answer 78

Trademark law does not protect functional items. An item is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.

Answer 79

Generally, a product feature is functional, and cannot serve as a trademark if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Step 1: Mechanical Functionality a) Is the claimed trademark essential to a use or purpose; or b) Does it affect price or quality? c) Presumption of functionality if covered by a utility patent i. Expired utility patents are strong evidence that feature claimed in the patent is functional d) De facto v. De jure Step 2: Aesthetic Functionality a) Would protection of the feature as a trademark result in significant non-reputation related competitive disadvantage? i. e.g. Orange soda. Designating origin then it is not mechanical, but allows protection would not allow other orange sodas to compete in the market. If functional after Step 1 - STOP - No trademark. If "no" on Step 1, go to Step 2. If functional on Step 2 - No trademark.

Answer 80

springs on traffic sign are essential to the use and purpose of the sign withstanding high winds. If the alleged trade dress feature is functional under the first part of the test, that ends the inquiry.

Answer 81

- Product Design has a function. e.g. a bottle has a function - to hold liquid - Bottle shape may not be designed to function better, it may be trade dress. e.g. Orangina bottle

Answer 82

- Product has a particular shape because it works better having that shape, e.g. bottles that narrow at the top pour better and can be sealed more cheaply. These are not entitled to trademark protection. Four factors to consider: - Existence of a utility patent - Advertising materials touting design's utilitarian function - Availability to competitors of functionally equivalent designs - Facts indicating the design results in comparatively cheap or simple method of manufacturing the product

Answer 83

De jure functionality. Shape or design of it made it so that it works better in that particular shape or design. Also properly limited to a single application, functional as to the wet areas. Finding functionality, burden is on the applicant to prove non-functionality, which they failed.

Answer 84

Aesthetic functionality is about the competitive need for certain features that play an important role in a product, but where the importance does not relate to the utilitarian function of the product. - Features are aesthetically functional when exclusive use of those features would put competitors at a significant non-reputation-related disadvantage - Second step after finding "No" on Step 1

Answer 85

Keychains and frames with labels of marks without license. Aesthetic function indistinguishable from and tied to the mark’s source-identifying nature.

Answer 86

Mark had a secondary meaning to merit protection, but the protection only goes to the qualifier that the red sole contrasts with the remainder of the shoe. A shoe entirely red would not infringe. Not mechanically functional, and not aesthetically functional to the contrast only.

Answer 87

Circular beach towel, advertised utilitarian function and fashion statement. Incontestable after 5 years, utility patents with claims, alternative design more expensive, impairs competition; functional.

Answer 88

Trademark rights are based on actual use of the mark in commerce. Registration with the TM office creates nationwide rights Priority goes to the first party to have a bona fide use of the mark in commerce. Common Law: analyzes its first use in commerce and how it was used. First use -> senior user, subsequent users -> junior user(s) "Use" can be either through substantial sales OR through registration with some bona fide sales and an intent to continue using the mark in sales.

Answer 89

Use in commerce must be bona fide, in good faith, and not a token use just to use the mark. Farah shipped the orders first, and thus wins on those grounds. Sales were determinative here.

Answer 90

A party may clothe a new mark with the priority position of an older mark. The jury makes the determination of whether tacking is available because the inquiry operates from the perspective of an ordinary purchaser or consumer. Think: Hana Financial v. Hana Bank case -

Answer 91

Use based on application - Register after using mark in commerce. Verify use and include date in application. File an Intent to Use Registration - Application for bona fide intention to use trademark a) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark b) if accepted, date of filing used as registration date

Answer 92

Empire filed intent to use application, put notice of intent. Concerns of trademark trolls when Warner used in commerce first. Empire is allowed to use because it was necessary for registration, Warner has to prove filed ITU first or used before application.

Answer 93

Certificate as Prima Facie Evidence - A certificate of registration of a mark shall be prima facie evidence of the validity of the trademark & its rights Application to Register Mark Considered Constructive Use - A certificate of registration constitutes as constructive use, conferring right of priority (except for a person who has used the mark and not abandoned it)

Answer 94

- Assistance from U.S. Customs - Presumption of mark ownership, validity, and exclusive right (incontestable after 5 years) - Constructive use as of application date

Answer 95

An unregistered user’s trademark rights are geographically limited. Unregistered users in different geographic areas generally have their rights in their respective areas, regardless of whose use came first in an absolute sense. Rectanus: Under common law, 1st user of mark may not oust a 2nd user’s good faith use of an infringing mark in a remote market where 1st users goods are not sold. Registered Mark: Federal mark provides constructive notice, nationwide, but Rectanus still holds UNLESS the infringing user had penetrated the market PRIOR TO REGISTRATION. Market Penetration: Sweetart Factors

Answer 96

- Money value of sales at time later user entering market - Number of customers (compared to state population) - Relative & potential growth of sales - Length of time since significant sales

Answer 97

Neither the senior nor the junior user has registered the mark. Prior to 1911, only Northeast. Once go into Kentucky, Rectanus already established. Would abscond with their good will, consumer association in Kentucky. Allowing them to come in would cause consumer confusion. Good faith by Rectanus, used first, but never registered, can continue use of mark in territory.

Answer 98

Used Sweetart factors. The junior only used in Arkansas, 6 counties, senior cannot be entitled to exclusive use in the particular Arkansas market.

Answer 99

A mark shall be deemed abandoned if the following occurs: a) When its use has been discontinued with intent not to resume use. Intent may not be inferred. Nonuse for 3 years shall be prima facie evidence of abandonment; OR b) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services in connection with which it is used for or otherwise to lose its significance as a mark. Note: Can be rebutted with evidence of use or intent to resume use

Answer 100

- Length of period of non-use? - Nature of intent to resume use? - Timeframe in which intended use will be resumed?

Answer 101

Prima facie case of abandonment here. This Court says service and merchandise is not use, but E-One still had evidence to rebut with intent to resume use of mark on fire trucks. Must show intent to resume use in the reasonably foreseeable future, which is a factual inquiry.

Answer 102

Licensor allows licensee to use mark on any good licensee chooses. Can cause mark to lose significance. Abandoning right by having insufficient control.

Answer 103

Osborne saying naked license, abandoned rights, insufficient control. Burden on party asserting insufficient control. Here had no rights, no control, no contractual control, didn’t work with them, only saw them in court, only look at the pad once. Reliance didn’t work either because didn’t show special relationship.

Answer 104

Any person who, without the consent of the registrant, - Uses in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive - shall be liable in civil action by the registrant (Defendant must use mark in commerce)

Answer 105

Plaintiff must prove that the valid trademark is owned by Plaintiff; and Use of the mark by Defendant in commerce resulting in a likelihood of confusion

Answer 106

When goods compete, an infringement is found if the marks are substantially similar enough to cause confusion - Strength of the mark; - Proximity of the goods; - Similarity of the marks; - Evidence of actual confusion; - Likelihood of expansion of product lines - Defendant's intent in selecting the mark - Type of goods and the degree of care likely to be exercised by the purchaser; - Marketing channels used

Answer 107

- Sponsorship or Affiliation - Initial Interest - Post Sale

Answer 108

- A similarity between the marks causes consumer to believe that the two symbols are related and are sponsored by the same company Think: Warner Bros. v. Gay Toys (Confederate Flag Car Case) - Dukes of Hazard toys, Warner Bros. has licensed other toy manufacturers to produce authorized replicas of the "General Lee" through its subsidiary. It is not necessary that Warner Bros. actually manufacture the toy cars, but merely that a confusion as to manufacture or sponsorship result.

Answer 109

- One party uses a mark similar to the senior mark, to create interest in its own product, even if any confusion is dispelled before a sale occurs. a) Purchaser is “lured” or “diverted” to the alternate product - Infringement can occur when party takes action to create initial interest but never sells good under the auspice of confusion a) Must be able to capitalize on the use of the mark to make sales - In internet cases, 9th Circuit also considers “the labeling and appearance of the advertisement and the surrounding context on the screen displaying the results page...” a) Look to reasonable consumer (nature of goods/type of consumer) i. What would that reasonable consumer believe, based on what s/he saw on webpage?

Answer 110

Purchasing of search-engine keywords, ad space using trademark. Results show both organic and sponsored links. Confusion alleged here is people going to Lens believing it is sponsored by 1-800. Stats don’t really show confusion. Survey also flawed. Also percentages not much, so minimal weight. No confusion.

Answer 111

Multi Time Machine, Inc. (Multi Time) (plaintiff) manufactured military-style watches. Amazon’s website had a search engine for finding products. If a consumer searched for “mtm special ops,” Amazon’s website displayed a list of military-style watches that Amazon did sell. No infringement here, no initial interest confusion. Amazon sufficiently indicated not the plaintiff’s watches, not similar items.

Answer 112

- Third parties who see the product confuse the product - Confusion arises after the sale. e.g. Original buyer knows that the alleged infringer is the source of the goods, BUT someone later viewing the goods might believe that the origin was the TM owner - The “harm” to the TM owner occurs downstream

Answer 113

General Motors sued Tong Yang and Keystone for trademark infringement, alleging that Tong Yang’s grilles caused a likelihood of post-sale confusion. General Motors alleged that the logo-shaped placeholders on Tong Yang’s grilles were still visible after consumers mounted the Chevrolet and GMC emblems onto the grilles, and the placeholders’ low-quality appearance caused harm to the General Motors brand.

Answer 114

Protects trademark holders from actions of others that will diminish or dilute mark or goodwill of selling power. These cases do not involve or require a likelihood of confusion. Instead, the standard is a likelihood of blurring or a likelihood of tarnishment.

Answer 115

1. Is the mark famous? - The duration, extent, and geographic reach of advertising and publicity of the mark - The amount, volume, and geographic extent of sales - The extent of actual public recognition of the mark Whether the mark is registered 2. Is there a likelihood of tarnishment? - Is there an association between the marks that is likely to harm the reputation of the famous mark? - A clear semantic association between a new mark used to promote sex-related products and a famous mark results in rebuttable presumption of dilution 3. Is there a likelihood of blurring the distinctive power of the famous mark? - The degree of similarity of the marks - The degree of inherent or acquired distinctiveness of the senior mark - The extent to which the owner of the famous mark is engaging in substantially exclusive use - The degree of recognition of the famous mark - Whether the user of the mark or trade name intended to create an association with the famous mark - Any actual association between the mark or trade name and the famous mark

Answer 116

The whittling away of the power of the mark by impairing the distinctiveness. If the mark is used by more than one business, it lessens the power of one party’s ability to distinguish against another. Factors: - Similarity between marks - Degree of distinctiveness of the famous mark (strength of mark) - Exclusive use of mark a) This asks if the mark is being used by another Co.; if used it is a weaker case of blurring - Degree of recognition of famous mark - Intent to create an association with the famous mark - Any actual association between the mark and the famous mark

Answer 117

This is harm that is done to the mark. Unreliable or poor quality, scandalous or obscene, creates a negative association in the minds of consumers. Tarnish mark even with no confusion. Association that harms the reputation of the famous mark. Factors: - Association - Similarity - Harm to reputation