Introduction to Intellectual Property Law

🧭 Overview

🧠 One-sentence thesis

The Supreme Court held that systematically copying and selling a competitor's news before its commercial value expires constitutes unfair competition, even though news itself is not copyrightable property.

📌 Key points (3–5)

• What the case protects: Not news as absolute property, but the business of gathering and distributing news as a commercial enterprise between competitors.
• The unfair competition claim: Defendant copied news from bulletins and early editions and sold it to its own clients, "reaping where it has not sown."
• Common confusion: The Court distinguishes between the public's right to share news freely and competitors' duties to each other—the public can share news, but a rival news agency cannot misappropriate it for commercial profit.
• What is prohibited vs. permitted: Bodily copying of news is unfair competition; using news as a "tip" for independent investigation is acceptable.
• Why it matters: The decision protects the incentive to invest in expensive news-gathering infrastructure by preventing free-riding competitors from undermining the business model.

📰 The parties and their business

📰 Associated Press (complainant)

• A cooperative organization under New York law with about 950 member newspapers across the United States.
• Gathers news worldwide through its own resources, exchanges with members, and other means.
• Annual cost: approximately $3,500,000, assessed upon members.
• Members agree to use news exclusively for their specified newspapers and to supply local news only to AP.

📰 International News Service (defendant)

• A New Jersey corporation selling news to about 400 newspapers in the U.S. and abroad.
• Annual operating cost: more than $2,000,000.
• Some of its clients are also AP members.
• The parties are "in the keenest competition" in news distribution.

📰 The news business model

"Prompt knowledge and publication of world-wide news is essential to the conduct of a modern newspaper, and by reason of the enormous expense incident to the gathering and distribution of such news, the only practical way in which a proprietor of a newspaper can obtain the same is, either through cooperation with a considerable number of other newspaper proprietors in the work of collecting and distributing such news, and the equitable division with them of the expenses thereof, or by the purchase of such news from some existing agency engaged in that business."

• News value depends on promptness, accuracy, impartiality, and freshness.
• The business serves millions of readers at low individual cost but sufficient aggregate revenue to cover gathering and distribution expenses plus profit.
• Example: Foreign news arrives at the Atlantic seaboard (mainly New York) and is distributed east to west; telegraph and telephone transmission is faster than the earth's rotation, enabling western papers to publish news taken from eastern editions.

⚖️ The three alleged wrongs

⚖️ Bribing employees and inducing breach

• First claim: Bribing employees of AP member newspapers to furnish news before publication.
• Second claim: Inducing AP members to violate by-laws and permit defendant to obtain news early.
• The District Court granted a preliminary injunction on these two grounds; both parties accepted this part of the ruling.

⚖️ Copying from bulletins and early editions (the contested issue)

• Third claim: Systematically copying news from bulletin boards and early editions of AP newspapers, then selling it (either verbatim or rewritten) to defendant's clients.
• The District Court initially refused to enjoin this practice, calling it "unfair trade" but a "legal question of first impression."
• The Circuit Court of Appeals modified the injunction to prohibit "any bodily taking of the words or substance of complainant's news until its commercial value as news had passed away."
• This is the only issue argued before the Supreme Court.

🚫 Why news is not copyrightable property

🚫 The dual character of news

"In considering the general question of property in news matter, it is necessary to recognize its dual character, distinguishing between the substance of the information and the particular form or collocation of words in which the writer has communicated it."

• Literary form: A news article may have literary quality and be copyrightable as a written work under the Copyright Act.
• News element: The information about current events is not the writer's creation; it is "a report of matters that ordinarily are publici juris; it is the history of the day."
• The Constitution's copyright clause was not intended to give the first reporter of a historic event "the exclusive right for any period to spread the knowledge of it."

🚫 News as common property

• Complainant's news is not copyrighted (the Court says it could not be copyrighted in practice due to the large volume of daily dispatches).
• "The news of current events may be regarded as common property."
• "We may and do assume that neither party has any remaining property interest as against the public in uncopyrighted news matter after the moment of its first publication."
• Don't confuse: The Court is not saying news has no value—it is saying news cannot be owned like traditional property against the public.

🔄 The unfair competition theory

🔄 Quasi-property between competitors

"Regarding the news, therefore, as but the material out of which both parties are seeking to make profits at the same time and in the same field, we hardly can fail to recognize that for this purpose, and as between them, it must be regarded as quasi property, irrespective of the rights of either as against the public."

• The Court does not need to affirm "any general and absolute property in the news as such."
• Instead, it protects "the right to acquire property by honest labor or the conduct of a lawful business."
• News is "stock in trade, to be gathered at the cost of enterprise, organization, skill, labor, and money, and to be distributed and sold to those who will pay money for it, as for any other merchandise."
• Example: Both AP and INS invest millions annually to gather and distribute news; for the purpose of their competing businesses, news functions as quasi-property.

🔄 The wrong: reaping where one has not sown

"Defendant, by its very act, admits that it is taking material that has been acquired by complainant as the result of organization and the expenditure of labor, skill, and money, and which is salable by complainant for money, and that defendant in appropriating it and selling it as its own is endeavoring to reap where it has not sown."

• Defendant copies news from AP bulletins and early editions and sells it to competing newspapers.
• This "amounts to an unauthorized interference with the normal operation of complainant's legitimate business precisely at the point where the profit is to be reaped."
• Defendant gains a "special advantage" because it is "not burdened with any part of the expense of gathering the news."
• The Court characterizes this as "unfair competition in business."

🔄 Why the public's right does not excuse defendant

• Defendant argued: once AP publishes news on bulletin boards or in newspapers, it becomes "common possession of all" and anyone can use it for any purpose, including profit.
• The Court rejects this: "The fault in the reasoning lies in applying as a test the right of the complainant as against the public, instead of considering the rights of complainant and defendant, competitors in business, as between themselves."
• A newspaper purchaser may share news "gratuitously, for any legitimate purpose not unreasonably interfering with complainant's right to make merchandise of it."
• But "to transmit that news for commercial use, in competition with complainant—which is what defendant has done and seeks to justify—is a very different matter."
• Don't confuse: The public can freely share news; a commercial competitor cannot misappropriate it to undercut the gatherer's business.

🛡️ Scope and limits of the injunction

🛡️ What the injunction does and does not do

• Does not give AP a monopoly on gathering or distributing news.
• Does not prevent reproduction of news articles (which would require copyright compliance).
• Does "postpone participation by complainant's competitor in the processes of distribution and reproduction of news that it has not gathered."
• Does prevent the competitor "from reaping the fruits of complainant's efforts and expenditure, to the partial exclusion of complainant."

🛡️ The time limit: "until commercial value has passed away"

• The Circuit Court of Appeals restrained taking news "until its commercial value as news to the complainant and all of its members has passed away."
• The Supreme Court acknowledges this language is "indefinite" but declines to modify it at the preliminary stage.
• The Court suggests a more specific injunction might "confine the restraint to an extent consistent with the reasonable protection of complainant's newspapers, each in its own area and for a specified time after its publication."
• Example: The injunction would prevent INS from copying AP's morning edition in New York and telegraphing it to western papers that publish before AP's western members, but would not prevent use after the news has lost its commercial freshness.

🛡️ Abandonment argument rejected

• Defendant argued that publishing news in the first newspaper constitutes abandonment to the public for all purposes.
• The Court rejects this: "Abandonment is a question of intent, and the entire organization of the Associated Press negatives such a purpose."
• AP's by-laws show that publication by each member is "not by any means an abandonment of the news to the world for any and all purposes, but a publication for limited purposes; for the benefit of the readers of the bulletin or the newspaper as such; not for the purpose of making merchandise of it as news."
• If indiscriminate copying were allowed, "it would render publication profitless, or so little profitable as in effect to cut off the service by rendering the cost prohibitive in comparison with the return."

🔍 Distinguishing lawful "tips" from unlawful copying

🔍 Two kinds of use

The Court recognizes a distinction between:

Practice	Description	Legality
Bodily appropriation	Copying a news article verbatim or rewritten, without independent investigation or expense	Unfair competition (enjoined)
Using news as a "tip"	Taking a rival's news as a lead to investigate independently; if verified, selling the independently gathered news	Acceptable (both parties admit doing this)

🔍 The tip practice

• Both AP and INS admit to using each other's news as tips for independent investigation.
• The District Court found this practice was "adopted by both parties in accordance with common business usage, in the belief that their conduct was technically lawful."
• The Circuit Court of Appeals called the tip habit "incurably journalistic" and found "no difficulty in discriminating between the utilization of 'tips' and the bodily appropriation of another's labor."
• English copyright cases support this: a competitor may use a prior publication "to verify his own calculations and results when obtained" but cannot "take the results of the labour and expense incurred by another for the purposes of a rival publication."
• Example: If INS reads in an AP bulletin that a battle occurred, INS may investigate the battle independently and publish its own account; INS may not simply copy AP's account and sell it.

🔍 Unclean hands defense fails

• Defendant invoked the "unclean hands" doctrine, claiming AP also pirated INS's news.
• The District Court found that AP did not engage in bodily appropriation of INS's news.
• Both courts found that using tips did not constitute unclean hands, since both parties did it and considered it lawful.
• The Supreme Court agrees: taking tips "is not shown to be such as to constitute an unconscientious or inequitable attitude towards its adversary so as to fix upon complainant the taint of unclean hands."

🎯 Additional elements of unfair competition

🎯 Misrepresentation and false pretense

• Defendant frequently rewrites AP's news articles (the Court notes this "carries its own comment").
• Defendant habitually fails to give credit to AP.
• "The entire system of appropriating complainant's news and transmitting it as a commercial product to defendant's clients and patrons amounts to a false representation to them and to their newspaper readers that the news transmitted is the result of defendant's own investigation in the field."
• The Court says these elements "accentuate the wrong" but "are not the essence of it."
• The essence is misappropriation, not misrepresentation: "Instead of selling its own goods as those of complainant, it substitutes misappropriation in the place of misrepresentation, and sells complainant's goods as its own."

🎯 Broader than traditional unfair competition

• Traditional unfair competition involves "palming off" one's goods as those of a competitor.
• The Court holds that "the right to equitable relief is not confined to that class of cases."
• "The fraud upon complainant's rights is more direct and obvious" here.
• Don't confuse: This case expands unfair competition beyond trademark-style confusion to include misappropriation of a competitor's costly efforts.

🧭 Overview

🧠 One-sentence thesis

Locke argues that individuals acquire property rights in commonly held resources by mixing their labor with those resources, transforming them from the common state into private property without requiring everyone's consent.

📌 Key points (3–5)

• The starting problem: God gave the earth to all mankind in common, yet individuals must somehow acquire private property in things to use them.
• The labor theory solution: when a person mixes their labor with something from the common state of nature, that labor—which belongs unquestionably to the laborer—makes the thing their property.
• No consent needed: appropriation does not require the express consent of all other commoners; otherwise, humanity would starve despite abundance.
• Common confusion: the moment of appropriation—Locke clarifies it happens at the first act of labor (e.g., gathering), not later stages like eating or digesting.
• The proviso: this appropriation is justified "at least where there is enough, and as good, left in common for others."

🌍 The foundational problem: common ownership vs. private use

🌍 God's gift to mankind in common

• Locke begins with the premise that God gave the earth and its resources to all humanity in common.
• This creates a puzzle: if everything belongs to everyone, how can any individual ever claim exclusive ownership?
• Without private property, resources remain unusable for individual survival—fruit and venison cannot nourish anyone if they remain in the common state.

🔑 Why appropriation is necessary

"Being given for the use of men, there must of necessity be a means to appropriate them some way or other, before they can be of any use, or at all beneficial to any particular man."

• Resources must become "a part of" a particular person to support their life.
• Example: the wild Indian who gathers fruit must make it his before it can nourish him; it cannot remain common and still fulfill its purpose.

🛠️ The labor theory of property

🛠️ Self-ownership as the foundation

"Every man has a property in his own person: this no body has any right to but himself. The labour of his body, and the work of his hands, we may say, are properly his."

• Locke's argument starts with an uncontroversial claim: each person owns themselves.
• Because you own your body, you also own your labor—the work your body performs.

🔗 Mixing labor with common resources

• When a person removes something from the state nature left it in and mixes their labor with it, they "join to it something that is his own."
• This labor "annexes" something to the resource that excludes the common right of others.
• The key mechanism: labor transforms the resource's status from common to private.

Example from the text:

• Picking up acorns under an oak tree appropriates them to the gatherer.
• The labor of gathering "put a distinction between them and common" and "added something to them more than nature...had done."

⏱️ When does appropriation happen?

Locke addresses a potential confusion: at what moment does the thing become yours?

• Not when you digest it.
• Not when you eat it.
• Not when you cook it.
• Not when you bring it home.
• At the first gathering: "if the first gathering made them not his, nothing else could."

This clarifies that the act of labor itself—the initial removal from the common state—is what creates the property right.

🤝 No consent required from all commoners

🤝 Why universal consent is impractical

• Locke argues that requiring "the consent of all mankind" to appropriate common resources would be absurd.
• If such consent were necessary, "man had starved, notwithstanding the plenty God had given him."
• The taking of a part of the commons "does not depend on the express consent of all the commoners."

📋 Examples of appropriation without consent

Locke provides concrete illustrations:

Resource	Labor performed	Result
Grass	My horse has bit it	Becomes my property
Turfs	My servant has cut them	Become my property
Ore	I have dug it from common ground	Becomes my property

• In each case, "the labour that was mine, removing them out of that common state they were in, hath fixed my property in them."
• No "assignation or consent of any body" is needed.

⚖️ The implicit limitation (proviso)

• Locke includes an important qualification: this appropriation is justified "at least where there is enough, and as good, left in common for others."
• This suggests a boundary condition: labor creates property rights only when appropriation does not harm others by depriving them of similar opportunities.
• Don't confuse: this is not a requirement to ask permission; it is a constraint on how much one may take.

🔄 From common to private: the transformation mechanism

🔄 What labor adds

• Nature provides resources in a common state.
• Labor "added something to them more than nature, the common mother of all, had done."
• This addition is what justifies the transition from common to private right.

🚫 Distinguishing use from ownership

• The excerpt emphasizes that commons "remain so by compact" are "of no use" until someone takes and removes a part.
• Use requires appropriation; mere existence in the common state benefits no one.
• Example: fruit on a tree in the wild nourishes no one until someone gathers it—the act of gathering is what makes it useful and makes it property.

🧩 The role of labor as the unifying principle

• Labor is "the unquestionable property of the labourer."
• Because labor belongs to the person, anything labor is "once joined to" also belongs to that person.
• This creates a logical chain: self-ownership → ownership of labor → ownership of labor-mixed resources.

🧭 Overview

🧠 One-sentence thesis

Government should grant temporary exclusive privileges (patents) to inventors because they are the most effective, least burdensome reward that encourages innovation without costing the public treasury, and without them inventors would be driven out by imitators who bear none of the costs of discovery.

📌 Key points (3–5)

• Core argument for patents: Exclusive privileges are necessary so that inventors can reap what they sow; without legal protection, imitators who incur no costs will undercut the inventor and destroy the incentive to innovate.
• Why patents are the best reward: They produce infinite effect at zero cost to the government, are proportioned to the invention's value, and are natural (the inventor asks only for time to recover investment).
• The alternative is universal loss: Refusing the patent means the invention benefits no one—neither during the term nor after—because it will never be created or disclosed.
• Common confusion: Patents vs. established property—new inventions need protection against imitators just as existing manufactures need protection against thieves; both secure the right to enjoy the fruits of labor.
• Broader government role: Beyond patents, government should publish trade processes and prices, grant prizes, encourage science, and prevent trademark forgery to support innovation and skill.

🎯 The core problem: imitators vs. inventors

🌱 The sowing-and-reaping metaphor

Bentham frames invention as agricultural labor:

• "He who has no hope that he shall reap, will not take the trouble to sow."
• The inventor invests time and expense to create something new.
• But "that which one man has invented, all the world can imitate."
• Without legal protection, the inventor is "almost always driven out of the market by his rival."

Why the imitator wins:

• The imitator obtains the discovery "without any expense."
• The imitator can sell at a lower price because they bear none of the invention costs.
• The inventor loses "all his deserved advantages."

Example: An inventor spends years developing a new manufacturing process. A rival observes the process, copies it immediately, and sells the product cheaper because the rival paid nothing for research. The inventor cannot compete and abandons the market.

🔒 Patents as protection against imitators

"In new inventions, protection against imitators is not less necessary than in established manufactures protection against thieves."

• The analogy: just as property law protects existing goods from theft, patent law must protect new inventions from imitation.
• Don't confuse: This is not about protecting ideas in the abstract; it is about securing the inventor's ability to recover investment and profit from disclosure.

💡 Why patents are the optimal reward

🏆 Comparison to other rewards

Bentham calls the exclusive privilege "of all rewards the best proportioned, the most natural, and the least burthensome."

Feature	What it means
Best proportioned	The reward scales with the invention's value—popular inventions generate more profit, minor ones less.
Most natural	The inventor asks only for temporary exclusivity, not a direct subsidy or prize from the state.
Least burthensome	It costs the government nothing; no public funds are spent.

♾️ Infinite effect at zero cost

• "It produces an infinite effect, and it costs nothing."
• The "infinite effect" refers to the long-term benefit: after the patent term, the invention becomes public and benefits everyone forever.
• The government grants only a legal right, not money or resources.

🗣️ The inventor's bargain

Bentham presents the inventor's request:

• "Grant me fifteen years, that I may reap the fruit of my labours; after this term, it shall be enjoyed by all the world."
• The inventor offers a deal: temporary exclusivity in exchange for eventual public access.

What happens if the sovereign refuses?

• "It will be enjoyed by no one, neither for fifteen years nor afterwards."
• "Everybody will be disappointed—inventors, workmen, consumers—everything will be stifled, both benefit and enjoyment."
• The invention is never created or disclosed, so society loses both the short-term and long-term gains.

Example: A potential inventor considers developing a new tool but realizes that without patent protection, competitors will copy it immediately. The inventor decides not to invest the effort. The tool is never made, workers never gain the skills to produce it, and consumers never benefit from it—not during the patent term and not after.

🛠️ Broader government measures to encourage innovation

Bentham lists seven actions government should take; patents are number six. The others support knowledge diffusion and fair competition.

📚 Encouraging science and knowledge

1. Encourage the study of natural philosophy: Science and practice are separated by difficulty; government should bridge this gap.
2. Institute prizes for discoveries and experiments: Direct rewards for specific achievements.
3. Publish trade processes: The French government is praised for making manufacturing methods public, benefiting humanity.
4. Observe and publish foreign practices: Learn from other countries and share that knowledge.

💰 Publishing prices

5. Cause the price of different articles to be published:
   • "The price of an article is an extra reward for whoever can manufacture or furnish it at a cheaper rate."
   • Transparency creates incentives for efficiency and competition.

🏷️ Preventing trademark forgery

7. Class trademark fraud with forgery:
   • "The injustice done by the artisan who puts upon his own productions the mark of another" should be a crime.
   • Establish a register where artisans can record their marks.
   • Purpose: "To secure the privilege which nature has established in favour of skill."
   • Skill is earned through labor and cannot be abused; the law should protect it.

Don't confuse: Trademark protection (marks of origin and skill) with patent protection (exclusive rights to inventions). Both prevent deception and secure deserved advantages, but they protect different things.

🧩 Underlying principles

🌾 Labor and property

Bentham's argument echoes the labor theory of property (referenced in the Locke excerpt at the start of the text, though not part of Bentham's own words):

• Labor removes something from the common state and fixes property in it.
• The inventor's labor creates something new; the patent secures the property right in that creation.

⚖️ Natural privilege vs. legal privilege

• "The privilege which nature has established in favour of skill" (in the trademark discussion) suggests that skill naturally deserves reward.
• Patents and trademarks are legal mechanisms to enforce what is already a natural entitlement based on effort and talent.

🚫 The cost of refusal

Bentham emphasizes the negative outcome of denying patents:

• Not a zero-sum redistribution (inventor loses, public gains), but a total loss (invention never happens).
• This is a key rhetorical move: the choice is not between private monopoly and public access, but between temporary monopoly followed by public access versus nothing at all.

🧭 Overview

🧠 One-sentence thesis

The power to grant authors and inventors exclusive rights for limited times serves both individual claims and the public good, and the States cannot effectively provide such protection separately.

📌 Key points (3–5)

• Constitutional power: The power to secure exclusive rights to authors and inventors for limited times promotes science and useful arts.
• Dual benefit: The public good and individual claims coincide in granting these exclusive rights.
• State inadequacy: Individual States cannot separately make effectual provisions for copyright or patent protection.
• Common confusion: Don't confuse Madison's position (exclusive rights serve public good) with Jefferson's skepticism about natural rights to inventions—the excerpt includes both views.
• Practical recognition: Most States had already anticipated this federal decision by passing laws at Congress's instance.

📜 Madison's argument for federal IP power

📜 The constitutional provision

A power "to promote the progress of science and useful arts, by securing, for a limited time, to authors and inventors, the exclusive right to their respective writings and discoveries."

• This is the constitutional language Madison is defending.
• The power is framed as instrumental: its purpose is to promote progress, not merely to reward individuals.
• Two key limitations built in: "limited time" and specific to "respective writings and discoveries."

⚖️ Utility and legal foundation

• Madison states the utility of this power "will scarcely be questioned."
• He notes that copyright of authors has been "solemnly adjudged, in Great Britain, to be a right of common law."
• He argues that the right to useful inventions "seems with equal reason to belong to the inventors."
• The phrase "with equal reason" suggests parity between copyright and patent protection.

🤝 Alignment of public and private interests

🤝 Coinciding claims

• Madison's central normative claim: "The public good fully coincides in both cases with the claims of individuals."
• This is not a zero-sum trade-off; both parties benefit from the same arrangement.
• The exclusive right incentivizes creation and invention, which serves the public by producing more works and discoveries.

🏛️ Why federal action is necessary

• "The States cannot separately make effectual provisions for either of the cases."
• Individual state laws would be insufficient because:
  • Writings and inventions cross state boundaries.
  • Uniform protection requires federal coordination.
• Madison notes that "most of them have anticipated the decision of this point, by laws passed at the instance of Congress."
  • This shows States recognized their own limitations and looked to federal guidance.

🔄 Contrasting view: Jefferson's skepticism

🔄 Natural rights questioned

The excerpt includes a letter from Thomas Jefferson that challenges the natural-rights foundation for IP:

"It has been pretended by some, (and in England especially,) that inventors have a natural and exclusive right to their inventions, and not merely for their own lives, but inheritable to their heirs."

• Jefferson calls this a "pretense," especially prevalent in England.
• He questions whether any property originates from nature at all.
• He finds it "singular to admit a natural and even an hereditary right to inventors" when even land ownership is debated.

💭 Ideas as non-exclusive by nature

Jefferson argues ideas have unique characteristics that resist exclusive ownership:

"If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it."

• An idea can be exclusively possessed only while kept secret.
• Once disclosed, it "forces itself into the possession of every one."
• The receiver "cannot dispossess himself of it"—ideas are non-rivalrous.
• Jefferson notes: "Its peculiar character, too, is that no one possesses the less, because [another possesses it]"—one person's use does not diminish another's.

🆚 How to distinguish Madison from Jefferson

Aspect	Madison (Federalist 43)	Jefferson (Letter to McPherson)
Foundation	Accepts that inventors have claims; focuses on utility and public good	Questions natural-rights foundation; emphasizes ideas' non-exclusive nature
Tone	Affirmative: utility "will scarcely be questioned"	Skeptical: calls natural-rights claims a "pretense"
Focus	Practical need for federal power and alignment of interests	Philosophical nature of ideas and property
Implication	Exclusive rights are justified by their effects	Exclusive rights (if any) are social constructs, not natural entitlements

• Don't confuse: Both may support some form of IP protection, but Madison emphasizes its unquestioned utility and public benefit, while Jefferson questions the natural-rights rationale and stresses that ideas are inherently shareable.

🧩 Background context: Bentham's utilitarian view

🧩 Inventor's dilemma without protection

The excerpt begins with a passage from Jeremy Bentham that sets up the problem:

• "He who has no hope that he shall reap, will not take the trouble to sow."
• "That which one man has invented, all the world can imitate."
• Without legal protection, "the inventor would almost always be driven out of the market by his rival, who finding himself, without any expense, in possession of a discovery which has cost the inventor much time and expense, would be able to deprive him of all his deserved advantages, by selling at a lower price."

Example: An inventor spends time and money developing a new process; a rival copies it without cost and undercuts the inventor's price, driving the inventor out of the market.

🎁 Exclusive privilege as optimal reward

Bentham argues that an exclusive privilege is "of all rewards the best proportioned, the most natural, and the least burthensome":

• "It produces an infinite effect, and it costs nothing."
• The inventor asks: "Grant me fifteen years, that I may reap the fruit of my labours; after this term, it shall be enjoyed by all the world."
• If the sovereign refuses, "It will be enjoyed by no one, neither for fifteen years nor afterwards: everybody will be disappointed—inventors, workmen consumers—everything will be stifled, both benefit and enjoyment."

🏷️ Trademark protection analogy

Bentham also discusses protecting artisan marks:

• "To class with the crime of forgery the injustice done by the artisan who puts upon his own productions the mark of another."
• He proposes "a register, in which every artisan might make an entry of his mark."
• This would "secure the privilege which nature has established in favour of skill, and which the legislator ought to maintain."
• Skill "can never be obtained without labour, and it can never be abused."

🧭 Overview

🧠 One-sentence thesis

Jefferson argues that ideas cannot be natural property because they spread without diminishing and society grants exclusive rights to inventions only as a policy choice to encourage utility, not because inventors have an inherent claim.

📌 Key points (3–5)

• Jefferson's core claim: inventors do not have a natural or hereditary right to their inventions; exclusive rights are a social grant, not a natural entitlement.
• Why ideas differ from physical property: an idea, once shared, spreads to everyone without reducing the original holder's possession—like lighting one candle from another.
• The purpose of exclusive rights: society may grant monopolies on profits from inventions to encourage useful innovation, but this is discretionary policy, not obligation.
• Common confusion: natural rights vs. social grants—even physical land ownership is a product of social law, not nature; claiming natural rights for ideas would be even more peculiar.
• Empirical observation: England was nearly alone in granting general legal monopolies on ideas; other nations that refuse such monopolies remain equally inventive.

🌱 The nature of ideas vs. physical property

🏞️ Physical property as social construct

• Jefferson notes that serious thinkers agree no individual has a natural right to an acre of land.
• By universal law, movable or fixed things belong to all in common; temporary possession belongs to whoever occupies it, but ownership reverts when occupation ends.
• Stable ownership is the gift of social law, granted late in societal development.
• Don't confuse: possession (temporary use) vs. ownership (stable, legally recognized property).

💡 Ideas as inherently non-exclusive

An idea is "the fugitive fermentation of an individual brain" that cannot be claimed as exclusive and stable property by natural right.

Jefferson's reasoning:

• An individual possesses an idea exclusively only while keeping it secret.
• The moment it is divulged, it forces itself into everyone's possession; the receiver cannot dispossess themselves of it.
• Crucially: no one possesses the less because every other possesses the whole of it.

Example: "He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me."

🔥 The candle metaphor

Jefferson compares ideas to fire and air:

• Like fire: expansible over all space without lessening density at any point.
• Like air: we breathe, move, and live in it; it is incapable of confinement or exclusive appropriation.
• Nature designed ideas to spread freely for "the moral and mutual instruction of man, and improvement of his condition."

🏛️ Exclusive rights as social policy, not natural entitlement

🎯 Society's discretionary grant

• Inventions cannot, in nature, be a subject of property.
• Society may give an exclusive right to the profits arising from inventions as an encouragement to pursue useful ideas.
• This grant is made "according to the will and convenience of the society, without claim or complaint from anybody."
• The decision to grant or withhold such rights is a policy choice, not a response to a natural entitlement.

🚫 Rejection of natural and hereditary rights

Jefferson addresses the claim (especially in England) that inventors have:

• A natural right to their inventions.
• An exclusive right.
• A right inheritable to their heirs.

His counterargument:

• It is already debatable whether any property originates from nature.
• It would be "singular" (odd, inconsistent) to admit a natural and hereditary right to inventors when even land ownership is a social construct.
• If physical property is not natural, claiming natural rights for "the fugitive fermentation of an individual brain" is even less defensible.

🌍 Comparative evidence and practical outcomes

🇬🇧 England's uniqueness

• Jefferson states that England was "the only country on earth which ever, by a general law, gave a legal right to the exclusive use of an idea."
• Other countries sometimes grant monopolies "in a great case, and by a special and personal act," but not as a general rule.

⚖️ Monopolies: costs vs. benefits

• Other nations' view: monopolies of invention produce more embarrassment than advantage to society.
• Empirical observation: nations that refuse monopolies of invention are as fruitful as England in new and useful devices.
• Implication: exclusive rights are not necessary for innovation; their utility is contested, not self-evident.

📜 Constitutional context (U.S. Constitution, Article 1, Section 8, Clause 8)

🏛️ Congressional power

"The Congress shall have power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

Key features:

• The power is granted to Congress (a social/political body, not nature).
• The purpose is instrumental: "to promote the Progress of Science and useful Arts" (a utilitarian goal).
• Rights are for limited Times (not perpetual or hereditary).
• The Constitution frames this as a power (discretionary authority), not a duty or recognition of natural rights.

🔗 Connection to Jefferson's argument

• The Constitution's language aligns with Jefferson's view: exclusive rights are a policy tool to encourage progress, not an acknowledgment of inventors' natural entitlements.
• The "limited Times" provision reinforces that these rights are temporary social grants, not permanent natural property.

🧭 Overview

🧠 One-sentence thesis

The Constitution grants Congress the power to create intellectual property laws that give authors and inventors exclusive rights for limited times in order to promote scientific and artistic progress.

📌 Key points (3–5)

• Constitutional authority: Article 1, Section 8, Clause 8 provides the legal basis for Congress to enact patent and copyright laws.
• The trade-off: the government grants exclusive rights to inventors in exchange for public disclosure of invention details.
• Time limits are mandatory: the Constitution specifies "limited Times," not perpetual ownership.
• Purpose over ownership: the goal is to "promote the Progress of Science and useful Arts," not to create natural property rights in ideas.
• Common confusion: ideas themselves cannot be property "in nature" (as the excerpt's opening letter argues), but society may choose to grant exclusive rights to profits as an incentive.

📜 Constitutional foundation

📜 The Intellectual Property Clause

"The Congress shall have power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

• This clause is commonly called the "Intellectual Property Clause" or the "Patent and Copyright Clause."
• It appears in Article I, Section 8, Clause 8 of the U.S. Constitution.
• It is the source of Congress's authority to create patent and copyright laws.

🎯 Purpose: promoting progress, not rewarding ownership

• The clause does not say "to protect inventors' natural rights" or "to reward creativity."
• Instead, it explicitly states the goal: to promote the Progress of Science and useful Arts.
• The exclusive rights are a means to that end, not an end in themselves.
• Example: Congress grants a patent not because the inventor "owns" the idea, but because the incentive encourages useful innovation.

⏳ Limited times requirement

• The Constitution mandates that exclusive rights last only for "limited Times."
• This means perpetual or indefinite monopolies are not permitted under this clause.
• The time limit reflects a balance: enough incentive to encourage disclosure, but not so long that society is permanently restricted.

🔄 The exchange: exclusivity for disclosure

🔄 What the government grants

• A patent gives an exclusive right to practice a novel invention for a set period.
• "Exclusive" means the inventor can prevent others from making, using, or selling the invention during that time.

🔄 What the inventor must provide

• In exchange, the inventor must publicly disclose the details of the invention.
• This disclosure allows society to learn from and build upon the invention once the patent expires.
• Don't confuse: the patent is not a reward for secrecy; it is a trade—temporary monopoly for permanent knowledge sharing.

💡 Ideas vs. property: the philosophical backdrop

💡 Ideas are not naturally property

The excerpt opens with a letter (attributed to Thomas Jefferson) arguing:

• Ideas, unlike physical objects, can be shared without being diminished.
• Example: "He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me."
• Nature designed ideas to spread freely, "like fire, expansible over all space, without lessening their density in any point."
• Therefore, "Inventions then cannot, in nature, be a subject of property."

💡 Society may choose to grant exclusive rights

• Even though ideas are not naturally property, society may give an exclusive right to the profits arising from them.
• This is done "as an encouragement to men to pursue ideas which may produce utility."
• Crucially, "this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody."
• In other words: granting patents is a policy choice, not a recognition of pre-existing natural rights.

🌍 Historical context: England's approach

• According to the letter, England was "the only country on earth which ever, by a general law, gave a legal right to the exclusive use of an idea."
• Other countries sometimes granted monopolies "in a great case, and by a special and personal act," but not as a general rule.
• Many nations believed "these monopolies produce more embarrassment than advantage to society."
• The letter notes that "nations which refuse monopolies of invention, are as fruitful as England in new and useful devices," suggesting patents are not the only path to innovation.

🏛️ Legislative history

🏛️ First patent law: 1790

• The first major U.S. patent legislation was enacted in 1790.
• Most of its core elements have remained relatively unchanged over more than two centuries.

🏛️ Modern framework: 1952 and 2011

• Congress has passed several updated versions of patent law.
• The current legal framework is based on the 1952 Patent Act.
• A significant amendment, the America Invents Act, was enacted in 2011.

🔧 Types of patents

🔧 Three categories

The excerpt identifies three types of patents:

Type	What it covers
Utility patents	Novel inventions (the most common type; what most people think of as "patents")
Design patents	New, original, and ornamental designs for articles of manufacture
Plant patents	Distinct and new varieties of plant that are invented or discovered and asexually reproduced

🔧 Utility patents are the primary focus

• Utility patents are the most common.
• They are the type associated with major technological developments: the telephone, the lightbulb, the airplane, the polymerase chain reaction.
• Patent lawyers view patents as "an important mechanism for technological advancement over the last two centuries," though the excerpt notes this "may be somewhat of an overstatement."

🧭 Overview

🧠 One-sentence thesis

Patent exhaustion allows a purchaser to use or resell a patented article after an authorized sale, but it does not permit the purchaser to make new copies of the patented invention, even when the article naturally self-replicates like seeds.

📌 Key points (3–5)

• What patent exhaustion does: terminates the patentee's rights to control use or resale of the particular item sold, but leaves intact the right to prevent making new copies.
• The "particular article" limit: exhaustion applies only to the specific item sold, not to reproductions or new generations created from it.
• Seeds and self-replication: even though seeds naturally reproduce when planted, the farmer who plants, tends, and harvests new generations is "making" new patented articles, not merely "using" the original purchase.
• Common confusion: "using" a patented item vs. "making" a new one—planting a seed and harvesting its offspring is reproduction (making), not just use, so exhaustion does not apply.
• Why it matters: without this limit, a patent would protect only the first sale, eliminating the inventor's reward and reducing innovation incentives.

📜 Patent structure and foundational statutes

📄 What a patent document contains

• The excerpt notes that U.S. Patent No. RE 39,247 is unusually long (158 pages unedited) and has 149 claims; most patents are much shorter and have around 20 claims.
• This patent went through a "reissue" process, in which the original patent was surrendered to the patent office so the applicant could make changes.
• For the course, the document is referred to as "the Monsanto patent."

⚖️ Core statutory provisions

The excerpt lists three foundational statutes:

Statute	What it provides
35 U.S.C. § 101	Who may obtain a patent: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor."
35 U.S.C. § 154(a)	What a patent contains: a grant of "the right to exclude others from making, using, offering for sale, or selling the invention" in the U.S., or importing it; the term is 20 years from the filing date.
35 U.S.C. § 271(a)	The basic infringement cause of action: "whoever without authority makes, uses, offers to sell, or sells any patented invention … infringes the patent."

• Don't confuse: a patent does not grant the right to make or use the invention; it grants only the right to exclude others from doing so.

🌱 The Monsanto Roundup Ready case

🧬 The patented invention

Monsanto invented a genetic modification that enables soybean plants to survive exposure to glyphosate, the active ingredient in many herbicides (including Monsanto's own Roundup).

• Monsanto markets soybean seed containing this altered genetic material as "Roundup Ready seed."
• Farmers planting that seed can use a glyphosate-based herbicide to kill weeds without damaging their crops.
• Two patents cover various aspects of Roundup Ready technology, including a seed incorporating the genetic alteration.

📝 The licensing agreement

• Monsanto sells Roundup Ready seeds to growers who agree to a special licensing agreement.
• The agreement permits planting the purchased seeds in one (and only one) season.
• The farmer can consume the resulting crop or sell it as a commodity (usually to a grain elevator or agricultural processor).
• Restrictions: the farmer may not save any harvested soybeans for replanting, nor supply them to anyone else for that purpose.
• Why these restrictions exist: glyphosate resistance comes from the seed's genetic material, so the trait is passed on from the planted seed to the harvested soybeans; a single Roundup Ready seed can grow a plant containing dozens of genetically identical beans, each of which can grow another such plant, and so on.

🚜 What Bowman did

First crop (compliant):

• Bowman purchased Roundup Ready seed each year from a Monsanto-affiliated company for his first crop.
• He used all that seed for planting and sold his entire crop to a grain elevator.

Second crop (disputed):

• Bowman thought late-season planting was "risky" and did not want to pay the premium price for Roundup Ready seed.
• He went to a grain elevator, purchased "commodity soybeans" intended for human or animal consumption, and planted them in his fields.
• Those soybeans came from prior harvests of other local farmers; because most of those farmers also used Roundup Ready seed, Bowman anticipated that many of the purchased soybeans would contain Monsanto's patented technology.
• When he applied a glyphosate-based herbicide to his fields, a significant proportion of the new plants survived, confirming they had the Roundup Ready trait.
• Bowman saved seed from that crop to use in his late-season planting the next year—and repeated this process for eight successive crops.
• Each year, he planted saved seed (sometimes adding more soybeans bought from the grain elevator), sprayed his fields with glyphosate to kill weeds and any non-resistant plants, and produced a new crop of glyphosate-resistant soybeans.

⚖️ The lawsuit and lower court rulings

• Monsanto sued Bowman for infringing its patents on Roundup Ready seed.
• Bowman raised patent exhaustion as a defense, arguing that Monsanto could not control his use of the soybeans because they were the subject of a prior authorized sale (from local farmers to the grain elevator).
• The District Court rejected that argument and awarded Monsanto $84,456 in damages.
• The Federal Circuit affirmed, reasoning that patent exhaustion did not protect Bowman because he had "created a newly infringing article"; the "right to use" a patented article does not include "the right to construct an essentially new article on the template of the original."

🔒 The patent exhaustion doctrine

🔓 What exhaustion allows

Patent exhaustion: "the initial authorized sale of a patented item terminates all patent rights to that item."

• The sale "exhaust[s] the [patentee's] monopoly" in that item and confers on the purchaser, or any subsequent owner, "the right to use [or] sell" the thing as he sees fit.
• Rationale: "the purpose of the patent law is fulfilled with respect to any particular article when the patentee has received his reward … by the sale of the article"; once that purpose is realized, the patent law affords no basis for restraining the use and enjoyment of the thing sold.

Example: Under patent exhaustion, Bowman could resell the patented soybeans he purchased from the grain elevator; he could also consume the beans himself or feed them to his animals. Monsanto would have no business interfering in those uses.

🚫 What exhaustion does not allow

• The doctrine "restricts a patentee's rights only as to the 'particular article' sold"; it leaves untouched the patentee's ability to prevent a buyer from making new copies of the patented item.
• "The purchaser of the [patented] machine … does not acquire any right to construct another machine either for his own use or to be vended to another."
• A purchaser's "reconstruction" of a patented machine "would impinge on the patentee's right 'to exclude others from making' … the article."
• Why: "a second creation" of the patented item "call[s] the monopoly, conferred by the patent grant, into play for a second time"; the patent holder has "received his reward" only for the actual article sold, and not for subsequent recreations of it.
• If the purchaser could make and sell endless copies, the patent would effectively protect the invention for just a single sale.

Don't confuse "use" with "make":

• Reproducing a patented article no doubt "uses" it after a fashion, but the Court has always drawn the boundaries of exhaustion to exclude that activity.
• If simple copying were a protected use, a patent would plummet in value after the first sale of the first item containing the invention; the patent monopoly would extend not for 20 years, but for only one transaction, resulting in less incentive for innovation.

🌾 Application to Bowman's conduct

🔨 Bowman was "making" new patented soybeans

• The exhaustion doctrine does not enable Bowman to make additional patented soybeans without Monsanto's permission.
• Bowman took the soybeans he purchased home; planted them in his fields; applied glyphosate to kill weeds and any soy plants lacking the Roundup Ready trait; and harvested more (many more) beans than he started with.
• That is how "to 'make' a new product" when the original product is a seed: "make" means "cause to exist, occur, or appear," or more specifically, "plant and raise (a crop)."
• Because Bowman reproduced Monsanto's patented invention, the exhaustion doctrine does not protect him.

💰 Why this matters for innovation rewards

• Were the matter otherwise, Monsanto's patent would provide scant benefit.
• After inventing the Roundup Ready trait, Monsanto would receive its reward for the first seeds it sells, but in short order, other seed companies could reproduce the product and market it to growers, depriving Monsanto of its monopoly.
• Farmers themselves need only buy the seed once, whether from Monsanto, a competitor, or a grain elevator; the grower could multiply his initial purchase, and then multiply that new creation, ad infinitum—each time profiting from the patented seed without compensating its inventor.
• Example: Bowman's late-season plantings—after buying beans for a single harvest, Bowman saved enough seed each year to reduce or eliminate the need for additional purchases; Monsanto still held its patent, but received no gain from Bowman's annual production and sale of Roundup Ready soybeans.

📚 Consistency with J.E.M. Ag Supply

• In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., the Court considered whether an inventor could get a patent on a seed or plant, or only a certificate under the Plant Variety Protection Act (PVPA).
• The Court decided a patent was available, noting that patent requirements "are more stringent than those for obtaining a PVP certificate, and the protections afforded" by a patent are correspondingly greater.
• Most notably, the Court explained that only a patent holder (not a certificate holder) could prohibit "[a] farmer who legally purchases and plants" a protected seed from saving harvested seed "for replanting."
• That statement is inconsistent with applying exhaustion to protect Bowman's conduct: if a sale cut off the right to control a patented seed's progeny, then the patentee could not prevent the buyer from saving harvested seed, which would turn upside-down the statutory scheme J.E.M. described.

🛡️ Bowman's arguments and the Court's responses

🌱 "Seeds are meant to be planted"

Bowman's argument:

• Exhaustion typically prevents a patentee from controlling the use of a patented product following an authorized sale.
• In planting Roundup Ready seeds, he is merely using them in the normal way farmers do.
• Allowing Monsanto to interfere would "creat[e] an impermissible exception to the exhaustion doctrine" for patented seeds and other "self-replicating technologies."

Court's response:

• It is really Bowman who is asking for an unprecedented exception—to the "well settled" rule that "the exhaustion doctrine does not extend to the right to 'make' a new product."
• Reproducing a patented article no doubt "uses" it after a fashion, but the Court has always drawn the boundaries of exhaustion to exclude that activity, so that the patentee retains an undiminished right to prohibit others from making the thing his patent protects.
• Example: a purchaser could not "use" the buckle from a patented cotton-bale tie to "make" a new tie.

🚜 "Farmers need to plant seeds"

Bowman's concern:

• The rule will prevent farmers from making appropriate use of Roundup Ready seed they buy.

Court's response:

• Bowman himself stands in a peculiarly poor position to assert this claim: the commodity soybeans he purchased were intended not for planting, but for consumption.
• Bowman conceded in deposition testimony that he knew of no other farmer who employed beans bought from a grain elevator to grow a new crop.
• A non-replicating use of the commodity beans was not just available, but standard fare.
• In the more ordinary case, when a farmer purchases Roundup Ready seed qua seed (i.e., seed intended to grow a crop), he will be able to plant it.
• Monsanto conditions the farmer's ability to reproduce Roundup Ready, but it does not—could not realistically—preclude all planting; no sane farmer would buy the product without some ability to grow soybeans from it.
• Monsanto sells Roundup Ready seed to farmers with a license to use it to make a crop.

🌿 "The bean made itself"

Bowman's argument:

• Soybeans naturally "self-replicate or 'sprout' unless stored in a controlled manner," and thus "it was the planted soybean, not Bowman" himself, that made replicas of Monsanto's patented invention.
• Farmers, when they plant seeds, don't exercise control over their crop or over the creative process.

Court's response:

• That "blame-the-bean defense" is tough to credit.
• Bowman was not a passive observer of his soybeans' multiplication; the seeds he purchased did not spontaneously create eight successive soybean crops.
• Bowman devised and executed a novel way to harvest crops from Roundup Ready seeds without paying the usual premium:
  • He purchased beans from a grain elevator anticipating that many would be Roundup Ready.
  • He applied a glyphosate-based herbicide in a way that culled any plants without the patented trait.
  • He saved beans from the rest for the next season.
  • He then planted those Roundup Ready beans at a chosen time; tended and treated them, including by exploiting their patented glyphosate-resistance; and harvested many more seeds, which he either marketed or saved to begin the next cycle.
• In all this, the bean surely figured, but it was Bowman, and not the bean, who controlled the reproduction (unto the eighth generation) of Monsanto's patented invention.

🔬 Limits of the holding

🔍 A narrow ruling

• The Court's holding is "limited—addressing the situation before us, rather than every one involving a self-replicating product."
• The Court recognizes that such inventions are becoming ever more prevalent, complex, and diverse.

🔮 Other scenarios not addressed

• In another case, the article's self-replication might occur outside the purchaser's control.
• Or it might be a necessary but incidental step in using the item for another purpose (e.g., copying a computer program as an essential step in utilizing it, which is not a copyright infringement under 17 U.S.C. § 117(a)(1)).
• The Court does not address whether or how patent exhaustion would apply in such circumstances.

⚖️ The key distinction here

• In the case at hand, Bowman planted Monsanto's patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article.
• Patent exhaustion provides no haven for that conduct.

🧭 Overview

🧠 One-sentence thesis

Patent exhaustion allows a purchaser to use or resell a patented article after an authorized sale, but it does not permit the purchaser to make new copies of the patented invention, so a farmer who plants patented seeds to reproduce them infringes the patent.

📌 Key points (3–5)

• What patent exhaustion does: terminates the patentee's rights to control use or resale of the particular item sold, but not the right to prevent making new copies.
• Why Bowman lost: he reproduced Monsanto's patented soybeans by planting, treating, and harvesting them to create many more patented seeds, which counts as "making" a new product.
• Common confusion: using a patented item vs. making a new copy—planting a seed to grow more seeds is reproduction (making), not merely use.
• Policy rationale: if exhaustion allowed unlimited reproduction, the patent would protect only the first sale, destroying the inventor's reward and innovation incentive.
• Seeds-are-special argument rejected: the Court held that Bowman, not the self-replicating bean, controlled the reproduction process through deliberate planting and cultivation.

📜 Foundational patent statutes

📜 What a patent grants (35 U.S.C. § 154(a))

Every patent grants the patentee "the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States."

• The patent does not grant a right to practice the invention; it grants the right to exclude others.
• The term lasts 20 years from the application filing date.
• The specification and drawing are part of the patent.

⚖️ What counts as infringement (35 U.S.C. § 271(a))

"Whoever without authority makes, uses, offers to sell, or sells any patented invention … infringes the patent."

• Infringement occurs when someone makes, uses, offers to sell, or sells the patented invention without permission.
• The statute also covers inducing infringement (§ 271(b)) and contributory infringement (§ 271(c)).

🔄 The patent exhaustion doctrine

🔄 What exhaustion means

"The initial authorized sale of a patented item terminates all patent rights to that item."

• Once the patentee sells a patented article, the purchaser (or any later owner) can use or resell that particular item freely.
• Rationale: "the purpose of the patent law is fulfilled with respect to any particular article when the patentee has received his reward … by the sale of the article."
• The patentee has been paid for that specific item, so the patent monopoly is "exhausted" as to it.

🚫 What exhaustion does NOT allow

• Exhaustion applies only to the particular article sold.
• It does not give the buyer the right to make new copies of the patented invention.
• Example from the opinion: "the purchaser of the [patented] machine … does not acquire any right to construct another machine."
• Why: if the buyer could make endless copies, the patent would protect only a single sale, and the inventor would lose the reward for subsequent uses.

Don't confuse: using the item you bought (allowed) vs. making a new copy of the invention (not allowed).

🌱 Facts of Bowman's case

🌱 Monsanto's Roundup Ready technology

• Monsanto patented a genetic modification that makes soybean plants survive glyphosate herbicide (the active ingredient in Roundup).
• Farmers who plant Roundup Ready seed can spray glyphosate to kill weeds without harming their crops.
• The trait is in the seed's genetic material, so it passes to the harvested soybeans; each bean can grow a new plant with the same trait.

📝 Monsanto's licensing agreement

• Monsanto sells Roundup Ready seed under a license that permits planting in one season only.
• The farmer may consume or sell the harvested crop as a commodity (e.g., to a grain elevator for food/feed).
• The farmer may not save harvested beans for replanting or supply them to others for planting.
• Rationale: prevents the farmer from producing his own Roundup Ready seed indefinitely without paying Monsanto.

🚜 What Bowman did

1. First crop: Bowman bought Roundup Ready seed from a Monsanto affiliate each year, planted it, and sold the harvest to a grain elevator (complying with the license).
2. Second crop (the problem):
   • Bowman thought late-season planting was risky and didn't want to pay Monsanto's premium price.
   • He bought commodity soybeans from a grain elevator (beans intended for consumption, not planting).
   • He anticipated many of those beans would be Roundup Ready (because most local farmers used that seed).
   • He planted them, sprayed glyphosate, and confirmed that many plants survived (proving they had the patented trait).
   • He harvested the crop and saved seed from it to plant the next year.
   • He repeated this process for eight seasons, each time planting saved seed (sometimes adding more commodity beans), spraying glyphosate, and harvesting a new Roundup Ready crop.

⚖️ Monsanto's lawsuit

• Monsanto sued Bowman for patent infringement.
• Bowman's defense: patent exhaustion—the soybeans were sold by local farmers to the grain elevator, so Monsanto's rights were exhausted.
• District Court and Federal Circuit rejected the defense; Bowman was ordered to pay $84,456 in damages.

🧑‍⚖️ The Supreme Court's reasoning

🧑‍⚖️ Why exhaustion does not protect Bowman

• Under exhaustion, Bowman could resell the beans he bought, consume them, or feed them to animals—Monsanto could not interfere with those uses.
• But exhaustion does not let Bowman make additional patented soybeans without permission.
• What Bowman did:
  • Took the beans home.
  • Planted them at a chosen time.
  • Applied glyphosate to kill weeds and non-resistant plants.
  • Harvested many more beans than he started with.
• This is making a new product when the original product is a seed.
• The Court cited the dictionary: "make" means "cause to exist, occur, or appear," or "plant and raise (a crop)."
• Because Bowman reproduced Monsanto's patented invention, exhaustion does not protect him.

📉 Policy consequences if Bowman won

• If exhaustion allowed reproduction, Monsanto's patent would provide "scant benefit."
• After the first sale, other companies could reproduce and sell the seed, depriving Monsanto of its monopoly.
• Farmers would only need to buy seed once, then multiply it indefinitely without compensating the inventor.
• Example: Bowman bought beans for a single harvest, then saved enough seed each year to reduce or eliminate future purchases—Monsanto held the patent but received no reward from Bowman's annual production.
• The exhaustion doctrine is limited to the "particular item" sold to avoid this mismatch between invention and reward.

🌾 Connection to J.E.M. Ag Supply case

• In J.E.M. Ag Supply (2001), the Court held that inventors can get a patent on seeds/plants (not just a Plant Variety Protection Act certificate).
• Patents have more stringent requirements but provide greater protections than PVPA certificates.
• Crucially: only a patent holder (not a certificate holder) can prohibit a farmer who buys protected seed from saving harvested seed for replanting.
• If exhaustion applied to seed progeny, the patentee could not stop the buyer from saving or selling harvested seed—contradicting J.E.M.'s description of the statutory scheme.

🛡️ Bowman's arguments and the Court's responses

🛡️ "Seeds are meant to be planted" argument

• Bowman's claim: Exhaustion typically prevents a patentee from controlling use of a product after sale; planting seeds is the normal use, so Monsanto should not interfere.
• Court's response:
  • Bowman is asking for an unprecedented exception to the "well settled" rule that exhaustion does not extend to the right to make a new product.
  • Reproducing a patented article is a kind of "use," but the Court has always excluded that activity from exhaustion.
  • If simple copying were protected, a patent would be valuable for only one transaction, not 20 years.
  • The undiluted patent monopoly would extend "for only one transaction," resulting in less innovation incentive than Congress intended.

🌾 "Farmers need to plant seeds" concern

• Court's response:
  • Bowman is in a "peculiarly poor position" to make this claim: the commodity beans he bought were intended for consumption, not planting.
  • Bowman admitted in deposition that he knew of no other farmer who used grain-elevator beans to grow a crop.
  • In the ordinary case, when a farmer buys Roundup Ready seed as seed (intended to grow a crop), Monsanto sells it with a license to plant and harvest one crop.
  • Monsanto does not—and could not realistically—preclude all planting; no farmer would buy seed without the ability to grow soybeans from it.
  • So farmers can benefit from Roundup Ready while Monsanto is rewarded for its innovation.

🫘 "Blame-the-bean" defense

• Bowman's claim: Soybeans naturally self-replicate unless stored in a controlled manner, so "it was the planted soybean, not Bowman" that made replicas.
• Court's response:
  • This defense is "tough to credit."
  • Bowman was not a passive observer; the seeds did not spontaneously create eight successive crops.
  • Bowman's deliberate actions:
    • Purchased beans from a grain elevator anticipating many would be Roundup Ready.
    • Applied glyphosate to cull non-resistant plants.
    • Saved beans from the survivors for the next season.
    • Planted those beans at a chosen time.
    • Tended, treated, and exploited their glyphosate-resistance.
    • Harvested many more seeds, which he marketed or saved for the next cycle.
  • "It was Bowman, and not the bean, who controlled the reproduction (unto the eighth generation) of Monsanto's patented invention."

🔬 Scope and limitations of the holding

🔬 Narrow holding

• The Court's holding is limited to the situation before it, not every case involving a self-replicating product.
• The Court recognizes that self-replicating inventions are "becoming ever more prevalent, complex, and diverse."

🔮 Future cases not addressed

• Self-replication outside the purchaser's control: the Court does not decide how exhaustion would apply.
• Incidental self-replication: if reproduction is "a necessary but incidental step in using the item for another purpose," the outcome might differ.
  • Analogy: copyright law allows making a copy of a computer program if it is "an essential step in the utilization of the computer program" (17 U.S.C. § 117(a)(1)).
• The Court did not address these scenarios.

⚖️ Why Bowman's conduct is unprotected

• In this case, Bowman planted Monsanto's patented soybeans solely to make and market replicas of them.
• This deprived Monsanto of the reward patent law provides for the sale of each article.
• Patent exhaustion provides no protection for that conduct.

📊 Summary table: Exhaustion vs. making new copies

Activity	Protected by exhaustion?	Why
Use the patented item you bought	✅ Yes	Exhaustion allows the purchaser to use the particular article sold.
Resell the patented item you bought	✅ Yes	Exhaustion allows the purchaser to sell the particular article sold.
Make new copies of the patented invention	❌ No	Exhaustion does not extend to reproduction; the patentee retains the right to exclude others from making.
Plant commodity beans for consumption	✅ Yes (if truly for consumption)	This is a use of the beans, not reproduction for planting.
Plant beans to grow and harvest new patented seeds	❌ No	This is making new copies of the patented invention (reproduction).

Key distinction: The "particular article" sold (the individual beans Bowman bought) could be used or resold freely, but Bowman could not use them as a template to create new patented articles (more Roundup Ready seeds).

🧭 Overview

🧠 One-sentence thesis

A patent is invalid if the invention was in public use for more than two years before the patent application, even with the inventor's consent, because patent law forbids granting patents for inventions already publicly used.

📌 Key points (3–5)

• The core holding: the patent was void because the invention had been in public use for more than two years prior to the application, with the inventor's consent.
• What counts as "public use": unrestricted use allowed by the inventor, even without explicit secrecy conditions, constitutes public use—it need not be "open to the public generally."
• Policy rationale: patent laws forbid issuing patents for inventions already in public use before the application to prevent monopolizing what is already publicly available.
• Common confusion: "public use" does not require the general public to actually access the invention; unrestricted use by others with the inventor's consent is sufficient.
• Statutory evolution: the 1836 statute barred patents for any public use (however short) with the inventor's consent; the 1870 statute required more than two years of public use (with or without consent).

⚖️ The legal standard for patent validity

⚖️ Newness requirement under patent law

Patent law requires that an invention be "new" to qualify for patent protection.

• The Court applies a statutory bar: if an invention was in public use for more than two years before the patent application, the patent cannot issue.
• This is a threshold requirement—failure to meet it makes the patent "void" (invalid from the start).
• The legal basis is the patent statute itself (1870 statute, Rev. St. § 4886), which codifies the newness requirement.

📜 Evolution of the public-use bar

Statute	Rule	Key difference
1836 statute (5 St. 117, § 6)	No patent if invention was in public use for any period with inventor's consent	Even brief public use with consent bars the patent
1870 statute (16 St. 201, § 24)	No patent if invention was in public use for more than two years prior to application	Allows a two-year grace period; applies with or without inventor's consent

• Under either statute, the patent in this case was "improvidently issued" because there was public use with the inventor's consent for more than two years.

🏭 The facts: use of the isinglass machine

🏭 Timeline of use

• 1860: James Manning (the inventor) and his brother-in-law Caleb Norwood operated a business making isinglass using a machine with the patented features (adjustable hollow water-cooled rolls with stationary scrapers).
• 1867: the partnership dissolved; Norwood took the machine and continued using it with his son until 1870.
• 1868: Manning set up his sons (J. J. Manning & Brother) in a separate factory using two similar machines; they used them continuously from 1868 to 1877 (when testimony was taken).
• 1873: the patent application was filed—more than two years after the sons began using the machines, and more than four years after Norwood began using his machine post-dissolution.

🔍 What the inventor claimed

• The appellants (patent holders) argued the patent covered an improvement in the process of making isinglass, specifically the use of automatic scrapers applied to water-cooled rolls to prevent the isinglass from passing through the rolls a second time without aeration.
• They did not claim the rolls themselves, the cooling method, or the scrapers in isolation—only the combination and process.

🔍 What the Court found

• The machinery and process used by Norwood (1867–1870) and by Manning's sons (1868–1873+) were "substantially the same" as described in the patent.
• There was "no material change, either in the machinery or the process" during all these years.
• The use was not experimental—it was continuous, commercial manufacturing.

🔓 What constitutes "public use"

🔓 Unrestricted use by others with inventor's consent

• The Court held that Norwood's use (1867–1870) was public use because the inventor "allowed [Norwood and his son] the unrestricted use of the patent during the period mentioned, without injunction of secrecy or other condition."
• Key principle: consent to unrestricted use = public use, even if the inventor does not explicitly say "this is public."
• The Court cited Egbert v. Lippman for this rule.

🔓 Don't confuse "public" with "open to the general public"

• The appellants tried to argue that Norwood's use was "secret and not a public use."
• The Court acknowledged that the testimony might show "a use open to the public generally," but stated this was immaterial.
• What mattered: the inventor allowed unrestricted use without secrecy conditions.
• Example: if an inventor lets a business partner use the invention freely in a factory, that is public use—even if random members of the public never see it.

🔓 Use by the inventor's sons

• The Court also found "decided weight of the evidence" that J. J. Manning & Brother used the invention publicly for more than four years (1868–1873) before the application.
• James Manning (the inventor) had no ownership interest in his sons' business after 1868, so their use was not the inventor's own private experimentation.

🎯 Policy rationale and conclusion

🎯 Why the law bars patents for publicly used inventions

"It is the policy of the patent laws to forbid the issue of a patent for an invention which has been in public use before the application therefor."

• The rationale is to prevent inventors from monopolizing (via patent) what is already available to the public.
• If an invention has been used publicly for years, granting a patent would take away what people already had access to.
• The law balances the inventor's incentive (limited monopoly) against the public's interest in free use of what is already public.

🎯 The Court's conclusion

• The patent was "improvidently issued" and therefore void.
• Under the 1870 statute, public use for more than two years (with or without consent) bars the patent.
• Here, there was public use with the inventor's consent from at least 1867 (Norwood) and 1868 (the sons) until 1873 (application date)—well over two years.
• The lower court's decree was affirmed.

🎯 Experimental use exception (not applicable here)

• The Court noted that the use was "not an experimental use."
• Experimental use might not count as "public use" because the inventor is still testing and refining the invention.
• Here, the machines were used continuously in commercial manufacturing for years without material change—clearly not experimental.

🧭 Overview

🧠 One-sentence thesis

A reference qualifies as a "printed publication" barring patentability under 35 U.S.C. § 102(b) only if it was both sufficiently indexed or cataloged so that a reasonably diligent researcher could discover it and physically accessible for inspection more than one year before the patent application filing date.

📌 Key points (3–5)

• Public accessibility is the touchstone: A reference must have been "sufficiently accessible to the public interested in the art" to count as prior art, not merely exist somewhere.
• Two-part test: The reference must be (1) discoverable through adequate indexing/cataloging and (2) physically available for inspection by interested persons.
• Reasonable diligence standard: The test is whether "persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence" could locate the reference, not whether a single perfect keyword search would retrieve it.
• Common confusion—accessibility vs. actual access: Proof that someone actually retrieved or viewed the reference is not required; the question is whether they could have if they tried.
• Timing burden: The party asserting prior art (here, the USPTO) must provide evidence that the reference was publicly accessible before the critical date (one year before filing); speculation is insufficient.

📚 What is "prior art" and the § 102(b) bar

📖 The statutory rule

35 U.S.C. § 102(b): An invention cannot be patented if it "was patented or described in a printed publication in this or a foreign country … more than one year prior to the date of the application for patent in the United States."

• This is a statutory bar to patentability grounded on the principle that "once an invention is in the public domain, it is no longer patentable by anyone."
• The critical date in Lister's case: August 5, 1995 (one year before his August 5, 1996 filing).
• If the manuscript was publicly accessible before that date, Lister's patent claims would be barred.

📄 What counts as a "printed publication"

• Not every document is a "printed publication" under § 102(b).
• The reference must have been "sufficiently accessible to the public interested in the art."
• "Public accessibility" is the touchstone; there are many ways a reference may be disseminated.
• The determination is case-by-case, based on "the facts and circumstances surrounding the reference's disclosure to members of the public."

🔍 The public accessibility test

🧩 Core definition

A reference is publicly accessible if it was "disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it."

• This is a functional test: could a diligent, interested researcher find and examine the reference?
• It does not require that the reference was widely distributed or that anyone actually saw it.

🗂️ Indexing and cataloging (library cases)

The court reviewed prior cases involving references stored in libraries:

Case	Facts	Holding	Reason
Hall	Dissertation shelved and indexed in a German university library catalog	Printed publication	Indexed, cataloged, shelved—accessible research tools existed
Bayer	Thesis at University of Toledo, uncataloged and unshelved as of critical date	Not a printed publication	Could only be found by someone informed of its existence by the author's committee, not by library research aids
Cronyn	Student theses at Reed College indexed only by author's last name (unrelated to subject)	Not a printed publication	Not "cataloged or indexed in a meaningful way"

• Key principle from Cronyn: Indexing by author name alone (which "bears no relationship to the subject") is insufficient.
• The indexing must allow a researcher interested in the subject matter to discover the reference.

🛠️ Factors beyond indexing

• Cataloging and indexing are important but not strictly necessary in every case.
• Courts consider "all of the facts and circumstances" to determine whether "an interested researcher would have been sufficiently capable of finding the reference and examining its contents."
• Example: In Bruckelmyer, an issued Canadian patent served as a "roadmap" to the application file, making the application publicly accessible.

🏛️ Application to the Lister manuscript

📝 Undisputed facts

• Dr. Lister submitted a manuscript titled "Advanced Handicap Alternatives for Golf" to the U.S. Copyright Office on July 4, 1994.
• The Copyright Office issued a certificate of registration on July 18, 1994.
• The Copyright Office retained a copy in Washington, D.C., available for public inspection upon request.
• The Copyright Office would not provide copies or allow individuals to make copies (except in three narrow circumstances).
• Dr. Lister filed his patent application on August 5, 1996.
• Critical date: August 5, 1995.

🗄️ The indexing question

Three databases were relevant:

1. Copyright Office automated catalog: Searchable only by author's last name or the first word of the title ("Advanced").
2. Westlaw: Obtained data from the Copyright Office; permitted keyword searches of titles (not full text).
3. Dialog: Same as Westlaw.

Government's concession: The automated catalog alone was insufficient (searching by "Lister" or "Advanced" would not guide a golf researcher to the manuscript).

Court's conclusion on Westlaw/Dialog: Keyword searching of titles by "golf" + "handicap" would have been sufficient.

• A "reasonably diligent researcher" interested in ways to expedite golf and make it easier for casual players would use "handicap" as a search term.
• Dr. Lister himself used "handicap" in his specification to describe his invention.
• The test is not whether a single perfect search retrieves the reference, but whether a diligent researcher "exercising reasonable diligence" and trying "several searches using a variety of keyword combinations" could locate it.

Don't confuse: The question is not whether the claim language appears in the title, but whether a researcher interested in the subject matter would use those terms.

🚪 Physical accessibility (availability for inspection)

🏢 Dr. Lister's argument

• Traveling to Washington, D.C., and navigating "cumbersome procedures" was too burdensome.
• The Copyright Office found no record of anyone ever requesting to inspect the manuscript.
• The inability to obtain copies made the manuscript effectively unavailable.

⚖️ Court's rejection

The court rejected all three arguments:

1. No special authorization required: Unlike Northern Telecom (where access to a corporate library required authorization from the company), any member of the public could inspect the manuscript by submitting a proper request.
2. Travel burden is acceptable: In Hall, a dissertation in Germany was held publicly accessible; significant travel does not preclude accessibility. Additionally, "an interested person could hire someone local to inspect the manuscript on their behalf."
3. Actual access not required: "Once accessibility is shown, it is unnecessary to show that anyone actually inspected the reference." The question is whether interested members of the public could obtain the information, not whether they did.
4. Copies not required: The Board found (and the court agreed) that "an interested researcher would be able to gain and retain an understanding of Dr. Lister's invention upon inspection of the manuscript and without any need to obtain a copy."

Example: If a library in another country holds a cataloged thesis, a U.S. researcher does not need proof that someone traveled there and read it; the question is whether the researcher could do so (or hire someone to do so).

⏰ The timing problem (critical date evidence)

📅 The fatal gap in the government's case

Even though the court concluded that keyword-searchable databases (Westlaw or Dialog) would have made the manuscript discoverable, there was no evidence that the manuscript was actually listed in those databases before the critical date (August 5, 1995).

🧾 What the record showed

The only evidence was Dr. Lister's Information Disclosure Statement (IDS), which said:

• "The information contained in [the commercial] databases comes directly from the Library of Congress."
• The IDS did not state when Westlaw or Dialog incorporated the manuscript data.

🚫 Government's failed arguments

Argument 1: The word "directly" in the IDS implies the manuscript was added to Westlaw/Dialog shortly after the July 18, 1994 registration.

• Court's response: "Directly" refers to the source of the data, not the timing. Westlaw or Dialog could acquire data "directly from the Library of Congress" ten years later.
• There is "no indication that that portion of the IDS was meant to address the timing of the database updates."

Argument 2: The government made a prima facie case, shifting the burden to Dr. Lister to prove the manuscript was not in the databases before the critical date.

• Court's response: The government did not establish a prima facie case. The evidence shows only that "at some point in time" the databases incorporated the manuscript information.
• Analogy: "We surely would not view the mere existence of [an undated] reference … as prima facie evidence that it was available prior to the applicant's critical date."
• "Absent any evidence pertaining to the general practices of the Copyright Office, Westlaw, and Dialog, or the typical time that elapses between copyright registration, inclusion in the Copyright Office's automated catalog, and subsequent incorporation into one of the commercial databases, any presumption along those lines would be pure speculation."

📜 The Manual of Patent Examining Procedures rule

The court cited MPEP § 2128:

"Prior art disclosures on the Internet or on an on-line database are considered to be publicly available as of the date the item was publicly posted. Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a) or (b)."

• The party asserting prior art must provide evidence of the date of public posting.
• Speculation is not enough.

🏁 Outcome and key takeaways

🔄 Disposition

• The Federal Circuit vacated the Board's decision and remanded for further proceedings.
• The Board had erred in affirming the examiner's § 102(b) rejection because there was insufficient evidence that the manuscript was publicly accessible before the critical date.

🎯 Practical lessons

• For patent applicants: If the USPTO relies on an online database or catalog as prior art, challenge whether there is evidence the reference was actually in that database before the critical date.
• For examiners: When relying on databases, provide evidence of (1) when the reference was added and (2) the general practices regarding database updates, or (3) a date stamp on the reference itself.
• Reasonable diligence is flexible: A researcher does not need to execute a perfect search on the first try; multiple keyword combinations and reasonable effort are expected.
• Accessibility ≠ ease: A reference can be accessible even if it requires travel, hiring an agent, or navigating procedures, as long as no special authorization is required and the public can inspect it.

⚠️ Common confusion: accessibility vs. actual retrieval

• Wrong: "No one ever looked at it, so it wasn't publicly accessible."
• Right: "Could a diligent, interested researcher have found and inspected it? If yes, it was publicly accessible, regardless of whether anyone actually did."

🕰️ Common confusion: existence vs. timely accessibility

• Wrong: "The reference exists in a database, so it counts as prior art."
• Right: "The reference must have been in a publicly accessible, adequately indexed database before the critical date; the party asserting prior art must prove the timing."

🧭 Overview

🧠 One-sentence thesis

The Federal Circuit held that a jury's finding of nonobviousness must stand when substantial evidence supports the underlying factual findings across all four Graham factors, including objective indicia of nonobviousness.

📌 Key points (3–5)

• What § 103 requires: a claimed invention is obvious if the differences from prior art would have been obvious to a person of ordinary skill in the art before the filing date.
• The Graham framework: four factors must be considered—(1) scope and content of prior art, (2) differences between prior art and the claims, (3) level of ordinary skill, and (4) secondary considerations (objective indicia).
• Mandatory consideration of all factors: courts must consider objective indicia of nonobviousness (e.g., commercial success, long-felt need) in every case where present; it is error to conclude obviousness without examining all four Graham factors.
• Common confusion: § 103 (obviousness) vs. § 102 (novelty)—§ 102 asks whether the invention is identically disclosed; § 103 asks whether differences from prior art would have been obvious.
• Standard of review: obviousness is a question of law based on underlying facts; on JMOL review, courts presume the jury resolved factual disputes in favor of the verdict winner if substantial evidence supports those findings.

⚖️ Legal framework for obviousness

⚖️ The statutory test (35 U.S.C. § 103)

A patent may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date to a person having ordinary skill in the art.

• The statute applies even when the invention is not "identically disclosed" under § 102 (novelty).
• The key question: would the differences have been obvious to a person of ordinary skill?
• The manner in which the invention was made does not affect patentability.

🧩 How § 103 differs from § 102

• § 102 (novelty): asks whether the invention is identically disclosed in prior art.
• § 103 (obviousness): assumes the invention is not identically disclosed but asks whether the differences would have been obvious.
• Don't confuse: an invention can be novel (not identically disclosed) but still obvious (the differences are not inventive).

🔍 The four Graham factors

🔍 What Graham requires

The Supreme Court in Graham v. John Deere Co. and KSR Int'l Co. v. Teleflex Inc. established a four-part inquiry:

1. Scope and content of the prior art: what was already known in the field.
2. Differences between prior art and the claims: what is new in the claimed invention.
3. Level of ordinary skill in the art: the knowledge and ability of a hypothetical person skilled in the field.
4. Secondary considerations (objective indicia): commercial success, long-felt but unsolved needs, failure of others, etc.

• All four factors must be considered; it is legal error to reach a conclusion of obviousness without examining all of them.
• The court emphasized: "A determination of whether a patent claim is invalid as obvious under § 103 requires consideration of all four Graham factors."

🎯 Why secondary considerations matter

• Objective indicia of nonobviousness "must always when present be considered en route to a determination of obviousness."
• These factors help inform the ultimate obviousness determination by providing real-world context.
• Example: if others tried and failed to solve the problem, or if the invention achieved unexpected commercial success, these facts suggest the invention was not obvious.
• The court cited Kinetic Concepts and Nike, Inc. v. Adidas AG: evidence of secondary considerations must be examined to determine its impact on the first three Graham factors.

📋 Summary table of Graham factors

Factor	What it examines	Why it matters
Prior art scope and content	What was already known	Establishes the baseline of existing knowledge
Differences from prior art	What is new in the claim	Identifies the inventive step (or lack thereof)
Level of ordinary skill	Knowledge/ability of a skilled person	Sets the perspective for judging obviousness
Secondary considerations	Commercial success, long-felt need, failure of others	Provides objective evidence of nonobviousness

🧪 Application to the '721 patent

🧪 What the '721 patent discloses

• A portable device with a touch-sensitive display that can be "unlocked via gestures" performed on the screen.
• The problem it solves: "pocket dialing"—unintentional activation or deactivation of functions due to unintentional contact with the touch screen.
• Inventor Greg Christie described the concern: accidental use, pocket dialing, mail being sent or deleted accidentally, or the phone answering itself because the touch surface is against the user's leg in a pocket.

🎨 Design goals: user-friendly and efficient

The patent emphasizes making phone activation as "user-friendly" and "efficient" as possible:

• The patent teaches the need for "more efficient, user-friendly procedures for unlocking such devices."
• It also describes the need for "sensory feedback to the user regarding progress towards satisfaction of a user input condition."
• Mr. Christie testified: "we thought to introduce some sort of definite gesture. We knew we wanted to have some instruction. We knew we wanted the interface to be obvious to the customer."
• Example scenario: a customer picks up an iPhone in a retail environment—it would be very bad if they couldn't figure out how to use it immediately.

✅ Why the jury's nonobviousness finding stood

• The jury found claim 8 of the '721 patent infringed and not obvious.
• Samsung challenged the district court's denial of JMOL (judgment as a matter of law) that claim 8 would have been obvious.
• The Federal Circuit agreed with the district court: substantial evidence supported the jury's underlying fact findings, and those findings supported the conclusion that Samsung failed to prove obviousness by clear and convincing evidence.
• The court presumed the jury resolved factual disputes in favor of Apple (the verdict winner) and left those findings undisturbed because they were supported by substantial evidence.

📊 Standard of review and procedural posture

📊 How courts review JMOL on obviousness

• Obviousness: a question of law based on underlying facts.
• When reviewing denial of JMOL with a "black box" jury verdict: the court presumes the jury resolved underlying factual disputes in favor of the verdict winner and leaves those findings undisturbed if supported by substantial evidence.
• The court then examines the legal conclusion of obviousness de novo in light of those facts.

🔎 The Ninth Circuit standard for JMOL

• JMOL is proper when "the evidence permits only one reasonable conclusion and the conclusion is contrary to that of the jury."
• The evidence must be viewed in the light most favorable to the nonmoving party (here, Apple).
• All reasonable inferences must be drawn in favor of that party.
• The Ninth Circuit reviews a district court's decision to grant or deny JMOL de novo.

🧩 Procedural background

• Apple sued Samsung for patent infringement; Samsung countersued.
• The district court granted summary judgment that Samsung's devices infringe the '172 patent.
• After a thirteen-day trial, the jury found:
  • The '647 patent infringed.
  • The '721 patent infringed and not invalid.
  • The '172 patent not invalid.
• Samsung appealed, challenging (among other things) the denial of JMOL of obviousness as to the '721 and '172 patents.
• The Federal Circuit affirmed, holding that substantial evidence supported the jury's findings.

🛡️ Policy and constraints on the obviousness inquiry

🛡️ Why all four Graham factors are mandatory

• The requirement to consider all four factors recognizes that "each of the Graham factors helps inform the ultimate obviousness determination."
• Objective indicia provide a check against hindsight bias: it is easy to say an invention is obvious after it has been disclosed, but real-world evidence (commercial success, failure of others) shows whether it was truly obvious at the time.
• The Supreme Court in KSR explained: "Graham sets forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive."

🧭 Legal constraints on the analysis

• Courts cannot skip secondary considerations when they are present.
• Courts must view the evidence in the light most favorable to the nonmoving party.
• The burden is on the challenger (here, Samsung) to prove obviousness by clear and convincing evidence.
• Don't confuse: the inquiry is not arbitrary—it is structured by the four Graham factors and constrained by the substantial evidence standard and the requirement to avoid hindsight.

🧭 Overview

🧠 One-sentence thesis

A jury's finding that a patent claim is non-obvious must be upheld on appeal if substantial evidence supports the jury's factual determinations about motivation to combine prior art and objective indicia of non-obviousness, even when the losing party also presented substantial evidence.

📌 Key points (3–5)

• What the court reviews: whether substantial evidence supports the jury's factual findings on motivation to combine prior art and secondary considerations of non-obviousness—not whether the losing party's evidence was also strong.
• Motivation to combine is a factual question: whether a skilled artisan would have been motivated to combine prior art references remains a question of fact even after the KSR decision.
• Objective indicia are highly probative: secondary considerations (commercial success, industry praise, copying, long-felt need) may be the most probative evidence and must be considered as part of all the evidence, not just when the decision-maker is in doubt.
• Common confusion: the appellate court does not weigh competing evidence or decide which side's evidence is stronger; it only asks whether substantial evidence supports the jury's actual findings.
• Nexus requirement: commercial success and other secondary considerations must be linked to the claimed invention itself, not just to the product generally.

🔍 Motivation to combine prior art

🔍 What motivation to combine means

Motivation to combine: whether a person of ordinary skill in the art would have been motivated to combine elements from different prior art references to arrive at the claimed invention.

• This is a question of fact, not law.
• The KSR decision did not change this rule—motivation to combine remained factual after KSR.
• What a prior art reference teaches is also a question of fact.

🧪 The Plaisant and Neonode example

• Plaisant: disclosed a wall-mounted touchscreen toggle for controlling home appliances (air conditioning, heaters).
• Neonode: disclosed a mobile phone.
• Apple's expert (Dr. Cockburn) testified that a skilled artisan would not have been motivated to combine these two references for two reasons:
  • The contexts were different: wall-mounted home appliance controller vs. smartphone.
  • The invention addressed the "pocket dialing" problem specific to mobile devices, which was not relevant to wall-mounted controllers.
• Additionally, Dr. Cockburn testified that Plaisant "teaches away from the use of sliding" because it explicitly advised against using the sliding toggle mechanism.

⚖️ Standard of review on appeal

• The jury found in favor of Apple (the patent was valid/non-obvious).
• The appellate court presumes the jury resolved conflicting expert testimony in Apple's favor.
• The court's job is not:
  • To review whether Samsung's losing position was also supported by substantial evidence.
  • To weigh the relative strength of Samsung's evidence against Apple's evidence.
• The court's job is:
  • To determine whether substantial evidence supports the jury's findings on the entirety of the record.
  • Under the Ninth Circuit standard, the court cannot conclude that the evidence affords only one reasonable conclusion contrary to the jury's.

Example: A reasonable jury could infer that an ordinary artisan would not combine a wall-mounted touchscreen for home appliances with a smartphone, especially given the "pocket dialing" problem that Apple's invention sought to address.

Don't confuse: Substantial evidence review does not mean "both sides had evidence, so we pick the stronger side." It means "was there enough evidence for a reasonable jury to reach this conclusion?"

🏆 Objective indicia of non-obviousness

🏆 What objective indicia are

Objective indicia (secondary considerations): factors that guard against hindsight bias and help resist the temptation to read the teachings of the invention back into the prior art.

• These include:
  • Commercial success of devices practicing the patented invention.
  • Industry praise for the patented invention.
  • Copying by others.
  • Long-felt but unsatisfied need for the invention.

🔬 Why objective indicia matter

• The Supreme Court in Graham explained that these factors serve to guard against slipping into hindsight.
• The Federal Circuit in Stratoflex held:
  • Evidence of secondary considerations may often be the most probative and cogent evidence in the record.
  • It may establish that an invention appearing obvious in light of the prior art was not.
  • It must be considered as part of all the evidence, not just when the decision-maker remains in doubt after reviewing the art.

Don't confuse: Objective indicia are not "tie-breakers" used only when the technical evidence is unclear. They are part of the full analysis and can be the strongest evidence of non-obviousness.

🎤 Industry praise

🎤 What industry praise shows

• Evidence that the industry praised a claimed invention or a product embodying the patent claims weighs against obviousness.
• Industry participants, especially competitors, are not likely to praise an obvious advance over the known art.
• If there is evidence of industry praise of the claimed invention, it weighs in favor of non-obviousness.

📄 Samsung's internal documents

The district court found substantial evidence of industry praise specifically for Apple's slide-to-unlock invention, citing numerous internal Samsung documents:

Document	Content	Significance
PTX 119	Samsung European design team presentation (June 2009) with iPhone picture, stating Apple's slide-to-unlock is a "[c]reative way[ ] of solving UI complexity" and "swiping unlock on the screen allows to prevent erroneous unlock"	Competitor's acknowledgment of the invention's merit
PTX 121	Samsung software verification group document noting iPhone's "unlocking standard is precise as it is handled through sliding," recommending "direction of improvement" to make it "same as iPhone"	Direct comparison showing iPhone's superiority
PTX 157	Samsung document recommending improving Samsung phone to be "easy to unlock" with "guide text or arrow like the iPhone" and "smooth and continuous" movement like iPhone	Specific praise for claimed features
PTX 219	Samsung document noting iPhone "intuitively indicate[s] the direction and length to move when unlocking"	Recognition of user interface advantage
PTX 120	Samsung document describing "Direction of Improvement" as using a defined bar and displaying unlock instruction on screen, as done on iPhone	Multiple recommendations to copy iPhone features

🎥 Public reaction evidence

• Apple presented a video of Steve Jobs unveiling the slide-to-unlock feature at an Apple event.
• When Jobs swiped to unlock the phone, "the audience burst into cheers."
• The video was shown to the jury, and multiple witnesses (Apple's expert, an inventor, and Apple's VP of Marketing) referenced it.

Don't confuse: Samsung argued the district court relied on "generic praise not linked to the actual subject matter of the claim," but the court found this argument without merit because the internal documents and testimony specifically praised features of the claimed invention, not just the iPhone generally.

📋 Copying by competitors

📋 What copying evidence shows

• Evidence that competitors copied the claimed invention supports non-obviousness.
• If something were obvious, competitors would likely develop it independently rather than copy it.

🔄 Samsung's copying

• Samsung did not dispute on appeal that the jury heard substantial evidence of copying.
• Samsung did not challenge that substantial evidence exists that Samsung copied Apple's slide-to-unlock feature.
• Samsung did not challenge that this copying evidence supports a conclusion that the claim would not have been obvious.

📊 The same documents show both praise and copying

• Apple cited the same Samsung internal documents for both industry praise and copying.
• The documents show:
  • Samsung's recognition that the iPhone's slide-to-unlock feature was better than Samsung's alternatives.
  • Samsung's conclusion that the "direction for improvement" was to modify its unlocking mechanism to be like the iPhone.

Example: Multiple internal Samsung presentations from different groups at different times stated that the iPhone's slide-to-unlock feature was superior and recommended that Samsung modify its products to match the iPhone.

💰 Commercial success

💰 The nexus requirement

Nexus: commercial success must be linked to the claimed invention, not just to the product generally.

• Commercial success alone is not enough; there must be a connection between the success and the specific claimed invention.
• Samsung's only argument on appeal was: "Apple made no effort to establish a nexus between commercial success and the subject matter of claim 8."

📊 Evidence of nexus in this case

The court found substantial evidence for the jury's finding that Apple established a nexus:

1. Expert testimony: Dr. Cockburn testified that the iPhone practiced the asserted claim and "clearly there's been commercial success of the iPhones that use this invention." Even Samsung's expert acknowledged "there's no question that the Apple iPhone was a commercial success."

2. Survey evidence: Apple presented survey evidence showing:

   • Customers would be less likely to purchase a portable device without the slide-to-unlock feature.
   • Customers would pay less for products without it.
   • This permitted the jury to conclude that this feature was a key driver in the ultimate commercial success.

3. Marketing emphasis:

   • Slide-to-unlock was the very first feature shown in Apple's original iPhone TV commercial.
   • The jury saw the commercial during trial.
   • A reasonable jury could find that highlighting a feature in advertising shows its importance and could influence customer purchasing decisions.

4. Inventor testimony: An inventor of the patent (an Apple VP) confirmed that slide-to-unlock was important because it "would possibly be [a customer's] first experience even in a retail environment" when deciding whether to buy.

5. Detailed explanation of importance: Apple's Senior VP of Worldwide Marketing explained:

   • When the ad ran, people hadn't used an iPhone yet or anything like it.
   • The challenge was showing people in a simple 30-second ad something that would help them understand the device.

🔍 Survey evidence details

• The survey tested tablets with 7-inch screens.
• The patent claims were directed to a "hand-held electronic device," not specifically a smartphone.
• No one argued that a 7-inch tablet was not a "hand-held electronic device."
• The survey established that customers would prefer to purchase a device with a slide-to-unlock feature.

Don't confuse: Samsung argued in its reply brief that the survey "did not even test the ′721 patent for smartphones," but this distinction was irrelevant because the patent claims covered "hand-held electronic devices" generally, and the survey tested such devices.

🧭 Overview

🧠 One-sentence thesis

Patent law grants inventors the right to exclude others from making, using, or selling their inventions for a limited term, but this right is exhausted when a patented article is sold, though it does not permit buyers to make new copies of the invention.

📌 Key points (3–5)

• What a patent grants: the right to exclude others from making, using, offering for sale, selling, or importing the patented invention for 20 years from the filing date.
• Patent exhaustion (first sale doctrine): an authorized sale gives the buyer the right to use or resell that specific article, but not to make new copies.
• Common confusion: exhaustion allows use/resale of the purchased item, but does NOT allow reproduction or making new copies of the patented invention.
• Statutory foundation: §101 defines what can be patented, §154(a) states what rights a patent contains, and §271(a) defines infringement.
• Why it matters: understanding these fundamentals explains how patent rights are balanced between inventors' exclusivity and buyers' rights after purchase.

📜 Foundational patent statutes

📜 What can be patented (§101)

35 U.S.C. §101: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

• The statute covers four categories: process, machine, manufacture, or composition of matter.
• The invention must be both new and useful.
• This section provides the basic eligibility for obtaining a patent.

📜 What a patent contains (§154(a))

35 U.S.C. §154(a): A patent contains a short title and grants the patentee "the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States."

Key elements:

• Not a right to make: the patent grants the right to exclude others, not an affirmative right to practice the invention.
• Geographic scope: the exclusion applies throughout the United States.
• Process patents: also cover products made by the patented process.
• Term: 20 years from the date the application was filed (not from the issue date).
• Required attachments: a specification and drawing must be part of the patent.

⚖️ What constitutes infringement (§271(a))

35 U.S.C. §271(a): "Whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."

• Infringement occurs when someone performs any of these acts without authority during the patent term.
• The statute lists five infringing acts: making, using, offering to sell, selling, or importing.
• Example: if an organization manufactures a patented device without permission, that constitutes infringement even if they never sell it (the "making" alone infringes).

🌱 The Bowman v. Monsanto case

🌱 The patented technology

• Monsanto invented a genetic modification enabling soybean plants to survive exposure to glyphosate (a herbicide ingredient).
• The modified seeds are sold as "Roundup Ready seed."
• Farmers can use glyphosate-based herbicides to kill weeds without harming their soybean crops.
• Two patents cover this technology, including a seed incorporating the genetic alteration.

📝 The licensing agreement

Monsanto sells Roundup Ready seeds under a special licensing agreement with the following restrictions:

• The grower may plant the purchased seeds in one season only.
• The farmer can consume the crop or sell it as a commodity (e.g., to a grain elevator or processor).
• Prohibited: saving harvested soybeans for replanting or supplying them to others for replanting.

Why these restrictions exist:

• Glyphosate resistance is passed from planted seed to harvested soybeans through genetic material.
• A single seed can produce a plant with dozens of genetically identical beans.
• Each harvested bean, if replanted, can grow another plant with the same trait—"and so on and so on."
• Without restrictions, farmers could produce their own Roundup Ready seeds indefinitely instead of buying from Monsanto each season.

👨‍🌾 What Bowman did

• Bowman is an Indiana farmer who purchased Roundup Ready seed each year from a Monsanto-affiliated company for his first crop.
• He complied with the agreement for his first-season planting.
• He used all purchased seed for planting and sold his entire crop to a grain elevator.
• (The excerpt cuts off before describing the alleged infringement, but the case involves whether he could reproduce the seeds through planting and harvesting.)

🔄 Patent exhaustion doctrine

🔄 What exhaustion means

Patent exhaustion doctrine: "the authorized sale of a patented article gives the purchaser, or any subsequent owner, a right to use or resell that article."

• Also known as the "first sale doctrine."
• Once a patented item is sold with authorization, the patent holder's rights in that specific item are exhausted.
• The buyer and subsequent owners can use or resell that particular article without permission.

🔄 What exhaustion does NOT allow

The Court emphasizes a critical limitation:

• "Such a sale, however, does not allow the purchaser to make new copies of the patented invention."
• Example: buying a patented article gives you the right to use or resell that article, but not to manufacture additional copies of it.

Don't confuse:

• Allowed after purchase: using the item, reselling the same item.
• Not allowed: making new copies or reproductions of the patented invention.

⚖️ The central legal question

"The question in this case is whether a farmer who buys patented seeds may reproduce them through planting and harvesting without the patent holder's permission."

• The Court held: "he may not."
• The issue turns on whether planting and harvesting seeds constitutes "making new copies" of the patented invention.
• Even though the farmer purchased the seeds, exhaustion does not extend to reproducing the patented genetic modification through the natural growth process.

🎯 Course context and approach

🎯 Focus on fundamentals

The course emphasizes:

• Patent law often involves highly technical subject matter.
• The fundamental components are relatively simple.
• Cases are chosen to highlight fundamental elements or landmark decisions.
• Inventions selected do not require advanced technical or scientific degrees to understand.

📄 About the Monsanto patent example

Special characteristics of this patent:

• Unusually long: 158 pages (unedited version).
• Many claims: 149 claims at the end.
• Typical patents: much shorter, usually with 20 claims at most.
• Reissue process: this patent went through a special "reissue" proceeding where the original patent was surrendered to make changes (beyond the scope of this introductory course).

📖 Reading approach suggested

Students are instructed to:

• Skim the patent without reading in significant depth.
• Try to identify different sections in the document.
• Make notes about observations.
• Answer specific questions: Who are the inventors? When was the application filed? Who was assigned the patent? Where are the legal rights claimed?

🧭 Overview

🧠 One-sentence thesis

A patent claim that attempts to monopolize an entire class of materials (all fibrous and textile materials for incandescent lamp conductors) is invalid when the patentees have not discovered a common quality across that entire class that makes it suitable for the claimed purpose.

📌 Key points (3–5)

• What the disclosure requirement demands: the patent application must describe the invention in such full, clear, and exact terms that a person skilled in the art can make and use it without independent experimentation.
• Why Sawyer & Man's broad claim failed: they claimed all fibrous and textile materials, but only a tiny subset (e.g., specific bamboo species) actually worked; no common quality existed across the entire class.
• Why the third claim was valid: it was narrow—limited to carbonized paper—and did not overreach into materials the patentees had not actually reduced to practice.
• Common confusion: discovering that one material in a class works does not entitle the inventor to claim all materials in that class unless a shared characteristic makes them all suitable.
• Policy rationale: allowing overly broad claims would discourage further experimentation and unfairly exclude competitors from discovering superior materials.

📜 Background and context

📜 The competing lamp systems

• Sawyer & Man patent (No. 317,076, issued 1885): claimed an incandescent lamp using a conductor made from carbonized fibrous or textile material, shaped as an arch or horseshoe, enclosed in a hermetically sealed glass chamber with oxygen excluded.
• Edison lamp: used a carbonized bamboo filament (a specific part of the bamboo stem) bent into a loop, also in a vacuum-sealed glass globe.
• The lawsuit was brought by Consolidated Electric Light Company (assignee of Sawyer & Man) against McKeesport Light Company (backed by Edison Electric Light Company) for patent infringement.

📜 State of the art in 1880

• Two main forms of electric lighting existed:
  • Arc light: current passing between two carbon pencils, creating an arc; too intense and flickering for domestic use.
  • Incandescent light: current passing through a poor conductor (high resistance), heating it to white heat without consuming it.
• Prior experiments with incandescent lighting had failed due to:
  • Difficulty finding a material that would glow without burning up.
  • Inability to achieve a perfect vacuum.
  • Misunderstanding of the true principle (high resistance with small illuminating surface).

🔬 What Sawyer & Man claimed

🔬 The patent's four claims

Claim	Scope	Court's view
(1)	Carbonized fibrous or textile material in arch/horseshoe shape	Too broad—invalid
(2)	Combination of circuit + fibrous conductor + sealed chamber	Too broad—invalid
(3)	Carbonized paper specifically	Narrow—valid (not infringed by Edison)
(4)	Complete lamp with fibrous/textile carbon in arch form	Too broad—invalid

🔬 What the specification disclosed

• Sawyer & Man stated they used:
  • Carbonized paper.
  • Wood carbon.
  • Various shapes (inverted V, rectangular bends, arch—arch preferred).
• They claimed advantages of vegetable fibrous material over mineral/gas carbon:
  • Convenience in cutting and shaping.
  • Purity and equality of carbon.
  • Toughness and durability.
• Critical omission: they did not explain which fibrous materials would work or why fibrous materials generally were suitable.

⚖️ The Court's reasoning on overbreadth

⚖️ The core problem with broad claims

Principle: If patentees discover a quality common to an entire class of materials that adapts them to a particular purpose, a broad claim may be valid; but if only specific members of the class possess the required qualities, the claim cannot cover the entire class.

• Sawyer & Man claimed all fibrous and textile materials.
• In reality:
  • Examination of over 6,000 vegetable growths showed almost none were suitable.
  • Edison's experiments over several months found only about three species of bamboo, one Amazon cane, and one or two agave fibres worked.
  • Even then, Edison used only a thin slice (about 20/1000 inch) of the bamboo wall where fibres were most parallel.
• No generic quality in fibrous materials made them suitable; the fibres were often a disadvantage.
• Example: Wood (exogenous growth) could not be used because fibres were not parallel and were intercepted by radial fibres, making the carbon porous and friable.

⚖️ The injustice of monopolizing a class

• If Sawyer & Man's broad claim were upheld, it would:
  • Preclude others from experimenting with different fibrous materials.
  • Force competitors to abandon an entire domain (fibrous/textile materials) even though the patentees had not shown that domain was uniformly suitable.
  • Discourage invention rather than promote it.
• The Court emphasized: "The question really is whether the imperfectly successful experiments of Sawyer and Man... authorize them to put under tribute the results of the brilliant discoveries made by others."

⚖️ Analogy to wood vs. minerals

• If minerals had always been used for a purpose, and someone discovered that wood generally was suitable, a broad claim to wood might be valid.
• But if only certain kinds of wood with specific qualities worked, the patentee could not claim all wood and exclude others from discovering different suitable woods.
• The present case: Sawyer & Man found carbonized paper worked (imperfectly); Edison found bamboo worked (much better); no common quality united them except being "fibrous."

📋 The disclosure requirement (§ 4888 / modern § 112(a))

📋 Statutory language and purpose

Rev. Stat. § 4888 (predecessor to 35 U.S.C. § 112(a)): The application must contain a written description "in such full, clear, concise, and exact terms as to enable any person, skilled in the art... to make, construct, compound, and use the same."

• Three audiences:
  1. The public—to know what the patentee claims.
  2. The courts—to know what they must construe.
  3. Competitors—to know exactly what to avoid.
• If the description is so vague that one cannot tell how to construct the device except by independent experiments, the patent is void.

📋 The "no experimentation" rule

• Wood v. Underhill (1847): A patent for a brick-making compound that gave only ingredient names without proportions was void; one could not use the invention without experimentation.
• Tyler v. Boston (1868): A burning-fluid patent stating that the exact quantity of fusel oil "must be determined by experiment" was invalid.
• Application here: How could a person know which fibrous or textile material was suitable except by "the most careful and painstaking experimentation"?
  • Sawyer & Man's own experiments with carbonized paper and wood were inferior.
  • Edison's months-long search among thousands of materials was necessary to find bamboo.
  • The patent gave no guidance on what made a material suitable.

📋 Don't confuse: narrow vs. broad claims

• Claim 3 (carbonized paper): narrow, specific—probably valid.
  • If Sawyer & Man had discovered carbonized paper worked, claiming "all carbonized paper" might not be extravagant.
• Claims 1, 2, 4 (all fibrous/textile materials): broad, generic—invalid.
  • The fact that paper belongs to the fibrous kingdom did not give them "sovereignty over this entire kingdom."
  • Claiming an entire class without showing a unifying quality is an "unwarranted extension" of monopoly.

🧪 Edison's experiments and the bamboo discovery

🧪 What Edison did

• Conducted experiments for several months among different species of vegetable growth.
• Tried 30–40 different woods of exogenous growth—all failed (fibres not parallel, cells too large, carbon too porous).
• Tested a bamboo strip from a palm-leaf fan—obtained "surprising results."
• Sent a messenger to Japan and China to collect about 40 different bamboo species.
• Selected the best species after testing lamps made from each.

🧪 Why bamboo worked

• Key characteristic: fibres run nearly parallel (unlike other woods).
• Can be cut into filaments with parallel fibres throughout, producing homogeneous carbon.
• Used only a thin layer (about 20/1000 inch) of the bamboo wall where:
  • Fibres are most parallel.
  • Cell walls are smallest.
  • Pithy matter between fibres is minimal.
• If bamboo grew solid without fibres but kept its cellular structure, it would be even better.

🧪 Why this matters for the patent dispute

• Bamboo was not selected because it was vegetable/fibrous.
• It was selected because it had "certain peculiarities in its fibrous structure which distinguished it from every other fibrous substance."
• This shows there is no common quality across all fibrous materials that makes them suitable.

🛡️ Policy and practical consequences

🛡️ The risk of anticipation

• If the patent were construed to cover any fibrous/textile material, it would likely be invalidated by prior art.
• Evidence showed:
  • Wood charcoal used since Sir Humphry Davy's time (early 1800s) for arc lighting.
  • English patents (Greener & Staite 1846, De Moleyns 1841) used charcoal or boxwood charcoal for incandescent lamps.
  • Davy heated pieces of charcoal to vivid whiteness with electric current.
• The patentees' own attorney believed a broad claim for vegetable carbons could not be sustained because charcoal had been used before.

🛡️ Discouraging vs. promoting invention

• If broad claims were allowed:
  • Competitors would be "shut out" from discovering better materials in the same class.
  • Experimentation would be discouraged.
  • The patent system would "operate rather to discourage than to promote invention."
• The Court's holding:
  • One who discovers a specific suitable material cannot exclude everyone from the entire class of materials.
  • Others must remain free to experiment and discover superior specimens.

🏛️ The Court's holding and reasoning summary

🏛️ Why claims 1, 2, and 4 are invalid

• They are "too indefinite to be the subject of a valid monopoly."
• They fail the disclosure requirement: no one could determine which materials would work without extensive experimentation.
• They overreach: claiming an entire class (fibrous/textile materials) when only isolated members of that class are suitable.

🏛️ Why claim 3 is valid (but not infringed)

• It is limited to "carbonized paper"—a specific, narrow material.
• The Court noted it was "not infringed" by Edison's bamboo lamp.
• The complainant (Sawyer & Man's assignee) effectively abandoned this claim by adopting Edison's bamboo material.

🏛️ Final outcome

• The Circuit Court's dismissal of the bill was affirmed.
• Sawyer & Man's patent (except claim 3) was held invalid.
• Edison's use of bamboo did not infringe the valid claim (claim 3) because bamboo ≠ paper.

🧭 Overview

🧠 One-sentence thesis

The Supreme Court held that when a patent claims an entire functional class of inventions (here, all antibodies that bind and block PCSK9), the specification must enable a person skilled in the art to make and use the full scope of that class, not merely provide trial-and-error research methods.

📌 Key points (3–5)

• The patent bargain: In exchange for a limited monopoly, an inventor must disclose how to make and use the invention so the public benefits after the patent expires.
• Enablement scope rule: The more a patent claims, the more it must enable—claiming an entire functional class requires enabling the entire class, not just a few examples.
• What Amgen claimed vs. disclosed: Amgen claimed all antibodies that bind to PCSK9's "sweet spot" and block it (potentially millions), but only disclosed 26 specific antibodies by sequence and two trial-and-error methods.
• Why the methods failed: The "roadmap" and "conservative substitution" methods required unpredictable experimentation rather than reliable guidance, amounting to a "hunting license" not enablement.
• Common confusion: Enablement is not about whether some embodiments can eventually be found through effort; it is about whether the specification teaches a person skilled in the art to make and use all claimed embodiments without undue trial and error.

📜 The patent bargain and enablement requirement

📜 Constitutional and statutory foundation

The Constitution grants Congress power to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." (Art. I, §8, cl. 8)

• This creates a bargain: the inventor gets a limited monopoly in exchange for bringing "new designs and technologies into the public domain through disclosure."
• The public's benefit is that after the patent expires, "the knowledge of the invention inures to the people, who are thus enabled without restriction to practice it."

📜 Section 112(a) enablement mandate

35 U.S.C. §112(a) requires a specification to include "a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art … to make and use the same."

• This requirement has existed since the Patent Act of 1790.
• The statute ensures the public receives its side of the bargain: full knowledge of how to practice the invention once the patent term ends.
• Don't confuse: Enablement is not just about describing what the invention is; it is about teaching how to make and use it.

🔬 The science: antibodies and PCSK9 inhibitors

🔬 What antibodies are

• Antibodies are proteins the immune system produces to bind to and neutralize foreign agents (antigens).
• They are incredibly diverse: scientists estimate there may be as many unique antibodies as stars in the galaxy (potentially a quintillion).
• Structure: Antibodies are chains of amino acids (primary structure) that fold into complex three-dimensional shapes (tertiary structure).
• Function: An antibody's ability to bind to an antigen and block other molecules depends on its structure—how well the surfaces fit together at multiple contact points.

🔬 Unpredictability in antibody science

• Changing even one amino acid can alter an antibody's structure and function.
• Scientists cannot always predict how swapping amino acids will affect the antibody's three-dimensional shape and binding/blocking ability.
• As Amgen's own expert testified: translating amino acid sequence into three-dimensional structure "isn't fully understood today" and "is still not possible."

🔬 PCSK9 inhibitors for cholesterol treatment

• The problem: PCSK9 is a naturally occurring protein that binds to and degrades LDL receptors, which the body uses to remove LDL cholesterol from the bloodstream.
• The solution: Antibodies that bind to PCSK9's "sweet spot" (a sequence of 15 amino acids out of 692 total) can block PCSK9 from degrading LDL receptors, thereby lowering LDL cholesterol.
• Both Amgen (Repatha) and Sanofi (Praluent) developed such drugs, each using a distinct antibody with its own unique amino acid sequence.

⚖️ What Amgen claimed and disclosed

⚖️ The scope of Amgen's claims

• Amgen's 2014 patents (the '165 and '741 patents) did not claim any particular antibody by amino acid sequence.
• Instead, Amgen claimed the entire genus of antibodies that:
  1. Bind to specific amino acid residues on PCSK9 (the sweet spot), and
  2. Block PCSK9 from binding to LDL receptors.
• This class includes potentially millions of antibodies, not just the ones Amgen had made.

⚖️ What Amgen disclosed

• Amgen identified the amino acid sequences of 26 antibodies that perform the two claimed functions.
• Amgen depicted the three-dimensional structures of 2 of these 26 antibodies.
• Beyond that, Amgen provided two methods for finding additional functional antibodies:
  1. "Roadmap": Generate a range of antibodies → test if they bind to PCSK9 → test if they bind to the sweet spot → test if they block PCSK9 from binding to LDL receptors.
  2. "Conservative substitution": Start with a known functional antibody → replace select amino acids with others having similar properties → test if the resulting antibody still works.

⚖️ Why this matters

• Amgen sought a monopoly over millions of antibodies but only taught how to make 26 specific ones.
• The two methods require trial-and-error experimentation, not reliable guidance.
• Don't confuse: Disclosing a method to search for functional embodiments is not the same as enabling a person skilled in the art to make and use them.

📚 Historical precedents: the "more you claim, more you must enable" rule

📚 O'Reilly v. Morse (1854): telegraphic communication

• What Morse claimed: His eighth claim covered "the use of the motive power of the electric or galvanic current … for marking or printing intelligible characters, signs, or letters, at any distances"—essentially, all means of telegraphic communication.
• What Morse disclosed: Specific structures and systems he had designed, but not how to achieve telegraphic communication by all possible means.
• The Court's holding: The eighth claim was "too broad, and not warranted by law" because Morse had not described how to make and use all means of telegraphic communication.
• Example: If Morse's claim were valid, "there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance."

📚 The Incandescent Lamp Patent (1895): fibrous materials

• What Sawyer and Man claimed: All "carbonized fibrous or textile material" for incandescent lamp conductors.
• What they disclosed: A lamp using carbonized paper, which failed commercially.
• The Court's holding: The claim was invalid because most fibrous and textile materials did not work; only through "painstaking experimentation" did Edison discover that bamboo worked.
• The Court stated: "The fact that paper happens to belong to the fibrous kingdom did not invest [Sawyer and Man] with sovereignty over this entire kingdom."
• Key principle: A broad claim "might" be permissible if the specification disclosed "a quality common" to the claimed class that made all members "peculiarly" adapted to the purpose—but Sawyer and Man did not do so.

📚 Holland Furniture Co. v. Perkins Glue Co. (1928): starch glues

• What Perkins claimed: All "starch glue which, [when] combined with about three parts or less by weight of water, will have substantially the same properties as animal glue."
• What Perkins disclosed: A specific starch glue, but described the key "starch ingredient" only in terms of its function ("as good as animal glue") rather than its physical or chemical properties.
• The Court's holding: The claim was invalid because "one attempting to use or avoid the use of Perkins' discovery … could do so only after elaborate experimentation" with different starches.
• Perkins was entitled to a patent on the specific starch glue it invented, but not all starch glues that happen to work as well as animal glue.

📚 The unifying principle

Case	What was claimed	What was disclosed	Why invalid
Morse	All telegraphic communication	Specific telegraph systems	Did not teach all means of communication
Incandescent Lamp	All fibrous/textile materials	Carbonized paper (failed)	Did not disclose common quality; most materials failed
Holland Furniture	All starch glues as good as animal glue	One specific starch glue	Described ingredient only by function; required experimentation

• The rule: "If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent's specification must enable a person skilled in the art to make and use the entire class."
• "The more one claims, the more one must enable."

🧪 When is some experimentation acceptable?

🧪 Reasonable adaptation and testing is allowed

• A specification is not "necessarily inadequate just because it leaves the skilled artist to engage in some measure of adaptation or testing."
• Wood v. Underhill (1846): A patent claimed a process for making bricks by mixing coal dust into clay. The specification gave a general rule for proportions and alternatives "where the clay has some peculiarity." The Court upheld the claim, recognizing that "some small difference in the proportions must occasionally be required" given the varieties of clay.
• Minerals Separation, Ltd. v. Hyde (1916): A patent claimed a process for separating metal from mineral ores. The record showed "preliminary tests" were required to adapt the process to any particular ore. The Court held this was acceptable because "the composition of ores varies infinitely," so "it was impossible to specify in a patent the precise treatment which would be most successful and economical in each case."

🧪 What is "reasonable" depends on the art

• "What is reasonable in any case will depend on the nature of the invention and the underlying art."
• The specification must be addressed "to those skilled in the art" and "may leave something to their skill in applying the invention."
• But: Courts cannot detract from the basic statutory requirement that the specification describe the invention "in such full, clear, concise, and exact terms as to enable any person skilled in the art" to "make and use" it.

🧪 The line: guidance vs. hunting license

• Acceptable: Routine adaptation or testing to account for natural variation in materials or conditions.
• Not acceptable: Trial-and-error discovery to find which embodiments work at all.
• Don't confuse: Leaving some details to the skilled artisan's judgment (Wood, Minerals Separation) is different from leaving the artisan to randomly search for functional embodiments (Amgen).

🔍 Why Amgen's methods failed the enablement test

🔍 The "roadmap" method

• What it is: A step-by-step description of Amgen's own trial-and-error process:
  1. Generate a range of candidate antibodies.
  2. Test which bind to PCSK9.
  3. Test which bind to the sweet spot.
  4. Test which block PCSK9 from binding to LDL receptors.
• Why it fails: This is not enablement; it is a research assignment. It "leave[s] a scientist about where Sawyer and Man left Edison: forced to engage in 'painstaking experimentation' to see what works."
• Example: "Imagine a combination lock with 100 tumblers, each of which can be set to 20 different positions. Through trial and error, imagine that an inventor finds and discloses 26 different successful lock combinations. But imagine, too, that the inventor tries to claim much more, namely all successful combinations, while instructing others to randomly try a large set of combinations and then record the successful ones." That "roadmap" would produce functional combinations, but it would not enable others to make and use them; it would leave them to "random trial-and-error discovery."

🔍 The "conservative substitution" method

• What it is: Start with a known functional antibody → replace select amino acids with others having similar properties → test if the resulting antibody still works.
• Why it fails: Given the unpredictability of antibody science (changing one amino acid can alter structure and function in ways scientists cannot reliably predict), this method also requires uncertain trial and error.
• The Court noted that whether such methods "might suffice to enable other claims in other patents—perhaps because … the inventor identifies a quality common to every functional embodiment … they do not here."

🔍 The verdict: a "hunting license," not enablement

• Amgen's methods amount to "little more than two research assignments."
• They do not enable a person skilled in the art to make and use the full scope of the claimed antibodies; they merely describe how to search for them.
• The Court quoted Brenner v. Manson (1966): "That is not enablement. More nearly, it is 'a hunting license.'"

🛡️ Amgen's counterarguments and the Court's responses

🛡️ Argument 1: The Federal Circuit applied the wrong test

• Amgen's claim: The Federal Circuit conflated enablement with "how long may it take a person skilled in the art to make every embodiment within a broad claim."
• The Court's response: "Enablement is not measured against the cumulative time and effort it takes to make every embodiment within a claim." But the Federal Circuit did not think otherwise; it stressed that the problem was Amgen's methods required "trial and error," not that they took a long time. "We review judgments of the lower courts, not statements in their opinions."

🛡️ Argument 2: The Federal Circuit raised the bar for genus claims

• Amgen's claim: The Federal Circuit impermissibly "raise[d] the bar" for enablement of claims that encompass an entire "genus" of embodiments defined by function, but the Patent Act "provides a single, universal enablement standard for all invention[s]."
• The Court's response: "There is one statutory enablement standard." But the Federal Circuit only recognized that "the more a party claims for itself the more it must enable"—which is "entirely consistent with Congress's directive and this Court's precedents."

🛡️ Argument 3: Affirmance will destroy innovation incentives

• Amgen's claim: An affirmance risks "destroy[ing] incentives for breakthrough inventions."
• The Court's response: "Striking the proper balance between incentivizing inventors and ensuring the public receives the full benefit of their innovations is a policy judgment that belongs to Congress." Since 1790, Congress has included an enablement mandate to achieve the balance it wishes. "Our only duty in this case lies in applying that mandate faithfully."

🎯 The Court's holding and reasoning

🎯 The core holding

• Amgen's claims 19 and 29 of the '165 patent and claim 7 of the '741 patent are invalid for lack of enablement.
• While Amgen's specification enables the 26 exemplary antibodies it identifies by amino acid sequence, "the claims before us sweep much broader than those 26 antibodies."
• Amgen has "failed to enable all that it has claimed, even allowing for a reasonable degree of experimentation."

🎯 The analogy to historical cases

• "While the technology at the heart of this case is thoroughly modern, from the law's perspective Amgen's claims bear more than a passing resemblance to those this Court faced long ago in Morse, Incandescent Lamp, and Holland Furniture."
• Amgen seeks to monopolize "an entire class of things defined by their function"—just as Morse sought all telegraphic communication, Sawyer and Man sought all fibrous materials for incandescence, and Perkins sought all starch glues that work as well as animal glue.
• "Amgen seeks to claim 'sovereignty over [an] entire kingdom' of antibodies."

🎯 The takeaway principle

• "If our cases teach anything, it is that the more a party claims, the broader the monopoly it demands, the more it must enable."
• "That holds true whether the case involves telegraphs devised in the 19th century, glues invented in the 20th, or antibody treatments developed in the 21st."
• "Section 112 of the Patent Act reflects Congress's judgment that if an inventor claims a lot, but enables only a little, the public does not receive its benefit of the bargain."

🎯 Final note

• "Today's case may involve a new technology, but the legal principle is the same."
• The judgment is affirmed.

🧭 Overview

🧠 One-sentence thesis

Claim construction—the process of interpreting patent claim language and giving it legal meaning—is essential in infringement disputes because the meaning of particular claim terms often determines the outcome of patent litigation.

📌 Key points (3–5)

• What claim construction is: interpreting the words of a patent claim and giving those interpretations legal meaning, done only in the context of disputes like infringement litigation or validity challenges.
• Why it's needed: patent claims are written in English and exhibit all the ambiguities and uncertainties language contains, so terms must be interpreted for the fact finder to properly understand them.
• When it happens: claim construction is only done in the context of a dispute, not in the abstract, because there is no need to construe a claim without a specific controversy.
• Common confusion: distinguishing between structural terms (like "baffles") and means-plus-function language under 35 U.S.C. § 112, paragraph 6—the absence of the word "means" creates a rebuttable presumption that means-plus-function claiming does not apply.
• Central tension: determining the extent to which courts should rely on the patent's specification versus the plain language of the claims when interpreting claim terms.

📜 The nature of patent claims and construction

📝 Why claims are difficult to read

• Most claims are not particularly easy to read.
• The words are not necessarily ones with only a singular meaning.
• Language is imprecise, and since claims are written in English, they can exhibit all the ambiguities and uncertainties our language contains.
• Just as statutes and contracts can be subjected to multiple interpretations, so too can patent claims.

⚖️ The construction process

Claim construction: the process of interpreting the words of a patent claim and then giving those interpretations legal meaning.

• Sometimes there are claim terms that must be interpreted so that the meaning can be properly understood by the fact finder.
• Because many patent disputes can turn on the meaning of a particular term in the claim, numerous opinions have been written that construe those terms.
• Claim construction is only done in the context of a dispute, such as infringement litigation or validity challenges.
• There is no need to construe a claim in the abstract.

🏛️ Procedural context

• Decisions made with respect to patent infringement are appealed to the Court of Appeals for the Federal Circuit, and possibly later to the Supreme Court.
• Recent questions have been raised involving the issue of who gets to construe claim terms and what form of appellate review is appropriate.
• The Supreme Court addressed this issue in Teva v. Sandoz (2015).

🔍 The Phillips v. AWH case

🏗️ The invention and dispute

• Edward H. Phillips invented modular, steel-shell panels that can be welded together to form vandalism-resistant walls.
• The panels are especially useful in building prisons because they are load-bearing and impact-resistant, while also insulating against fire and noise.
• Phillips obtained U.S. Patent No. 4,677,798 and entered into an arrangement with AWH Corporation to market and sell the panels.
• After the arrangement ended in 1990, Phillips accused AWH of patent infringement and trade secret misappropriation in 1997.

📋 The disputed claim language

Claim 1 recites:

• "Building modules adapted to fit together for construction of fire, sound and impact resistant security barriers and rooms..."
• "...further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls."

The central dispute focused on the meaning of "baffles."

⚖️ District court's interpretation

• The district court interpreted the language as "a means . . . for performing a specified function," subject to 35 U.S.C. § 112, paragraph 6.
• Looking to the specification, the court noted that "every textual reference in the Specification and its diagrams show baffle deployment at an angle other than 90° to the wall faces."
• The district court ruled that a baffle must "extend inward from the steel shell walls at an oblique or acute angle to the wall face" and must form part of an interlocking barrier.
• Because Phillips could not prove infringement under that claim construction, the district court granted summary judgment of noninfringement.

🔄 Panel decision and disagreement

The panel was divided:

Majority view:

• Determined that "baffles" contains sufficient recitation of structure and does not invoke means-plus-function claiming.
• Nonetheless concluded that the patent uses "baffles" in a restrictive manner.
• Based on the specification's repeated references to deflecting projectiles and the description of baffles as "disposed at such angles that bullets which might penetrate the outer steel panels are deflected," the panel concluded that baffles must be oriented at angles other than 90°.
• Noted that nowhere in the patent is there any disclosure of a baffle projecting from the wall at a right angle.
• Upheld the district court's summary judgment of noninfringement.

Dissenting view:

• Argued that the panel had improperly limited the claims to the particular embodiment disclosed in the specification, rather than adopting the "plain meaning" of "baffles."
• Noted that the parties had stipulated that "baffles" are a "means for obstructing, impeding, or checking the flow of something."
• Contended that nothing in the specification redefined the term "baffles" or constituted a disclaimer specifically limiting the term to less than the full scope of its ordinary meaning.
• Concluded that "there is no reason to supplement the plain meaning of the claim language with a limitation from the preferred embodiment."
• Argued the court should have adopted the general purpose dictionary definition and reversed the summary judgment of noninfringement.

🔧 Structural terms vs. means-plus-function claiming

🏗️ What makes "baffles" structural

Means-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function.

• The term "baffles" does not use the word "means."
• The absence of that term creates a rebuttable presumption that section 112, paragraph 6, does not apply.
• While the baffles are clearly intended to perform several functions, the term "baffles" is nonetheless structural; it is not a purely functional placeholder in which structure is filled in by the specification.

📐 Evidence of structural character

The claims and specification establish that "steel baffles" refer to particular physical apparatus:

• The claim characterizes the baffles as "extend[ing] inwardly" from the steel shell walls, which plainly implies that the baffles are structures.
• The specification makes clear that "steel baffles" refers to particular internal wall structures and is not simply a general description of any structure that will perform a particular function.
• Example from specification: "the load bearing baffles 16 are optionally used with longer panels" and "opposing panels are compressed between the flange 35 and the baffle 26."

⚠️ Don't confuse with means-plus-function

• The claim refers to "means disposed inside the shell for increasing its load bearing capacity," which would ordinarily invoke means-plus-function format.
• However, the claim specifically identifies "internal steel baffles" as structure that performs the recited function.
• In contrast to the "load bearing means" limitation, the reference to "baffles" does not use the word "means."
• Because "baffles" is not subject to section 112, paragraph 6, the district court erred by limiting the term to corresponding structures disclosed in the specification and their equivalents.

📖 The role of specification in claim construction

📋 Statutory framework

35 U.S.C. § 112 establishes two key requirements:

Paragraph	Requirement	Purpose
First paragraph	The specification shall contain a written description of the invention in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use it	Describes the invention
Second paragraph	The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention	Defines the invention's scope

⚖️ The central tension

• The second paragraph requires courts to look to the language of the claims to determine what "the applicant regards as his invention."
• The first paragraph requires that the specification describe the invention set forth in the claims.
• The principal question: the extent to which courts should resort to and rely on a patent's specification in seeking to ascertain the proper scope of its claims.

🕰️ Historical context

• The role of the specification in claim construction has been an issue in patent law decisions in this country for nearly two centuries.
• The Federal Circuit addressed the relationship between the specification and the claims at length in its en banc opinion in Markman v. Westview Instruments, Inc. (1995).

⚖️ Infringement under 35 U.S.C. § 271

🚫 Direct infringement (§ 271(a))

Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

Key elements:

• Without authority
• Makes, uses, offers to sell, or sells
• Any patented invention
• Within the United States or imports into the United States
• During the term of the patent

🎯 Induced infringement (§ 271(b))

Whoever actively induces infringement of a patent shall be liable as an infringer.

• Requires active inducement of another party's infringement.

🔩 Contributory infringement (§ 271(c))

Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

Requirements:

• Component of a patented invention
• Constituting a material part of the invention
• Knowing it is especially made or adapted for infringing use
• Not a staple article or commodity of commerce suitable for substantial noninfringing use

🧭 Overview

🧠 One-sentence thesis

The Federal Circuit reaffirms that claim terms must be construed primarily through the intrinsic evidence—especially the specification—rather than starting with broad dictionary definitions, because the specification reveals how the inventor actually used and understood the claimed terms.

📌 Key points (3–5)

• Claim terms are construed from the perspective of a person of ordinary skill in the art at the time of invention, reading the claims in the context of the entire patent (specification + prosecution history).
• The specification is the "single best guide" to the meaning of disputed claim terms, because it is created by the inventor to describe the invention and must enable others to make and use it.
• Dictionaries and extrinsic evidence are secondary tools: they may help understand ordinary meaning but risk importing abstract definitions divorced from the inventor's actual use and context.
• Common confusion: construing claims vs. importing limitations—courts must interpret terms as the inventor used them without confining claims to specific embodiments described in the specification, yet also without reading in restrictions the inventor did not intend.
• The Texas Digital approach is rejected: starting with dictionary definitions and then checking the specification inverts the proper order and risks systematic overbreadth.

📜 The statutory framework and claim primacy

📜 Claims define the invention

"The claims of a patent define the invention to which the patentee is entitled the right to exclude."

• This is a "bedrock principle" of patent law, recognized since 1836.
• The claims are "of primary importance" in determining what is patented.
• The public and competitors must be able to rely on claim language to understand the scope of the patent grant.

🎯 Ordinary and customary meaning standard

• Claim terms are given their ordinary and customary meaning to a person of ordinary skill in the art at the time of invention (the effective filing date).
• This provides an objective baseline: inventors are skilled artisans, and patents are written for others in the field.
• The inquiry is not abstract dictionary meaning, but meaning in context—the person of skill reads the claim term within the entire patent document.

Example: If a claim recites "steel baffles," the context strongly implies that "baffles" does not inherently mean objects made of steel; otherwise "steel" would be redundant.

Don't confuse: "Ordinary meaning" does not mean "dictionary meaning in isolation." It means the meaning an artisan would assign after reading the specification and claims together.

🔬 The role of intrinsic evidence

🔬 The specification as primary guide

"The specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."

• The specification is a "concordance for the claims" and the "primary basis for construing the claims."
• Statutory basis: 35 U.S.C. § 112 requires the specification to describe the invention in "full, clear, concise, and exact terms."
• The specification and claims are part of "a fully integrated written instrument"—claims must be read in view of the specification.

Why the specification matters:

• It is created by the inventor at the time of patent prosecution to explain the invention.
• It describes what the inventor actually invented and intended to claim.
• The PTO examines claims by giving them their broadest reasonable construction "in light of the specification."

📖 How the specification informs claim meaning

The specification can define claim terms in two ways:

1. Express definition: The inventor acts as his own lexicographer and explicitly defines a term differently from its ordinary meaning.
2. Implicit definition: The specification defines terms by implication—meaning may be "found in or ascertained by a reading of the patent documents" even without an explicit statement.

Example: If the specification consistently describes "baffles" as vertical panels that extend between two walls, that usage implicitly limits the term even if no sentence says "baffles are defined as…"

Don't confuse: Using the specification to understand claim terms is not the same as improperly importing limitations. The question is always: how would a person of skill in the art understand this term after reading the specification?

🗂️ Other claims and claim context

• Other claims in the patent (asserted and unasserted) help illuminate meaning because terms are normally used consistently.
• Claim differentiation: If a dependent claim adds a limitation, there is a presumption that the limitation is not in the independent claim.
• Context within the claim: The surrounding words and structure of the claim itself are instructive.

Example: If claim 1 recites "a baffle" and claim 2 (dependent on claim 1) adds "wherein the baffle is made of steel," this suggests claim 1 is not limited to steel baffles.

📂 Prosecution history

"The prosecution history provides evidence of how the PTO and the inventor understood the patent."

• The prosecution history is the complete record of proceedings before the Patent Office, including prior art and amendments.
• It is part of the "intrinsic evidence" but is often less clear than the specification because it represents an ongoing negotiation, not a final product.
• Key use: The prosecution history can show whether the inventor limited or disclaimed claim scope during examination, making the claims narrower than they would otherwise be.

Don't confuse: Prosecution history is useful when it clearly shows a disclaimer or narrowing amendment, but ambiguous statements are less helpful and should not override the specification.

🔍 The limited role of extrinsic evidence

🔍 What is extrinsic evidence

"Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises."

• Extrinsic evidence is "less significant than the intrinsic record" in determining claim meaning.
• It may be useful but is "less reliable" for several reasons.

⚠️ Why extrinsic evidence is less reliable

Reason	Explanation
Not part of the patent	Created outside patent prosecution, not for the purpose of explaining the patent's scope.
May not reflect skilled artisan's view	Publications may not be written by or for persons of skill in the art.
Litigation bias	Expert testimony is generated for litigation and can suffer from bias; not subject to the same scrutiny as intrinsic evidence.
Unbounded universe	Parties can cherry-pick favorable sources, leaving courts to "filter the useful from the fluff."
Risk to public notice	Overreliance can change claim meaning in derogation of the public record (claims, specification, prosecution history).

📚 Permissible uses of dictionaries and treatises

• Dictionaries and technical treatises can help the court understand the technology and the field.
• They are "objective resources" and "accessible to the public in advance of litigation."
• Proper use: Consult dictionaries "at any time to better understand the underlying technology," but only if the definition does not contradict the intrinsic evidence.

Example: A general-purpose dictionary may list ten meanings for "baffle." The court may consult it to understand possible meanings, but must then look to the specification to see which meaning(s) the inventor actually used.

Don't confuse: Dictionaries provide possible meanings, not the legally operative meaning. The specification controls.

👨‍🔬 Expert testimony

• Experts can provide background on technology, explain how an invention works, and confirm that the court's understanding is consistent with a person of skill in the art.
• Limitations: Conclusory assertions by experts are not useful. Expert testimony "clearly at odds with the written record" should be discounted.

❌ Rejection of the Texas Digital approach

❌ What Texas Digital held

The Texas Digital line of cases suggested a methodology:

1. Start with dictionary definitions to determine the "ordinary meaning" of claim terms.
2. Consult the specification only afterward, to see if it excludes one of the dictionary meanings or contains an explicit redefinition or clear disavowal.
3. If multiple dictionary definitions are consistent with the intrinsic record, construe the claim to encompass all such meanings.

Rationale: Avoid "reading limitations from the specification into the claims" by not consulting the specification as a "threshold step."

❌ Why this approach is flawed

• Inverts the proper order: The specification should not be a mere "check" on dictionary definitions; it is the primary guide.
• Focuses on abstract meaning: Dictionaries define words in the abstract, not as the inventor used them in the context of the patent.
• Risk of systematic overbreadth: Starting with broad dictionary definitions and failing to appreciate implicit limitations in the specification causes claims to be construed too expansively.
• Inconsistent with precedent: The approach conflicts with the principle that the specification "acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication."

Example: A dictionary might list "baffle" as (1) a partition, (2) a deflector, (3) a sound-dampening device, (4) a puzzle. If the court starts with all four meanings and only narrows if the specification explicitly disclaims three of them, the claim may cover subject matter the inventor never intended.

Don't confuse: The concern about importing limitations is valid, but the solution is not to ignore the specification. The solution is to focus on how a person of skill in the art would understand the term after reading the specification.

🔄 The correct approach

• Start with intrinsic evidence: Focus on how the inventor used the claim term in the claims, specification, and prosecution history.
• Understand the invention: The "ordinary meaning" is the meaning to the ordinary artisan after reading the entire patent.
• Use dictionaries as aids: Dictionaries may help, but only in the context of the intrinsic evidence.
• Avoid over-limiting: Do not confine claims to specific embodiments in the specification unless the inventor clearly intended that limitation.

⚖️ Construing claims vs. importing limitations

⚖️ The fine line

"There is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification."

• Proper construction: Understanding how a person of skill in the art would interpret the term based on the specification.
• Improper importation: Restricting the claim to a specific embodiment or feature described in the specification when the claim language is broader.

⚖️ Key principles to avoid improper importation

• Claims are not limited to embodiments: The specification often describes specific embodiments, but claims may embrace different or broader subject matter.
• Single embodiment does not limit claims: Even if the specification describes only one embodiment, the claims are not automatically confined to it.
• Purpose of the specification: To teach and enable, not to limit. Providing examples of how to practice the invention does not mean the claims cover only those examples.

Example: If the specification describes baffles as "preferably made of steel" and shows drawings of steel baffles, this does not mean "baffles" in the claim is limited to steel—unless the inventor clearly disclaimed non-steel baffles.

Don't confuse: Using the specification to understand what "baffles" means (e.g., load-bearing partitions) is proper construction. Limiting "baffles" to the exact dimensions or materials shown in one drawing is improper importation.

⚖️ How to discern the line

• Keep focus on how a person of ordinary skill in the art would understand the claim terms.
• Ask: Does the specification show the inventor used the term in a special way, or does it merely provide examples?
• Look for clear disavowals or disclaimers in the specification or prosecution history—explicit statements that narrow claim scope.

🎓 Summary of the hierarchy of evidence

Type of Evidence	Role	Reliability	When to Use
Claims themselves	Define the invention; provide context	Highest—part of the patent grant	Always; starting point
Specification	Single best guide; describes invention; may define terms expressly or by implication	Highest—created by inventor to explain invention	Always; primary interpretive tool
Prosecution history	Shows how inventor and PTO understood claims; may reveal disclaimers	High, but often less clear than specification	When available and relevant; especially for disclaimers
Dictionaries/treatises	Provide possible meanings; help understand technology	Moderate—objective but not tailored to the patent	As aids, after consulting intrinsic evidence
Expert testimony	Educate court on technology; confirm understanding	Lower—generated for litigation, subject to bias	To provide background; discount if contradicts intrinsic evidence

Key takeaway: The court must work from the inside out—claims, specification, prosecution history first; then extrinsic evidence only as needed and in context.

🧭 Overview

🧠 One-sentence thesis

Patent-eligible subject matter is constrained by judicial exceptions that exclude naturally occurring products, natural laws, and abstract ideas from patentability, even though the statutory categories are broadly interpreted.

📌 Key points (3–5)

• Statutory foundation: 35 U.S.C. § 101 defines four broad categories (process, machine, manufacture, composition of matter), but Supreme Court has created exceptions.
• Products of nature exception: Naturally occurring things cannot be patented, but human-made modifications or creations can be (e.g., genetically modified organisms vs. isolated natural DNA).
• Abstract ideas exception: Processes that are too abstract or merely monopolize natural laws are not patent-eligible, even if they involve business methods or investment strategies.
• Common confusion: The distinction between discovering something natural (not patentable) vs. creating something through human ingenuity (patentable)—substantial work alone doesn't make a natural product patentable.
• Modern framework: The Alice/Mayo two-step test asks (1) whether the claim is directed to an ineligible concept, and (2) whether there's an "inventive concept" that transforms it into patent-eligible subject matter.

📜 Statutory and constitutional basis

📜 The text of § 101

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new or useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

• This statute defines four broad categories of patentable subject matter.
• "Process" is further defined as "process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material" (35 U.S.C. § 100(b)).
• The categories are interpreted broadly by courts.

⚖️ Judicial exceptions overlay

• Despite the broad statutory language, Supreme Court decisions have created exceptions.
• Three main exceptions limit what can be patented:
  • Things that already exist in nature
  • Natural laws
  • Abstract ideas
• These exceptions operate even when the claimed invention is new and useful.

📰 Printed matter doctrine

• Inventions where the only difference from prior art is "printed matter" are traditionally disfavored.
• Example: Placing pictures of a university marching band on playing cards would not be given patentable weight.
• The physical substrate (cards) already exists; the only change is informational content.

🌿 Products of nature exception

🌿 The basic rule

• Naturally occurring products are not patent-eligible.
• The rationale: these things already exist in nature and are discovered, not invented.
• Example: Discovering a new tree species and picking a leaf from it—the leaf cannot be patented because it exists naturally.

🔬 The human ingenuity distinction

• The key question: Is the claimed invention a product of human ingenuity or merely something that exists in nature?
• Substantial work to obtain or purify a natural product does not automatically make it patentable.
• The distinction turns on whether the inventor created something new or simply isolated something pre-existing.

🧬 Diamond v. Chakrabarty (1980)

• Facts: Dr. Chakrabarty filed a patent application for a genetically modified micro-organism.
• Examiner's rejection: (1) micro-organism is a product of nature; (2) living things are not patent-eligible.
• Supreme Court holding: The claims were directed to patent-eligible subject matter.
• Reasoning: The micro-organism is "a non-naturally occurring composition of matter" and a "product of human ingenuity."
• Significance: Rejected a per se rule prohibiting patents on living things.
• Don't confuse: The Court did not say all living things are patentable—only those that are non-naturally occurring and created through human intervention.

🧬 AMP v. Myriad (2013)

• Facts: Myriad obtained patent claims covering "isolated DNA" fragments of BRCA1 and BRCA2 genes.
• Myriad's argument: Substantial work went into identifying these sequences.
• Supreme Court holding on isolated DNA: Not patent-eligible subject matter.
• Reasoning: The claims simply covered something that existed in nature—Myriad did not create or alter the genetic sequence or structure.
• Holding on cDNA: Patent-eligible subject matter.
• Reasoning: cDNA consisted of isolated DNA with non-coding sections removed; this did not exist in that state in nature and Myriad had to create it.

Type of DNA	Patent-eligible?	Why?
Isolated DNA (natural sequence)	No	Exists in nature; merely discovered and isolated
cDNA (modified sequence)	Yes	Does not exist in that state in nature; created through human action

• Don't confuse: The amount of work or difficulty in isolating something natural does not determine eligibility—the question is whether the claimed product itself is naturally occurring or human-made.

🧠 Abstract ideas exception

🧠 Processes vs. things

• Processes are different from machines, manufactures, and compositions of matter.
• Processes are not physical "things"; they are a series of steps to achieve a desired outcome.
• This creates special challenges: when does a process become too abstract to patent?

🧠 Two main concerns with process patents

1. Too abstract: The claimed invention is not concrete enough to be patentable.
2. Monopolizing natural law: The claim covers a natural law itself rather than a specific human application of that law.

📈 Historical context (1981–2010)

• During this period, disputes over patentable subject matter were relatively minimal.
• No Supreme Court decisions addressed patent eligibility.
• The Federal Circuit gradually allowed broader and broader patent-eligible subject matter.
• This included patents on methods of doing business.

📈 The landscape shift (2008–2014)

• 2008: Federal Circuit adopted a strict test for subject matter eligibility in In re Bilski.
• 2010: Supreme Court decided Bilski v. Kappos.
  • Issue: Whether a method of hedging risk to maximize investment profits is patent-eligible.
  • Holding: Risk hedging is an abstract idea that does not constitute patent-eligible subject matter.
  • The Court rejected the Federal Circuit's strict test but still found the claims ineligible.
• 2012–2014: Three more Supreme Court cases followed:
  • Mayo v. Prometheus (2012)
  • Ass'n for Molecular Pathology v. Myriad Genetics (2013)
  • Alice v. CLS Bank (2014)

🔍 The Alice/Mayo framework

🔍 Two-step analysis

The Supreme Court developed this framework in Alice and Mayo to analyze patent-eligible subject matter questions.

Step 1: Is the claim "directed to" a patent-ineligible concept?

• Ask whether the claim covers a natural law, natural product, or abstract idea.
• If no, the claim is patent-eligible.
• If yes, proceed to Step 2.

Step 2: Is there an "inventive concept" sufficient to transform the claimed abstract idea into a patent-eligible application?

• Look for something else in the claims beyond the ineligible concept itself.
• This additional element must be enough to transform the claim into patent-eligible subject matter.
• Mere application of the abstract idea or natural law is not enough; there must be an inventive concept.

🔍 How to apply the framework

• The framework applies to all three judicial exceptions (natural products, natural laws, abstract ideas).
• The key question in Step 2: Does the claim add something that amounts to "significantly more" than the ineligible concept itself?
• Don't confuse: "Inventive concept" in this context is different from the novelty and non-obviousness requirements—it's about whether the claim as a whole is directed to patent-eligible subject matter, not whether it's new or inventive in the traditional sense.

🔍 Example application

Example: A claim to "hedging risk to maximize investment profits."

• Step 1: Is this directed to an abstract idea? Yes—risk hedging is an abstract concept.
• Step 2: Is there an inventive concept that transforms this into patent-eligible subject matter? The Court in Bilski found no such inventive concept.
• Result: Not patent-eligible.

🧭 Overview

🧠 One-sentence thesis

Claim construction requires courts to interpret patent claim terms using intrinsic evidence (claims, specification, prosecution history) and extrinsic evidence, but courts should not artificially narrow claim scope to preserve validity or read limitations from dependent claims into independent claims.

📌 Key points (3–5)

• Core principle: Independent claims should be given broader scope than dependent claims to avoid rendering the dependent claim redundant.
• Multiple objectives rule: A patent asserting multiple objectives does not require every claim to be construed as limited to structures achieving all objectives.
• Validity preservation doctrine: Courts apply the maxim of construing claims to preserve validity only when claim language remains ambiguous after applying all available construction tools.
• Common confusion: Don't confuse the specification's discussion of specific embodiments or advantages with mandatory limitations on all claim terms—the specification must teach and enable all claims, not restrict every claim to every disclosed feature.
• Natural products exception: Naturally occurring products are not patent eligible, but non-naturally occurring compositions created by human ingenuity may be patentable even if they involve living organisms.

🔍 Claim construction methodology

🔍 Reading independent and dependent claims together

The Federal Circuit applies a fundamental rule when interpreting claim scope:

Independent claims should be given broader scope than dependent claims to avoid rendering the dependent claim redundant.

• Why this matters: If an independent claim already contained all the limitations of a dependent claim, the dependent claim would serve no purpose.
• How to apply: When a dependent claim adds a specific limitation (e.g., "baffles positioned at angles to deflect projectiles"), this signals that the independent claim's broader term ("baffles") does not inherently require that limitation.
• Example: In the '798 patent case, claim 1 recited "baffles" generally, while claim 2 added "positioned at angles tending to deflect any projectiles." This structure indicates the patentee did not contemplate that "baffles" already contained the deflection limitation.

📋 Using the specification without over-limiting

The specification plays a critical role but must not be used to improperly narrow claims:

• What the specification does: It must teach and enable all the claims, including dependent claims with specific limitations.
• What it doesn't do: Discussion of specific embodiments or advantages does not automatically limit all claims to those features.
• The court noted that the '798 patent specification discusses positioning baffles to deflect projectiles at several points, but this serves to enable claims 2, 6, 17, and 23 (which specifically claim projectile-deflecting baffles), not to limit claim 1.

🎯 Multiple purposes and objectives

The fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.

The '798 patent specification described multiple purposes for baffles:

• Providing structural support (described as "strengthening triangular baffle")
• Deflecting projectiles
• Creating compartments for insulation or gravel
• Obstructing flow of material between compartments for "custom tailoring"

Key insight: A structure can qualify as a "baffle" even if it serves only some of these functions, not all of them in every embodiment.

⚖️ Validity preservation doctrine

⚖️ Limited application of the doctrine

The court addressed when claims should be construed to preserve validity:

The maxim that claims should be construed to preserve their validity is limited to cases in which "the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous."

Three requirements for applying this doctrine:

1. The claim must remain ambiguous after applying all construction tools
2. The proposed construction must be practicable and based on sound principles
3. The construction must not revise or ignore explicit claim language

🏛️ Historical rationale

The doctrine originated in Klein v. Russell (1873):

• The law required that a reissued patent be for the same invention as the original
• The Court presumed the Commissioner "did his duty" and did not issue an invalid patent
• Therefore, ambiguous language should be construed to sustain the patent

Modern application: The doctrine depends on the strength of the inference that the PTO would have recognized one interpretation renders the claim invalid and would not have issued the patent under that construction.

❌ When the doctrine does not apply

In the AWH case, the court rejected applying the validity preservation doctrine because:

• The claim term "baffles" was not ambiguous
• It could be construed without considering whether one construction would render the claim invalid
• The doctrine has "limited utility in any event"

Don't confuse: This is not a tool for rescuing clearly invalid claims; it applies only to resolve genuine ambiguity in claim language.

🧬 Patent eligible subject matter

🧬 Statutory framework

35 U.S.C. § 101 states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new or useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Four statutory categories:

• Process (defined as "process, art or method")
• Machine
• Manufacture
• Composition of matter

🚫 Judicial exceptions

The Supreme Court has created exceptions limiting eligible subject matter:

Exception	What it excludes	Rationale
Products of nature	Things that already exist in nature	Not created by human ingenuity
Natural laws	Scientific principles	Pre-existing knowledge
Abstract ideas	Pure concepts without application	Not concrete inventions
Printed matter	Differences consisting only of printed content	Traditional disfavor by patent office

Example: Discovering a new tree and picking a leaf would not be patentable—the leaf already exists in nature.

🧫 Living organisms and modified products

Diamond v. Chakrabarty (1980):

• Dr. Chakrabarty filed for a patent on a genetically modified micro-organism
• Examiner rejected as (1) product of nature and (2) living thing
• Supreme Court reversed: the micro-organism is "a non-naturally occurring composition of matter" that is a "product of human ingenuity"
• Key holding: No per se rule prohibiting patenting of living things

AMP v. Myriad (2013):

• Myriad obtained claims covering "isolated DNA" fragments of BRCA1 and BRCA2 genes
• Court held isolated DNA not patent eligible: simply claimed something existing in nature; Myriad did not create or alter the genetic sequence or structure
• Court held "cDNA" (isolated DNA with non-coding sections removed) was patent eligible: the cDNA did not exist in that state in nature

How to distinguish: The key is whether human intervention created a non-naturally occurring composition (patent eligible) versus merely isolating or discovering what already exists in nature (not patent eligible), even if substantial work went into the discovery or isolation process.

🧭 Overview

🧠 One-sentence thesis

Design patent scope is determined by what is shown in solid lines in the drawings, and applicants can strategically use broken lines to disclaim portions of a design and thereby broaden the claim's reach.

📌 Key points (3–5)

• What design patents protect: how things look (appearance), not how they work—specifically, surface ornamentation, shape/configuration, or both applied to an article of manufacture.
• How designs are claimed: a design patent has exactly one claim in formal terms ("the ornamental design for the article as shown, or as shown and described"), disclosed through drawings or photographs.
• Solid vs broken lines: solid lines define the claimed design; broken lines show disclaimed structure (environment or parts not claimed).
• Common confusion: disclaiming parts of a design actually increases scope—only the claimed (solid-line) portions must match in an accused product, so fewer constraints mean broader coverage.
• Why it matters: understanding what is and isn't claimed determines infringement scope and prosecution strategy.

🎨 What design patents cover

🎨 Subject matter: appearance, not function

Design patents protect "any new, original and ornamental design for an article of manufacture." 35 U.S.C. § 171.

• Unlike utility patents (which protect how things work), design patents protect how things look.
• The design must be applied to an article of manufacture—you cannot patent a design per se (standing alone).
• Example: You can patent the ornamental appearance of a litter box, but not an abstract visual pattern with no physical article.

🧩 Three types of patentable designs

Design patents cover three longstanding categories:

Type	What it covers
Surface ornamentation	Decorative patterns, textures, or graphics applied to an article's surface
Configuration/shape	The three-dimensional form or contours of an article
Combination	Both surface ornamentation and shape together

• Applicants can claim any of these types, or any part (or parts) thereof.
• The USPTO also allows claims that "encompass multiple articles or multiple parts within that article."

🔍 Design patents vs utility patents

• Design patents have existed since 1842 and follow most of the same statutory provisions as utility patents (novelty, nonobviousness, § 112 requirements).
• Key differences "otherwise provided":
  • § 172: only six months priority for international applications (vs. twelve months for utility).
  • § 173: term is 15 years from grant (not 20 years from filing).
  • § 289: special remedy available only for design patent infringement.
• The application of shared requirements (novelty, nonobviousness, etc.) differs significantly because designs are fundamentally different inventions with a different claiming system.
• Don't confuse: principles developed for utility patents do not automatically apply to design patents.

📐 How design patents are claimed

📐 The single-claim rule

A design patent can only have one claim, which "shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described." 37 C.F.R. § 1.153(a).

• The claim is not written in words describing features; it refers to drawings or photographs.
• Applicants must submit "a sufficient number of views to constitute a complete disclosure of the appearance of the design."
• Color can be claimed using color drawings/photographs or color shading conventions.

✏️ Solid lines: what is claimed

• Anything shown in full (solid) lines is part of the claimed design.
• The solid-line portions define the boundaries of the claim.
• Example: In the litter box patent (D816,281), the litter box structure shown in solid lines is the claimed design.

🔲 Broken lines: what is disclaimed

"Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines."

• Broken lines show structure that is not part of the claimed design.
• Two common uses:
  1. Show environment: illustrate context or how the design is used (e.g., the cat in the litter box drawing).
  2. Disclaim portions: exclude parts of the article's shape or ornamentation from the claim.
• The rules for broken-line use have changed over time; older design patents may use them differently.

🎯 Strategic use of disclaimers

🎯 Why disclaim parts of a design

• Disclaiming portions (using broken lines) increases the scope of the design patent.
• A design patent is infringed when an accused product looks the same as the claimed design.
• If the claim covers only part of an article, then only the corresponding part of the accused product must match.

🍟 Pressed potato example

The excerpt contrasts two design patents for a "Pressed Shredded Potato Product":

Patent	What is shown in solid lines	Scope implication
D857,332	Entire shape	Accused product must match the entire shape
D884,309	Only part of the shape (rest in broken lines)	Only the solid-line portion must match; broader coverage

• Example: The second claim (D884,309) could be infringed by a pressed, shredded potato product that matches only the claimed (solid-line) portion, even if other parts differ.
• Don't confuse: More detail in the claim = narrower scope; fewer claimed features = broader scope.

⚖️ Infringement test preview

• The excerpt notes that infringement occurs when an accused product "looks the same as the claimed design."
• Only the portions shown in solid lines are compared.
• Strategic disclaiming allows patentees to avoid having to prove that every detail matches, focusing enforcement on the most distinctive or commercially important aspects.

🧭 Overview

🧠 One-sentence thesis

Design patent infringement is determined by whether an ordinary observer would find two designs substantially the same in appearance, not by whether an expert can detect differences or whether consumers are confused in the marketplace.

📌 Key points (3–5)

• What design patents protect: the ornamental appearance of an article of manufacture, not the means of producing that appearance or the underlying utility.
• The infringement test: "ordinary observer" standard—if two designs look substantially the same to a typical purchaser giving usual attention, and the resemblance could cause one to be mistaken for the other, infringement exists.
• Common confusion: the Gorham test sounds like trademark's "likelihood of confusion," but it is actually a visual similarity test, not a test of consumer behavior or marketplace confusion.
• Role of prior art: when designs are not plainly dissimilar, prior art can narrow (but never expand) the scope of protection by making small differences more significant.
• How claims are defined: solid lines show the claimed design; broken/dashed lines disclaim parts or show environment, which strategically broadens protection by requiring only the solid-line portions to match.

🎨 What design patents cover

🎨 Appearance, not means or utility

Design patents protect "new and original appearances" given to manufactured articles, which may enhance salable value and demand.

• The focus is on ornamental appearance, not function or the process of making the article.
• The Supreme Court in Gorham emphasized that design law "contemplates not so much utility as appearance."
• The appearance can result from shape (configuration), surface ornamentation, or both together.
• Don't confuse: the lower court in Gorham wrongly treated designs like utility patents, requiring that the "means of producing" the appearance be the same—the Supreme Court rejected this, holding that only the visual result matters.

📐 Finished products, not processes

• Design patents apply to "finished products of invention," not to the steps or tools used to create them.
• Example: a design patent on a fork handle protects the way the finished handle looks, not the manufacturing technique.

🖼️ How design patent claims work

🖼️ Solid lines vs. broken lines

• Solid lines: define the claimed design—these parts must be present in an accused product for infringement.
• Broken lines (dashed or dot-dash): show disclaimed elements or environment; these are not part of the claim.

Line type	Meaning	Effect on scope
Solid lines	Claimed design	Must match in accused product
Broken/dashed lines	Disclaimed parts or environment	Need not match; broadens claim
Dot-dash lines	Unclaimed boundaries	Design extends to boundary but does not include it

🐱 Examples of disclaimers

• Environment: the litter box design patent (D816,281) shows a cat in broken lines—the cat is not part of the claim, just context.
• Partial shape: the pressed potato product patent (D884,309) shows only the dimple pattern in solid lines; the overall shape (round, square, etc.) is disclaimed, so any shape with that dimple pattern could infringe.
• Strategic use: disclaiming parts increases scope because only the solid-line portions must match.

👟 Boundary lines

• The footwear design (D787,798) uses both dashed disclaimer lines and dot-dash boundary lines.
• Boundary lines indicate where the design stops without claiming the boundary itself.
• Question raised: does a claim with extensive disclaimers still qualify as a "design for an article of manufacture" under 35 U.S.C. § 171(a)?

⚖️ The infringement test: ordinary observer standard

👁️ Gorham's core holding

"If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other."

• Who judges: an ordinary observer (typical purchaser), not an expert or someone in the trade.
• What they compare: overall visual appearance, not technical details.
• Standard: "substantially the same" means the resemblance could cause one design to be mistaken for the other.

🚫 Why experts are the wrong standard

• The lower court in Gorham required that designs be identical from an expert's perspective.
• The Supreme Court rejected this: experts can always find differences, so no design would ever infringe.
• Example analogy from the Court: counterfeit bank notes can always be distinguished by an experienced artist, but that doesn't mean they aren't counterfeits.
• Purpose of the law: to protect against designs that look the same to ordinary purchasers, not to require perfect identity detectable only by specialists.

🛒 "Ordinary observer" means typical purchaser attention

• The observer gives "such attention as a purchaser usually gives"—not forensic examination, but normal shopping-level scrutiny.
• The test is about visual similarity, not whether consumers are actually confused in the marketplace.
• Don't confuse: this is not a trademark "likelihood of confusion" test; it does not concern consumer behavior or marketplace dynamics (Unette, Braun).

🔍 The two-step Egyptian Goddess framework

🔍 Step one: are the designs plainly dissimilar?

• First, compare the claimed design and the accused design directly.
• If they are "sufficiently distinct" that no reasonable observer would find them substantially the same, there is no infringement—analysis stops here.
• Example: in Lin v. Belkin, the court found the USB cable designs so different that summary judgment of noninfringement was granted based on visual review alone.

🔍 Step two: if not plainly dissimilar, consider prior art

• When designs are "not plainly dissimilar," prior art (earlier designs) may be used to narrow the scope of the patent.
• How it works: if many similar prior art designs exist, small differences between the claimed and accused designs become more significant to the ordinary observer who is "conversant with the prior art."
• One-way ratchet: prior art can only narrow scope, never expand it (Ethicon Endo-Surgery).

🔧 Example: Snap-On tool case

• The claimed design (top left) and accused design (bottom right) might not be plainly dissimilar in isolation.
• But when viewed alongside prior art designs, visual differences become apparent.
• The court found the patent owner unlikely to succeed and denied a preliminary injunction.
• Takeaway: prior art helps the ordinary observer see which features are novel and which are common, making differences matter more.

🎮 Other examples of "sufficiently distinct"

• Wallace spinning brush: district court granted summary judgment of noninfringement, finding designs "sufficiently distinct" that no jury could find them substantially the same (affirmed on appeal).
• Lin USB cable: court concluded designs were "plainly dissimilar" as a matter of law.
• These cases show that when visual differences are clear, infringement fails at step one without needing prior art analysis.

🎯 Purpose and policy of design patent law

🎯 Encouraging decorative arts

• The Supreme Court in Gorham stated that design patent law aims to "give encouragement to the decorative arts."
• The law recognizes that "giving certain new and original appearances to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public."
• Protection is "for a limited time" to reward the "ingenious producer" of new appearances.

🎯 Appearance as the protected "new thing"

• The patent protects the appearance itself, not the process or combination of elements that produce it.
• Don't confuse: design patents are not like utility patents; they do not protect functional inventions or methods.
• The focus is always on the finished visual product.

🧭 Overview

🧠 One-sentence thesis

The Supreme Court held that copyright protects only the original selection, coordination, or arrangement of facts in a compilation—not the facts themselves—and that "sweat of the brow" (rewarding labor alone) is not a valid basis for copyright protection.

📌 Key points (3–5)

• Facts are never copyrightable: Facts exist independently and are discovered, not created; copyright requires originality, which means independent creation plus minimal creativity.
• Compilations can be copyrighted only if original: The selection, coordination, or arrangement of facts must display at least minimal creativity; merely gathering facts is insufficient.
• "Thin" copyright in compilations: Even when a compilation is copyrightable, protection extends only to the original selection/arrangement, not to the underlying facts, which remain free for others to use.
• Common confusion—"sweat of the brow" vs. originality: Courts once mistakenly thought that hard work alone justified copyright; the correct standard is originality (creativity), not effort.
• Why it matters: This rule ensures that facts remain in the public domain to promote progress in science and the arts, as mandated by the Constitution.

📚 Facts are not copyrightable

📚 Why facts cannot be copyrighted

"No one may claim originality as to facts."

• Facts do not owe their origin to an act of authorship.
• The distinction is creation vs. discovery: the first person to find and report a fact has merely discovered it, not created it.
• Example: Census takers do not "create" population figures; they copy these figures from the world around them.
• Because facts are not "original" in the constitutional sense, they do not trigger copyright protection.
• All facts—scientific, historical, biographical, news of the day—are part of the public domain and available to every person.

🔍 The constitutional requirement of originality

Originality (in copyright): a work must be (1) independently created by the author (not copied from other works), and (2) possess at least some minimal degree of creativity.

• Originality is a constitutional requirement derived from Article I, § 8, cl. 8 (the Copyright Clause), which authorizes Congress to secure rights to "Authors" for their "Writings."
• The Supreme Court defined these terms in The Trade-Mark Cases and Burrow-Giles: "authors" and "writings" presuppose originality.
• The requisite level of creativity is extremely low; even a slight amount suffices.
• Don't confuse originality with novelty: A work may closely resemble other works and still be original, so long as the similarity is fortuitous (not the result of copying).
  • Example: Two poets, each ignorant of the other, compose identical poems. Neither is novel, yet both are original and copyrightable.

📂 Compilations and the selection/arrangement test

📂 When compilations are copyrightable

Compilation (17 U.S.C. § 101): "a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship."

• Compilations of facts are within the subject matter of copyright, but only if they meet the originality requirement.
• The compiler typically chooses which facts to include, in what order to place them, and how to arrange the data.
• These choices as to selection and arrangement, if made independently and with minimal creativity, are sufficiently original for copyright protection.
• Example: Even a directory that contains absolutely no protectable written expression—only facts—meets the constitutional minimum if it features an original selection or arrangement.

🧩 The three-part statutory test

The 1976 Copyright Act § 101 definition requires three elements for a copyrightable compilation:

1. Collection and assembly of preexisting material, facts, or data.
2. Selection, coordination, or arrangement of those materials.
3. Creation of an "original" work of authorship by virtue of the particular selection, coordination, or arrangement.

• Not every collection of facts receives copyright protection; the work must satisfy all three requirements.
• The key is the second requirement: courts must focus on whether the manner in which facts are selected, coordinated, and arranged is sufficiently original.
• Not every selection, coordination, or arrangement will pass muster; some "ways" will trigger copyright, but others will not.
• There remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent—such works cannot sustain a valid copyright.

🔒 "Thin" copyright protection

"Thin" copyright: Even when a compilation is copyrightable, protection is limited to the original selection/arrangement; the facts themselves do not become original through association.

• Section 103(b) states: "The copyright in a compilation … extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work."
• A subsequent compiler remains free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement.
• The facts and ideas may be "divorced from the context imposed by the author, and restated or reshuffled by second comers."
• Don't confuse: Copyright in a compilation does not give the compiler a monopoly over the facts; it protects only the particular way the facts are presented.

❌ The rejected "sweat of the brow" doctrine

❌ What "sweat of the brow" claimed

"Sweat of the brow" doctrine: The mistaken notion that copyright was a reward for the hard work that went into compiling facts, regardless of originality.

• Some lower courts under the 1909 Act erroneously inferred that directories and compilations were copyrightable per se, without any showing of original authorship.
• The classic formulation: "The right to copyright a book upon which one has expended labor in its preparation does not depend upon whether the materials … show literary skill or originality … or anything more than industrious collection."
• Under this doctrine, the only defense to infringement was independent creation; a subsequent compiler could not use "one word of information previously published" but had to "independently work out the matter for himself."

🚫 Why "sweat of the brow" was wrong

• The doctrine extended copyright protection beyond selection and arrangement—to the facts themselves.
• It "eschewed the most fundamental axiom of copyright law—that no one may copyright facts or ideas."
• It flouted basic copyright principles by handing out proprietary interests in facts and precluding authors from relying on facts in prior works.
• The Supreme Court's decisions (e.g., International News Service v. Associated Press) made clear that the 1909 Act conferred copyright protection only on elements original to the author, not on factual information.
• "Sweat of the brow" created a monopoly in public domain materials without the necessary justification of protecting and encouraging the creation of "writings" by "authors."

🔧 How the 1976 Act rejected "sweat of the brow"

Congress took several steps in the 1976 Copyright Act to ensure the mistakes of "sweat of the brow" courts would not be repeated:

Provision	Purpose
§ 102(a)	Made the originality requirement explicit by requiring "original works of authorship"
§ 102(b)	Stated that copyright does not extend to "any idea, procedure, process, system, method of operation, concept, principle, or discovery"—universally understood to prohibit copyright in facts
§ 101 (definition of "compilation")	Emphasized that collections of facts are not copyrightable per se; originality in selection/arrangement is required
§ 103(b)	Clarified that copyright in a compilation extends only to the author's original contributions, not to preexisting material

• Congress emphasized repeatedly that these revisions were intended to clarify, not change, existing law.
• The goal was to "make plain that the criteria of copyrightable subject matter … apply with full force to works … containing preexisting material."

⚖️ Application to Rural's white pages directory

⚖️ Rural's directory lacked originality

The Court examined whether Rural's white pages directory satisfied the originality requirement:

Selection:

• Rural published the most basic information (name, town, telephone number) about each person who applied for telephone service.
• This is "selection" of a sort, but it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression.
• Rural expended sufficient effort to make the directory useful, but insufficient creativity to make it original.
• Additionally, Rural was required by state regulation to publish this information as part of its monopoly franchise, so the selection was arguably dictated by state law, not by Rural.

Arrangement:

• Rural simply listed subscribers alphabetically by surname.
• Alphabetical arrangement is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course.
• It is not only unoriginal, it is practically inevitable.
• This time-honored tradition does not possess the minimal creative spark required by the Copyright Act and the Constitution.

📋 The Court's conclusion

• Rural's white pages are "entirely typical" and "a garden-variety white pages directory, devoid of even the slightest trace of creativity."
• The names, towns, and telephone numbers copied by Feist were not original to Rural and therefore were not protected by copyright.
• As a constitutional matter, copyright protects only those constituent elements of a work that possess more than a de minimis quantum of creativity.
• Rural's white pages, limited to basic subscriber information and arranged alphabetically, fall short of the mark.
• Because Rural's white pages lack the requisite originality, Feist's use of the listings cannot constitute infringement.

🎯 The policy rationale

"The primary objective of copyright is not to reward the labor of authors, but '[t]o promote the Progress of Science and useful Arts.'"

• Copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work.
• This principle—the idea/expression or fact/expression dichotomy—applies to all works of authorship.
• It may seem unfair that much of the fruit of the compiler's labor may be used by others without compensation, but this is "the essence of copyright" and a constitutional requirement.
• The decision does not demean Rural's efforts, but makes clear that copyright rewards originality, not effort.
• Example: "Great praise may be due to the plaintiffs for their industry and enterprise … yet the law does not contemplate their being rewarded in this way."

🔑 Key takeaways for determining copyrightability

🔑 The two-element infringement test

To establish copyright infringement, two elements must be proven:

1. Ownership of a valid copyright
2. Copying of constituent elements of the work that are original

• In this case, the first element was not at issue; Rural's directory as a whole was copyrightable because it contained some foreword text and original yellow pages advertisements.
• The question was whether Feist copied anything "original" to Rural by taking 1,309 names, towns, and telephone numbers.
• The raw data (names, towns, telephone numbers) did not satisfy the originality requirement—these are uncopyrightable facts that existed before Rural reported them.
• Rural's selection, coordination, and arrangement of these facts also did not satisfy the minimum constitutional standards for copyright protection.

🧭 How to analyze a compilation

When determining whether a compilation is copyrightable:

1. Identify the facts: Are the underlying elements facts (uncopyrightable) or original expression (potentially copyrightable)?
2. Examine the selection: Did the compiler make creative choices about which facts to include, or is the selection obvious, mechanical, or dictated by external requirements?
3. Examine the arrangement: Is the coordination or arrangement creative, or is it routine, mechanical, or inevitable (e.g., alphabetical order)?
4. Apply the low but real threshold: Does the selection/arrangement display at least "some minimal degree of creativity" or "a modicum of creativity"?
5. Remember thin protection: Even if copyrightable, protection extends only to the original selection/arrangement, not to the facts themselves.

❓ Hypothetical: Yellow pages directory

The excerpt includes a "Reading with Purpose" question: Would the outcome be the same for a yellow pages directory organized by business type, especially if businesses had to pay to be included?

Based on the opinion's reasoning:

• Organization by business type: This might show more creativity than alphabetical order, depending on how categories are defined and structured, but it could still be too obvious or mechanical.
• Paid inclusion: If businesses pay to be included, the selection is driven by who pays, not by the compiler's creative choices—this likely would not add originality.
• The analysis would still focus on whether the selection and arrangement display minimal creativity, not on the effort or commercial value involved.

🧭 Overview

🧠 One-sentence thesis

Copyright protects the expression in a book that explains a system or method, but does not grant exclusive rights to use the system or method itself, which remains free for public use unless protected by patent.

📌 Key points (3–5)

• The core distinction: copyright covers the book as an explanatory work, but not the underlying art, system, or method the book describes.
• What copyright secures: the exclusive right to print and publish the book itself, not the right to practice the art or use the methods illustrated in it.
• Common confusion: illustrations, diagrams, ruled lines, and headings used to explain a system are part of the book's explanation, but when someone uses the system itself, they may necessarily reproduce similar forms as incidents to practicing the art—this is not infringement.
• Patent vs. copyright: exclusive rights to a new system, method, or invention require a patent (with official examination of novelty); copyright cannot be used to secure monopoly over an art or useful method.
• Why it matters: allowing copyright to control the use of systems would frustrate the purpose of publishing useful knowledge and would grant exclusive rights without the scrutiny required for patents.

📚 The case facts and holding

📖 What Selden published

• Charles Selden copyrighted a book titled "Selden's Condensed Ledger, or Book-keeping Simplified" (1859) and several follow-up books (1860–1861).
• The books explained a peculiar system of bookkeeping using ruled lines, blank columns, and headings to show how to record transactions on a single page or facing pages.
• The system achieved the same results as double-entry bookkeeping but with a different arrangement.

⚖️ The dispute

• Baker (defendant) used a similar bookkeeping system with a different arrangement of columns and headings.
• Selden's estate (complainant) sued Baker for copyright infringement, claiming that using the system required using substantially the same ruled lines and headings, which were part of the copyrighted book.
• The lower court ruled for the complainant; the Supreme Court reversed.

🏛️ The Court's holding

The Court concluded that blank account-books are not the subject of copyright, and that the mere copyright of Selden's book did not confer upon him the exclusive right to make and use account-books ruled and arranged as designated and illustrated in the book.

• Anyone may practice and use the art or system described in a copyrighted book.
• Using the art is "a totally different thing from a publication of the book explaining it."

🔍 The idea/expression dichotomy

🧩 The fundamental distinction

"There is a clear distinction between the book, as such, and the art which it is intended to illustrate."

• A book explaining a system (old or new) may be copyrighted as a work of authorship.
• But the system, method, or art itself is not protected by that copyright.
• The book is valued as a source of information; the art is valued for its practical use.

🎯 Why the distinction exists

• Purpose of copyright: to secure the author's exclusive right to print and publish the explanatory work.
• Purpose of the public: to learn and apply the useful knowledge communicated in the book.
• If copyright prevented people from using the knowledge taught in a book, "this object would be frustrated."
• Example: A treatise on medicines, ploughs, or perspective may be copyrighted, but no one contends that the copyright gives exclusive rights to manufacture the medicine, build the plough, or use the drawing techniques described.

🚫 What copyright does NOT cover

The Court lists examples to clarify the boundary:

Type of work	What copyright protects	What it does NOT protect
Book on medicines	The book itself (text, explanations)	The right to manufacture and sell the medicine
Book on perspective	The book and its illustrations	The right to use the drawing methods described
Book on mathematical science	The written explanation	The methods of operation or diagrams as tools for engineers
Book on bookkeeping	The explanatory text and illustrations	The right to use the bookkeeping system or make account-books following the plan

• The Court emphasizes: "The use of the art is a totally different thing from a publication of the book explaining it."

🛠️ Necessary incidents to the art

• When a system or method cannot be used without employing certain forms, diagrams, or arrangements, those elements are "necessary incidents to the art."
• They are "given therewith to the public… for the purpose of practical application," not for republishing in competing explanatory books.
• Example: In Selden's case, the ruled lines and headings are necessary to practice the bookkeeping system, so using them in actual bookkeeping does not infringe the copyright.

🎨 Exception: ornamental designs

"Of course, these observations are not intended to apply to ornamental designs, or pictorial illustrations addressed to the taste."

• For ornamental or pictorial works, "their form is their essence, and their object, the production of pleasure in their contemplation."
• Such works are products of genius and composition, like poetry or historical writing.
• In contrast, teachings of science and useful arts have their "final end in application and use."

🆚 Copyright vs. patent

🔬 The province of patents

"To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright."

• Patent: grants exclusive rights to an invention, art, or manufacture after official examination of novelty by the Patent Office.
• Copyright: grants exclusive rights to print and publish a book, regardless of whether the subject matter is novel.
• The novelty of the art or method described has nothing to do with the validity of the copyright.

🧪 Why the distinction matters

• If copyright could secure exclusive rights to a system or method, it would bypass the examination process required for patents.
• This would grant a monopoly over useful knowledge without proving novelty or non-obviousness.
• Example: A physician who writes a book on a new medicine gives the medicine to the public by publishing; if he wants exclusive manufacturing rights, he must obtain a patent.

📐 Illustrations as language

• Diagrams, ruled lines, and figures in a book are "the mere language employed by the author to convey his ideas more clearly."
• They stand in place of words.
• If the author had used only words to describe the system, no one would claim that others practicing the art could not draw the lines and diagrams the author described.
• The fact that illustrations correspond closely to the actual work performed by someone using the art does not change the principle.

🧷 Supporting cases and analogies

📰 Clayton v. Stone & Hall (daily price-current)

• Copyright was claimed in a daily price-current (market prices).
• Justice Thompson held it was not copyrightable because:
  • Science and learning are "of a more fixed, permanent, and durable character."
  • A daily publication is "fluctuating and fugitive," of "mere temporary use."
  • The law rewards learning and science, not "mere industry, unconnected with learning."
• Analogy: Great praise may be due for industry and enterprise, but "the law does not contemplate their being rewarded in this way."

🛋️ Cobbett v. Woodward (furniture catalogue)

• A furniture dealer published a catalogue with drawings of furniture for sale.
• Competitors copied the drawings to advertise the same articles.
• The court held the drawings were not subject to copyright because:
  • The catalogue was "a mere advertisement for the sale of particular articles which any one might imitate."
  • It was "little more than an illustrated inventory of the contents of a warehouse."
• Don't confuse: If the work were published to inform the public about furniture design (not just to advertise), it could be copyrighted, and copying the illustrations would be infringement.

📏 Page v. Wisden (cricket scoring-sheet)

• Copyright was claimed in a cricket scoring-sheet.
• Vice-Chancellor Malins held it was not copyrightable, partly because "to say that a particular mode of ruling a book constituted an object for a copyright is absurd."

👗 Drury v. Ewing (dress patterns)

• Copyright was claimed in a chart of patterns for cutting dresses and coats.
• The Court in Baker distinguished this case:
  • The patterns were "printed and published for information, and not for use in themselves."
  • Their practical use was "by the application of a mechanical operation to the cutting of cloth."
  • The copyright of the chart did not reserve exclusive rights to the practical use (cutting cloth according to the patterns).

📜 Modern statutory articulation: 17 U.S.C. § 102(b)

📖 The statute

"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, explained, illustrated, or embodied in such work."

🔗 Connection to Baker v. Selden

• This provision codifies the idea/expression dichotomy established in Baker.
• Copyright protects the expression (how the idea is described, explained, illustrated).
• Copyright does not protect the idea, procedure, process, system, method of operation, concept, principle, or discovery itself.
• The statute makes clear that the form of expression (words, diagrams, illustrations) does not change this rule.

🧭 How to apply the dichotomy

1. Identify the idea, system, or method in the work.
2. Identify the expression (the particular way the author explained or illustrated it).
3. Copyright protects only the expression.
4. Others may use the idea, system, or method, and may create their own expressions to explain it.
5. Infringement occurs only if someone copies the expression itself (e.g., reprints the book or substantial portions of it).

⚠️ Common confusion: necessary forms

• If there is only one way (or very few ways) to express an idea or illustrate a system, those forms may be considered "necessary incidents" to the idea.
• Allowing copyright over such forms would effectively grant a monopoly over the idea itself, which the law does not permit.
• Example: Ruled lines and headings in Selden's bookkeeping system were necessary to practice the system, so using them in actual bookkeeping was not infringement.

🎯 Policy foundations

🌍 Public access to useful knowledge

• The "very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains."
• If the public could not use that knowledge without infringing copyright, the purpose of publication would be defeated.
• The law encourages dissemination of knowledge by protecting the author's right to publish, while leaving the knowledge itself free for all to use.

⚖️ Balancing incentives

• Authors: receive copyright protection for their explanatory works, encouraging them to write and publish.
• The public: gains access to useful systems and methods without needing permission or paying royalties to the author.
• Inventors: if they want exclusive rights to a system or method, they must seek a patent, which requires examination and disclosure.

🚫 Preventing monopoly by copyright

• Granting exclusive rights to a system through copyright would be "a surprise and a fraud upon the public."
• It would allow someone to obtain a monopoly over a useful art without the scrutiny and limited term of a patent.
• The Court emphasizes that copyright and patent serve different purposes and must not be conflated.

🧭 Overview

🧠 One-sentence thesis

Copyright protects original works of authorship fixed in tangible media, but never extends to the underlying ideas, procedures, systems, or methods themselves.

📌 Key points (3–5)

• What gets protection: original works of authorship that are fixed in any tangible medium from which they can be perceived, reproduced, or communicated.
• Eight categories: literary, musical, dramatic, pantomimes/choreographic, pictorial/graphic/sculptural, motion pictures/audiovisual, sound recordings, and architectural works.
• The idea/expression dichotomy: copyright protects the expression but never the idea, procedure, process, system, method of operation, concept, principle, or discovery.
• Common confusion: even if an idea or system is described, explained, illustrated, or embodied in a copyrighted work, the copyright does not give exclusive rights to use that idea or system.
• Medium flexibility: the statute covers media "now known or later developed," so new technologies are included.

📝 What copyright protects

📝 Three requirements for protection

Copyright protection requires:

1. Originality: the work must be an original work of authorship.
2. Fixation: the work must be fixed in a tangible medium of expression.
3. Perceptibility: the work must be perceivable, reproducible, or communicable—either directly or with the aid of a machine or device.

Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

• The statute does not define "original," but it is a threshold requirement.
• "Fixed" means recorded in some physical or digital form, not just performed or spoken.
• "Tangible medium" includes traditional formats (paper, film) and future technologies the statute anticipates.

🔮 Technology-neutral language

• The phrase "now known or later developed" ensures that new media are covered without amending the statute.
• Example: when the statute was written, digital streaming may not have existed, but it would still qualify as a "tangible medium" from which works can be communicated with the aid of a device.

🎨 Eight categories of works

🎨 The statutory list

The statute lists eight categories of works of authorship:

Category	Examples (inferred from category name)
Literary works	Books, articles, computer code
Musical works, including any accompanying words	Songs, compositions, lyrics
Dramatic works, including any accompanying music	Plays, scripts with music
Pantomimes and choreographic works	Dance routines, mime performances
Pictorial, graphic, and sculptural works	Paintings, drawings, sculptures
Motion pictures and other audiovisual works	Films, videos, multimedia
Sound recordings	Recorded music, spoken word
Architectural works	Building designs

• The list is illustrative but comprehensive; it covers most creative outputs.
• Each category can overlap (e.g., a musical work may also be a sound recording).

🚫 What copyright does NOT protect

🚫 The idea/expression boundary

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, explained, illustrated, or embodied in such work.

• This is the idea/expression dichotomy: copyright protects how you express an idea, not the idea itself.
• The statute lists seven things that are never protected:
  1. Idea
  2. Procedure
  3. Process
  4. System
  5. Method of operation
  6. Concept
  7. Principle or discovery

🔍 Why "regardless of the form" matters

• Even if you write a detailed book explaining a new accounting system, copyright in the book does not give you exclusive rights to use that system.
• Example: An author publishes a manual illustrating a new filing method. Others can read the manual and adopt the filing method; they just cannot copy the manual's text or illustrations verbatim.
• Don't confuse: copyright in a work describing a system ≠ exclusive rights to practice the system.

⚖️ Implications from the case law excerpt

The excerpt includes older case law (Page v. Wisden, Drury v. Ewing) that illustrates the same principle:

• A cricket scoring-sheet's ruling and layout were held not copyrightable because "a particular mode of ruling a book" is a method, not expression.
• A chart of dress patterns could be copyrighted as a printed work, but the copyright did not prevent others from using the patterns to cut cloth—the practical application (a method of operation) remained free.
• The conclusion in the case law: blank account-books (a system for recording) are not subject to copyright; copyright in a book describing the system does not confer exclusive rights to use the system.

🧩 Putting it together

🧩 The two-part test in practice

1. Is the work original and fixed? → If yes, it may be copyrightable.
2. Does the claimed protection cover expression or an idea/system/method? → Only expression is protected.

• Example: A software manual is copyrightable (original literary work, fixed in tangible medium). But the copyright does not stop others from writing their own software that performs the same functions; it only stops them from copying the manual's text and diagrams.

🧩 Why the dichotomy exists

• The statute does not explain the policy reason, but the structure makes clear that copyright is limited to creative expression, not functional methods or abstract concepts.
• This boundary prevents copyright from becoming a patent-like monopoly on useful processes or ideas.

🧭 Overview

🧠 One-sentence thesis

The Supreme Court held that "work made for hire" under the Copyright Act requires applying common-law agency principles to determine whether a hired party is an employee or independent contractor, and that a sculptor commissioned by a nonprofit organization was an independent contractor, not an employee, so the organization did not own the copyright.

📌 Key points (3–5)

• Two mutually exclusive paths to work-for-hire status: § 101(1) covers works prepared by employees within the scope of employment; § 101(2) covers nine enumerated categories of specially commissioned works with a written agreement.
• "Employee" means common-law agency definition: Congress intended "employee" to carry its general common-law agency meaning, not a "right to control the product" test or a formal-salaried-employee-only test.
• Multi-factor test from agency law: Courts must weigh factors like skill required, source of tools, location of work, duration, method of payment, benefits, and tax treatment—no single factor is determinative.
• Common confusion—control vs. employment relationship: The hiring party's right to control or actual control over the product does not by itself make the hired party an employee; the focus is on the relationship between the parties, not the product.
• Why it matters: Work-for-hire status determines initial copyright ownership, duration, renewal rights, termination rights, and affects predictability for freelance creators and commissioning industries.

📜 The statutory framework

📜 Section 101's two-part structure

Work made for hire under 17 U.S.C. § 101:
(1) a work prepared by an employee within the scope of employment; or
(2) a work specially ordered or commissioned for use in one of nine enumerated categories (e.g., contribution to a collective work, part of a motion picture, translation, supplementary work, compilation, instructional text, test, answer material, atlas) if the parties expressly agree in a written instrument that the work shall be considered a work made for hire.

• These two subsections are mutually exclusive pathways.
• Sculpture does not fall within any of the nine categories in § 101(2), so the case turned on § 101(1).
• If a work qualifies as "made for hire," the employer or commissioning party is considered the author and owns the copyright (§ 201(b)).

🎯 What "work for hire" determines

Aspect	Effect
Initial ownership	Employer/commissioning party is the author
Duration	Different term calculation (§ 302(c))
Renewal rights	Affects who can renew (§ 304(a))
Termination rights	Affects who can terminate transfers (§ 203(a))
Import rights	Affects right to import goods bearing the copyright (§ 601(b)(1))

• Example: A freelance photographer takes a portrait; if it's work-for-hire, the commissioning party owns it and the photographer has no termination rights decades later. If it's not work-for-hire, the photographer retains rights and can terminate any transfer after a statutory period.

🧑‍⚖️ Rejected interpretations

❌ Right to control the product test

• What it claims: A work is prepared by an employee whenever the hiring party retains the right to control the product.
• Why the Court rejected it:
  • § 101(1) focuses on the relationship between hired and hiring parties, not the relationship between the hiring party and the product.
  • This test would collapse the distinction between § 101(1) and § 101(2): many specially commissioned works (which § 101(2) addresses) inherently involve the hiring party specifying desired characteristics, so they would already qualify under § 101(1), making § 101(2) redundant.
  • The nine enumerated categories in § 101(2) (e.g., contributions to collective works, motion picture parts) are typically prepared "at the instance, direction, and risk of a publisher or producer," so they would all pass a right-to-control test, rendering the careful enumeration meaningless.

❌ Actual control test

• What it claims: Independent contractors who are closely supervised and controlled in creating a particular work become "employees" under § 101(1).
• Why the Court rejected it:
  • The statute clearly delineates between works prepared by employees and commissioned works; there is no textual support for a third category based on degree of supervision.
  • "There is simply no way to milk the 'actual control' test … from the language of the statute."
  • This approach would create unpredictability: parties would not know until late in the process (or after completion) whether the work qualifies as work-for-hire, thwarting Congress's goal of advance planning and certainty.

❌ Formal, salaried employee only

• What it claims: "Employee" in § 101(1) refers only to formal, salaried employees on the payroll.
• Why the Court rejected it:
  • The statute says "employee," not "formal employee" or "salaried employee."
  • Proponents of this test disagree among themselves on its content (payroll vs. regular salary/commissions vs. tax treatment).
  • Some legislative history supports this view, but the statutory language cannot bear it.

Don't confuse: The Court did not adopt any of these three tests. Instead, it turned to the general common law of agency.

⚖️ The common-law agency test

⚖️ Why agency law?

• Statutory interpretation principle: When Congress uses terms like "employee" and "scope of employment" without defining them, and those terms have accumulated settled meaning under common law, courts infer Congress intended to incorporate the established meaning.
• Past precedent: The Supreme Court has previously interpreted "employee" in federal statutes to mean the conventional master-servant relationship as understood by common-law agency doctrine (e.g., Kelley v. Southern Pacific Co., Baker v. Texas & Pacific R. Co.).
• Uniform federal rule: Using general common law of agency (rather than varying state laws) promotes uniform nationwide application, which is especially appropriate given the Copyright Act's goal of creating national, uniform copyright law by preempting state regulation (§ 301(a)).

🧩 Multi-factor test

Under the general common law of agency, the key inquiry is the hiring party's right to control the manner and means by which the product is accomplished.

Other relevant factors (from Restatement (Second) of Agency § 220(2)):

Factor	What it examines
Skill required	Is it a skilled occupation?
Source of tools/instrumentalities	Who supplies the tools and materials?
Location of work	Where is the work performed?
Duration of relationship	How long does the relationship last?
Right to assign additional projects	Can the hiring party assign more work?
Discretion over when/how long to work	Does the hired party control their schedule?
Method of payment	Salary, hourly, or per-project?
Hiring and paying assistants	Who hires and pays helpers?
Part of regular business	Is this work part of the hiring party's regular business?
Hiring party in business	Is the hiring party a business entity?
Employee benefits	Are benefits (insurance, pension, etc.) provided?
Tax treatment	Are payroll/Social Security taxes withheld?

• No single factor is determinative—courts must weigh all circumstances.
• Example: An organization hires a sculptor for a one-time project. Even if the organization directs the content to meet specifications, if the sculptor uses their own tools, works in their own studio, is paid a flat fee, receives no benefits, and has no taxes withheld, the sculptor is likely an independent contractor.

🔍 Application to Reid

The Court of Appeals found Reid was an independent contractor, and the Supreme Court agreed:

Factor	Analysis in this case
Control over manner/means	CCNV directed enough to ensure the sculpture met specifications, but this alone is not dispositive
Skill	Reid is a sculptor—a skilled occupation
Tools	Reid supplied his own tools
Location	Reid worked in his own studio in Baltimore; daily supervision from Washington was impractical
Duration	Less than two months—relatively short
Additional projects	CCNV had no right to assign more projects
Discretion over schedule	Reid had absolute freedom except for the completion deadline
Payment	$15,000 flat fee for completing a specific job (typical for independent contractors)
Assistants	Reid had total discretion in hiring and paying assistants
Regular business	Creating sculptures was not CCNV's regular business; CCNV is a nonprofit, not a business
Benefits	No payroll/Social Security taxes, no employee benefits, no unemployment/workers' comp

• Conclusion: All factors except the degree of specification control weighed heavily against an employment relationship.
• Don't confuse: The extent of control over the product's details is not dispositive; the totality of circumstances regarding the working relationship matters.

📚 Legislative history and policy

📚 Historical development

1909 Act:

• § 62 provided that "author" includes an employer in works made for hire, but did not define "employer" or "works made for hire."
• Courts interpreted it to apply only to works made by employees in regular employment.
• For commissioned works, courts generally presumed the commissioned party impliedly agreed to convey the copyright along with the work.

1961–1965 revision process:

• Early drafts retained the employee/independent contractor distinction.
• 1963 preliminary draft defined work-for-hire as "a work prepared by an employee within the scope of duties, but not including a work made on special order or commission."
• Publishers objected, wanting to cover commissioned works without putting creators on the payroll.
• Authors objected to broad commissioned-work provisions, fearing publishers would use superior bargaining power to force work-for-hire agreements.

1965 compromise (ultimately enacted in 1976):

• Retained subsection (1) for employees.
• Added subsection (2) for four (later nine) enumerated categories of commissioned works, but only if parties expressly agree in writing.
• The enumerated categories were chosen because they are "ordinarily prepared at the instance, direction, and risk of a publisher or producer."
• Emphasis: "Only the four [later nine] special cases specifically mentioned" could qualify as commissioned works-for-hire; "other works made on special order or commission would not come within the definition."

Why the compromise matters:

• Congress intended two mutually exclusive pathways, carefully negotiated.
• Importing a control-based test would "unravel the carefully worked out compromise."
• Example: An attempt to add "photographic or other portraits" to the § 101(2) list failed after the Register of Copyrights objected that artists and photographers are vulnerable and were not intended to be treated as employees.

🎯 Policy goals

Predictability and certainty:

• Congress wanted parties to know at the outset who will own the copyright, so they can negotiate price, reproduction rights, and other terms accordingly.
• A control-based test would leave ownership uncertain until late in the process or after completion, when it becomes clear how much control was exercised.
• Example: If parties "guess incorrectly" about control, their reliance on work-for-hire or an assignment may give them a copyright interest they did not bargain for.

Preventing post-hoc manipulation:

• A control test "leaves the door open for hiring parties, who have failed to get a full assignment of copyright rights from independent contractors … to unilaterally obtain work-made-for-hire rights years after the work has been completed as long as they directed or supervised the work, a standard that is hard not to meet when one is a hiring party."

Don't confuse: Legislative silence about pre-1976 case law does not mean Congress intended to incorporate it. The text and structure of § 101 counsel otherwise, and the control-based case law mostly arose after the 1965 compromise was forged.

🏛️ Outcome and remand

🏛️ Holding on work-for-hire

• Reid was an independent contractor, not an employee.
• The sculpture does not fit any of the nine categories in § 101(2), and there was no written agreement.
• Therefore, "Third World America" is not a work made for hire.
• CCNV is not the author by virtue of the work-for-hire provisions.

🤝 Possible joint authorship

• The Court of Appeals remanded to determine whether the sculpture is a joint work under 17 U.S.C. § 101.

Joint work: A work prepared by two or more authors "with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole."

• If CCNV and Reid prepared the work with that intention, they would be co-owners of the copyright (§ 201(a)).
• The Supreme Court affirmed the judgment, including the remand on joint authorship, but did not address the merits of the joint authorship claim because neither party sought review of that issue.

Example: If CCNV members and Reid both contributed creative expression (not just ideas or direction) and intended their contributions to merge into a unified sculpture, they might be joint authors. But if CCNV only provided ideas and specifications while Reid alone created the expressive content, joint authorship would not apply.

🔑 Takeaways for practice

🔑 How to determine initial copyright ownership

1. Is it a work made for hire?

   • Step 1: Was the work prepared by an employee within the scope of employment (§ 101(1))?
     • Apply the multi-factor common-law agency test.
     • If yes → employer owns the copyright (unless written agreement says otherwise).
   • Step 2: If not an employee, does the work fit one of the nine enumerated categories in § 101(2) and is there a signed written agreement designating it as work-for-hire?
     • If yes → commissioning party owns the copyright.
     • If no → the hired party (creator) owns the copyright.

2. If not work-for-hire, consider other doctrines:

   • Joint authorship: Did multiple parties contribute copyrightable expression with intent to merge into a unitary whole?
   • Assignment: Did the creator transfer ownership by written agreement?
   • Implied license: Did the circumstances create an implied license for the hiring party to use the work?

🔑 Practical implications

• For hiring parties: To ensure copyright ownership of commissioned works that don't fit § 101(1) or § 101(2), obtain a written assignment of copyright.
• For creators: Understand that being an independent contractor generally means you retain copyright unless you sign it away or the work fits § 101(2) with a written agreement.
• For planning: Negotiate and document copyright ownership at the outset; don't rely on control or supervision to establish work-for-hire status after the fact.

Don't confuse: The term "work" in copyright law refers to the fixed, tangible expression of an idea (§ 102), not the physical object embodying it. Ownership of the physical sculpture and ownership of the copyright in the sculpture are separate issues.

🧭 Overview

🧠 One-sentence thesis

The Ninth Circuit rejected Aalmuhammed's claim that he was a joint author of the movie Malcolm X despite his extensive contributions, but remanded his quantum meruit claim for further proceedings.

📌 Key points (3–5)

• The central dispute: whether Aalmuhammed's extensive contributions to the film Malcolm X made him a joint author under copyright law.
• What joint authorship requires: the Copyright Act defines a joint work as one prepared "with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole" (17 U.S.C. § 101).
• Aalmuhammed's role: he reviewed and revised the script for religious and historical accuracy, directed actors on set, and contributed significantly to scenes depicting Malcolm X's religious conversion and pilgrimage to Mecca.
• Common confusion: extensive creative contribution alone does not automatically make someone a joint author—the legal test focuses on the parties' intention to create a unified work together.
• The outcome: the court rejected the joint authorship claim but allowed a quantum meruit (fair compensation) claim to proceed.

🎬 Background and parties

🎬 The film production

• Warner Brothers contracted with Spike Lee and his production companies to make Malcolm X in 1991.
• The film was based on The Autobiography of Malcolm X.
• Spike Lee co-wrote the screenplay, directed, and co-produced the movie.
• Denzel Washington starred as Malcolm X.

👤 Aalmuhammed's involvement

• Denzel Washington asked Aalmuhammed to assist him in preparing for the starring role.
• Aalmuhammed was a devout Muslim with extensive knowledge about Malcolm X and Islam.
• He had previously written, directed, and produced a documentary film about Malcolm X.
• He joined Washington on the movie set during filming in the New York metropolitan area and Egypt.

🛠️ Aalmuhammed's contributions

📝 Script revisions

• Aalmuhammed reviewed the shooting script for Spike Lee and Denzel Washington.
• He suggested extensive script revisions.
• Some revisions were included in the released version of the film; others were filmed but not included in the final cut.
• Most revisions aimed to ensure the religious and historical accuracy and authenticity of scenes depicting Malcolm X's religious conversion and pilgrimage to Mecca.

🎭 On-set direction

• Aalmuhammed submitted evidence that he directed Denzel Washington and other actors while on the set.
• The excerpt indicates he "created at" (the text is cut off, but suggests additional creative contributions).

Example: A consultant might suggest changes to dialogue to ensure cultural accuracy, and even direct actors in specific scenes, but this does not automatically make them a co-author of the screenplay or film.

⚖️ Legal framework for joint authorship

📜 The statutory definition

Joint work: a work "prepared with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." (17 U.S.C. § 101)

• This definition comes from the Copyright Act.
• The key element is the intention of the parties at the time of creation.
• If a work qualifies as a joint work, the contributors become co-owners of the copyright under § 201(a).

🔍 Distinguishing contribution from authorship

• The excerpt references a prior case (CCNV v. Reid) where the court remanded to determine whether parties intended their contributions to be merged into a unitary whole.
• Don't confuse: making significant creative contributions ≠ automatically being a joint author.
• The legal test focuses on whether the parties intended to be joint authors, not just whether one party contributed valuable material.

Example: If a film director hires a consultant to ensure historical accuracy, the consultant's contributions—even if extensive and creative—do not make them a joint author unless both parties intended to create the work together as co-authors.

🧾 The court's decision

❌ Joint authorship claim rejected

• The Ninth Circuit rejected Aalmuhammed's claim that he was a joint author of Malcolm X.
• The court's reasoning (not fully detailed in this excerpt) presumably turned on whether Aalmuhammed and the filmmakers intended to merge their contributions into a joint work.
• Despite his extensive involvement, the legal standard for joint authorship was not met.

💰 Quantum meruit claim remanded

• The court remanded the case for further proceedings on Aalmuhammed's quantum meruit claim.
• Quantum meruit (not defined in the excerpt, but the term means "as much as deserved") is a legal doctrine allowing fair compensation for services rendered.
• This suggests that even if Aalmuhammed is not a co-author, he may still be entitled to compensation for his contributions.

Don't confuse: Rejecting joint authorship does not mean the contributor receives nothing—alternative remedies like quantum meruit may still provide compensation for the value of their work.

🧭 Overview

🧠 One-sentence thesis

The Ninth Circuit rejected Aalmuhammed's claim to be a joint author of the movie Malcolm X despite his extensive creative contributions, remanding only his quantum meruit claim for further proceedings.

📌 Key points (3–5)

• What the case involves: a copyright dispute over whether Aalmuhammed qualifies as a co-author of the movie Malcolm X under the "joint work" doctrine.
• Aalmuhammed's contributions: he reviewed and revised the script for religious and historical accuracy, directed actors on set, and provided extensive expertise on Malcolm X and Islam.
• The court's holding: the Ninth Circuit rejected the joint authorship claim but allowed the quantum meruit (compensation for value provided) claim to proceed.
• Common confusion: extensive creative contributions alone do not automatically make someone a joint author—other legal requirements must be met.
• Context from prior law: the excerpt references the CCNV v. Reid framework, which distinguishes between employees, independent contractors, and joint authors under copyright law.

🎬 Background and parties

🎬 The movie production

• In 1991, Warner Brothers contracted with Spike Lee and his production companies to make Malcolm X.
• The movie was based on The Autobiography of Malcolm X.
• Spike Lee co-wrote the screenplay, directed, and co-produced the film.
• Denzel Washington starred as Malcolm X.

🤝 Aalmuhammed's involvement

• Denzel Washington asked Aalmuhammed to assist him in preparing for the starring role.
• Why Aalmuhammed was chosen: he was a devout Muslim with extensive knowledge about Malcolm X and Islam; he had previously written, directed, and produced a documentary film about Malcolm X.
• Aalmuhammed joined Washington on the movie set during filming in the New York metropolitan area and Egypt.

🛠️ Aalmuhammed's contributions

📝 Script revisions

• Aalmuhammed reviewed the shooting script for Spike Lee and Denzel Washington.
• He suggested extensive script revisions.
• Purpose of revisions: to ensure the religious and historical accuracy and authenticity of scenes depicting Malcolm X's religious conversion and pilgrimage to Mecca.
• What happened to the revisions:
  • Some were included in the released version of the film.
  • Others were filmed but not included in the released version.

🎭 On-set direction

• Aalmuhammed submitted evidence that he directed Denzel Washington and other actors while on the set.
• The excerpt indicates he "created at" something (text cuts off), suggesting additional creative work.

⚖️ Legal claims and outcome

⚖️ Joint authorship claim (rejected)

Joint work (from CCNV v. Reid, referenced in the excerpt): a work "prepared... with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole."

• Aalmuhammed claimed to be a co-author of Malcolm X under copyright law's joint work doctrine.
• The Ninth Circuit rejected this claim.
• Don't confuse: making extensive creative contributions does not automatically establish joint authorship—the legal test requires more (the excerpt does not detail the court's reasoning, but the rejection is clear).

💰 Quantum meruit claim (remanded)

• The court remanded (sent back to the lower court) Aalmuhammed's quantum meruit claim for further proceedings.
• What quantum meruit means: a legal claim for compensation based on the value of services provided, even without a formal contract.
• This suggests Aalmuhammed may be entitled to payment for his contributions, even if he is not a copyright co-owner.

🔗 Connection to work-for-hire doctrine

🔗 The CCNV v. Reid framework

The excerpt begins with a discussion from Community for Creative Non-Violence (CCNV) v. Reid, which establishes key copyright ownership rules:

Relationship	Copyright ownership rule
Employee	Employer owns the work as "work for hire" under § 101(1)
Independent contractor	Contractor owns the work unless it satisfies § 101(2) requirements
Joint authors	Co-owners of the copyright if contributions were intended to merge into a unitary whole

🔍 How Reid applies to Aalmuhammed

• In Reid, the Supreme Court held that Reid was an independent contractor, not an employee, so CCNV could not claim ownership under work-for-hire rules.
• However, the Court of Appeals left open the possibility that CCNV and Reid could be joint authors if their contributions were intended to merge into a unitary whole.
• Parallel to Aalmuhammed: the Ninth Circuit similarly considered whether Aalmuhammed's contributions made him a joint author, but ultimately rejected that claim.

📋 Factors for employee vs. independent contractor

The excerpt lists factors courts use to distinguish employees from independent contractors (from the Restatement of Agency and prior cases):

• Whether the hiring party withholds taxes (e.g., unemployment insurance, workers' compensation).
• The hiring party's right to control the manner and means of work.
• The skill required and whether the work is part of the hiring party's regular business.
• Who supplies the tools and the place of work.
• The duration of the relationship.
• Whether the hiring party has the right to assign additional projects.
• The extent of the hired party's discretion over when and how long to work.
• The method of payment (e.g., by time vs. by job).
• Whether the work is part of the regular business of the hiring party.
• Whether the parties believe they are creating an employment relationship.
• Whether the hiring party is in business.

Why these factors matter: they determine whether a work is "for hire" under § 101(1), which affects who owns the copyright.

Don't confuse: these factors apply to the employee/independent contractor distinction, not directly to joint authorship—joint authorship requires a separate analysis of intent to merge contributions.

🧭 Overview

🧠 One-sentence thesis

The Ninth Circuit held that substantial creative contributions to a film do not automatically make someone a "joint work" co-author under copyright law unless all statutory elements—including copyrightable contribution and the required intent—are satisfied.

📌 Key points (3–5)

• Joint work definition: requires (1) a copyrightable work, (2) two or more authors, (3) intent that contributions be merged into inseparable or interdependent parts of a unitary whole.
• Independently copyrightable contribution required: in the Ninth Circuit, each author must make a contribution that could itself be copyrighted (e.g., written dialogue or scenes), not just technical or coaching assistance.
• Statute of limitations issue: authorship claims accrue upon "plain and express repudiation" of authorship, not upon later infringement; ambiguous discussions may leave the question open.
• Common confusion: extensive involvement, valuable contributions, and creative input do not equal co-authorship unless the contribution is independently copyrightable and other statutory elements are met.
• Credit vs. ownership: being listed as a consultant in film credits is not the same as being recognized as a co-author with copyright ownership rights.

📜 Factual background

🎬 The Malcolm X film production

• Warner Brothers contracted with Spike Lee and his production companies to make the movie Malcolm X in 1991.
• Lee co-wrote the screenplay, directed, and co-produced; Denzel Washington starred.
• Washington asked Jefri Aalmuhammed to assist because Aalmuhammed was knowledgeable about Malcolm X and Islam, having previously made a documentary about Malcolm X.

🤝 Aalmuhammed's involvement

Aalmuhammed's contributions included:

• Reviewing and suggesting extensive script revisions for religious and historical accuracy.
• Directing actors on set.
• Creating at least two entire scenes with new characters.
• Translating Arabic into English for subtitles.
• Supplying his own voice for voice-overs.
• Selecting proper prayers and religious practices for characters.
• Editing parts of the movie during post-production.
• Meeting with Islamic organizations after production to promote the film's authenticity.

Washington testified that Aalmuhammed's contribution was "great" because he "helped to rewrite, to make more authentic."

💰 Compensation and credit dispute

• Aalmuhammed had no written contract but expected compensation.
• He received a $25,000 check from Lee (which he cashed) and a $100,000 check from Washington (which he did not cash).
• He asked for writing credit as co-writer but was turned down.
• The released film credited him only as "Islamic Technical Consultant," far down the list.
• In November 1995, Aalmuhammed applied for copyright registration claiming co-creator, co-writer, and co-director status.
• He filed suit on November 17, 1995, seeking declaratory relief, accounting, and other remedies.

⚖️ Joint work statutory requirements

📖 The statutory definition

"A 'joint work' is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." (17 U.S.C. § 101)

The court identified three elements from the statutory language:

1. A copyrightable work
2. Two or more "authors"
3. Intent that contributions be merged into inseparable or interdependent parts of a unitary whole

🔑 Ninth Circuit's additional requirement

"A 'joint work' in this circuit 'requires each author to make an independently copyrightable contribution' to the disputed work."

• This is a circuit-specific rule cited from Ashton-Tate Corp. v. Ross.
• The contribution itself must be capable of copyright protection, not just valuable or creative assistance.

✅ Undisputed elements in this case

• Malcolm X is a copyrightable work.
• Everyone involved intended the movie to be a unitary whole.
• Aalmuhammed made substantial and valuable contributions.

❓ Disputed element: independently copyrightable contribution

Type of contribution	Copyrightable?	Court's reasoning
Speaking Arabic to mosque officials	No	Does not result in copyrightable contribution to the motion picture
Coaching actors	No (unless turned into expression)	Must be turned into an expression in a form subject to copyright
Rewriting specific dialogue passages	Possibly yes	If evidence is accepted, these would be independently copyrightable
Writing scenes for the Hajj pilgrimage	Possibly yes	If evidence is accepted, these would be independently copyrightable

Key distinction: Technical help and coaching, even if valuable, do not create copyrightable contributions unless they are transformed into fixed, copyrightable expression.

Example: Teaching actors how to pray properly as Muslims is valuable creative input, but it is not itself a copyrightable contribution; however, writing new dialogue or scenes that appear in the film could be.

⏰ Statute of limitations analysis

📅 The three-year rule

• Copyright authorship claims must be brought within three years of when they accrue (17 U.S.C. § 507(b)).
• For authorship claims, the claim accrues upon "plain and express repudiation" of authorship, not upon later infringement.
• The gravamen (essence) of the claim is creation, not infringement.

🎬 Film credits as repudiation

• The movie credits listed Aalmuhammed as "Islamic technical consultant," far below prominent names.
• This plainly and expressly repudiated authorship.
• However, this repudiation occurred less than three years before the lawsuit was filed (November 1995).

💬 Earlier discussion with Warner Brothers

• Aalmuhammed testified he discussed his claim to screenwriter credit with a Warner Brothers executive producer more than three years before filing suit.
• Defendants argued this discussion was an express repudiation that would bar the claim.
• The producer told Aalmuhammed "there is nothing I can do for you," but also said "we would discuss it further at some point."

Court's holding: A trier of fact could construe this communication as leaving the question of authorship open for further discussion, not as a plain and express repudiation.

Don't confuse: A rejection of a credit request is not automatically a "plain and express repudiation" if the conversation leaves room for future discussion; ambiguity creates a genuine issue of fact.

⚖️ Procedural consequence

Because a genuine issue of fact exists about when repudiation occurred, the court could not grant summary judgment on statute of limitations grounds and had to address the merits of the joint work claim.

🎯 Practical implications

🔍 What counts as co-authorship

Co-authorship of a joint work requires more than:

• Substantial involvement in production
• Valuable creative contributions
• Technical expertise
• Coaching or directing actors
• Being essential to the project's success

It requires:

• An independently copyrightable contribution (in the Ninth Circuit)
• Intent by all parties that contributions be merged into a unitary whole
• Satisfaction of all statutory elements

📝 Evidence Aalmuhammed presented

Aalmuhammed submitted evidence that he:

• Rewrote several specific passages of dialogue that appeared in Malcolm X
• Wrote scenes relating to Malcolm X's Hajj pilgrimage that were enacted in the movie

Court's analysis: "If Aalmuhammed's evidence is accepted, as it must be on summary judgment, these items would have been independently copyrightable."

This created a genuine issue of fact about whether he made a copyrightable contribution.

⚠️ Common confusion: contribution vs. authorship

• Many people who make important creative contributions to films are not co-authors under copyright law.
• The distinction turns on whether the contribution is independently copyrightable and whether other statutory requirements are met.
• Credit in film titles (e.g., "consultant") does not determine copyright ownership; it may actually evidence repudiation of authorship.

Example: A technical advisor who ensures historical accuracy by coaching actors and reviewing scripts for errors makes valuable contributions, but unless those contributions are fixed in copyrightable expression (like written dialogue or scenes), they do not create co-authorship.

🔄 Remand for further proceedings

The court rejected summary judgment on the copyright claim because genuine issues of fact remained, but the excerpt notes the court "remand[ed] for further proceedings on a quantum meruit claim," indicating alternative legal theories were still available.

🧭 Overview

🧠 One-sentence thesis

A "joint work" under copyright law requires not just valuable creative contributions but true authorship—typically limited to those who superintend the work, exercise creative control, and manifest a shared intent to be co-authors.

📌 Key points (3–5)

• Statutory requirement: A "joint work" must have "two or more authors," not just contributors of copyrightable material.
• Authorship vs. contribution: Making a substantial, independently copyrightable contribution does not automatically make someone an "author" of the joint work—authorship requires more.
• Who qualifies as author: The "master mind" who superintends, exercises creative control, and is the "effective cause" of the work (e.g., producer, director, star, or screenwriter with artistic control).
• Common confusion: Don't confuse being a creative contributor (like a cinematographer, costumer, or dramaturg) with being an author—many people contribute creatively to a film, but only those with control are authors.
• Intent requirement: Courts look for objective manifestations of shared intent to be co-authors (billing, decision-making authority, contracts).

🎬 The authorship problem in collaborative works

🎬 Why "author" is hard to define for movies

• The traditional concept of "author" comes from one person writing something for publication (pen-and-ink).
• Easy cases: a novel (one author) or Gilbert and Sullivan songs (two inseparable creators).
• Movies involve many contributors: producer, director, screenwriter(s), editor, cinematographer, animators, composers, costumers, hairstylists, lighting technicians, etc.
• The excerpt notes that "everyone from the producer and director to casting director, costumer, hairstylist, and 'best boy' gets listed in the movie credits because all of their creative contributions really do matter."
• Yet no single test based on creative contribution alone can distinguish who is an "author."

🤔 Different theories of movie authorship

The excerpt lists various candidates for "author" of a movie:

Candidate	Rationale
Producer	Raises the money; often has creative control
Director	"Auteur" theory—imposes artistic judgments
Screenwriter	Traditional analogy to book authors
Editor	Eisenstein's view
Star	May have control, especially as investment grows
Cinematographer	Important for visual aspects
Animators/composers	For animated films like Disney's "The Jungle Book"

• The excerpt emphasizes that control often gravitates to whoever raises money or has financial leverage.
• Example: In an animated movie, animators and composers might seem like authors, but the question is who has overall creative control.

📜 The Burrow-Giles definition of "author"

📜 Supreme Court precedent

The Supreme Court addressed authorship in new media in Burrow-Giles Lithographic Co. v. Sarony (photograph case).

Author (per Burrow-Giles): "the person who has superintended the arrangement, who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be—the man who is the effective cause of that"; "'author' involves originating, making, producing, as the inventive or master mind, the thing which is to be protected"; "the man who really represents, creates, or gives effect to the idea, fancy, or imagination."

• The Court also quoted the Founding Fathers' usage: "'he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.'"
• In the photograph case: the photographer (who set up and controlled the shot) was the author, not the lithographer (who made a copyrightable contribution) or Oscar Wilde (who posed and offered creative advice).

🔍 Authorship vs. copyrightable work

Burrow-Giles and Feist Publications answer two distinct questions:

Case	Question	Standard
Feist Publications	What is a copyrightable "work"?	"Some minimal level of creativity" or "originality" suffices
Burrow-Giles	Who is an "author"?	Requires more than minimal creative contribution—must be the "master mind" who superintends the work

• Don't confuse: A contribution can be copyrightable (meet Feist's low bar) without making the contributor an author of the joint work.
• The excerpt emphasizes that applying Feist's minimal creativity test to determine authorship "would be too broad and indeterminate"—too many people would qualify.
• Example: In Malcolm X, "the person who controlled the hue of the lighting contributed" significantly, "yet no one would use the word 'author' to denote that individual's relationship to the movie."

🎯 Practical application to movies

• Burrow-Giles "would generally limit authorship to someone at the top of the screen credits."
• Likely authors: "sometimes the producer, sometimes the director, possibly the star, or the screenwriter—someone who has artistic control."
• The excerpt reaffirms: "A creative contribution does not suffice to establish authorship of the movie."

🤝 The intent requirement for joint authorship

🤝 What courts require

The Second and Seventh Circuits hold that a claimant must prove both parties intended each other to be joint authors.

• This is consistent with the statutory requirement of "two or more authors" and the Burrow-Giles framework.
• The intent must be shown through objective manifestations, not subjective hidden thoughts.

🔎 Factors courts examine

The Second Circuit looks at:

1. Decision-making authority: Who controls creative choices?
2. Billing: How do the parties describe themselves publicly?
3. Contracts: What do agreements say about authorship?
4. Other evidence: Any objective signs of shared authorship intent.

📖 Thomson v. Larson case example

• A playwright created a modern version of La Bohème (which became the hit Broadway musical Rent).
• He hired a drama professor for "dramaturgical assistance and research," agreeing to credit her as "dramaturg" but not author.
• The contract said nothing about "joint work" or copyright.
• The playwright "had been adamant throughout its creation on being the sole author."
• The dramaturg had no decision-making authority and was not billed as co-author; the playwright "entered into contracts as the sole author."
• After the playwright died, the dramaturg sued claiming joint authorship.
• Holding: No joint work because there was no intent to be joint authors (no objective manifestations of shared authorship).

⚠️ Why objective manifestations matter

The excerpt explains: "were the mutual intent to be determined by subjective intent, it could become an instrument of fraud, were one coauthor to hide from the other an intention to take sole credit."

• Don't confuse: Privately thinking "I'm a co-author" is not enough—you need public billing, contracts, or other objective evidence.
• Example: Denoting authorship as "Gilbert and Sullivan" is an objective manifestation of shared intent.

🧩 Synthesis: Criteria for joint authorship

🧩 Multi-factor test

The excerpt synthesizes Burrow-Giles and recent joint work cases into "several factors" for joint authorship (absent a contract):

1. Superintendence and control: An author "superintend[s]" the work by exercising control; is "the effective cause" or "the inventive or master mind" who "creates, or gives effect to the idea."

2. Objective manifestations of shared intent: Putative co-authors make objective manifestations of a shared intent to be co-authors (e.g., billing as "Gilbert and Sullivan").

🚫 What does NOT suffice

• Contributing "independently copyrightable material to a work intended to be an inseparable whole" does not establish authorship.
• Being essential to the final product (like the lithographer in Burrow-Giles or the lighting designer in Malcolm X) does not make you an author.
• Subjective belief that you are a co-author, without objective evidence.

✅ Practical takeaway

• For movies: authorship typically belongs to those "at the top of the screen credits" with artistic control.
• For any collaborative work: look for who controls the work and whether the parties objectively held themselves out as co-authors.

🧭 Overview

🧠 One-sentence thesis

Co-authorship of a joint work requires not only creative contribution but also control over the work and objective manifestations of shared intent to be co-authors, without which even substantial and valuable contributions do not establish ownership rights.

📌 Key points (3–5)

• Control is decisive: the person who has superintendence of the work—who arranges, positions, and makes final decisions—is the author; helpful recommendations alone are insufficient.
• Intent matters: objective manifestations (contracts, statements) showing the parties intended to be co-authors are critical; absent such evidence, creative contribution alone does not create co-authorship.
• Common confusion: making extremely valuable creative contributions vs. being a co-author—contribution must be coupled with control and shared intent, not just usefulness or importance.
• Constitutional policy: too broad a definition of "author" would discourage consultation and collaboration, harming artistic progress rather than promoting it.
• Quantum meruit claims are separate: even without co-authorship, substantial services may support claims for compensation under quasi-contract theories.

🎬 The co-authorship test

🎯 Three-factor framework

The excerpt outlines three key considerations for determining co-authorship (drawn from circuit court decisions):

1. Control over the work: who had superintendence and final decision-making authority
2. Objective manifestations of intent: contracts or other evidence showing the parties intended to be co-authors
3. Audience appeal and contribution: whether both contributions are essential and their shares in success cannot be appraised

"Control in many cases will be the most important factor."

• These factors cannot be reduced to a rigid formula because creative relationships vary.
• Different people work together in different ways, and relationships may change over time as work proceeds.

🎭 The "master mind" standard

The excerpt references the historical test from Burrow-Giles v. Sarony:

The author is "the person who has actually formed the picture by putting the persons in position, and arranging the place…."

• This emphasizes active arrangement and positioning, not just advice or recommendations.
• The "inventive or master mind" of the work is the author.
• Don't confuse: being the master mind of a different work (like another documentary on the same subject) does not make someone the master mind of this work.

🎥 Application to Aalmuhammed's case

🚫 Lack of control

Aalmuhammed's situation illustrates what is not sufficient for co-authorship:

• Who had control: Warner Brothers and Spike Lee controlled the work; Aalmuhammed did not have superintendence at any time.
• Nature of contributions: Aalmuhammed could make "extremely helpful recommendations," but Spike Lee was not bound to accept any of them.
• Dependency on acceptance: "the work would not benefit in the slightest unless Spike Lee chose to accept them."

Example: A consultant may provide valuable script material, arrange locations, teach actors techniques, and direct specific scenes, but if the director retains final authority to accept or reject all suggestions, the consultant lacks the control necessary for co-authorship.

📝 No objective manifestations of intent

The excerpt emphasizes the absence of any evidence of shared authorship intent:

• Warner Brothers required Spike Lee himself to sign a "work for hire" agreement, so even Lee would not be a co-author and co-owner.
• Logical inference: "It would be illogical to conclude that Warner Brothers, while not wanting to permit Lee to own the copyright, intended to share ownership with individuals like Aalmuhammed who worked under Lee's control."
• No one, including Aalmuhammed, indicated prior to litigation that Aalmuhammed was intended to be a co-author.
• The Copyright Office noted that Aalmuhammed's claims "conflict with previous registration claims" and questioned the "intent" of "other authors" (Warner Brothers).

Don't confuse: The timing of a claim matters—making no claim to co-authorship until litigation is strong evidence against shared intent.

🎨 Valuable contribution is not enough

What Aalmuhammed's evidence showed:

"subject to Spike Lee's authority to accept them, he made very valuable contributions to the movie. That is not enough for co-authorship of a joint work."

• The contributions were indeed important: script material for Islamic religious scenes, arranging mosque access, teaching actors how to pray as Muslims, directing prayer scenes, and liaising with Islamic authorities.
• The excerpt notes these services were "very important" and that "the movie would be a dark tale of hate, but for the redemptive, uplifting Islamic religious scenes."
• Nevertheless, importance and value do not equal authorship without control and intent.

🏛️ Constitutional policy rationale

📜 The Progress Clause

The excerpt grounds its interpretation in constitutional purpose:

The Founding Fathers gave Congress the power to give authors copyrights in order "[t]o promote the progress of Science and useful arts."

🚧 Why narrow definitions promote progress

The court explains the policy consequences of different definitions:

Definition breadth	Effect on authors	Effect on progress
Too broad	Authors must "insulate themselves and maintain ignorance of the contributions others might make"	Progress retarded—consultation discouraged
Appropriately narrow	Authors can consult and adopt useful suggestions without sacrificing sole ownership	Progress promoted—collaboration encouraged

• Practical example from the excerpt: "Spike Lee could not consult a scholarly Muslim to make a movie about a religious conversion to Islam, and the arts would be the poorer for that."
• A broader construction would extend joint authorship to many "overreaching contributors" like dramaturgs, research assistants, editors, and "former spouses, lovers and friends."
• This would create "claim-jumping" risks and endanger authors "who talked with people about what they were doing, if creative copyrightable contribution were all that authorship required."

⚖️ Balancing contribution and ownership

The excerpt distinguishes between:

• Denying sole authors exclusive status "simply because another person render[ed] some form of assistance"
• Recognizing true joint authorship where control and intent align

Don't confuse: Protecting authors from claim-jumping is not about devaluing contributions; it's about requiring the right kind of relationship (control + intent) for ownership, not just the right quality of contribution.

💰 Quantum meruit as an alternative

🔄 Separate from authorship claims

The excerpt distinguishes compensation claims from ownership claims:

"These claims are different from Aalmuhammed's claim to authorship of a joint work. Even though he was not an author, it is undisputed that he made a substantial contribution to the film."

• Aalmuhammed alleged defendants accepted his services knowing they were not provided gratuitously, yet paid him neither fair value nor full expenses.
• Claims were articulated as quasi-contract, quantum meruit, and unjust enrichment.

🛠️ What quantum meruit might cover

Services that may support compensation even without authorship:

• Writing script material
• Arranging with authorities for filming locations (e.g., mosque access)
• Teaching actors specialized skills (how to pray as Muslims)
• Directing specific scenes
• Liaising with community authorities for support during exhibition
• Travel and lodging expenses

⚖️ Potential duty to clarify

The excerpt suggests a possible obligation:

"It may be that the producer or director, seeing that Aalmuhammed was performing valuable and substantial services and expending substantial amounts for travel and lodging, in the apparent expectation of reimbursement, had a duty to sign him up as an employee or independent contractor, obtain his acknowledgment that he was working gratuitously or perhaps for Denzel Washington, or eject him from the set."

Don't confuse: The court did not decide this duty question because the issue on review was limited to which state's statute of limitations applied (California's two-year vs. New York's six-year statute).

📋 Procedural notes

📄 Copyright registration certificate

Aalmuhammed argued that his copyright registration certificate established a prima facie case for ownership, but:

• A prima facie case "could not in any event prevent summary judgment in the presence of all the evidence rebutting his claim of ownership."
• "The presumptive validity of the certificate may be rebutted and defeated on summary judgment."
• The Copyright Office had "several questions" about conflicting claims and the intent of other authors.

⚖️ Summary judgment standard

The district court granted summary judgment dismissing the co-authorship claims because:

"the record before the district court established no genuine issue of fact as to Aalmuhammed's co-authorship of Malcolm X as a joint work"

• All evidence regarding control, intent, and the work-for-hire agreement rebutted any claim of shared ownership.
• The answers to the Copyright Office's questions established "without genuine issue" that Warner Brothers did not intend to share ownership with Aalmuhammed.

🧭 Overview

🧠 One-sentence thesis

The court held that Aalmuhammed's substantial contributions to a film did not make him a joint author under copyright law, but his quasi-contract and unfair competition claims survived dismissal because New York's longer statute of limitations applied and he adequately alleged reverse passing off.

📌 Key points (3–5)

• Authorship vs. contribution: Even undisputed substantial contributions do not automatically confer joint authorship; authorship is a separate legal question.
• Choice of law for statute of limitations: The court applies the law of the state whose interest would be more impaired if its law were not applied—here, New York's six-year statute governed over California's two-year limit.
• Reverse passing off under Lanham Act: Failure to give appropriate credit for film work can constitute actionable "reverse palming off" if the complaint alleges substantial use of the plaintiff's work.
• Common confusion: Don't confuse substantial contribution (which may support quasi-contract claims) with joint authorship (which requires meeting separate copyright standards).
• Procedural posture matters: A Rule 12(b)(6) dismissal tests only whether the complaint states a claim, not whether the plaintiff has evidence to prove it.

🎬 Authorship vs. Contribution to a Joint Work

🎬 Substantial contribution does not equal authorship

• The excerpt emphasizes: "it is undisputed that [Aalmuhammed] made a substantial contribution to the film."
• Yet the court treats his authorship claim separately from his quasi-contract claims.
• Why the distinction matters: Copyright joint authorship has specific legal requirements beyond just doing valuable work.

Even though he was not an author, it is undisputed that he made a substantial contribution to the film.

• Example: A person rewrites dialogue, directs religious scenes, and travels to shoot footage—all substantial—but may still not qualify as a joint author under copyright law.

🔍 What Aalmuhammed contributed

• He performed services in New York and Egypt (including shooting Hajj scenes).
• He claimed to have "substantially rewrote and expanded the dialogue for various entire [scenes]" and alleged "extensive and substantial use of his work in the final movie."
• The excerpt notes he spent months on set and incurred travel and lodging expenses "in the apparent expectation of reimbursement."

⚖️ Quasi-contract claims as an alternative remedy

Aalmuhammed's fifth, sixth, and seventh claims were:

• Quasi-contract
• Quantum meruit
• Unjust enrichment

These claims are different from the joint authorship claim:

• They do not require proving authorship.
• They rest on the theory that the producer/director saw him performing valuable services and expending costs, yet failed to sign him up as an employee, independent contractor, or acknowledge he was working gratuitously.

Don't confuse: A substantial contributor who is not an author may still recover under restitution theories if the defendant accepted valuable services without agreement.

⏱️ Statute of Limitations and Choice of Law

⏱️ The core choice-of-law rule

The district court applied California law (forum state) to determine which state's statute of limitations governed.

The applicable rule required, in this case, that "the court must apply the law of the state whose interest would be more impaired if its law were not applied."

• California had a two-year statute of limitations.
• New York had a six-year statute of limitations.
• The defendants moved to dismiss under California's shorter period; Aalmuhammed argued for New York's longer one.

🗽 Why New York's interest was stronger

Factor	California	New York
Defendant corporations' principal place of business	California	—
Plaintiff's residence	Neither (Florida)	—
Where lawsuit was filed	California	—
Where the work was performed	—	New York (and Egypt)
Strength of interest	Weak: protecting residents from stale claims arising from work done outside the state	Strong: governing remedies for parties working in New York

The court reasoned:

• "The residence of the parties is not the determining factor in a choice of law analysis."
• California's interest in protecting its residents from stale claims for out-of-state work is weak.
• New York's interest in governing remedies for work performed in New York is "far more significant."
• New York's connection was "considerably more substantial, immediate and concrete."

Conclusion: New York would suffer more damage if its law were not applied, so New York's six-year statute governs.

📅 Result on the quasi-contract claims

• The claims were brought within six years of accrual.
• The court vacated the dismissal and remanded the implied contract, quantum meruit, and unjust enrichment claims for further proceedings.

🏷️ Unfair Competition and Reverse Passing Off

🏷️ What "reverse palming off" means

Aalmuhammed claimed defendants passed off his scriptwriting, directing, and other work as that of other persons, violating:

• The Lanham Act (federal trademark/unfair competition law)
• California's unfair competition statute (Business and Professions Code § 17200)

"Failure to give appropriate credit for a film is 'reverse palming off' actionable under the Lanham Act."

• Reverse passing off: taking someone else's work and presenting it as your own (or someone else's), rather than falsely claiming your work is someone else's.
• Example: A film uses a writer's dialogue and direction but credits another person or omits the writer's name entirely.

🔍 Why the dismissal was reversed

The district court dismissed under Rule 12(b)(6) (failure to state a claim).

Defendants' argument: Not enough of Aalmuhammed's proposed script was used verbatim to amount to a violation.

Court's response:

• "This argument goes to the evidence, not the complaint, so it cannot sustain the 12(b)(6) dismissal."
• The complaint alleged Aalmuhammed "substantially rewrote and expanded the dialogue for various entire [scenes]" and "extensive and substantial use of his work in the final movie."
• At the pleading stage, these allegations are sufficient to state a claim.

Don't confuse: A 12(b)(6) dismissal tests whether the complaint alleges enough facts to support a claim, not whether the plaintiff can prove those facts at trial or summary judgment.

🤝 California unfair competition claims

The court noted:

"Actions pursuant to California Business and Professions Code § 17200 are substantially congruent to claims made under the Lanham Act."

• This means the analysis for the California state claim largely mirrors the Lanham Act analysis.
• The court reversed dismissal of both the Lanham Act and California unfair competition claims.

🌍 Conduct Abroad and the Copyright Act

🌍 The Subafilms rule

The district court dismissed claims against the "Largo defendants" based on the court's prior decision in Subafilms:

Acts of copyright infringement that occur wholly outside of the United States are not actionable under the U.S. Copyright Act.

🔍 Why the dismissal was premature

• The complaint did not clearly state whether the Largo defendants' conduct occurred outside the United States.
• Defendants argued they were "the film's foreign distributors," suggesting foreign conduct.
• But the complaint also said their principal place of business was in California.

Court's reasoning:

• "These allegations leave room for proof that the conduct that [occurred in the U.S.]."
• A 12(b)(6) dismissal is inappropriate when the complaint's allegations could support a claim if proven.

Implication: The plaintiff should have the opportunity to develop facts about where the conduct occurred before dismissal on this ground.

🧭 Overview

🧠 One-sentence thesis

Trademark law requires that marks be distinctive—capable of identifying and distinguishing one party's goods from others—and this requirement flows from the core function of trademarks as source identifiers rather than as technological innovations.

📌 Key points (3–5)

• What a trademark is: any word, name, symbol, device, or combination used to identify and distinguish goods and indicate their source.
• Trademark vs patent differences: patents are exclusively federal and relate to technology; trademarks are dual-authority (federal and state), rooted in source identification, and rights flow from use rather than registration alone.
• Distinctiveness requirement: a mark must be capable of identifying and distinguishing one party's goods from those of others.
• Common confusion: registration strengthens trademark rights but does not create them—use as a mark is what generates trademark rights.
• Why distinctiveness matters: it ensures trademarks fulfill their policy function of source identification.

🏷️ What trademarks are

🏷️ Statutory definition

The term "trademark" includes any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

• The definition is broad: words, names, symbols, devices, or combinations.
• Two key functions:
  • Identify and distinguish goods from others.
  • Indicate the source (even if the actual source is unknown to consumers).
• Example: A manufacturer uses a particular green-gold color on dry cleaning pads to distinguish them from competitors' pads.

🔄 Use vs registration

• Trademark rights flow from use as a mark, not from registration.
• Registration can strengthen rights but does not alone provide them.
• The statute also covers those with "bona fide intention to use in commerce" who apply to register.
• Don't confuse: unlike patents, where rights come only from an issued patent, trademark rights exist through use even without registration.

⚖️ Trademark vs patent law

⚖️ Structural differences

Aspect	Patents	Trademarks
Authority	Exclusively federal	Dual-authority (federal and state); historically rooted in state law
Uniformity	Relatively uniform (single appellate court)	Substantial diversity on some issues (fragmented appellate decisionmaking)
Subject matter	Technological development	Source identification
Rights creation	Filing for and obtaining an issued patent	Use as a mark
Registration role	Required for rights	Strengthens rights but not required

🧩 Why the differences matter

• Patents and trademarks have "relatively little in common when it comes to substantive law."
• The excerpt advises forgetting patent law when studying trademarks—they operate on fundamentally different principles.
• Example context: the Qualitex case involved a competitor using a similar color on dry cleaning pads, raising the question whether color alone can serve as a trademark (a source-identification question, not a technology question).

🎯 The distinctiveness requirement

🎯 What distinctiveness means

• A mark must be capable of identifying and distinguishing one party's goods from others.
• This is not just a formal requirement—it flows from the core function of trademarks.
• The excerpt introduces distinctiveness as a separate legal requirement with underlying policy justifications.

📋 Policy foundations

• Positive policy: trademarks enable consumers to identify the source of goods, reducing search costs and encouraging quality consistency.
• Negative policy concerns: the excerpt notes there are "policy issues relating to trademarks, both positive and negative" (specifics not detailed in this excerpt).
• The distinctiveness requirement ensures marks actually perform the source-identification function rather than merely decorating products.

🔍 Analyzing distinctiveness

• The learning objectives indicate students should be able to "analyze the distinctiveness of a given mark."
• The Qualitex case provides a concrete scenario: whether a particular green-gold color used on dry cleaning pads is distinctive enough to serve as a trademark.
• Key question: does the mark identify and distinguish the goods from competitors' goods?
• Don't confuse: distinctiveness is about source identification, not about aesthetic appeal or technological innovation.

📚 Context and application

📚 The Qualitex case

• Parties: Qualitex (manufacturer using green-gold color on dry cleaning pads) vs Jacobson (competitor using similar color).
• Issue: whether color alone can serve as a trademark.
• Jacobson's argument: color alone cannot be a trademark.
• This case is described as "the classic" case for understanding trademark nature and function.

📚 Analytical framework

• The excerpt structures trademark analysis around several questions:
  • Can the subject matter be a trademark? (broad statutory definition)
  • Is it distinctive? (does it identify and distinguish?)
  • What policies support or oppose trademark protection in this case?
• Example: A color might be analyzed by asking whether consumers associate that specific color with a particular source of dry cleaning pads, or whether they see it as merely decorative.

🧭 Overview

🧠 One-sentence thesis

The case establishes an analytical framework for determining when nonliteral copying—copying elements or pieces rather than verbatim reproduction—constitutes copyright infringement.

📌 Key points (3–5)

• What nonliteral copying means: copying that does not simply reproduce the work verbatim (like a photocopier would), but instead copies only elements or pieces of the protected work.
• Two fundamental questions addressed: (1) Can nonliteral copying be considered copyright infringement? (2) At what point does nonliteral copying cease to be infringement?
• Why this matters: the proliferation of creative works means almost every work is both copyrighted itself and potentially subject to copyrights in other works, creating complex interrelationships.
• Common confusion: not all copying is infringement—there is a threshold where copying elements becomes too abstract or general to qualify as infringement.
• Context: the case predates much of today's proliferation of copyrighted works but remains frequently cited for its analytical framework.

📜 Copyright owner's exclusive rights

📜 Statutory foundation (17 U.S.C. § 106)

Subject to sections 107 through 122, the owner of copyright has the exclusive rights to do and to authorize the following:

The statute grants six exclusive rights to copyright owners:

Right	Description
(1) Reproduction	To reproduce the copyrighted work in copies or phonorecords
(2) Derivative works	To prepare derivative works based upon the copyrighted work
(3) Distribution	To distribute copies or phonorecords to the public by sale, transfer, rental, lease, or lending
(4) Public performance	To perform certain categories of works publicly (literary, musical, dramatic, choreographic works, pantomimes, motion pictures, and audiovisual works)
(5) Public display	To display certain categories of works publicly (literary, musical, dramatic, choreographic works, pantomimes, pictorial, graphic, or sculptural works, and individual images of motion pictures or audiovisual works)
(6) Digital audio transmission	To perform sound recordings publicly by means of digital audio transmission

🎯 Primary focus: the reproduction right

• The first right—the exclusive right to reproduce the copyrighted work—is the primary focus of copyright infringement analysis.
• This right is at the heart of most infringement disputes.
• The complexity arises because reproduction can occur in many forms, not just exact duplication.

🔍 The nonliteral copying problem

🔍 What makes nonliteral copying difficult

• Verbatim copying is straightforward: photocopying or exact reproduction clearly infringes the reproduction right.
• Nonliteral copying is complex: when someone copies only elements, pieces, or aspects of a work without reproducing it word-for-word, determining infringement becomes difficult.
• The challenge is heightened by the "staggering" complexity of interrelationships among creative works in modern times.

⚖️ The two fundamental questions

The Nichols case addresses:

1. Can nonliteral copying be infringement at all? (Does copying elements without verbatim reproduction qualify as violating the reproduction right?)
2. Where is the boundary? (At what point does nonliteral copying become too abstract or general to constitute infringement?)

Don't confuse: The question is not whether any similarity exists, but whether the copying crosses a threshold from permissible inspiration or use of general ideas to impermissible appropriation of protected expression.

🧩 Analytical framework considerations

🧩 Policy tensions

The excerpt indicates that underlying policies are at issue in Judge Hand's opinion, though the full text is not provided. The framework must balance:

• Protection for creators: ensuring copyright owners can enforce their exclusive rights against those who copy protected elements.
• Freedom for subsequent creators: allowing others to build upon ideas, themes, and general concepts without fear of infringement.

🧩 The framework's purpose

• Judge Hand's analytical framework provides a method for courts to navigate the difficult question of nonliteral copying.
• The framework is designed to handle the "common problem" that arises when copying is not verbatim but still potentially infringing.
• Example: If Author A writes a play and Author B writes a different play that uses some of the same character types or plot structure but different dialogue, the framework helps determine whether B infringed A's copyright.

📊 Context and significance

📊 Economic focus

• Although the complexity of copyrighted works is staggering, "copyright infringement disputes tend to focus on economically significant activities."
• Not every instance of copying leads to litigation—disputes arise primarily where there is meaningful economic harm or commercial exploitation.

📊 Historical importance

• Nichols predates "much of the proliferation of copyrighted works" that exists today.
• Despite its age, the case is "frequently referred to" for its analytical framework.
• The framework has endured because it addresses a fundamental and recurring problem in copyright law.

Don't confuse: The age of the case does not diminish its relevance—the core problem of distinguishing permissible from impermissible nonliteral copying remains constant even as the volume and types of copyrighted works have grown.

🧭 Overview

🧠 One-sentence thesis

Copyright protection does not extend to abstract ideas, themes, or stock characters, but only to the particular expression of those ideas, so that a playwright cannot monopolize a general plot or character type even if she originated a successful treatment of it.

📌 Key points (3–5)

• Core holding: Copyright infringement requires copying more than just general ideas, themes, or stock character types; it requires copying the specific expression.
• The abstraction problem: Any work can be described at many levels of generality, from detailed expression down to a bare title or theme, and somewhere along that spectrum protection stops.
• Common confusion: Nonliteral copying (not word-for-word) can still infringe, but only if it copies protected expression, not unprotectable ideas, plots, or character archetypes.
• Stock characters and themes: Familiar types (e.g., "low comedy Jew and Irishman," interfaith marriage conflict) belong to the public domain and cannot be monopolized.
• Why it matters: The boundary between idea and expression determines whether similar works infringe or simply share a common theme.

🎭 The two plays compared

🎭 "Abie's Irish Rose" (plaintiff's play)

• Jewish merchant father (widower) obsessed with his son marrying an orthodox Jewess.
• Son secretly marries Irish Catholic girl before a Protestant minister.
• Son introduces bride to father as Jewish; father approves and arranges Jewish wedding ceremony.
• Irish father (widower, equally religiously antagonistic) arrives with priest during the ceremony.
• Both fathers outraged; priest and rabbi become friendly and perform a third marriage ceremony.
• Act two: each father has disowned the couple.
• Act three: a year later, twins (boy and girl) born; each grandfather visits separately with gifts, each thinking the child is one sex.
• Reconciliation when they learn the truth; each twin named after a grandparent; Jewish father softens his orthodoxy.

🎭 "The Cohens and The Kellys" (defendant's film)

• Jewish and Irish families live side by side in poor New York neighborhood in perpetual enmity.
• Both wives living; animosity shared by small sons and even dogs.
• Jewish father in clothing business; Irish father a policeman.
• Jewish daughter and Irish son secretly marry (apparently after the play opens).
• Jewish father inherits large fortune, moves into luxurious house, lives in vulgar ostentation.
• Irish boy seeks out bride, chased away by angry Jewish father.
• Jewish father becomes sick, goes to Florida; daughter discloses marriage to mother.
• On return, Jewish father learns daughter has borne a child; suspects lawyer, then learns truth and is enraged.
• Irish family forbidden to see grandchild; violent scene; Jewish father disowns daughter; she returns to Irish family's poor lodgings with baby.
• Lawyer reveals fortune actually belongs to Irishman (also related to deceased), offers to conceal this if Jew will share.
• Jew refuses, walks through rain to Irish house to surrender property.
• Reconciliation through Jew's honesty and Irishman's generosity (agreeing to share equally); grandchild a minor motive at most.

🔍 Key differences the court emphasized

• Central theme: Plaintiff's play is about religious zealotry (race is secondary); defendant's is about racial enmity (religion barely appears).
• Reconciliation mechanism: Plaintiff's through grandparental pride and affection; defendant's through honesty and generosity over property.
• Character depth: Plaintiff's fathers are more developed in their religious obsessions; defendant's are stock comedy types.
• Common elements: Only a quarrel between Jewish and Irish fathers, marriage of their children, birth of grandchildren, and reconciliation.

🧩 The idea/expression distinction

🧩 Why literal copying is not the test

"It is of course essential to any protection of literary property... that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations."

• Nonliteral copying (changing words but keeping structure, plot, characters) can still infringe.
• But once we move beyond literal text, "the whole matter is necessarily at large"—no bright-line rule.
• The court must draw a line between protected expression and unprotected ideas.

🧩 The abstraction ladder

• Any work can be described at increasing levels of generality, each "pattern" fitting the work equally well.
• Example progression: detailed dialogue → scene structure → character relationships → plot outline → general theme → title.
• At some point on this ladder, the description becomes so abstract that it describes only the "ideas" of the work, which cannot be copyrighted.
• The boundary problem: "Nobody has ever been able to fix that boundary, and nobody ever can."

🧩 What belongs to the public domain

• Ideas: The concept of a conflict between religiously or racially opposed families whose children marry.
• Themes: "A comedy based upon conflicts between Irish and Jews, into which the marriage of their children enters, is no more susceptible of copyright than the outline of Romeo and Juliet."
• Stock characters: "Low comedy Jew and Irishman" are prototypes that have existed "for many decades."
• General plot patterns: The "most general statement of what the play is about" cannot be monopolized.

Example: If Twelfth Night were copyrighted, a second author could not copy Sir Toby Belch or Malvolio closely enough to infringe, but could freely use "a riotous knight who kept wassail" or "a vain and foppish steward who became amorous of his mistress"—these are Shakespeare's ideas, not his expression.

⚖️ The penalty for underdeveloped characters

"It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly."

• Thinly sketched characters are closer to stock types and thus less protectable.
• The more generic and archetypal a character, the less it can be monopolized.

🎯 Application to this case

🎯 Plot comparison

• The court found the plots "quite different" in their central concerns and mechanisms.
• Common elements (interfaith/interracial marriage, hostile fathers, grandchild, reconciliation) are too general to be protected.
• These are "no more than any one might lift if he chose."

🎯 Character comparison

Character	Plaintiff's version	Defendant's version	Court's conclusion
Jewish father	Religious zealot, affectionate, warm, patriarchal; obsessed with orthodoxy	Tricky, ostentatious, vulgar, redeemed by honesty; superficial interest in grandchild	Both grotesque and quarrelsome, but these common qualities are "only a small part" and "no more than any one might lift"
Irish father	Religious zealot, patriarchal pride, "mere symbol," "scarcely a character at all"	Truculent, grotesque hobbledehoy for low comedy; not motivated by pride	"Even more unlike"; conventional low comedy anyone could borrow
Lovers	"So faintly indicated as to be no more than stage properties"; loving and fertile	(Not separately described)	Anyone may use "loving and fertile lovers"

🎯 The plaintiff's "quadrangle" analysis rejected

• Plaintiff prepared an elaborate chart showing parallel emotions (love, anger, anxiety, despondency, disgust) in both sets of characters.
• Court rejected this as "too general to be quite useless."
• "Emotions are too much colored by their causes to be a test when used so broadly."
• The proper approach is "more ingenuous, more like that of a spectator, who would rely upon the complex of his impressions of each character."

⚠️ Don't confuse: copying ideas vs. copying expression

• Not infringement: Using the same general theme, stock character types, or plot outline that the plaintiff used.
• Possible infringement: Copying the specific way the plaintiff expressed those ideas—particular dialogue, detailed character traits, specific scene structure.
• This case: Defendant took only the general idea (interfaith/interracial conflict, marriage, reconciliation), not the plaintiff's particular expression of it.

📋 Procedural note on expert testimony

📋 The court's warning about experts

• The record was unnecessarily long due to expert witnesses on dramatic craftsmanship.
• "Argument is argument whether in the box or at the bar, and its proper place is the last."
• Expert testimony on such issues "greatly extends the trial and contributes nothing which cannot be better heard after the evidence is all submitted."
• Court's instruction: "It ought not to be allowed at all."
• The court should rely on "its considered impressions upon its own perusal" of the works, not expert analysis of dramatic technique.

📋 What the case should focus on

• Whether the copyrighted work was original.
• Whether the defendant copied it.
• Whether the copying extends to protected expression (not just ideas).

---

Note: The excerpt also contains fragments of other cases (Aalmuhammed regarding reverse passing off and extraterritoriality, and introductory material on copyright infringement and statutory rights) and statutory excerpts (§§ 106, 107, etc.), but the substantive case law content is Nichols v. Universal Pictures, which is fully covered above.

🧭 Overview

🧠 One-sentence thesis

A parody's commercial character does not presumptively bar fair use, and courts must weigh all four statutory factors—including the transformative nature of the work and the specific market harm—on a case-by-case basis.

📌 Key points (3–5)

• What the case decides: Whether 2 Live Crew's commercial rap parody of "Oh, Pretty Woman" can be fair use under the Copyright Act.
• Commercial use is not presumptively unfair: The Court rejects the lower court's rule that commercial parody is presumptively unfair; commerciality is only one factor to weigh.
• Transformative use matters most: The more transformative the new work (adding new expression, meaning, or message), the less other factors like commerciality weigh against fair use.
• Parody vs. satire distinction: Parody comments on the original work itself and needs to borrow from it; satire targets society generally and has less justification for borrowing.
• Common confusion: Market harm from effective criticism (killing demand by negative commentary) is not cognizable under copyright; only harm from market substitution (usurping the original's role) counts.

🎭 What parody is and why it matters

🎭 Definition of parody

Parody: "the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works."

• The Greek root parodeia means "a song sung alongside another."
• Modern dictionaries describe parody as imitating an author's style "to make them appear ridiculous" or for "comic effect."
• The key element: the new work must comment on or criticize the original work itself, not just use it for attention.

🎯 Why parody needs to borrow

• Parody must "conjure up" the original to make its critical point recognizable.
• It typically quotes the most distinctive or memorable features so the audience knows what is being parodied.
• Example: 2 Live Crew copied the opening bass riff and first line of "Oh, Pretty Woman" because "the heart is also what most readily conjures up the song for parody, and it is the heart at which parody takes aim."
• Don't confuse with satire: Satire can "stand on its own two feet" and targets society broadly, so it has less justification for borrowing from a specific copyrighted work.

📜 Historical context

• Fair use has been recognized since copyright's infancy to fulfill the Constitution's goal: "to promote the Progress of Science and useful Arts."
• Justice Story explained that "in literature, in science and in art, there are, and can be, few, if any, things, which in an abstract sense, are strictly new and original throughout."
• The 1976 Copyright Act codified the judge-made fair use doctrine in § 107 without changing it, requiring "case-by-case analysis" rather than "bright-line rules."

⚖️ The four-factor fair use test

⚖️ Overview of the four factors

Section 107 lists four factors courts must consider:

Factor	What it examines
(1) Purpose and character	Is the use transformative? Commercial or nonprofit?
(2) Nature of the work	Is the original creative or factual? Published or unpublished?
(3) Amount and substantiality	How much was taken, quantitatively and qualitatively?
(4) Market effect	Does the use harm the market for the original or derivatives?

• All four factors must be "explored, and the results weighed together, in light of the purposes of copyright."
• No single factor is dispositive; the statute uses "including" and "such as" to show the examples are "illustrative and not limitative."

🔄 Factor 1: Purpose and character (transformative use)

Transformative use: whether the new work "adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message."

• Central question: Does the new work "merely supersede the objects of the original creation" or does it transform it?
• The more transformative the work, the less significant other factors (like commerciality) become.
• Parody "has an obvious claim to transformative value" because it sheds light on the original while creating something new.
• Commercial use is only one element: The statute says "including whether such use is of a commercial nature," meaning commerciality is part of a "broader investigation into purpose and character."
• The Court rejects any presumption that commercial use is unfair: "Congress could not have intended such a rule" because most news reporting, criticism, teaching, and research are "generally conducted for profit."

Example: 2 Live Crew's song "juxtaposes the romantic musings of a man whose fantasy comes true, with degrading taunts, a bawdy demand for sex, and a sigh of relief from paternal responsibility"—this can be seen as "a comment on the naiveté of the original" and "a rejection of its sentiment that ignores the ugliness of street life."

Don't confuse: Using a copyrighted work "merely to get attention or to avoid the drudgery in working up something fresh" is not transformative, even if labeled a parody.

📚 Factor 2: Nature of the copyrighted work

• This factor asks whether the original is "closer to the core of intended copyright protection."
• Creative, expressive works (like songs) get stronger protection than factual compilations.
• In parody cases, this factor helps little: "Parodies almost invariably copy publicly known, expressive works," so this factor rarely distinguishes fair use from infringement in parody cases.

✂️ Factor 3: Amount and substantiality of the portion used

• Courts examine both the quantity and the quality/importance of what was taken.
• The key question for parody: Was the copying "reasonable in relation to the purpose of the copying"?
• Parody must take enough to "conjure up" the original and make it recognizable, which often means copying the "heart" or most memorable features.
• Copying the "heart" is not automatically excessive if the heart is what the parody targets and what makes the original recognizable.

Example: The Court found that 2 Live Crew copied the opening bass riff and first line, but "thereafter departed markedly from the Orbison lyrics for its own ends" and "produced otherwise distinctive sounds." This is not a case where "a substantial portion of the parody itself is composed of a verbatim copying of the original."

Don't confuse: Taking the heart of the original is different from taking the heart and adding little else. Context matters: "the question of fairness asks what else the parodist did besides go to the heart of the original."

💰 Factor 4: Effect on the potential market

Market harm inquiry: "whether unrestricted and widespread conduct of the sort engaged in by the defendant would result in a substantially adverse impact on the potential market for the original."

• Courts must consider harm not only to the original but also to "the market for derivative works."
• Two types of harm:
  • Market substitution (cognizable): the new work usurps the original's market role.
  • Critical harm (not cognizable): the parody kills demand by effective negative commentary.

💡 No presumption of market harm for transformative works

• The lower court applied a presumption from Sony: commercial use presumes market harm.
• The Supreme Court holds this presumption applies only to "mere duplication for commercial purposes," not to transformative uses like parody.
• When use is transformative, "market substitution is at least less certain, and market harm may not be so readily inferred."

🚫 No derivative market for criticism

• "There is no protectible derivative market for criticism."
• Original creators would not "in general develop or license" critical reviews or parodies of their own work: "People ask for criticism, but they only want praise."
• Example: The court below erred by considering harm to the market for parodies of "Oh, Pretty Woman"—that is not a market the copyright holder would license.

🎤 But derivative markets for other uses matter

• 2 Live Crew's song is not "parody pure and simple"—it is also rap music.
• The "derivative market for rap music is a proper focus of enquiry."
• Evidence of harm to the market for a non-parody rap version of the original would weigh against fair use.
• The Court remands because neither party introduced evidence about the effect on the market for a non-parody rap derivative.

Don't confuse: Harm from the parody's "critical commentary" (making the original look bad) versus harm from "market substitution" (replacing demand for the original or its derivatives). Only the latter is relevant.

🏛️ Procedural history and outcome

🏛️ What happened below

• District Court: Granted summary judgment for 2 Live Crew, finding fair use. The court reasoned that commercial purpose was no bar, the parody took no more than necessary to "conjure up" the original, and market harm was "extremely unlikely."
• Court of Appeals: Reversed. It held that commercial use creates a presumption of unfairness under factor one, that 2 Live Crew took "the heart of the original" (too much under factor three), and that commercial use presumes market harm under factor four.

✅ Supreme Court decision

• Reversed and remanded.
• The Court of Appeals erred by:
  • Treating commercial character as presumptively unfair.
  • Holding that copying the "heart" was excessive as a matter of law, without appreciating parody's need for recognizable elements.
  • Applying a presumption of market harm based on commercial use.
• The case is remanded for further proceedings, particularly to develop evidence on the effect on the market for non-parody rap derivatives.

🧩 Key legal principles

🧩 Fair use is flexible, not mechanical

• Fair use "permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster."
• The statute "calls for case-by-case analysis," not "bright-line rules."
• The four factors are not treated "in isolation, one from another"; all must be weighed together.

🧩 Transformative use is central

• Transformative works "lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright."
• The goal of copyright—to promote science and the arts—is "generally furthered by the creation of transformative works."
• The more transformative, the less weight other factors (like commerciality) carry.

🧩 Good faith and permission requests are irrelevant

• The Court rejects the argument that 2 Live Crew's request for permission (and subsequent refusal) should weigh against fair use.
• "If the use is otherwise fair, then no permission need be sought or granted."
• "Being denied permission to use a work does not weigh against a finding of fair use."

🧩 Quality of parody is not judged

• "Whether, going beyond [recognizing parodic character], parody is in good taste or bad does not and should not matter to fair use."
• Justice Holmes: "It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work]."
• Courts ask only whether "a parodic character may reasonably be perceived," not whether the parody is funny or successful.

📋 Concurrence (Justice Kennedy)

📋 Stricter view of parody

Justice Kennedy agrees with the remand but emphasizes:

• Parody must target the original: "It is not enough that the parody use the original in a humorous fashion, however creative that humor may be."
• The copied work must be "at least in part, an object of the parody," not just its general style or genre.
• This "prerequisite confines fair use protection to works whose very subject is the original composition."

📋 Concerns about weak parodies

• "More than arguable parodic content should be required to deem a would-be parody a fair use."
• "We should not make it easy for musicians to exploit existing works and then later claim that their rendition was a valuable commentary."
• "Just the thought of a rap version of Beethoven's Fifth Symphony or 'Achy Breaky Heart' is bound to make people smile," but weak transformation should not automatically qualify as parody.
• Kennedy is "not so assured that 2 Live Crew's song is a legitimate parody," but the remand allows the District Court to determine this.

🧭 Overview

🧠 One-sentence thesis

The Supreme Court held that a pictorial, graphic, or sculptural feature incorporated into a useful article is copyrightable if it can be perceived as a two- or three-dimensional work of art separate from the useful article and would qualify as protectable art on its own or in another medium.

📌 Key points (3–5)

• The useful articles doctrine: Copyright protects artistic features of useful articles only if those features can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.
• The Court's two-part test: (1) Can the feature be perceived as a work of art separate from the useful article? (2) Would it qualify as protectable art on its own or in another medium?
• Common confusion—physical vs. conceptual separability: The Court rejects the physical/conceptual distinction; separability is always a conceptual undertaking, not about whether the useful article remains functional after extraction.
• What the test does NOT protect: The shape, cut, and physical dimensions of useful articles themselves remain unprotectable; only the artistic features applied to them may be copyrighted.
• The dissent's concern: Justice Breyer argues the majority's test risks extending copyright to industrial designs Congress deliberately excluded, warning that extracting the cheerleader uniform designs would still replicate pictures of uniforms.

📜 Statutory framework

📜 Useful article definition

"A 'useful article' is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."

• The statute does not protect useful articles as such.
• Congress provided copyright protection for original works of art, but not for industrial designs.
• The line between art and industrial design is often difficult to draw, especially when industrial designs incorporate artistic elements.

🎨 Pictorial, graphic, and sculptural works

"The design of a useful article … shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article."

• This includes two-dimensional and three-dimensional works of fine, graphic, and applied art.
• The statute establishes a special rule for copyrighting such works when incorporated into useful articles.
• The key statutory requirements are "separate identification" and "independent existence."

⚖️ The Court's separability test

⚖️ First requirement: Separate identification

• The decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.
• The Court describes this as "not onerous."
• It is a perceptual inquiry: can you see the artistic feature as distinct from the useful article?

🔍 Second requirement: Independent existence

• This is "ordinarily more difficult to satisfy."
• The separately identified feature must have the capacity to exist apart from the utilitarian aspects of the article.
• Key principle: The feature must be able to exist as its own pictorial, graphic, or sculptural work once imagined apart from the useful article.
• If the feature cannot exist as such a work once separated, then it was not an artistic feature but rather one of the article's utilitarian aspects.

🧪 The "imagined separately" test

The Court's complete test:

Step	Question	What it means
1	Can the feature be perceived as a 2D or 3D work of art separate from the useful article?	Look at the article and identify artistic elements
2	Would it qualify as protectable art on its own or in another medium if imagined separately?	Mentally extract the feature and ask if it would be copyrightable art standing alone

Important limitation: The feature cannot itself be a useful article or a replica of one.

Example: A cardboard model of a car could be copyrightable as a sculpture, but it would not give rise to any rights in the useful article (the car) that inspired it.

🚫 What the test does NOT require

• No requirement that the useful article remain functional: The statute does not require imagining a fully functioning useful article without the artistic feature.
• No requirement that the article be "equally useful" after extraction: The focus is on the extracted feature, not on what remains.
• No "solely artistic" requirement: A feature does not lose protection simply because it makes the useful article more useful or serves some utilitarian function.

Don't confuse: The statute protects "applied art"—art employed in the decoration or design of useful objects. Requiring features to be "solely artistic" with no utilitarian effect would read "applied art" out of the statute.

🏈 Application to cheerleading uniforms

🏈 The designs at issue

• Varsity Brands obtained copyright registrations for two-dimensional designs appearing on cheerleading uniforms.
• The designs were "combinations, positionings, and arrangements of elements" including chevrons, lines, curves, stripes, angles, diagonals, inverted chevrons, coloring, and shapes.
• Five specific designs were at issue: 299A, 299B, 074, 078, and 0815.

✅ Why the Court found them copyrightable

1. Separate identification: One can identify the decorations as features having pictorial, graphic, or sculptural qualities.
2. Independent existence: If the arrangement of colors, shapes, stripes, and chevrons were separated from the uniform and applied in another medium (e.g., on a painter's canvas), they would qualify as "two-dimensional works of art."
3. No replication: Imaginatively removing the surface decorations and applying them in another medium would not replicate the uniform itself.
4. Actual application elsewhere: Varsity had applied the designs to other types of clothing without replicating the uniform.

🎯 What is and is not protected

Protected: The two-dimensional work of art fixed in the tangible medium of the uniform fabric.

NOT protected:

• The shape, cut, and physical dimensions of the cheerleading uniforms.
• The right to prohibit manufacturing a cheerleading uniform of identical shape, cut, and dimensions.

What Varsity can prohibit: Only the reproduction of the surface designs in any tangible medium of expression—a uniform or otherwise.

🖼️ The fresco analogy

The Court addresses the concern that the designs correspond to the shape of the uniform:

• Just as two-dimensional fine art corresponds to the shape of the canvas on which it is painted, two-dimensional applied art correlates to the contours of the article on which it is applied.
• A fresco painted on a wall, ceiling panel, or dome would not lose copyright protection simply because it was designed to track the dimensions of the surface.
• A design etched on a guitar's surface that is then placed on an album cover would still resemble the guitar's shape, but the image on the cover does not "replicate" the guitar as a useful article.

Example: Artwork printed on a T-shirt is protected. The statute does not distinguish between designs covering part of a useful article and designs covering the entire article.

🚫 Rejected approaches

🚫 Physical vs. conceptual separability

• Some courts and commentators had adopted a distinction based on legislative history.
• Physical separability: A feature that can be physically separated by ordinary means while leaving the utilitarian aspects intact.
• Conceptual separability: Applied when the feature physically could not be removed by ordinary means.

Why the Court rejects this: The statutory text indicates that separability is always a conceptual undertaking. Because separability does not require the underlying useful article to remain, the physical-conceptual distinction is unnecessary.

🚫 Designer's intent and marketability

Petitioner argued for two "objective" components:

1. Whether the design elements reflect the designer's artistic judgment exercised independently of functional influence.
2. Whether there is substantial likelihood the feature would be marketable without its utilitarian function.

Why the Court rejects these:

• Designer's intent: The statute's text makes clear the inquiry is limited to how the article and feature are perceived, not how or why they were designed.
• Marketability: Nothing in the statute suggests copyrightability depends on market surveys. This approach would prize popular art over other forms and substitute judicial aesthetic preferences for the policy choices in the Copyright Act.

🚫 The "equally useful" test

• Petitioner argued a feature can exist independently only if the useful article from which it was extracted would remain equally useful.
• The Government suggested the test should be whether the article would remain "similarly useful."

Why the Court rejects this: The focus of the separability inquiry is on the extracted feature, not on any aspects of the useful article that remain after extraction. The statute does not require imagining a fully functioning useful article at all.

Don't confuse: This would have deprived the Mazer statuette of protection had it been created first as a lamp base—without the base, the "lamp" would be just a shade, bulb, and wires.

🔄 Relationship to other Copyright Act provisions

🔄 Section 113(a) as mirror image

"The owner of a copyright … includes the right to reproduce the work in or on any kind of article, whether useful or otherwise."

• Section 113(a) protects a work of authorship first fixed in some tangible medium other than a useful article and subsequently applied to a useful article.
• Section 101 (the useful articles doctrine) protects art first fixed in the medium of a useful article.
• Together, they make clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles.

🔄 The ultimate separability question

Would the feature for which copyright protection is claimed have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article?

📚 Historical context: Mazer v. Stein

📚 The Mazer case (1954)

• Respondents copyrighted a statuette depicting a dancer, intended for use as a lamp base with electric wiring, sockets, and lamp shades attached.
• Copies were sold both as lamp bases and separately as statuettes.
• Petitioners copied the statuette and sold lamps with the statuette as the base.

📚 Two key holdings from Mazer

1. Copyrightability despite utilitarian use: The respondents owned a copyright in the statuette even though it was intended for use as a lamp base.
2. Order of creation irrelevant: It was irrelevant whether the statuette was initially created as a freestanding sculpture or as a lamp base.

The Court's interpretation: If a design would have been copyrightable as a standalone pictorial, graphic, or sculptural work, it is copyrightable if created first as part of a useful article.

📚 Post-Mazer regulation

• The Copyright Office enacted a regulation introducing the modern separability test.
• Congress essentially lifted this language and placed it into § 101 of the 1976 Act.
• The Court's approach today interprets §§ 101 and 113 consistently with Mazer.

🏛️ Policy considerations

🏛️ Congressional intent regarding industrial design

• Petitioner argued that allowing surface decorations to qualify as "works of authorship" is inconsistent with Congress' intent to entirely exclude industrial design from copyright.
• Congress refused to pass provisions providing limited copyright protection for industrial designs, including clothing, when it enacted the 1976 Act.
• Congress has enacted laws protecting designs for specific useful articles (semiconductor chips and boat hulls) while declining to enact other industrial design statutes.

🏛️ The Court's response

• "Congressional inaction lacks persuasive significance" in most circumstances.
• The Court has long held that design patent and copyright are not mutually exclusive (citing Mazer).
• Congress has provided for limited copyright protection for certain features of industrial design.
• Approaching the statute with presumptive hostility toward protection for industrial design would undermine Congress' choice.
• The Court's test does not render the shape, cut, and physical dimensions of cheerleading uniforms eligible for copyright protection.

🗣️ Justice Ginsburg's concurrence

🗣️ Different analytical path

Justice Ginsburg concurs in the judgment but not the opinion, arguing separability analysis is unnecessary in this case.

🗣️ Her reasoning

• The designs at issue are not designs of useful articles.
• Instead, they are copyrightable pictorial or graphic works reproduced on useful articles.
• Varsity's designs first appeared as pictorial and graphic works sketched on paper.
• Varsity sought copyright protection for two-dimensional designs, not for cheerleading costumes; registration statements claimed "2-Dimensional artwork" and "fabric design (artwork)."
• Varsity reproduced its two-dimensional graphic designs on cheerleading uniforms and also on other garments (T-shirts, jackets).

🗣️ The key principle

"The owner of a copyright in a pre-existing PGS work may exclude a would-be infringer from reproducing that work on a useful article."

• There is no need to engage in separability analysis when the copyright is in a standalone work that is then reproduced on a useful article.
• Varsity's designs are standalone pictorial and graphical works that may gain copyright protection as such, including the exclusive right to reproduce the designs on useful articles.

💭 Justice Breyer's dissent

💭 Core disagreement

Justice Breyer (joined by Justice Kennedy) agrees with much of the Court's opinion but argues the designs cannot "be perceived as … two- or three-dimensional work[s] of art separate from the useful article."

💭 The dissent's test

Two exercises to determine separability:

1. Physical separation: Can the design features be physically removed from the article, leaving the fully functioning utilitarian object in place?
2. Conceptual separation: If not, can one conceive of the design features separately without replicating a picture of the utilitarian object?

If the answer to either question is "yes," the design is eligible for copyright protection. Otherwise, it is not.

💭 The key question

"Have I created a picture of a (useful part of a) useful article?"

• If extracting the claimed features would necessarily bring along the underlying useful article, the design is not separable.
• In many or most cases, imagine the feature on its own and ask this question.

💭 Examples from the dissent

Copyrightable:

• A Siamese cat figurine on a lamp base (can be physically or conceptually separated).
• A carving on the back of a chair.
• A floral relief design on silver flatware.
• An engraving on a vase.
• Artwork printed on a T-shirt.

Not copyrightable:

• Van Gogh's painting of shoes (copyrightable as a painting, but not as a shoe design).
• Measuring spoons shaped like heart-tipped arrows.
• Candleholders shaped like sailboats.
• Wire spokes on a wheel cover.

Why not? Because in each case, one cannot imagine or conceptualize the design without that picture being a picture of the useful object itself.

💭 Application to cheerleading uniforms

The dissent argues the designs "certainly look like cheerleader uniforms"—that is, they look like pictures of cheerleader uniforms, just like Van Gogh's old shoes look like shoes.

• The necklines, sleeves, and cut of the skirt suggest they are pictures of dresses.
• Imaginatively removing the chevrons and stripes as arranged on the neckline, waistline, sleeves, and skirt and applying them on a canvas would be a painting of a cheerleader's dress.
• The aesthetic elements exist only as part of the uniform design—there is nothing to separate out but dress-shaped lines that replicate the cut and style of the uniforms.

💭 Policy concerns

The dissent emphasizes:

• Copyright protection imposes costs: higher prices, costs of discovering previous copyrights, contacting copyright holders, and securing permission to copy.
• Congress has not extended broad copyright protection to the fashion design industry.
• Congress has left "statutory protection largely unavailable for dress designs."
• The fashion industry has thrived without such protection and encompasses nearly $370 billion in annual spending and 1.8 million jobs in the United States.
• A decision to grant protection to garment design would grant protection Congress refused to provide and risk increased prices and unforeseeable disruption.

Don't confuse: The dissent acknowledges that textile designs (patterns on fabric) are copyrightable, but argues Varsity's designs are not mere textile designs—they are "coextensive with" the design and cut of the dresses themselves.

🧭 Overview

🧠 One-sentence thesis

Trademark law protects source-identifying marks—including colors, words, and symbols—when they distinguish goods from competitors, but only if the mark is distinctive (either inherently or through acquired secondary meaning) and does not monopolize functional features needed for competition.

📌 Key points (3–5)

• What qualifies as a trademark: Almost anything capable of carrying meaning and identifying source can be a trademark—words, symbols, shapes, sounds, scents, and even colors.
• Distinctiveness requirement: A mark must be distinctive to receive protection; marks fall on a spectrum from generic (never protectable) through descriptive (protectable only with secondary meaning) to suggestive, arbitrary, or fanciful (inherently protectable).
• Functionality doctrine limits: Even distinctive marks cannot monopolize useful product features; trademark law protects reputation, not functional advantages that belong in patent law's domain.
• Common confusion—descriptive vs. generic: Both relate closely to the product, but descriptive terms can gain protection through secondary meaning, while generic terms never can, regardless of consumer recognition.
• Fair use defense: Competitors may use descriptive terms in their ordinary, descriptive sense (not as trademarks) without infringement, even when those terms have acquired secondary meaning.

🎨 What Can Serve as a Trademark

🎨 The broad statutory language

Trademark: "any word, name, symbol, or device, or any combination thereof" used "to identify and distinguish his or her goods...from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127

• The Lanham Act uses "the broadest of terms" to define trademarks.
• "Since human beings might use as a 'symbol' or 'device' almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive."
• Courts have authorized shapes (Coca-Cola bottle), sounds (NBC's three chimes), scents (plumeria blossoms on thread), and colors as trademarks.

🌈 Color as a trademark—the Qualitex case

• Facts: Qualitex used a special green-gold color on dry cleaning press pads since the 1950s; competitor Jacobson began selling similar-colored pads in 1989.
• Issue: Can color alone (without design elements) qualify as a trademark?
• Holding: Yes, when the color has acquired secondary meaning and identifies the product's source.
• Why it matters: Color can satisfy the statutory definition by identifying and distinguishing goods, just like words or symbols can.

Example: A pink color on fiberglass insulation (Owens-Corning) or a green-gold on press pads can function as a trademark if consumers associate that color with a particular manufacturer.

🔍 Two requirements for any trademark

1. Source-identifying ability: The mark must tell consumers "this item...is made by the same producer as other similarly marked items."
2. Non-functionality: The mark cannot be "essential to the use or purpose of the article or...affect the cost or quality of the article."

Don't confuse: A mark's "ontological status" (whether it's a color, word, or shape) doesn't determine protectability—its ability to distinguish source does.

📊 The Distinctiveness Spectrum (Abercrombie Categories)

📊 Four categories from least to most protectable

Category	Definition	Protectable?	Example
Generic	Name of the genus/class of which the product is a member	Never	"Aspirin" for pain reliever; "cellophane" for transparent wrap
Descriptive	Identifies a characteristic or quality (color, function, ingredients)	Only with secondary meaning	"Vision Center" for optical services; "Fish-Fri" for fish coating mix
Suggestive	Suggests (doesn't describe) a characteristic; requires imagination to connect to product	Yes, automatically	"Coppertone" for sun tanning products
Arbitrary/Fanciful	No relationship to the product	Yes, automatically	"Kodak" for film; "Ivory" for soap

🔬 How to classify a mark—four tests from Zatarains

🔬 Test 1: Dictionary definition

• Look up the ordinary meaning of the term.
• If the dictionary definition describes the product's purpose or function, the term is likely descriptive.
• Example: "Fish fry" defined as "fried fish" or "a picnic at which fish are caught, fried, and eaten" → descriptive of a coating mix for frying fish.

🔬 Test 2: Imagination test

• Does the term "require imagination, thought and perception to reach a conclusion as to the nature of goods"?
• Suggestive: Requires mental leap (e.g., "Coppertone" → you must imagine the connection to tanning).
• Descriptive: Conveys information directly without imagination (e.g., "Fish-Fri" → immediately suggests coating for frying fish).

🔬 Test 3: Competitor need

• "Would competitors be likely to need the terms used in the trademark in describing their products?"
• If yes → likely descriptive, because others need the term to accurately describe their own goods.
• Example: Merchants selling fish coating mixes would naturally want to use "fish fry" to describe their products.

Don't confuse: The fact that a term is not the only way to describe a product doesn't make it non-descriptive; there's no rule that products can be described in only one fashion.

🔬 Test 4: Actual use by others

• Have other companies actually used the same or similar term for similar products?
• Widespread use by competitors suggests the term is descriptive.
• Example: Multiple companies (Arnaud, Zatarain's, Oak Grove, Visko's) all used "fish fry" → strong evidence of descriptiveness.

⚖️ Generic vs. descriptive—a crucial distinction

• Both are closely related to the product, differing only "in degree."
• Generic: Names the basic nature or class of the product itself.
• Descriptive: Identifies a characteristic or quality of a particular product within that class.
• Why it matters: Descriptive terms can become trademarks through secondary meaning; generic terms never can, even with overwhelming consumer recognition.

🧠 Secondary Meaning

🧠 What secondary meaning is

Secondary meaning: When "the primary significance of the term in the minds of the consuming public is not the product but the producer."

• Descriptive terms ordinarily cannot be trademarks, but they gain protection if they acquire secondary meaning.
• The term must "come to be known by the public as specifically designating that product" from a particular source.
• Burden of proof: Always on the plaintiff seeking trademark protection.
• Standard: "A high degree of proof is necessary to establish secondary meaning for a descriptive term."

📈 How to prove secondary meaning

📈 Circumstantial evidence

• Advertising: Amount and manner of advertising expenditures.
• Sales volume: Quantity of products sold over time.
• Length and manner of use: How long and how consistently the mark has been used.
• Key point: "The question is not the extent of the promotional efforts, but their effectiveness in altering the meaning of [the term] to the consuming public."

Example (Fish-Fri): Zatarain's used "Fish-Fri" continuously since 1950, spent over $400,000 on advertising (1976-1981), and sold 916,385 cases (1964-1979) → circumstantial evidence supporting secondary meaning.

📈 Direct evidence—consumer surveys

• "Survey evidence is the most direct and persuasive way of establishing secondary meaning."
• Surveys should measure whether consumers associate the term with a particular source, not just whether they recognize the term.

Example (Fish-Fri survey): 23-28% of respondents in New Orleans identified "Zatarain's Fish-Fri" when asked about products for frying fish → evidence of secondary meaning in that geographic area.

Example (failed Chick-Fri survey): Survey only questioned people who "fry fish or other seafood" three or more times monthly → inadequate sample for a chicken coating product → "entitled to little evidentiary weight."

🗺️ Geographic scope

• Secondary meaning can be established in a particular geographic area (e.g., New Orleans) without being nationwide.
• Trademark protection extends only as far as the secondary meaning has been established.

🛡️ Limitations on Trademark Rights

⚙️ Functionality doctrine

⚙️ The core principle

• Functionality doctrine "prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature."
• Patent law, not trademark law, is the proper domain for protecting functional innovations.
• Patents last for limited terms; allowing trademark protection for functional features would create perpetual monopolies.

⚙️ What makes a feature functional

Functional: "If it is essential to the use or purpose of the article or if it affects the cost or quality of the article."

• Test: Would "exclusive use of the feature...put competitors at a significant non-reputation-related disadvantage"?
• If yes → functional → not protectable as a trademark.

Example: The pillow shape of shredded wheat biscuits was functional (even after patent expired) because the shape was essential to the product.

Example: Black color on outboard boat motors was functional because it decreased apparent motor size and ensured compatibility with many boat colors.

Example: Green color on farm machinery was functional because customers wanted their equipment to match.

⚙️ Aesthetic functionality

• Even if a design's value is aesthetic rather than utilitarian, it may be functional.
• Test: Does the aesthetic feature "confer a significant benefit that cannot practically be duplicated by the use of alternative designs"?
• "The ultimate test of aesthetic functionality is whether the recognition of trademark rights would significantly hinder competition."

Don't confuse: Functionality is about competitive necessity, not whether a feature is attractive; firms can create aesthetically pleasing marks so long as competitors can do the same.

⚖️ Fair use defense

⚖️ When fair use applies

• Available only for descriptive terms (not suggestive, arbitrary, or fanciful marks).
• Applies when the term is "used fairly and in good faith only to describe...the goods or services" in its descriptive sense, not its trademark sense.
• Purpose: Prevents trademark holders from monopolizing descriptive language that others need to accurately describe their own products.

⚖️ Requirements for fair use

1. Good faith: No intent to trade on the trademark holder's reputation.
2. Descriptive use: Using the term in its primary, descriptive meaning (not as a source identifier).
3. No confusion: Use must not lead to customer confusion about the source of goods.

Example (Fish-Fri fair use): Oak Grove and Visko's used "fish fry" descriptively, never tried to register it as their trademark, believed it was a generic term, and packaged their products distinctively to avoid confusion → fair use defense succeeded.

⚖️ What fair use protects

• "The holder of a protectable descriptive mark has no legal claim to an exclusive right in the primary, descriptive meaning of the term."
• Only the "penumbra or fringe of secondary meaning" receives legal protection.
• Competitors remain "free to use the words...in their ordinary, descriptive sense."

🚫 Color depletion argument—rejected

🚫 The argument

• If one competitor can trademark a color, and others try to do the same, the supply of usable colors will be depleted.
• Competitors unable to find suitable colors will be at a significant disadvantage.

🚫 Why the Court rejected it

• "This argument is unpersuasive...largely because it relies on an occasional problem to justify a blanket prohibition."
• "Normally alternative colors will likely be available for similar use by others."
• If color scarcity does arise, the functionality doctrine handles it: a color serving a significant non-trademark function (e.g., identifying medication type, providing aesthetic value that can't be duplicated) would be functional and thus unprotectable.

Example: Drug color cases involve functionality because "some patients commingle medications in a container and rely on color to differentiate one from another"—a public health concern, not a trademark issue.

🔄 Cancellation of trademark registration

• Courts have power under Lanham Act § 37 to cancel trademark registrations.
• When a court determines a mark is generic or descriptive without secondary meaning, cancellation serves the purposes of the Lanham Act.

Example: "Chick-Fri" registration was cancelled because the term was descriptive and Zatarain's failed to prove secondary meaning.

🎯 Policy Rationales

🎯 Why trademark law exists

🎯 Consumer benefits

• Trademarks "reduce the customer's costs of shopping and making purchasing decisions."
• A mark "quickly and easily assures a potential customer that this item...is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past."
• Reduces search costs and enables informed purchasing decisions.

🎯 Producer benefits

• Trademark law "helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product."
• Encourages investment in quality and reputation.

🎯 Market benefits

• The law "encourage[s] the production of quality products."
• Simultaneously "discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale."

🎯 Why distinctiveness matters

• "It is the source-distinguishing ability of a mark—not its ontological status as color, shape, fragrance, word, or sign—that permits it to serve these basic purposes."
• Without distinctiveness, a mark cannot reduce consumer search costs or protect producer reputation.
• Generic and non-distinctive descriptive terms don't tell consumers anything about source, only about the product itself.

🎯 Balancing competition and protection

• Trademark law must balance protecting reputation against preserving competitive freedom.
• Overly broad protection would let firms monopolize language and features competitors need.
• The distinctiveness spectrum, functionality doctrine, and fair use defense all serve this balance.

📝 Practical Applications

📝 Scope of trademark rights—what Qualitex can and cannot do

• Can do: Prevent competitors from using green-gold color on press pads in ways that cause source confusion.
• Cannot do: Prevent a clothing manufacturer from selling green-gold shirts (different product category, no source confusion).
• Cannot do: Prevent use of green-gold if that color becomes functional for press pads (e.g., if it's the only color that hides stains effectively).

📝 Why "Fish-Fri" succeeded but "Chick-Fri" failed

Factor	Fish-Fri	Chick-Fri
Classification	Descriptive	Descriptive
Use period	Since 1950 (30+ years)	Since 1968 (15 years)
Advertising	Over $400,000 (1976-1981)	Minimal; no direct campaign
Sales evidence	916,385 cases (1964-1979)	Not emphasized
Survey evidence	23-28% identified Zatarain's	Survey sample inadequate (fish fryers asked about chicken product)
Secondary meaning?	Yes (in New Orleans area)	No
Outcome	Valid trademark, but fair use defense allowed competitors to use "fish fry" descriptively	Registration cancelled

📝 The Lanham Act's liberalization

• Pre-1946 common law was restrictive; Supreme Court dicta suggested color alone couldn't be a trademark.
• The 1946 Lanham Act "significantly changed and liberalized the common law to 'dispense with mere technical prohibitions.'"
• Key change: Permitted registration of descriptive marks that acquired secondary meaning (§ 1052(f)).
• 1988 amendments retained broad language against a background understanding that color, shape, sound, and scent could be trademarks.
• Legislative history: Senate Report stated the definition "intentionally retains...the words 'symbol or device' so as not to preclude the registration of colors, shapes, sounds or configurations where they function as trademarks."

🧭 Overview

🧠 One-sentence thesis

The Supreme Court held that the Lanham Act's prohibition on registering "disparaging" trademarks violates the First Amendment because the government may not ban speech on the ground that it expresses offensive ideas.

📌 Key points (3–5)

• What was challenged: Section 1052(a) of the Lanham Act, which prohibited federal registration of marks that "may disparage … or bring … into contempt or disrepute" any persons.
• The Constitutional issue: Whether the government can deny trademark registration based on the viewpoint or message expressed by the mark.
• The Court's holding: The disparagement clause violates the Free Speech Clause of the First Amendment.
• Why it matters: The government cannot refuse benefits (like trademark registration) based on whether it approves or disapproves of the message conveyed by the mark.
• Common confusion: Registration is not the same as creating trademark rights—trademarks exist at common law through use, but federal registration provides additional benefits and protections.

🏛️ Background and context

🎸 The Slants and the application

• Simon Tam's band, "The Slants," applied for federal trademark registration of the band's name.
• The band members are Asian-Americans who chose the name deliberately to "reclaim" a slur and "drain its denigrating force."
• The PTO denied registration under § 1052(a) because "Slants" is a derogatory term for persons of Asian descent.

📜 The statutory provision at issue

Section 1052(a) of the Lanham Act: No trademark shall be refused registration "unless it … consists of or comprises … matter which may disparage … or bring … into contempt, or disrepute" any "persons, living or dead."

• This provision allowed the PTO to refuse registration if the mark was deemed disparaging.
• The excerpt does not detail the full history of § 1052(a), but it was part of the original Lanham Act framework governing what could and could not be registered.

🔍 Trademark registration vs. trademark rights

• Federal law does not create trademarks; trademarks arise from use at common law.
• Trademarks help consumers identify the source of goods and protect the goodwill of the producer.
• Federal registration provides additional benefits (e.g., nationwide notice, presumptions of validity, statutory remedies) but is not required to have trademark rights.
• Don't confuse: Denying registration does not eliminate all trademark rights, but it does withhold significant federal protections and advantages.

🗣️ The First Amendment challenge

🚫 The government's restriction on speech

• The disparagement clause denied a government benefit (federal trademark registration) based on the content and viewpoint of the applicant's speech.
• The Court framed this as a restriction on speech: the government was saying "you may not register this mark because we disapprove of the message it conveys."
• Example: If an organization wanted to register a mark that criticized a public figure or expressed a controversial viewpoint, the PTO could refuse registration if it found the mark "disparaging."

🧩 Bedrock First Amendment principle

• The Court invoked a core First Amendment rule: "Speech may not be banned on the ground that it expresses ideas that offend."
• The government cannot suppress speech simply because it finds the ideas expressed to be offensive, disagreeable, or hurtful.
• This principle applies even when the speech involves commercial activity (like trademark use) or when the government is providing a benefit rather than imposing a criminal penalty.

⚖️ Viewpoint discrimination

• The disparagement clause was a form of viewpoint discrimination: it targeted marks that expressed negative or critical views about persons or groups.
• Viewpoint discrimination is especially disfavored under the First Amendment.
• Don't confuse: The issue is not whether the government can regulate trademarks at all (it can, for example, by requiring distinctiveness or prohibiting functional features), but whether it can do so based on the message or viewpoint the mark conveys.

🛡️ Counterarguments and the Court's response

🏢 Government speech and subsidy arguments

• The excerpt does not detail all the government's arguments, but typically the government might argue that trademark registration is a form of government speech or a government subsidy, which the government can control.
• The Court rejected these arguments (though the full reasoning is not in the excerpt).
• The key point: Even if registration confers a benefit, the government cannot condition that benefit on the applicant's agreement to express (or not express) certain viewpoints.

📋 Commercial speech and trademark-specific rules

• Trademarks are used in commerce, and commercial speech receives somewhat less First Amendment protection than other speech.
• However, the Court held that even in the commercial context, viewpoint-based restrictions are impermissible.
• The excerpt does not elaborate on whether other trademark restrictions (e.g., prohibitions on confusingly similar marks, functional features, or merely descriptive terms) would survive First Amendment scrutiny, but those restrictions are content-neutral or serve different governmental interests.

🔄 The "reclaiming" purpose

• The Slants' stated purpose was to reclaim and repurpose a slur, turning it into a badge of pride rather than an insult.
• This illustrates that the same word can carry different meanings depending on who uses it and in what context.
• The Court's opinion implicitly recognizes that the government should not be in the business of deciding which uses of potentially offensive terms are acceptable and which are not.

🌐 Implications and scope

📌 What the holding means

• The disparagement clause of § 1052(a) is unconstitutional and cannot be enforced.
• Applicants may now register marks that would previously have been refused as disparaging, so long as the marks meet other registration requirements (distinctiveness, non-functionality, no likelihood of confusion, etc.).
• Example: A mark that criticizes a public figure, expresses a controversial political view, or uses a reclaimed slur may now be registered if it otherwise qualifies.

🧩 Other provisions of § 1052

• The excerpt does not address whether other prohibitions in § 1052 (e.g., § 1052(b) prohibiting registration of flags or government insignia, or § 1052(d) prohibiting confusingly similar marks) are also vulnerable to First Amendment challenge.
• Distinguishing those provisions: They may be content-neutral (e.g., likelihood of confusion) or serve interests unrelated to suppressing offensive viewpoints (e.g., preventing consumer confusion, protecting government symbols).
• Predicting consequences: Challenges to other § 1052 provisions are possible, but courts may uphold them if they do not discriminate based on viewpoint or if they serve compelling interests in ways that do not restrict speech based on its message.

🔍 Testing the consequences

• One could track PTO registration data to see if applications for potentially offensive or controversial marks increase after Matal v. Tam.
• One could also monitor litigation to see if other § 1052 provisions are challenged on First Amendment grounds and how courts respond.
• Don't confuse: The decision does not mean that all trademark regulation is unconstitutional, only that the government cannot deny registration based on disapproval of the mark's message.

🧭 Broader principles and takeaways

🗽 Free speech and government benefits

• The case illustrates a broader principle: the government cannot use its power to grant or deny benefits as a tool to suppress disfavored speech.
• Even when the government is not directly banning speech, conditioning benefits on viewpoint can have a chilling effect and constitutes impermissible censorship.

🧩 Trademark law and the First Amendment

• Trademark law intersects with the First Amendment because trademarks are a form of commercial speech and expression.
• While the government has legitimate interests in regulating trademarks (preventing confusion, protecting consumers, ensuring fair competition), those interests must be pursued in ways that do not discriminate based on viewpoint.
• Example: The government can refuse registration to a merely descriptive mark (because it lacks distinctiveness), but it cannot refuse registration to a mark that expresses an unpopular political opinion.

📋 Practical guidance

• For trademark applicants: Marks that express controversial, offensive, or critical viewpoints can now be registered if they meet other statutory requirements.
• For trademark owners: Registration provides valuable benefits (nationwide notice, presumptions, remedies), but the First Amendment limits the government's ability to pick and choose which messages deserve those benefits.
• For courts and the PTO: Trademark examination and litigation must focus on viewpoint-neutral criteria (distinctiveness, functionality, likelihood of confusion) rather than on whether the mark's message is agreeable or offensive.

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Note on the excerpt: The excerpt provided is only the opening portion of the Matal v. Tam opinion and does not include the full reasoning, the detailed analysis of the government's arguments, or the concurring opinions. The notes above are based solely on the information in the excerpt and do not incorporate external knowledge of the case.

🧭 Overview

🧠 One-sentence thesis

The Ninth Circuit held that the song title "Barbie Girl" is protected by the First Amendment because it has artistic relevance to the underlying work and does not explicitly mislead consumers about the source, even though it uses Mattel's famous Barbie trademark.

📌 Key points (3–5)

• Trademark vs. expressive use: Trademarks that enter public discourse and take on expressive meaning beyond source-identification receive First Amendment protection when used artistically.
• The Rogers test: Artistic works using trademarks are protected unless (1) the mark has no artistic relevance to the work, or (2) it explicitly misleads as to source or content.
• Titles are different from product labels: Consumers expect titles to describe the underlying work, not to identify the producer, so titles deserve different treatment under trademark law.
• Common confusion—parody that targets vs. borrows: A work that targets and comments on the trademark itself (like "Barbie Girl") gets First Amendment protection, but a work that merely borrows the mark to get attention (like The Cat NOT in the Hat!) does not.
• Balancing test: The traditional likelihood-of-confusion test fails to account for the public's full interest in free expression when a mark has taken on cultural meaning beyond its source-identifying function.

🎯 The trademark-speech tension

🎯 Core purpose of trademarks

A trademark is a word, phrase or symbol that is used to identify a manufacturer or sponsor of a good or the provider of a service.

• Primary function: Prevent consumer confusion by signaling that products come from the same source.
• Why it usually works with the First Amendment: When limited to avoiding marketplace confusion, trademark rights don't conflict with free speech.
• Example: You can't call your homemade brew "Pepsi" because buyers have an interest in not being fooled.

🌍 When trademarks transcend their purpose

• The problem: Some trademarks enter public discourse and become part of our vocabulary.
• Examples from the excerpt:
  • "The Rolls Royce of its class" (expressing quality)
  • "Band-Aid" (meaning any quick fix)
  • "Aspirin" (consumers don't know the chemical name)
• Why it matters: Once a mark gains expressive value, it becomes a word in our language and assumes a role outside trademark law's bounds.
• The conflict: Trademark owners may assert a right to control how we express ourselves, even when the mark has cultural meaning beyond source-identification.

⚖️ Traditional test limitations

• The usual approach: The likelihood-of-confusion test (from AMF Inc. v. Sleekcraft Boats) generally balances trademark rights and expressive interests.
• When it fails: When a trademark owner tries to control expression—either because we can't describe the product any other way, or because the mark has taken on expressive meaning—the traditional test doesn't account for the full weight of free speech interests.
• Key principle: "The trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function."

📜 The Rogers standard

📜 Why titles need special treatment

• Titles vs. product names: Consumers expect titles to communicate a message about the work, not to identify the publisher or producer.
• Examples from the excerpt:
  • A painting titled "Campbell's Chicken Noodle Soup" doesn't suggest Campbell's is in the art business.
  • Janis Joplin singing "Oh Lord, won't you buy me a Mercedes-Benz?" doesn't suggest a joint venture with the carmaker.
• Consumer expectations: "Most consumers are well aware that they cannot judge a book solely by its title any more than by its cover."
• Why ordinary product rules don't fit: We apply the Lanham Act rigorously to prohibit names that misdescribe ordinary commercial products, but literary/artistic titles serve a different function.

📜 The two-prong Rogers test

Literary titles do not violate the Lanham Act "unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work."

Prong	What it requires	What it protects against
Prong 1: Artistic relevance	The mark must have some artistic relevance to the underlying work	Prevents use of marks that have nothing to do with the work's content
Prong 2: No explicit misleading	The title must not explicitly mislead about source or content	Prevents titles that falsely suggest endorsement or association

• Origin: From Rogers v. Grimaldi (2d Cir. 1989), involving Ginger Rogers's challenge to the film "Ginger and Fred."
• Rationale: "In general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression."

🎵 Application to "Barbie Girl"

🎵 The song and its message

• What MCA did: Danish band Aqua produced the song "Barbie Girl" on the album Aquarium in 1997.
• Song content: One bandmember impersonates Barbie in a high-pitched voice; another (Ken) entices Barbie to "go party."
• Lyrics reveal the message: The female singer calls herself "a Barbie girl, in [her] Barbie world" and says "Life in plastic, it's fantastic."
• The commentary: The song pokes fun at Barbie and the values Aqua contends she represents—"I'm a blond bimbo girl, in a fantasy world/Dress me up, make it tight, I'm your dolly."

🎯 Why "Barbie Girl" passes Rogers prong 1

• Artistic relevance is clear: The title describes what the song is about—Barbie and Ken, which can only refer to Mattel's famous couple.
• Title function: "We expect a title to describe the underlying work, not to identify the producer, and Barbie Girl does just that."
• Message to consumers: The title "conveys a message to consumers about what they can expect to discover in the song itself; it's a quick glimpse of Aqua's take on their own song."

🎯 Why "Barbie Girl" passes Rogers prong 2

• No explicit misleading: The song title does not explicitly or otherwise suggest it was produced by Mattel.
• Why Barbie alone isn't enough: "The only indication that Mattel might be associated with the song is the use of Barbie in the title; if this were enough to satisfy this prong of the Rogers test, it would render Rogers a nullity."
• Don't confuse: Using the mark itself is not the same as explicitly misleading about source—otherwise the Rogers test would protect nothing.

🎭 Parody that targets vs. borrows

🎭 When parody gets First Amendment protection

• The rule: Where an artistic work targets the original and does not merely borrow another's property to get attention, First Amendment interests weigh more heavily.
• "Barbie Girl" targets Barbie: The song "does not rely on the Barbie mark to poke fun at another subject but targets Barbie herself."
• Why this matters: The song comments on Barbie and the values she represents, making it genuine parody.

🎭 Contrast: Dr. Seuss case

• What happened: Dr. Seuss Enterprises v. Penguin Books involved The Cat NOT in the Hat!, which borrowed Dr. Seuss's trademarks and lyrics.
• Why it failed: The defendant's use "had no critical bearing on the substance or style of" The Cat in the Hat!—it merely borrowed the property to get attention.
• The distinction: A parodist whose work aims parodic commentary at a trademark gets leeway, but a claimed parody that makes no comment on the mark is not permitted.
• Example from another case: Harley-Davidson v. Grottanelli—expressive work that targets the trademark is protected; work that just uses the mark without commenting on it is not.

🎭 First Amendment principle

"Trademark 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."

• Why: "When unauthorized use of another's mark is part of a communicative message and not a source identifier, the First Amendment is implicated in opposition to the trademark right."
• Core limit: "It is the source-denoting function which trademark laws protect, and nothing more."

🗣️ The defamation counterclaim

🗣️ What Mattel said

• Context: After Mattel filed suit, employees traded barbs in the press.
• MCA's defense: An MCA spokeswoman noted the album included a disclaimer saying "Barbie Girl" was "social commentary [that was] not created or approved by the makers of the doll."
• Mattel's response: A Mattel representative said:
  • "That's unacceptable... It's akin to a bank robber handing a note of apology to a teller during a heist."
  • "[It n]either diminishes the severity of the crime, nor does it make it legal."
  • He characterized the song as a "theft" of "another company's property."

🗣️ Why the defamation claim failed

• MCA's theory: The words "bank robber," "heist," "crime," and "theft" were defamatory.
• Court's holding: All these terms are variants of "piracy," the invective most often hurled at accused infringers.
• Rhetorical hyperbole: "No one hearing this accusation understands intellectual property owners to be saying that infringers are nautical cutthroats with eyepatches and peg legs who board galleons to plunder cargo."
• Legal standard: In context, these terms are nonactionable "rhetorical hyperbole."
• The court's advice: "The parties are advised to chill."

🏛️ Jurisdictional holdings

🏛️ Personal jurisdiction over foreign defendants

• Who they are: Universal Music International Ltd., Universal Music A/S, and MCA Music Scandinavia AB.
• Why jurisdiction was proper:
  • All three are affiliated members of Universal Music Group with active relationships.
  • They entered cross-licensing agreements and developed a coordinated plan to distribute "Barbie Girl" in the United States (including California).
  • They sent promotional copies to the United States (including California).
  • This conduct was "expressly aimed at, and allegedly caused harm in, California, Mattel's principal place of business."
• Legal standard: Mattel's claims would not have arisen "but for" the conduct foreign defendants purposefully directed toward California, and jurisdiction is reasonable given their close association with domestic defendants.

🏛️ Extraterritorial jurisdiction under the Lanham Act

• Why it applied:
  • Sales of the Aquarium album worldwide had sufficient effect on American foreign commerce.
  • Mattel suffered monetary injury in the United States from those sales.
• Balancing test: The claim is more closely tied to U.S. interests than to other nations' commercial interests because:
  • Mattel's principal place of business is in California.
  • Foreign defendants are closely related to domestic defendants.
  • Mattel sought relief only for U.S. sales.

🧭 Overview

🧠 One-sentence thesis

The Supreme Court held that when a trademark is used as a source identifier (even in a parody), the Rogers test does not apply and the case must proceed under standard likelihood-of-confusion analysis, and that parody does not automatically qualify as "noncommercial use" under dilution law.

📌 Key points (3–5)

• Rogers test limitation: The Rogers threshold test (which can dismiss infringement claims early) does not apply when an alleged infringer uses a trademark as a trademark—i.e., to designate the source of its own goods.
• Trademark's core function: A trademark's primary purpose is source identification—telling consumers who is responsible for a product—and the Lanham Act's main concern is preventing consumer confusion about source.
• Parody is not a free pass: Even if a use is expressive or parodic, if it functions as a source identifier, it must face the standard likelihood-of-confusion inquiry; parody may influence that analysis but does not trigger automatic protection.
• Common confusion: Expressive content does not automatically exempt a use from trademark scrutiny; the key question is whether the mark is being used as a mark (source identification) versus solely for commentary or artistic expression.
• Dilution and noncommercial use: The "noncommercial use" exclusion from dilution liability does not shield every parody; it cannot nullify Congress's express limit that parody loses protection when used as a source designator.

🏛️ Trademark fundamentals and the Lanham Act

🏷️ What a trademark is and does

Trademark definition (Lanham Act §1127): "Any word, name, symbol, or device, or any combination thereof" that a person uses "to identify and distinguish his or her goods... from those manufactured or sold by others and to indicate the source of the goods."

• A trademark's primary function is source identification: it tells consumers who made a product and distinguishes that source from competitors.
• Trademarks can be words (e.g., "Google"), graphic designs (Nike swoosh), or trade dress (overall appearance and packaging, like a Hershey's Kiss wrapper).
• Beyond identifying source, trademarks may convey messages or appeal to consumers, but they are not trademarks unless they perform the source-identification function.
• Why it matters: A trademark tells the public who is responsible for a product.

🎯 Benefits of trademarks

For consumers:

• Enable selection of desired products and avoidance of unwanted ones.
• Provide quick assurance that an item is made by the same producer as other similarly marked items they liked (or disliked) in the past.

For producers:

• Ensure that the maker of a quality product—not an imitating competitor—reaps the financial rewards of the product's good reputation.
• Protect the producer's investment in building goodwill.

📋 Registration and enforcement

• The Lanham Act provides a voluntary federal registration system through the Patent and Trademark Office.
• Registration offers benefits like prima facie evidence of validity in litigation.
• Important: Even unregistered trademarks can be used in commerce and enforced against infringers.
• Registration is optional, not required for trademark protection.

⚖️ Infringement and dilution causes of action

🚨 Trademark infringement

• The Lanham Act creates a federal cause of action when someone uses a mark that closely resembles another's mark.
• The key standard: Whether the defendant's use is "likely to cause confusion, or to cause mistake, or to deceive" (§§1114(1)(A), 1125(a)(1)(A)).
• The keystone: "Likelihood of confusion" is the central inquiry.
• Most common type of confusion: Confusion about the source of a product or service—consumers mistakenly thinking one producer's products are another's.
• This confusion directly opposes trademark law's twin goals: facilitating consumer choice and protecting producer goodwill.

💎 Dilution of famous marks

• Dilution claims can succeed without likelihood of confusion.
• Famous mark: One "widely recognized" by the public as designating the source of the mark owner's goods (§1125(c)(2)(A)).
• Dilution by tarnishment: When similarity between two marks (one famous) creates an association that "harms the reputation of the famous mark" (§1125(c)(2)(C)).

Exclusions from dilution liability:

Exclusion type	What it covers	Key limitation
Noncommercial use	Any "noncommercial use of a mark" (§1125(c)(3)(C))	Scope disputed in this case
Fair use (parody)	"Fair use" in "parodying, criticizing, or commenting upon the famous mark owner or goods" (§1125(c)(3)(A)(ii))	Does NOT apply when using the mark "as a designation of source for the defendant's own goods"

Don't confuse: The fair-use exclusion explicitly does not protect parody when the similar mark is used as a mark (source identifier).

🐕 The Bad Spaniels case facts

🥃 Jack Daniel's trademarks

Jack Daniel's owns multiple registered trademarks:

• The name "Jack Daniel's"
• "Old No. 7"
• The arched Jack Daniel's logo
• Stylized label with filigree (twirling white lines)
• The distinctive square bottle itself

🧸 VIP's dog toy line

• VIP makes "Silly Squeakers"—chewable rubber dog toys that squeak when bitten.
• Most toys parody popular beverage brands: Dos Perros (cf. Dos Equis), Smella Arpaw (cf. Stella Artois), Doggie Walker (cf. Johnnie Walker).
• VIP has registered trademarks in those names and in "Silly Squeakers."

🎭 The Bad Spaniels toy design

Physical characteristics:

• Same size and shape as a Jack Daniel's bottle
• Black label with stylized white text and white filigreed border
• "Bad Spaniels" replaces "Jack Daniel's" in similar font and arch
• Image of a spaniel above the arch
• "The Old No. 2 On Your Tennessee Carpet" replaces "Old No. 7 Tennessee Sour Mash Whiskey"
• Small print: "43% poo by vol." and "100% smelly" instead of "40% alc. by vol. (80 proof)"

Packaging:

• Cardboard hangtag for store display
• Disclaimer at bottom: "This product is not affiliated with Jack Daniel Distillery"
• Two product logos: Silly Squeakers line logo and Bad Spaniels toy logo

📝 VIP's own representations

Critical admission: In its complaint, VIP alleged that it both "owns" and "uses" the "'Bad Spaniels' trademark and trade dress for its durable rubber squeaky novelty dog toy."

• This represented that the mark and dress are used to "identify and distinguish [VIP's] goods" and to "indicate [their] source" (§1127).
• VIP later called this a "form allegation" or "rote," but the Court found additional evidence of source-identifying use.

🧪 The Rogers test and its proper scope

📖 Origin of the Rogers test

The Rogers v. Grimaldi case (2d Cir. 1989):

• Involved a Fellini film titled "Ginger and Fred" about two fictional Italian cabaret dancers who imitated Ginger Rogers and Fred Astaire.
• Ginger Rogers objected to use of her name under the Lanham Act.
• The Second Circuit created a threshold test: titles of "artistic works" have an "expressive element" implicating "First Amendment values" but pose only a "slight risk" of consumer confusion.

The Rogers threshold test:

• An infringement claim cannot proceed when a title has "at least some artistic relevance" and is not "explicitly misleading as to source or content."
• Important caveat: The court made clear this was not a general rule; in typical cases, a product's name is more likely to indicate source.

🎯 How lower courts have applied Rogers

When Rogers applies (non-source-identifying uses):

Case	Use	Why Rogers applied
Mattel v. MCA Records ("Barbie Girl" song)	Band used "Barbie" in song lyrics	Not used as source identifier; use did not "speak to [the song's] origin"
University of Alabama v. New Life Art	Sports artist depicted trademarked uniforms	Solely to "memorialize" a football history event
Louis Vuitton v. Warner Bros. (Hangover II)	Character described luggage as "Louis Vuitton"	Not using the mark as the film's "own identifying trademark"

When Rogers does NOT apply (source-identifying uses):

• When trademarks are used as trademarks—to designate source—courts conduct standard likelihood-of-confusion analysis without mentioning Rogers.
• Example: United We Stand America—political group used slogan "as a mark" to suggest "same source identification" as original movement.
• Example: Harley-Davidson v. Grottanelli—mechanic's modified logo was "trademark use" to brand his repair business through signage, newsletter, and T-shirts.

🐶 The Timmy Holedigger precedent

Tommy Hilfiger v. Nature Labs (S.D.N.Y. 2002):

• Defendant sold pet perfumes with names parodying elegant human brands.
• Product: "Timmy Holedigger" (parodying Tommy Hilfiger).
• Court declined to apply Rogers, relying on Harley-Davidson.
• Key reasoning: Rogers applies only to "nontrademark uses"—where the mark is not used to indicate source or origin, but only to convey a different message.
• When use is "at least in part" for "source identification"—when defendant may be "trading on the good will of the trademark owner to market its own goods"—Rogers has no role.
• This is true even if the defendant is also "making an expressive comment," including parody.
• The defendant is still "making trademark use of another's mark" and must meet the infringement claim on the usual battleground of "likelihood of confusion."

Don't confuse: A use can be both expressive/parodic AND serve as a source identifier; the source-identifying function is what matters for Rogers applicability.

🎪 Supreme Court's holdings on infringement

🚫 Rogers does not apply to source-identifying uses

The Court's narrow holding:

• The Court did not decide whether Rogers is ever appropriate or correct.
• It held only that Rogers does not apply "when the challenged use of a mark is as a mark"—i.e., as a source identifier.

Why this makes sense:

• Trademark law's primary mission is to prevent confusion about source.
• Confusion is most likely when someone uses another's trademark as a trademark (source identifier) rather than for some other expressive function.
• Example contrast: Filmmaker uses Louis Vuitton suitcase to convey something about a character (expressive use) vs. luggage manufacturer uses modified LV logo to compete in the market (source-identifying use).
• The latter creates greater likelihood of confusion because it conveys information (or misinformation) about who is responsible for a product.

🎨 Expressive content does not automatically trigger Rogers

The Ninth Circuit's error:

• The Ninth Circuit thought that because Bad Spaniels "communicates a humorous message," it automatically gets Rogers protection.
• Problem with this view: Trademarks are often expressive in many ways.

Examples of expressive trademarks:

• Liqueur brand's trade dress (bottle shaped like friar's habit) tells a story about monastic roots.
• Band name "The Slants" both identifies the band and expresses a view about social issues.
• A mark can function as a mark AND have parodic content (as in Hilfiger/Holedigger).

The danger: The Ninth Circuit's expansion of Rogers "potentially encompasses just about everything" because names, phrases, symbols, and designs often "contain some 'expressive' message" unrelated to source.

• If all expressive content triggered Rogers, the Rogers exception would become the general rule.
• This conflicts with courts' longstanding view of trademark law.

🗽 First Amendment does not demand Rogers for source-identifying uses

The Court's reasoning:

• When a challenged trademark use functions as "source-identifying," trademark rights "play well with the First Amendment."
• Consumer protection interest: "Whatever first amendment rights you may have in calling the brew you make in your bathtub 'Pepsi' are outweighed by the buyer's interest in not being fooled into buying it."
• "[T]o the extent a trademark is confusing" as to source, "the law can protect consumers and trademark owners."
• Clear principle: "[T]he trademark law generally prevails over the First Amendment" when "another's trademark (or a confusingly similar mark) is used without permission" as a means of "source identification."
• The likelihood-of-confusion inquiry does enough work to account for the interest in free expression (except potentially in rare situations).

🎭 How parody fits into the analysis

✅ VIP used Bad Spaniels as a source identifier

Evidence that VIP used the marks as trademarks:

1. VIP's own complaint: Alleged it "owns" and "uses" the "'Bad Spaniels' trademark and trade dress" (not just a "form allegation").
2. Marketing: On the hangtag, the Bad Spaniels logo sits opposite the trademarked Silly Squeakers logo, both appearing to serve the same source-identifying function.
3. Consistent practice: VIP has consistently argued in court that it owns (though never registered) trademark and trade dress in other dog toys like "Jose Perro" and "HeinieSniff'n."
4. Registration of other toys: VIP registered names of other dog toys (Dos Perros, Smella Arpaw, Doggie Walker).

Conclusion: VIP's conduct is its own admission that it is using the Bad Spaniels (née Jack Daniel's) trademarks as trademarks, to identify product source.

🎪 Parody's role in likelihood-of-confusion analysis

The proper framework:

• Because Bad Spaniels is used as a source identifier, the only question going forward is whether the marks are likely to cause confusion.
• There is no threshold test to kick out cases involving "expressive works."

But parody still matters:

• A trademark's expressive message—particularly a parodic one—may properly figure in assessing likelihood of confusion.
• How parody works: A parody must "conjure up" "enough of [an] original to make the object of its critical wit recognizable."
• Yet to succeed, the parody must also create contrasts, so its message of ridicule or pointed humor comes clear.
• Key insight: Once that is done, a parody is not often likely to create confusion—"self-deprecation is one thing; self-mockery far less ordinary."

Example: Consumers seeing a dog toy that mocks Jack Daniel's are less likely to think Jack Daniel's itself made the mocking product.

Don't confuse: VIP's effort to ridicule Jack Daniel's does not justify use of the Rogers test, but it may make a difference in the standard trademark analysis.

💧 Dilution and the noncommercial use exclusion

❌ The Ninth Circuit's error on dilution

What the Ninth Circuit held:

• Dismissed Jack Daniel's dilution-by-tarnishment claim based on the "noncommercial use" exclusion (§1125(c)(3)(C)).
• Reasoned that "use of a mark may be 'noncommercial' even if used to sell a product."
• Found VIP's use noncommercial because it "parodies" and "conveys a humorous message" about Jack Daniel's.

The Supreme Court's rejection:

• The Court did not need to address whether the first step (noncommercial even when selling) is correct.
• The second step is wrong: The "noncommercial use" exclusion "cannot include... every parody or humorous commentary."

🔄 The statutory structure problem

The fair-use exclusion for parody:

• The Lanham Act specifically covers uses "parodying, criticizing, or commenting upon" a famous mark (§1125(c)(3)(A)(ii)).
• But with a critical limitation: This fair-use exclusion does NOT apply when the use is "as a designation of source for the person's own goods or services" (§1125(c)(3)(A)).
• In that event, no parody, criticism, or commentary will rescue the alleged dilutor.

The logical problem with the Ninth Circuit's approach:

What Congress said	What Ninth Circuit did	Result
Parody exempt from dilution only if NOT used to designate source	Parody exempt always, regardless of source designation	Reverses statutorily directed result

• The Ninth Circuit's expansive view of "noncommercial use" effectively nullifies Congress's express limit on the fair-use exclusion for parody.
• In this case: District Court rightly concluded VIP couldn't benefit from fair-use exclusion because it used marks as source identifiers; Ninth Circuit shielded VIP's parodic uses anyway, negating Congress's judgment.

📐 The Court's narrow holding on dilution

What the Court decided:

• The Court did not decide how far the "noncommercial use" exclusion goes generally.
• It held only that the noncommercial exclusion "does not shield parody or other commentary when its use of a mark is... source-identifying."

Why both holdings turn on the same principle:

• Both infringement and dilution holdings focus on whether the use of a mark is serving a source-designation function.
• This reflects the Lanham Act's effort to ensure consumers can tell where goods come from.

⚠️ Practical guidance and limitations

📏 The Court's narrow scope

What the Court did NOT decide:

• Whether the Rogers test is ever appropriate in other contexts
• How far the "noncommercial use" exclusion extends generally
• The ultimate likelihood-of-confusion question (remanded to lower courts)

What the Court DID decide:

• Rogers does not apply when the challenged use of a mark is as a mark (source identifier)
• Noncommercial exclusion does not shield parody when the use is source-identifying

🔍 Justice Sotomayor's concurrence on surveys

Special caution for parody cases:

• Courts should treat survey results with particular caution in parody and other First Amendment contexts.
• Surveys are merely one piece of the multifaceted likelihood-of-confusion analysis.
• Courts should carefully assess methodology and representativeness.

The specific risk with parody surveys:

• Survey answers may reflect mistaken belief that all parodies require permission from the owner of the parodied mark.
• Examples from this case: Respondents said the toy company "had to get [Jack Daniel's] permission" or would need permission to "use the image."
• Cleverly designed surveys could prompt confusion about legal questions that would not arise organically in the marketplace.

The danger:

• Allowing such survey results to drive the analysis would risk silencing many parodies.
• Well-heeled brands with resources to commission surveys would be handed an effective veto over mockery.
• This would upset the Lanham Act's careful balancing of merchant identification needs with society's needs for free communication and discussion.

Recommendation: Courts should ensure surveys do not completely displace other likelihood-of-confusion factors, which may more accurately track actual consumer experiences.

⚖️ Justice Gorsuch's concurrence on Rogers

Handle Rogers with care:

• Lower courts should be cautious with Rogers going forward.
• The Court necessarily left much about Rogers unaddressed.

Unresolved questions:

• Where does the Rogers test come from—is it commanded by the First Amendment, or is it merely gloss on the Lanham Act inspired by constitutional-avoidance doctrine?
• Is Rogers correct in all its particulars? The Solicitor General raised serious questions about the decision.
• All this remains for resolution another day; lower courts should be attuned to that fact.

🧭 Overview

🧠 One-sentence thesis

The First Amendment does not immunize the media from liability when they broadcast a performer's entire act without consent, because the right of publicity protects the performer's economic interest in controlling commercial exploitation of their performance.

📌 Key points (3–5)

• What the right of publicity protects: the performer's economic interest in controlling commercial display and exploitation of their performance, not just reputation or privacy.
• How it differs from false-light privacy: false-light protects reputation and seeks to minimize publication; right of publicity concerns who gets to publish and focuses on economic incentives for creating entertainment.
• The "entire act" rule: broadcasting a performer's complete performance threatens its economic value by giving the public free access to what they would normally pay to see.
• Common confusion: this is not a defamation or false-light case—the performer welcomes publicity but wants compensation; the issue is appropriation of the performance itself, not intrusion or misrepresentation.
• Why it matters: the right of publicity provides economic incentives for performers to invest time and effort in creating entertainment, similar to how copyright and patent law encourage creative production.

🎭 What the right of publicity protects

🎭 The core right

Right of publicity: the right to "personal control over commercial display and exploitation of [one's] personality and the exercise of [one's] talents."

• The Ohio Supreme Court recognized this as a state-law right distinct from privacy torts.
• It protects "exclusive control over the publicity given to [the performer's] performances" as a "valuable part of the benefit which may be attained by his talents and efforts."
• Example: Hugo Zacchini performed a 15-second human cannonball act; a TV station filmed and broadcast the entire performance without his consent on its news program.

🎯 What makes this the "strongest case" for publicity rights

• The case involves "not the appropriation of an entertainer's reputation to enhance the attractiveness of a commercial product, but the appropriation of the very activity by which the entertainer acquired his reputation in the first place."
• The broadcast goes "to the heart of petitioner's ability to earn a living as an entertainer."
• Don't confuse: this is not about using a celebrity's name to sell unrelated products; it's about taking the performance itself—the source of the entertainer's livelihood.

🔍 How publicity rights differ from privacy torts

🔍 Four branches of privacy law

The Court was aware of four distinct privacy torts (from Prosser's article):

1. Intrusion upon seclusion or solitude
2. Public disclosure of private facts
3. False light (placing someone in a misleading public light)
4. Appropriation of name or likeness for commercial purposes

The right of publicity is a specialized form of appropriation, but with different policy goals.

⚖️ Key differences between false-light and publicity rights

Aspect	False-light privacy	Right of publicity
Interest protected	Reputation; mental distress (similar to defamation)	Proprietary/economic interest in the performance
Policy goal	Protect feelings and reputation	Encourage entertainment production through economic incentives
Remedy sought	Minimize publication of damaging matter	Control who publishes (performer usually wants publicity, just wants to be paid)
Effect on speech	Restricts dissemination to protect the person	Only affects who profits from dissemination

📰 Why Time, Inc. v. Hill does not control

• Time, Inc. v. Hill was a false-light case about a magazine falsely connecting a family to a play about a past incident.
• That case involved "non-defamatory falsehoods" and required showing the publisher acted with "knowing falsity or reckless disregard for truth."
• It did not involve a performer, anyone with a commercially valuable name, or any "right of publicity" claim.
• The Court in Zacchini emphasized that Hill addressed reputation and mental distress, not economic interests in performances.

📺 The "entire act" standard and its limits

📺 What the Court held

• "The First and Fourteenth Amendments do not immunize the media when they broadcast a performer's entire act without his consent."
• The station did not merely report that Zacchini was performing or describe/comment on his act—it "filmed his entire act and displayed that film on television for the public to see and enjoy."

🎬 Why broadcasting the entire act is different

• If the station had "merely reported that petitioner was performing at the fair and described or commented on his act, with or without showing his picture on television, we would have a very different case."
• The performer "is not contending that his appearance at the fair and his performance could not be reported by the press as newsworthy items."
• The complaint is specifically about filming and broadcasting the complete performance—appropriating "his professional property."

💰 Economic harm from broadcasting the entire act

• "The broadcast of a film of petitioner's entire act poses a substantial threat to the economic value of that performance."
• "If the public can see the act free on television, it will be less willing to pay to see it at the fair."
• "The effect of a public broadcast of the performance is similar to preventing petitioner from charging an admission fee."
• The rationale: "preventing unjust enrichment by the theft of good will. No social purpose is served by having the defendant get free some aspect of the plaintiff that would have market value and for which he would normally pay."

🚫 What the performer does NOT seek

• Zacchini "does not seek to enjoin the broadcast of his performance; he simply wants to be paid for it."
• This distinguishes publicity rights from censorship: "neither the public nor respondent will be deprived of the benefit of petitioner's performance as long as his commercial stake in his act is appropriately recognized."

🏛️ Policy rationale: incentives for creative production

🏛️ Analogy to copyright and patent law

The Court drew a parallel to intellectual property incentives:

• Copyright and patent laws provide "an economic incentive for [the creator] to make the investment required to produce a performance of interest to the public."
• Quoting Mazer v. Stein: "The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors."
• These laws "were intended definitely to grant valuable, enforceable rights in order to afford greater encouragement to the production of works of benefit to the public."

🎪 Applying the incentive rationale to performers

• "Ohio has recognized what may be the strongest case for a 'right of publicity'—involving, not the appropriation of an entertainer's reputation to enhance the attractiveness of a commercial product, but the appropriation of the very activity by which the entertainer acquired his reputation in the first place."
• The act "is the product of petitioner's own talents and energy, the end result of much time, effort, and expense."
• Protecting the right of publicity "provides an economic incentive for him to make the investment required to produce a performance of interest to the public."
• "The Constitution does not prevent Ohio from making a similar choice here in deciding to protect the entertainer's incentive in order to encourage the production of this type of work."

🔗 Comparison to other unauthorized broadcasts

The Court noted the Constitution would not immunize the media from liability for:

• Broadcasting "a copyrighted dramatic work without liability to the copyright owner"
• Broadcasting "a prize fight" where "the promoters or the participants had other plans for publicizing the event"
• Broadcasting "a baseball game" without authorization

🗣️ First Amendment considerations

🗣️ Entertainment and news both enjoy protection

• "There is no doubt that entertainment, as well as news, enjoys First Amendment protection."
• "Entertainment itself can be important news."
• The station's 15-second clip was part of "an ordinary daily news program" with "favorable commentary."

⚖️ Why the First Amendment does not require a privilege here

• The press has "broad latitude in its choice of how much it presents of each story or incident," but this does not extend to broadcasting an entire performance.
• The Ohio court's privilege would give the press constitutional freedom "to film and display petitioner's entire act," which the Supreme Court rejected.
• Liability here is not "without fault"—"Respondent knew that petitioner objected to televising his act but nevertheless displayed the entire film."

🔄 State law flexibility

• "Although the State of Ohio may as a matter of its own law privilege the press in the circumstances of this case, the First and Fourteenth Amendments do not require it to do so."
• The Court is clarifying that the Constitution does not compel a media privilege, leaving states free to decide whether to grant one under state law.

🤔 The dissent's concerns

🤔 Justice Powell's alternative approach

The dissent (Powell, joined by Brennan and Marshall) argued for a different analytical framework:

• Starting point: focus on "what use did the station make of the film footage?" rather than quantitative analysis of whether it was the "entire act."
• Proposed rule: "When a film is used, as here, for a routine portion of a regular news program, I would hold that the First Amendment protects the station from a 'right of publicity' or 'appropriation' suit, absent a strong showing by the plaintiff that the news broadcast was a subterfuge or cover for private or commercial exploitation."

📰 Distinguishing reappropriation from other privacy torts

• In other privacy torts, "the plaintiff generally seeks to avoid any sort of public exposure."
• In a publicity suit, "the plaintiff does not complain about the fact of exposure to the public, but rather about its timing or manner."
• "He welcomes some publicity, but seeks to retain control over means and manner as a way to maximize for himself the monetary benefits."
• The dissent's view: "having made the matter public—having chosen, in essence, to make it newsworthy—he cannot, consistent with the First Amendment, complain of routine news reportage."

⚠️ Concerns about media self-censorship

• The dissent worried the decision "could lead to a degree of media self-censorship."
• "Whenever a television news editor is unsure whether certain film footage received from a camera crew might be held to portray an 'entire act,' he may decline coverage—even of clearly newsworthy events—or confine the broadcast to watered-down verbal reporting."
• "The public is then the loser. This is hardly the kind of news reportage that the First Amendment is meant to foster."

🎯 Ambiguity of the "entire act" standard

• The dissent noted the "act" likely included "some fanfare, possibly stretching over several minutes, to heighten the audience's anticipation: introduction of the performer, description of the uniqueness and danger, last minute checking of the apparatus, and entry into the cannon."
• If so, "respondent could not be said to have appropriated the 'entire act' in its 15-second newsclip—and the Court's opinion then would afford no guidance for resolution of the case."
• "In future cases involving different performances, similar difficulties in determining just what constitutes the 'entire act' are inevitable."

🧭 Overview

🧠 One-sentence thesis

The Seventh Circuit reversed a district court's grant of judgment as a matter of law, holding that a jury could reasonably find that PlayWood's concept for noise-producing toy railroad track was a protectable trade secret under the Illinois Trade Secrets Act, even though the concept was simple, inexpensive to develop, and disclosed orally without a written confidentiality agreement.

📌 Key points (3–5)

• What a trade secret requires under Illinois law: information that (1) derives economic value from not being generally known, and (2) is subject to reasonable efforts to maintain secrecy.
• Six Restatement factors are guidelines, not rigid requirements: Illinois courts use six common-law factors to assess trade secrets, but no single factor is dispositive; the analysis is holistic and fact-specific.
• Reasonable precautions depend on context: what counts as "reasonable" varies by company size, industry practice, and circumstances—an oral confidentiality agreement can suffice for a small company dealing with another small company.
• Common confusion—developmental cost vs. value: a trade secret need not be expensive or time-consuming to develop; creative or innovative concepts can have economic value even if conceived quickly and cheaply.
• Why it matters: trade secret law fills gaps left by contracts, protecting economically valuable information shared in confidence without requiring formal agreements or patent-level novelty.

🧩 What is a trade secret under Illinois law

🧩 Statutory definition (Illinois Trade Secrets Act)

Trade secret: information that (1) is sufficiently secret to derive economic value, actual or potential, from not being generally known to others who can obtain value from its disclosure or use; and (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy or confidentiality. (765 ILCS 1065/2(d))

• The two statutory requirements both focus on secrecy, but emphasize different aspects:
  • First requirement (economic value from secrecy): precludes protection for information generally known within an industry, even if not known to the public at large.
  • Second requirement (reasonable efforts): prevents a plaintiff who takes no affirmative measures to protect information from claiming trade secret status.

🧩 Six common-law factors (Restatement-based)

Illinois courts frequently refer to six factors derived from the Restatement (First) of Torts § 757:

Factor	What it examines
1. Extent known outside plaintiff's business	Is the information generally known in the industry?
2. Extent known inside plaintiff's business	How many employees/insiders know it?
3. Measures taken to guard secrecy	What steps did the plaintiff take to keep it secret?
4. Value to plaintiff and competitors	Does the information have economic value?
5. Time, effort, money expended	How much did it cost to develop?
6. Ease of duplication by proper means	Could others easily acquire or duplicate it lawfully?

Critical point: These factors are instructive guidelines, not a checklist. The absence of evidence on any single factor does not necessarily preclude trade secret protection. The court emphasized that "an exact definition of a trade secret, applicable to all situations, is not possible."

🧩 Trade secret status is ordinarily a jury question

• Trade secrets are "one of the most elusive and difficult concepts in the law to define."
• Because the analysis requires an ad hoc evaluation of all surrounding circumstances, whether information constitutes a trade secret is typically a question of fact for the jury, not a matter of law for the judge.
• A court should not substitute its judgment for the jury's unless no reasonable jury could find in the plaintiff's favor.

🔍 Factor-by-factor analysis in this case

🔍 Factor 1: Known outside PlayWood's business

Court's conclusion: Sufficient evidence for the jury to find the concept was not generally known.

• No similar product on the market: No noise-producing toy railroad track existed until Learning Curve launched Clickety-Clack Track™ in late 1994, over a year after PlayWood disclosed the concept.
• Learning Curve's own struggles: Learning Curve had spent months trying unsuccessfully to differentiate its track from competitors before PlayWood disclosed the concept.
• Expert testimony: PlayWood's expert testified that the concept was "unique" and allowed its seller to "differentiate itself from a host of competitors making a generic product."
• Patent obtained: Learning Curve sought and obtained a patent on the noise-producing track. While patent requirements differ from trade secret requirements, "if an invention has sufficient novelty to be entitled to patent protection, it may be said a fortiori to be entitled to protection as a trade secret."

Don't confuse: Being the first to use information does not automatically make it a trade secret if the information is otherwise ordinary or well-known. Here, however, additional evidence (Learning Curve's failed attempts, expert testimony, patent) supported the finding that the concept was not generally known.

🔍 Factor 2: Known inside PlayWood's business

Court's conclusion: Sufficient evidence that the concept was known only to key individuals.

• Small company considerations: PlayWood consisted only of Clausi (designer) and Moore (officer/director). Illinois courts recognize that "reasonable steps for a two or three person shop may be different from reasonable steps for a larger company."
• Limited disclosure: Only three people knew the concept:
  • Clausi (who conceived it)
  • Moore (PlayWood's sole officer)
  • Borsato (manufacturer who produced the prototype under a written confidentiality agreement)
• Confidentiality agreement with manufacturer: Borsato's actions were governed by a written confidentiality agreement, which Clausi amended immediately after the February 18, 1993 meeting to ensure materials discussed remained confidential.

Example: A trade secret does not lose its character by being disclosed to agents or servants "without whose assistance it could not be made of any value"—here, Borsato needed to know the concept to produce the prototype.

🔍 Factor 3: Reasonable measures to guard secrecy

Court's conclusion: Sufficient evidence that PlayWood took reasonable precautions.

The Act requires actions that are "reasonable under the circumstances to maintain secrecy or confidentiality"; it does not require perfection.

• Oral confidentiality agreement: Both Clausi and Moore testified that they entered into an oral confidentiality agreement with Learning Curve representatives before disclosing the concept. Clausi stated: "I also have some things, some ideas... and I think they're confidential as well. So if we're both okay with that, we should continue."
• Supporting evidence for the agreement:
  • Learning Curve disclosed substantial confidential information to PlayWood during the meeting (projected volumes, costs, profit margins, drawings of unreleased products).
  • The jury could infer Learning Curve would not have disclosed such information without a confidentiality agreement.
  • Testimony from Learning Curve's former business associates indicated Learning Curve routinely entered into oral confidentiality agreements.
• Reasonableness depends on context: The jury could consider the size and sophistication of the parties (both were small toy companies; PlayWood was smaller and less experienced) and industry practice.

What PlayWood did not do (but the court found this did not defeat reasonableness):

• Did not obtain a written confidentiality agreement
• Did not get a receipt when giving the prototype to Learning Curve
• Gave away its only prototype

Why the court found this reasonable:

• Formation of a confidential relationship "imposes upon the disclosee the duty to maintain the information received in the utmost secrecy."
• PlayWood believed in good faith it would do business with Learning Curve and that Learning Curve would honor the oral agreement.
• "Only in an extreme case can what is a 'reasonable' precaution be determined [as a matter of law], because the answer depends on a balancing of costs and benefits that will vary from case to case."

Don't confuse: The question is not whether the court independently believes the precautions were reasonable, but whether the plaintiff's failure to do more was "so plain a breach of the obligation... to make reasonable efforts to maintain secrecy as to justify" overturning the jury verdict.

🔍 Factor 4: Value to plaintiff and competitors

Court's conclusion: Substantial evidence of value.

• Learning Curve's sales: Undisputed that Learning Curve's sales "skyrocketed" after it began selling Clickety-Clack Track™ ($20 million in track sales by Q1 2000; $40 million for combined track and accessory sales).
• Expert testimony on value: PlayWood's expert testified the concept had "tremendous value" because it made the track "look different, feel different and sound different than generic track," giving the seller "a significant edge over competition."
• District court's error: The district court concluded the concept had no value because PlayWood's prototype did not work perfectly (first cuts too shallow, second cuts too deep). The Seventh Circuit rejected this reasoning:
  • Expert testified he would assign the same value to PlayWood's concept as conceived on February 18, 1993, as to the finished Clickety-Clack Track™ because "most of the design had already been done."
  • Standard industry practice is to negotiate licenses based on prototypes rather than finished products, and licenses generally cover the prototypical design plus any enhancements.

Actual use is not required: "The proper criterion is not 'actual use' but whether the trade secret is 'of value' to the company." PlayWood did not need to use the concept in its own business for it to have value.

Patent protection is not required: "Since every inventor has the right to keep his invention secret, one who has made a patentable invention has the option to maintain it in secrecy, relying upon protection accorded to a trade secret rather than upon the rights which accrue by a patent grant."

🔍 Factor 5: Time, effort, and money expended

Court's conclusion: PlayWood's lack of proof on this factor does not preclude trade secret protection.

• Minimal investment: Clausi's own account: cost less than one dollar, time spent less than half an hour.
• District court's error: The district court determined such an "insignificant investment" was insufficient as a matter of law. The Seventh Circuit held the district court gave too much weight to this factor.

Why developmental costs are not always required:

• The statutory inquiries under Illinois law focus on (1) economic value from secrecy and (2) reasonable efforts to maintain secrecy—neither explicitly requires significant developmental costs.
• Significant expenditure may provide evidence of value, but Illinois law does not require such expenditure in all cases.
• Context matters: Cases emphasizing developmental costs typically involved compilations of data (e.g., customer lists) where there is "nothing original or creative" about the alleged trade secret. With enough time and money, competitors could compile similar lists.
• Creative concepts are different: Here, the court was dealing with "a new toy design... promoted as 'the first significant innovation in track design since the inception of wooden train systems.'" Toy designers, like artistic individuals, have "intuitive flashes of creativity" that may be the product of earlier thought and practice.
• "A trade secret can be discovered fortuitously (ergo, without costly development), or result purely from the exercise of creative facilities."

Example: The value of PlayWood's concept would not differ if Clausi had spent several months and several thousand dollars creating the noise-producing track instead of conceiving it quickly.

🔍 Factor 6: Ease of duplication by proper means

Court's conclusion: Sufficient evidence that the concept could not have been easily acquired or duplicated through proper means.

• Expert testimony: PlayWood's expert testified that although the product appears simple, "because it delivers feeling and sound as well as appearance, it isn't so simple as it first appears. It's a little more elegant, actually, than you might think."
• Learning Curve's failed attempts: Learning Curve spent months trying to differentiate its track before Clausi disclosed the concept. The jury could infer that if the concept was obvious, Learning Curve would have thought of it earlier.

District court's error—confusing disclosure after sale with disclosure in confidence:

• The district court concluded the concept was not a trade secret because "had PlayWood succeeded in producing and marketing [the] notched track, the appearance of the track product itself would have fully revealed the concept."
• The court acknowledged that in the absence of patent or copyright protection, the track could be reverse engineered just by looking at it.
• Critical distinction: "A potent distinction exists between a trade secret which will be disclosed if and when the product in which it is embodied is placed on sale, and a 'trade secret' embodied in a product which has been placed on sale."
• Until disclosed by sale, the trade secret should be entitled to protection.
• Here, PlayWood disclosed its concept to Learning Curve in the context of a confidential relationship; Learning Curve had no legal authority to reverse engineer the prototype it received in confidence.

Don't confuse: Reverse engineering can defeat a trade secret claim, but only if the product could have been properly acquired by others (e.g., through public sale). "A trade secret is open to anyone, not bound by a confidential relationship or a contract with the secret's owner, who can discover the secret through lawful means."

📋 Factual background of the case

📋 PlayWood's development and disclosure

PlayWood's formation and goals:

• 1992: Robert Clausi and Scott Moore began creating wooden toy prototypes under PlayWood Toys, Inc. (Canadian corporation).
• Clausi was sole toy designer; Moore was sole officer and director.
• Neither had prior toy industry experience, but Clausi "always been a bit of a doodler and designer."
• Goal: "create high-quality hardwood maple toys for the independent toy market."
• PlayWood worked with Mario Borsato (woodworking facility owner) under a written confidentiality agreement to manufacture prototypes.

The New York Toy Fair (February 1993):

• PlayWood displayed prototypes at the 1993 New York Toy Fair (February 12–14).
• Learning Curve representatives (Roy Wilson, Harry Abraham, John Lee) visited PlayWood's booth and expressed interest in a custom manufacturing contract to produce Learning Curve's Thomas the Tank Engine™ products.
• The parties agreed that Abraham and Wilson would visit PlayWood in Toronto on February 18, 1993 (four days after the Toy Fair ended).

📋 The February 18, 1993 meeting

Setting the stage:

• Abraham and Wilson visited PlayWood at Borsato's facility.
• After a tour, the parties went to the conference room.
• Oral confidentiality agreement: According to Clausi and Moore, Abraham said Learning Curve would disclose confidential information (designs, pricing, margins) and asked for confidentiality. Clausi responded that PlayWood also had confidential ideas and asked for reciprocal confidentiality. Abraham agreed.

Learning Curve's disclosure:

• Wilson showed Clausi and Moore drawings of Thomas characters and provided information on projected volumes, costs, and profit margins.
• The parties discussed train production (Clausi suggested using a CNC machine to carve trains from a single piece of wood).

The track problem:

• Discussion moved to track design. Abraham confided that track "posed a bit of a problem for Learning Curve."
• Sales were "terrific" for Thomas trains but "abysmal" for track.
• Learning Curve's track was virtually identical to competitor Brio's track, which had the lion's share of the market.
• Because there was "no differentiation," Learning Curve's track was not even displayed in many stores.
• Learning Curve had worked unsuccessfully for several months to differentiate its track.

PlayWood's concept:

• Abraham asked Clausi if there was "a way to differentiate" the track.
• Clausi immediately responded that if the track "were more realistic and more functional," kids would enjoy it more and retailers would have a reason to carry it.
• Clausi explained that if the track "made noise and looked like real train tracks," stores wouldn't have a problem and Learning Curve could "effectively compete with Brio."
• Abraham and Wilson were "intrigued" and asked what Clausi meant by "making noise."

The demonstration:

• Clausi took a piece of Learning Curve's existing track, drew lines across it (about every three-quarters of an inch), and explained: "We can go ahead and machine grooves right across the upper section..., which would look like railway tracks, and down below machine little indentations as well so that it would look more like or sound more like real track. You would roll along and bumpity-bumpity as you go along."
• Clausi called Borsato into the room and asked him to cut grooves "about a quarter of an inch deep from the top surface."
• First attempt: Borsato returned with the cut track. It looked more realistic but did not make noise because the grooves were not deep enough.
• Second attempt: Clausi instructed Borsato to cut the grooves "just a little bit deeper so that they go through the rails." This time the track made a "clickety-clack" sound, but the train did not run smoothly because the grooves were "a little bit too deep."
• Based on the sound, Clausi suggested calling it "Clickety-Clack Track."

End of meeting:

• Both Abraham and Wilson indicated Clausi's concept was "novel."
• Wilson and Clausi began discussing improvements, but Abraham interrupted: "No, focus. You guys have to get the contract for the basic product first, and then we can talk about new products, because... it takes [our licensor] a long time to approve new products and new designs."
• Wilson asked to take the cut piece of track with him. Clausi gave it to him without hesitation. This was the only item Abraham and Wilson took from the meeting.
• Clausi and Moore did not ask for a receipt or written confidentiality agreement.

📋 Aftermath

Subsequent negotiations (March 1993):

• PlayWood and Learning Curve met three times to discuss PlayWood manufacturing Thomas products.
• PlayWood submitted a manufacturing proposal at Learning Curve's request.
• Learning Curve rejected the proposal, stating its licensor wanted products made in the United States.

October 1993:

• Abraham contacted Clausi about another possible manufacturing contract.
• PlayWood submitted another proposal, which was also rejected (Learning Curve's business partner decided to manufacture in China).

PlayWood's continued work:

• After the unsuccessful 1994 New York Toy Fair, Clausi and Moore focused on refining the noise-producing track concept.
• They did not attempt to license or sell the concept to other companies because they believed they still had "an opportunity to get in the door" with Learning Curve and because they believed they were bound by a confidentiality agreement.

Discovery of misappropriation (December 1994):

• While shopping for track, Moore discovered Learning Curve was selling noise-producing track under the name "Clickety-Clack Track™."
• Like PlayWood's prototype, Clickety-Clack Track™ has parallel grooves cut into the wood, causing a "clacking" sound as train wheels roll over the grooves.
• Learning Curve promoted it as "the first significant innovation in track design since the inception of wooden train systems... the newest and most exciting development to come along recently in the wooden train industry."
• Moore was "stunned": "This was our idea. This is what we've been working on... and there it is on the shelf."

Patent and sales:

• Learning Curve applied for a patent on March 16, 1994, and obtained it on October 3, 1995. The patent identifies Roy Wilson as the inventor.
• Clickety-Clack Track™ provided an "enormous boost" to Learning Curve's sales: $20 million in track sales by Q1 2000; $40 million for combined track and accessory sales.

⚖️ Procedural history and court's holding

⚖️ District court proceedings

• PlayWood sent a cease and desist letter accusing Learning Curve of stealing its concept disclosed "in confidence in the context of a manufacturing proposal."
• Learning Curve sought a declaratory judgment that it owned the concept.
• PlayWood counterclaimed for trade secret misappropriation (among other claims).
• Learning Curve voluntarily dismissed its complaint; PlayWood's trade secret claim proceeded to trial.
• Jury verdict: The jury found in favor of PlayWood and awarded a royalty of "8% for a license that would have been negotiated [absent the misappropriation] to last for the lifetime of the product."
• District court's decision: The court declined to enter judgment on the verdict. Instead, it granted Learning Curve's Rule 50 motion for judgment as a matter of law, holding that PlayWood presented insufficient evidence of a trade secret.

⚖️ Seventh Circuit's reversal

Standard of review:

• De novo review of the grant of judgment as a matter of law.
• View evidence in the light most favorable to PlayWood.
• "We shall not second-guess the jury's view of the contested evidence; the proper inquiry is whether, given the totality of the evidence, [PlayWood] presented sufficient evidence from which a reasonable jury could find in [its] favor."

Holding:

• The Seventh Circuit reversed the district court and reinstated the jury's verdict.
• The court held there was legally sufficient evidence for the jury to find that PlayWood had a trade secret in its concept for noise-producing toy railroad track.
• The district court erred by:
  • Treating the Restatement factors as requisite elements rather than instructive guidelines.
  • Substituting its judgment for the jury's on questions of fact.
  • Giving too much weight to certain factors (developmental costs, ease of duplication after public sale) while ignoring context.

Remand:

• The case was remanded for a jury trial on exemplary damages (the district court had granted judgment as a matter of law on this issue before closing argument).
• The court also instructed the district court to consider PlayWood's request for attorneys' fees.

💰 Exemplary damages and attorneys' fees

💰 Exemplary damages under the Illinois Trade Secrets Act

The Illinois Trade Secrets Act authorizes exemplary damages of up to twice the amount of compensatory damages if there was a "willful and malicious misappropriation." (765 ILCS 1065/4(b))

What "willful and malicious" means:

• The Seventh Circuit previously held the phrase includes "an intentional misappropriation as well as a misappropriation resulting from the conscious disregard of the rights of another."
• In other tort contexts, Illinois courts have held that exemplary damages may be awarded when torts are committed "with fraud, actual malice, deliberate violence or oppression, or when the defendant acts willfully, or with such gross negligence as to indicate a wanton disregard of the rights of others."

Why the jury should decide:

• "The question of whether a defendant's conduct was sufficiently willful or wanton to justify the imposition of punitive damages is for the jury to decide."
• A rational jury could determine that Learning Curve:
  • Intentionally misappropriated PlayWood's trade secret in the noise-producing track.
  • Attempted to conceal the misappropriation by creating false evidence of prior independent development.

💰 Attorneys' fees

• The Illinois Trade Secrets Act permits the court to award reasonable attorneys' fees to the prevailing party where "willful and malicious misappropriation exists." (765 ILCS 1065/5(iii))
• The Seventh Circuit left it to the district court on remand to consider PlayWood's request for attorneys' fees.

🔑 Key takeaways and policy considerations

🔑 Trade secret law fills gaps left by contracts

Why trade secret law matters:

• Secrecy alone is easy: if you don't tell anyone, it's difficult for others to know. But information not shared with anyone is of little value, and it's extremely difficult to build a business without sharing economically valuable information.
• Contracts (non-disclosure agreements) are one solution, but they have limitations:
  • Unable to deal with every possible situation.
  • Rely on the parties' prognosticating ability at the time of contract creation, not their knowledge at the time of alleged breach.
  • Can be both over- and under-restrictive.
  • Require that the parties actually entered into a contract with relevant provisions.
• Trade secret law fills these gaps by:
  • Defining the concept of trade secrets (differentiating protectable from non-protectable information).
  • Providing a tort-based cause of action for misappropriation.

🔑 Trade secrets vs. patents

Key differences:

Aspect	Trade Secret	Patent
Novelty	Need not be novel or unobvious	Must be novel and non-obvious
Disclosure	Kept secret	Publicly disclosed in exchange for limited monopoly
Duration	Lasts as long as secrecy is maintained	Limited term (typically 20 years from filing)
Protection	Against misappropriation (improper acquisition/use)	Against any use, even independent development

Relationship: "If an invention has sufficient novelty to be entitled to patent protection, it may be said a fortiori to be entitled to protection as a trade secret." An inventor has the option to maintain an invention in secrecy rather than seek patent protection.

🔑 Practical lessons from this case

For trade secret owners:

• Document confidentiality agreements in writing when possible, but know that oral agreements can be enforceable if supported by evidence.
• Take reasonable precautions appropriate to your circumstances—small companies are not held to the same standard as large companies.
• Keep records of who knows the secret and ensure they are bound by confidentiality obligations.
• Don't assume you need to spend significant time or money developing a concept for it to qualify as a trade secret—creative insights can be protectable even if conceived quickly.
• Understand that trade secrets are vulnerable once publicly disclosed—reverse engineering is permissible once a product is on the market, so consider patent protection for innovations that will be publicly visible.

For potential disclosees:

• Be cautious about receiving confidential information—formation of a confidential relationship imposes a duty to maintain secrecy.
• Clarify the scope of any confidentiality obligations before receiving information.
• Document your own independent development efforts to avoid later disputes about the source of ideas.

🧭 Overview

🧠 One-sentence thesis

Trade secret misappropriation analysis requires first establishing that information qualifies as a protectable trade secret, then determining whether that secret has been misappropriated through conduct that falls within defined legal categories.

📌 Key points (3–5)

• Two-step analysis: First confirm the information is a protectable trade secret, then assess whether misappropriation occurred.
• Multiple forms of misappropriation: The law recognizes different categories of conduct that constitute misappropriation.
• Expressly excluded conduct: Some types of behavior are explicitly defined as not constituting misappropriation.
• Common confusion: Understanding the distinction between "misappropriation" (wrongful taking) and "appropriation" (any taking, including lawful methods).
• Statutory foundation: The DTSA (Defend Trade Secrets Act) provides the framework for identifying these categories.

📋 The Two-Step Framework

📋 Step one: Protectable trade secret

• Before analyzing misappropriation, the information must qualify as a protectable trade secret.
• This is a threshold requirement—without a valid trade secret, there can be no misappropriation claim.

📋 Step two: Misappropriation determination

• Once a protectable trade secret is established, the analysis shifts to whether the secret "has been misappropriated."
• This step examines the defendant's conduct to see if it falls within recognized forms of misappropriation.

🔍 Understanding Misappropriation

🔍 What misappropriation means

Misappropriation: wrongful acquisition, disclosure, or use of a trade secret (specific definition requires reference to the DTSA).

• The excerpt emphasizes that misappropriation is a legal term of art with specific meaning.
• Not every use or acquisition of information constitutes misappropriation—only certain defined forms of conduct qualify.

🔍 Misappropriation vs. appropriation

• The excerpt highlights an important conceptual distinction through its reading questions.
• Appropriation: any taking or use of information (can be lawful or unlawful).
• Misappropriation: wrongful or improper taking/use that violates trade secret law.
• Example: If someone independently develops the same information through proper means, that is appropriation but not misappropriation.

🗂️ Categories of Conduct

🗂️ Forms that constitute misappropriation

• The excerpt indicates that misappropriation "can take" different forms.
• These forms are studied through case law (specifically E.I. DuPont v. Christophers and Uncle B's Bakery v. O'Rourke).
• The DTSA provides the statutory framework for identifying these categories.

🗂️ Conduct expressly excluded

• Some behavior is "expressly not deemed to constitute misappropriation."
• This creates safe harbors for certain types of conduct.
• Understanding what is not misappropriation is as important as understanding what is.
• Don't confuse: Conduct that seems like it might be wrongful may still fall outside the legal definition of misappropriation.

📚 Analytical Approach

📚 How to analyze potential misappropriation

The excerpt suggests a structured approach:

1. Identify the conduct: What specific actions did the alleged misappropriator take?
2. Compare to defined categories: Does the conduct match recognized forms of misappropriation?
3. Check exclusions: Does the conduct fall within categories expressly deemed not to be misappropriation?
4. Reference the statute: The DTSA provides the authoritative definitions for these determinations.

📚 Case-specific variations

• The excerpt notes that there may be differences "between misappropriation as defined in DuPont v Christopher and Uncle B's Bakery."
• This suggests that courts may interpret or apply misappropriation standards differently across cases.
• Careful comparison of how different courts define and apply the concept is necessary.

🧭 Overview

🧠 One-sentence thesis

The excerpt introduces the concept of trade secret misappropriation as the second step in a trade secret analysis, requiring courts to determine whether a protectable trade secret has been wrongfully taken or used.

📌 Key points (3–5)

• Two-step analysis: First, determine if information is a protectable trade secret; second, determine if it has been misappropriated.
• What misappropriation covers: Different forms of conduct that constitute wrongful acquisition or use of a trade secret.
• What is excluded: Some conduct is expressly not deemed to be misappropriation.
• Common confusion: Misappropriation vs. appropriation—the excerpt prompts readers to understand the difference between wrongful taking and lawful acquisition.
• Statutory foundation: The DTSA (Defend Trade Secrets Act) defines the categories and boundaries of misappropriation.

🔍 The two-step trade secret analysis

🔍 Step one: Protectable trade secret

• Before reaching misappropriation, the court must first establish that the information qualifies as a protectable trade secret.
• This is a threshold requirement—without a valid trade secret, there can be no misappropriation claim.

🔍 Step two: Misappropriation determination

Misappropriation analysis: determining whether the trade secret has been misappropriated.

• This is the second step, applied only after confirming the information is a protectable trade secret.
• The excerpt emphasizes that this step involves examining whether specific conduct crosses the line into wrongful acquisition or use.

📋 Forms of misappropriation

📋 Different categories of conduct

• The excerpt indicates that misappropriation can take "different forms."
• Students are directed to study these various forms to understand the scope of prohibited conduct.
• The DTSA provides the statutory framework defining these categories.

📋 What is not misappropriation

• Some conduct is "expressly not deemed to constitute misappropriation."
• This creates a boundary: not all acquisition or use of another's information is wrongful.
• Example: If an organization independently develops the same information, that would not be misappropriation (implied by the need to distinguish lawful from unlawful conduct).

🔄 Key distinction: Misappropriation vs. appropriation

🔄 The critical difference

• The excerpt explicitly asks readers to consider "the difference between misappropriation and appropriation."
• Appropriation: Taking or using information (neutral term).
• Misappropriation: Wrongful taking or using—the "mis-" prefix signals improper conduct.
• Don't confuse: Not every acquisition of another's trade secret information is illegal; only wrongful methods or breaches of duty constitute misappropriation.

🔄 Why the distinction matters

• This distinction determines liability: lawful appropriation (e.g., reverse engineering, independent discovery) does not trigger trade secret protection.
• The boundary between the two depends on the method of acquisition and any duties owed.

📚 Reading guidance and statutory reference

📚 Purpose questions

The excerpt directs students to ask while reading:

• What does it mean to misappropriate a trade secret?
• What is the difference between misappropriation and appropriation?
• Is there a difference in how misappropriation is defined across cases (DuPont v. Christopher and Uncle B's Bakery)?

📚 Statutory foundation

• Students are instructed to "reread the DTSA" to identify the categories of misappropriation and excluded conduct.
• The DTSA provides the controlling definitions and framework for analyzing trade secret misappropriation claims.
• This indicates that the statute is the primary source for understanding what conduct qualifies as misappropriation.

🧭 Overview

🧠 One-sentence thesis

The excerpt does not contain the substantive content of the Uncle B's Bakery case itself, but instead provides surrounding procedural and pedagogical material from a textbook chapter on trade secret misappropriation.

📌 Key points (3–5)

• What the excerpt contains: procedural footnotes from an unrelated case (PlayWood), learning objectives for a trade secrets unit, and reading prompts for Uncle B's Bakery and DuPont v. Christophers.
• No case holding or facts: the actual decision, reasoning, or facts of Uncle B's Bakery v. O'Rourke are not present in the excerpt.
• Pedagogical context: the excerpt frames Uncle B's Bakery as a case study for understanding misappropriation of trade secrets alongside DuPont v. Christophers.
• Common confusion: the title suggests case content, but the excerpt is textbook scaffolding, not the judicial opinion.
• What students are asked to consider: the difference between misappropriation and appropriation, and whether the definition of misappropriation differs between the two cases.

📚 Textbook context and learning framework

📚 Unit structure

• The excerpt is from Unit 25: Misappropriation of Trade Secrets in an intellectual property law textbook.
• It follows Unit 24: The Elements of a Trade Secret and precedes case readings.
• The unit aims to teach:
  • Forms of misappropriation
  • What conduct is not misappropriation
  • How to analyze whether given conduct constitutes misappropriation

🎯 Learning objectives stated

The textbook lists three objectives for Unit 25:

• Recall the forms of misappropriation of trade secrets
• Identify what is not misappropriation of trade secrets
• Analyze whether a given form of conduct constitutes misappropriation of a trade secret

📖 Reading prompts for case analysis

The excerpt provides "Reading with Purpose" questions for students approaching Uncle B's Bakery and DuPont v. Christophers:

Question	Focus
What does it mean to misappropriate a trade secret?	Core definition
What is the difference between misappropriation and appropriation?	Conceptual distinction
Is there a difference between misappropriation as defined in DuPont v. Christopher and Uncle B's Bakery?	Comparative analysis

Don't confuse: These are study questions, not answers or holdings from the cases.

⚖️ Procedural material from unrelated case

⚖️ PlayWood forfeiture footnote

The excerpt includes a lengthy footnote (footnote 10) from a different case involving PlayWood and Learning Curve, discussing:

• Exclusion of expert testimony under Daubert v. Merrell Dow Pharmaceuticals
• PlayWood's failure to include the Daubert hearing transcript in the appellate record
• The court's refusal to consider the argument because of the incomplete record

Federal Rule of Appellate Procedure 10(b)(2): "If the appellant intends to urge on appeal that a finding or conclusion is unsupported by the evidence or is contrary to the evidence, the appellant must include in the record a transcript of all evidence relevant to that finding or conclusion."

🚫 Why the court declined review

• PlayWood forfeited the argument by not requesting the hearing transcript
• The court had authority under Rule 10(e) to order supplementation but declined because PlayWood had "ample opportunity to correct the problem but ha[s] failed to do so"
• Learning Curve pointed out the missing transcript in its brief, but PlayWood did not respond or supplement the record

Example: An appellant argues the trial court wrongly excluded evidence but fails to include the hearing transcript in the appeal record → the appellate court cannot evaluate the claim and the argument is forfeited.

🔍 What is missing from this excerpt

🔍 Substantive case content absent

The excerpt does not include:

• Facts of Uncle B's Bakery v. O'Rourke
• The court's legal analysis or reasoning
• The holding or outcome
• Discussion of what trade secrets were at issue
• How the court defined or applied misappropriation

📌 Analytical framework suggested but not explained

The textbook indicates that the second step of trade secret analysis is determining whether misappropriation occurred (after establishing that information is a protectable trade secret), but the excerpt does not explain:

• What constitutes misappropriation under the DTSA (Defend Trade Secrets Act)
• The different forms misappropriation can take
• What conduct is expressly excluded from misappropriation

Note: Students are directed to "reread the DTSA" to identify these categories, but the statute itself is not provided in the excerpt.

🧭 Overview

🧠 One-sentence thesis

The Supreme Court held that state trade secret law is not preempted by federal patent law because trade secrets serve complementary purposes and do not conflict with the patent system's goals of disclosure and promoting innovation.

📌 Key points (3–5)

• The preemption question: whether federal patent law prohibits states from protecting trade secrets that could potentially be patented.
• Three categories of inventions: trade secret protection applies to (1) clearly patentable inventions, (2) clearly unpatentable subject matter, and (3) inventions of doubtful patentability—each analyzed separately for conflict with patent policy.
• Why no conflict exists: trade secret protection is weaker than patent protection (it allows independent discovery and reverse engineering), so inventors with clearly patentable inventions will still choose patents over trade secrets.
• Common confusion: trade secret law does not "remove from the public domain" what patents protect—by definition, a trade secret has not been publicly disclosed, so it was never in the public domain.
• Policy harmony: trade secrets encourage innovation in areas patents don't reach, promote efficient licensing and research collaboration, and deter industrial espionage without undermining patent law's disclosure incentives.

🏛️ Constitutional and legal framework

🏛️ Federal patent power and state authority

• Article I, § 8, cl. 8 of the Constitution grants Congress power to promote science and useful arts by securing exclusive rights to inventors for limited times.
• The Court in Goldstein v. California (1973) held that this grant is not exclusive—states may also protect intellectual property unless state law conflicts with federal objectives.
• States may regulate discoveries and writings as long as they do not "stand as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress."

⚖️ The Supremacy Clause test

The question is whether state trade secret law "stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress." (Hines v. Davidowitz)

• If a state scheme "clashes with the objectives of the federal patent laws," the state law must fall.
• The Court examines whether Ohio's trade secret law conflicts with patent law's goals: encouraging invention, requiring disclosure, and keeping the public domain free.

🔐 What trade secrets protect

🔐 Definition and scope

A trade secret may consist of any formula, pattern, device, or compilation of information used in one's business that gives an advantage over competitors who do not know or use it. (Restatement of Torts § 757)

• Examples: chemical formulas, manufacturing processes, machine patterns, customer lists.
• Secrecy requirement: the subject must not be publicly known or generally known in the trade.
• Secrecy is not lost if disclosed "in confidence, and under an implied obligation not to use or disclose it" (e.g., to employees or licensees).

🛡️ What trade secret law protects against

• Breach of confidence: disclosure or unauthorized use by employees, licensees, or others who received the secret under a duty of confidentiality.
• Improper means: theft, wiretapping, aerial reconnaissance, industrial espionage.
• What it does NOT protect against: independent invention, accidental disclosure, or reverse engineering (starting with the known product and working backward).

🆚 Trade secrets vs. patents: key differences

Feature	Trade Secret	Patent
Novelty requirement	Minimal novelty (secrecy implies some novelty)	Rigorous: novelty, utility, nonobviousness (35 U.S.C. §§ 101–103)
Duration	Indefinite (as long as secret is maintained)	17 years
Scope of protection	Only against breach of confidence and improper means	"Right of exclusion" against the world, including independent creation
Disclosure	No public disclosure required	Full disclosure required in patent application (35 U.S.C. § 112)
Strength	"Functions relatively as a sieve"—allows independent discovery and reverse engineering	"Acts as a barrier"—forbids any use for 17 years

Don't confuse: A patent protects even against independent creation; a trade secret does not. Trade secret law is much weaker protection.

🎯 Patent law's objectives

🎯 Encouraging invention through exclusivity

• The patent system offers a "right of exclusion" for 17 years as an incentive to inventors to invest time, research, and development costs.
• This fosters productive effort, introduces new products and processes, and increases employment and quality of life.

📖 Disclosure as quid pro quo

• In return for exclusivity, the inventor must fully disclose the invention so that "upon the expiration of the 17-year period the knowledge of the invention enures to the people."
• Patent applications must include a "full and clear description" enabling any skilled person to make and use the invention (35 U.S.C. § 112).
• Policy goal: stimulate ideas and further advances by adding to the general store of knowledge.

🌐 Keeping the public domain free

"Federal law requires that all ideas in general circulation be dedicated to the common good unless they are protected by a valid patent." (Lear, Inc. v. Adkins)

• What is in the public domain cannot be removed by state action.
• Example: If an invention is publicly known or disclosed, no state law may grant exclusive rights to it.

🧩 Three categories of inventions and preemption analysis

The Court distinguishes three types of trade secrets to assess conflict with patent policy:

🧩 Category 1: Clearly unpatentable subject matter

• What it includes: discoveries that do not fall within 35 U.S.C. § 101 (e.g., customer lists, advertising campaigns, business methods not meeting patent standards).
• Why no conflict:
  • No patent is available, so the inventor has no reason to apply for one regardless of trade secret protection.
  • Abolishing trade secret protection would not increase public disclosure—these items wouldn't be patented anyway.
  • Keeping such items secret "encourages businesses to initiate new and individualized plans of operation," fostering constructive competition and variety.
• Example: A company's customer list is not patentable subject matter; protecting it as a trade secret does not conflict with patent law.

🧩 Category 2: Inventions known not to meet patentability standards

• What it includes: subject matter within § 101 scope (processes, machines, etc.) but lacking novelty, utility, or nonobviousness.
• Why no conflict:
  • The inventor knows a patent application would fail, so trade secret protection does not deter patent filing.
  • Filing doomed applications would not benefit the public—failed applications are held in confidence by the Patent Office (35 U.S.C. § 122) and not disclosed.
  • Trade secret protection here "will encourage invention in areas where patent law does not reach" and "prompt the independent innovator to proceed with discovery and exploitation."
• Practical benefit: Without trade secret protection, companies would resort to costly self-help (security, limited knowledge sharing, higher salaries for trusted employees), fragmenting research and harming society.

🧩 Category 3: Inventions of doubtful patentability

• What it includes: inventions where the holder has a "legitimate doubt" whether they meet patent standards.
• Why no conflict:
  • Most inventors "on the line" will still seek patent protection because "the potential rewards of patent protection are so far superior to those accruing to holders of trade secrets."
  • Abolishing trade secret protection might encourage some marginal inventors to file, but this would include both "wheat" (valid inventions) and "chaff" (invalid ones).
  • Risk of invalid patents: Some invalid patents may issue (the Patent Office and courts use different standards), leading to "unjustified royalty payments" and restricting free use of ideas.
  • Better outcome: allow trade secret licensing for doubtful inventions rather than flood the Patent Office with questionable applications.
• Example: An inventor unsure whether a process is nonobvious may license it as a trade secret to willing partners rather than risk an expensive, uncertain patent process.

🧩 Category 4: Clearly patentable inventions

• What it includes: inventions the owner believes meet all patent standards (novel, useful, nonobvious).
• Federal interest at its peak: "These inventions... are 'the things which are worth to the public the embarrassment of an exclusive patent.'"
• Why no conflict:
  • Trade secret protection is far weaker than patent protection: it does not forbid independent creation or reverse engineering, and the secret may be stolen or leaked.
  • "The possibility that an inventor who believes his invention meets the standards of patentability will sit back, rely on trade secret law, and after one year of use forfeit any right to patent protection (35 U.S.C. § 102(b)) is remote indeed."
  • Ripeness-of-time concept: If one inventor keeps a discovery secret, others will likely independently discover it soon, so society faces little risk of lost progress.
• Don't confuse: The Court is not saying clearly patentable inventions should be trade secrets—only that allowing trade secret protection does not create a real risk that inventors will forgo patents.

🤝 Trade secret law's positive contributions

🤝 Encouraging ethical competition

• Trade secret law maintains "standards of commercial ethics" and "the necessity of good faith and honest, fair dealing."
• Protects the value of discovery for those who invest "labor, money, or machines" without allowing competitors to gain knowledge "by unfair means, or as the beneficiary of a broken faith."

🔬 Subsidizing research and development

• Trade secret protection allows large companies to disperse creative responsibilities, increasing economic efficiency.
• Without it, companies would hoard knowledge rather than share it with employees or licensees, fragmenting research.

🤝 Promoting licensing and efficient resource use

• A trade secret holder can license others to exploit the secret under binding legal obligations.
• Without legal protection, "the trade secret holder would not likely share his secret with a manufacturer who cannot be placed under binding legal obligation to pay a license fee or to protect the secret."
• Result: hoarding rather than dissemination of knowledge, or wasteful duplication of manufacturing and marketing infrastructure.

🚫 Deterring industrial espionage

• "Nothing in the patent law requires that States refrain from action to prevent industrial espionage."
• Costs of espionage include not only security expenses but also harm to "the basic decency of society when one firm steals from another."
• "A most fundamental human right, that of privacy, is threatened when industrial espionage is condoned or is made profitable."

⚖️ Why partial preemption is inappropriate

⚖️ The partial preemption proposal

• Some suggested courts should refuse trade secret protection for inventions "which the holder should have patented."
• Rationale: focus protection only on areas where it provides clear benefits (doubtful and unpatentable inventions).

❌ Why the Court rejects it

• No real conflict exists: since clearly patentable inventions face no deterrence from patent filing, partial preemption is unnecessary.
• Imposes impossible burden on state courts: they would have to determine "whether an invention, narrowed by the patent application procedure and fixed in the specifications... is patentable" for discoveries that remain "entirely uncircumscribed by expert analysis in the administrative process."
• Federal courts already struggle with patentability determinations for issued patents; asking state courts to judge unapplied-for inventions is "almost impossible."
• Litigation complexity: every trade secret case would become a battle over patentability, with the secret holder arguing unpatentability and the misappropriator arguing novelty and nonobviousness.

🏁 Conclusion and historical context

🏁 The Court's holding

• Ohio trade secret law is not preempted by federal patent law.
• Trade secret law and patent law serve complementary roles: "Each has its particular role to play, and the operation of one does not take away from the need for the other."
• Trade secret law "encourages the development and exploitation of those items of lesser or different invention than might be accorded protection under the patent laws, but which items still have an important part to play in the technological and scientific advancement of the Nation."

📜 Congressional silence as approval

• Trade secret law and patent law "have co-existed in this country for over one hundred years."
• "Congress, by its silence over these many years, has seen the wisdom of allowing the States to enforce trade secret protection."
• "Until Congress takes affirmative action to the contrary, States should be free to grant protection to trade secrets."

🔄 Practical outcome

• The Court reversed the Sixth Circuit's holding that Ohio trade secret law was preempted.
• The case was remanded with directions to reinstate the District Court's judgment granting injunctive relief and damages for misappropriation of trade secrets by former employees.

🧭 Overview

🧠 One-sentence thesis

The Supreme Court held that Florida's statute prohibiting direct molding of unpatented boat hulls was preempted by federal patent law because it granted patent-like protection to designs that Congress had determined should remain freely available to the public.

📌 Key points (3–5)

• The federal patent bargain: Congress offers limited monopoly rights (17 years) in exchange for disclosure, but only to inventions meeting strict standards (novelty, nonobviousness, utility); everything else must remain free for public use.
• Florida's statute conflict: The state law prohibited copying unpatented boat hulls via direct molding, effectively creating unlimited patent-like protection without requiring any showing of innovation or disclosure.
• The Sears/Compco principle: States cannot offer patent-equivalent protection to designs in the public domain, because doing so undermines the federal balance between encouraging invention and promoting free competition.
• Common confusion—state vs. federal protection: Not all state IP protection is preempted; unfair competition law (preventing consumer confusion about source) and trade secret law (protecting undisclosed information) coexist with patent law because they serve different purposes and don't block public exploitation of disclosed ideas.
• Why it matters: Allowing states to create their own patent-like systems would fragment national uniformity, let states protect ideas Congress deemed unworthy of monopoly, and reduce inventors' incentive to meet rigorous federal patent standards.

⚖️ The federal patent system's core balance

📜 Constitutional foundation and purpose

Patent Clause (Article I, § 8, cl. 8): Congress has power "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

• The Clause itself reflects a balance: encourage innovation while avoiding monopolies that stifle competition without advancing progress.
• Congress may not create unlimited-duration patents or remove existing public knowledge from the public domain.
• From 1790 forward, patent law has balanced the need to promote innovation against the recognition that imitation and refinement through imitation are essential to both invention and competitive economy.

🔑 Requirements for patent protection

An inventor must satisfy three core requirements to obtain a patent:

Requirement	What it means	Why it matters
Novelty (35 U.S.C. §§ 102(a), (b))	Not already known, used, or publicly sold before invention or more than one year before application	Prevents monopolizing existing public knowledge
Nonobviousness (35 U.S.C. § 103)	Not readily deducible by a person of ordinary skill in the field from publicly available material	Ensures only genuine advances get protection, not routine improvements
Utility	Sufficiently useful and important	Screens out trivial developments

• These requirements express a congressional determination that free exploitation of ideas is the rule; patent protection is the exception.
• Example: If a boat hull design has been publicly sold for six years without a patent application, it cannot later be patented—it has entered the public domain.

🤝 The patent bargain

The patent system embodies "a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years."

• What the inventor gets: 17-year exclusive right to make, use, or sell the invention (35 U.S.C. § 154).
• What the public gets: Full disclosure of the invention (including "best mode" of carrying it out, 35 U.S.C. § 112); after 17 years, the invention enters the public domain for unrestricted use.
• The choice: An inventor must either (1) seek patent protection through disclosure, or (2) keep the invention secret and forgo legal monopoly.
• Once an inventor publicly sells an unpatented article, that constitutes abandonment of any right to later patent protection—the design is dedicated to the public.

🌊 Free competition as the baseline

• The attractiveness and effectiveness of the patent bargain depend on a backdrop of free competition in unpatented designs and innovations.
• State law protection for already-disclosed designs may conflict with patent law's purpose by decreasing the range of ideas available as building blocks for further innovation.
• Don't confuse: The patent laws determine not only what is protected, but also what must remain free for all to use—this is an affirmative federal policy, not merely silence.

🚫 What the Florida statute did (and why it conflicted)

🏛️ The Florida direct-molding statute

Florida Statute § 559.94 (1987) made it unlawful to:

• Use the "direct molding process" to duplicate any manufactured vessel hull or component part made by another without written permission.
• Knowingly sell a hull or part duplicated in violation of the statute.
• Remedies included damages, injunctions, and attorney's fees.

Direct molding process: Creating a mold directly from an existing product (rather than from original drawings or models); a technique in use since the 1950s and explicitly disclosed in a 1968 U.S. patent.

⚔️ How Florida's law conflicted with federal patent policy

🎯 Patent-like protection without patent requirements

• The Florida statute granted rights "similar in scope and operation to the rights accorded a federal patentee"—the right to prevent others from making and selling the product.
• But it did so without requiring:
  • Novelty (protection available even for designs freely exposed to public for years)
  • Nonobviousness (even "mundane and obvious changes" triggered protection)
  • Utility standards
  • Disclosure in exchange for monopoly
  • Limited duration (protection was unlimited in time)
• Example: Bonito's hull had been publicly available for over six years—under federal law it was unpatentable (35 U.S.C. § 102(b)), yet Florida gave it indefinite protection.

🔒 Blocking reverse engineering

• The statute prohibited the public from engaging in reverse engineering—starting with a known product and working backward to understand and recreate it.
• Reverse engineering is explicitly allowed under trade secret law and has never been prohibited by unfair competition law.
• Why this matters: Reverse engineering is essential to innovation; variations in size and combination of elements often lead to significant advances, especially in fields like hydrodynamic design.
• The Court noted: "If Florida may prohibit this particular method of study and recomposition of an unpatented article, we fail to see the principle that would prohibit a State from banning the use of chromatography in the reconstitution of unpatented chemical compounds, or the use of robotics in the duplication of machinery in the public domain."

💡 Undermining incentives for rigorous patent standards

• Trade secret law is most effective before public marketing, when patentability is uncertain—it can "dovetail" with patent incentives during development.
• But Florida's statute operates after public disclosure, when the design is already in circulation.
• This means inventors know from the outset they can get state protection "regardless of [their] ability to satisfy the rigorous standards of patentability."
• Result: The Florida scheme becomes "a significant competitor to the federal patent laws, offering investors similar protection without the quid pro quo of substantial creative effort required by the federal statute."

🗺️ Administrative chaos and lack of uniformity

Federal patent system provides:

• Central registry of claims through the application process (35 U.S.C. §§ 111-114)
• Notice requirement: patent holders must mark protected articles (35 U.S.C. § 287)
• Public can rely on lack of notice when exploiting shapes and designs

Florida's scheme:

• Blurs the clear federal line between public and private property
• No notice requirement or central registry
• Creates uncertainty about which designs are protected
• Each of 50 states could create different protections for preferred industries, fragmenting national uniformity

🛡️ What state protection IS allowed (Sears/Compco limits)

✅ Unfair competition law (limited scope)

Unfair competition law has its roots in the common-law tort of deceit: its general concern is with protecting consumers from confusion as to source.

• What it protects: Nonfunctional aspects of products (trade dress) that have acquired "secondary meaning" so they operate as a designation of source.
• What it does NOT protect: The design idea itself; the idea may be freely exploited in all other contexts.
• Key distinction: Focus is on preventing consumer confusion, not rewarding producers or incentivizing innovation.
• Example from Judge Learned Hand: "The plaintiff has the right not to lose his customers through false representations that those are his wares which in fact are not, but he may not monopolize any design or pattern, however trifling. The defendant... may copy plaintiff's goods slavishly down to the minutest detail: but he may not represent himself as the plaintiff in their sale."

🤐 Trade secret law (Kewanee Oil Co. v. Bicron Corp.)

The Court previously held that state trade secret protection does NOT conflict with patent law because:

Factor	Why no conflict
Limited public awareness	Trade secrets are by definition not publicly known, so "matter once in the public domain must remain in the public domain" policy is not violated
Weaker protection	Trade secret law provides "far weaker protection in many respects than patent law"—public remains free to discover through reverse engineering or independent creation
Different purpose	Protects noneconomic interests (e.g., privacy, preventing industrial espionage) outside Congress's concern in patent laws
Timing	Most effective during development stage, before public marketing—can complement rather than compete with patent incentives

🔍 The Sears/Compco principle restated

• Core holding: States may not offer "the equivalent of a patent monopoly" in functional aspects of products placed in public commerce without valid patent protection.
• What Sears said: "An unpatentable article, like an article on which the patent has expired, is in the public domain and may be made and sold by whoever chooses to do so."
• Rationale: The efficient operation of the federal patent system depends on "substantially free trade in publicly known, unpatented design and utilitarian conceptions."
• Don't confuse: The Court took "a decidedly less rigid view" after Sears—not ALL state regulation is preempted, only that which offers patent-like protection to disclosed ideas.

🎭 Congressional awareness matters

The case for preemption is weaker where:

• Congress has shown awareness of state law operating in a field of federal interest
• Congress has nonetheless decided to "stand by both concepts and tolerate whatever tension there is between them"

Examples:

• Lanham Act § 43(a): Creates federal remedy for false designation of origin, showing Congress recognizes unfair competition concerns
• Trade secrets: Congress has repeatedly demonstrated awareness (even giving explicit federal protection to trade secrets provided to federal agencies) without disapproval

Florida's statute is different: It breaks with the "tradition of peaceful coexistence between state market regulation and federal patent policy."

📊 Why the Interpart decision was wrong

❌ The Federal Circuit's reasoning in Interpart Corp. v. Italia

The Federal Circuit upheld a similar California statute, reasoning:

• The statute only prevents one method of copying (direct molding)
• The design remains "in the public domain" and can be copied other ways
• Patent laws "say nothing about the right to copy or the right to use"

🔨 The Supreme Court's rebuttal

🎯 Purpose matters, not just form

• The very purpose of anti-direct-molding statutes is to "reward the inventor" by offering substantial protection against public exploitation of the idea.
• Such statutes would be "an exercise in futility" if they didn't substantially limit public ability to exploit the unprotected idea.
• Eliminating the most efficient method of exploitation is "difficult to conceive of a more effective method of creating substantial property rights in an intellectual creation."

🛠️ Sears/Compco protect practical use, not just contemplation

• These cases "protect more than the right of the public to contemplate the abstract beauty of an otherwise unprotected intellectual creation."
• They "assure its efficient reduction to practice and sale in the marketplace."
• Example: Direct molding has been the standard technique since the 1950s; a 1968 patent explicitly disclosed it as "a method for making large molded boat hull molds at very low cost, once a prototype hull has been provided."

⚖️ "Unscrupulous" is a policy judgment states can't make

• Labeling competitive copying "unscrupulous" merely endorses a policy judgment the patent laws don't leave to states.
• Where an item in general circulation is unprotected by patent, "reproduction of a functional attribute is legitimate competitive activity."
• Federal law creates an affirmative right: For almost 100 years, "in the case of an expired patent, the federal patent laws DO create a federal right to 'copy and to use.'"
• Sears and Compco extended that rule to potentially patentable ideas fully exposed to the public.

🏁 The Court's conclusion and holding

⚖️ The preemption standard applied

"State law protection for techniques and designs whose disclosure has already been induced by market rewards may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation."

The Florida statute:

• Is aimed directly at promoting intellectual creation by substantially restricting public ability to exploit ideas the patent system mandates shall be free for all to use
• Represents a break with peaceful coexistence between state market regulation and federal patent policy
• Substantially restricts public ability to exploit an unpatented design in general circulation
• Raises the specter of state-created monopolies in useful shapes and processes for which patent protection has been denied or is unobtainable
• Enters a field of regulation the patent laws have reserved to Congress

📜 The pervasive federal scheme

The patent statute's "careful balance between public right and private monopoly to promote certain creative activity is a scheme of federal regulation so pervasive as to make reasonable the inference that Congress left no room for the States to supplement it."

• Congress has repeatedly considered extending protection to industrial design (through copyright or relaxed design patent standards) and explicitly refused.
• It is for Congress, not the states, to determine if the present system is ineffectual.
• The Florida statute conflicts with the "strong federal policy favoring free competition in ideas which do not merit patent protection."

✅ Judgment

The Florida Supreme Court's decision striking down the statute was affirmed—the statute is preempted by the Supremacy Clause of the U.S. Constitution.