Patterns of Information Law (Version 1.0)

Authors James Grimmelmann

Plaintext

Patterns of
Information Law
Intellectual Property Done Right

James Grimmelmann
Table of Contents

Introduction 23

1 Undeveloped Ideas 35
Desny v. Wilder . . . . . . . . . . . . . . . . . . . 35
Michael J. Burstein, Exchanging Information
Without Intellectual Property . . . . . . . . . . 37
Apfel v. Prudential-Bache Securities, Inc. . . . . . 38
Bizarro World Problem . . . . . . . . . . . . . . 41
Debt Collection Problem . . . . . . . . . . . . . 41

2 Trade Secret 43
A Subject Ma er . . . . . . . . . . . . . . . . . . . . . . . . 43
Restatement (Third) of Unfair Competition § 39 43
Religious Technology Center v. Netcom On-Line
Communications Services, Inc. . . . . . . . . . 44
B Ownership . . . . . . . . . . . . . . . . . . . . . . . . . . 52
UTSA § 1(4) . . . . . . . . . . . . . . . . . . . . 52
1 Actual Secrecy . . . . . . . . . . . . . . . . . . . . . 52
United States v. Lange . . . . . . . . . . . . . . . 52
Learning Curve Toys, Inc. v. PlayWood Toys, Inc. 55
Exploits Problem . . . . . . . . . . . . . . . . . 66
2 Priority . . . . . . . . . . . . . . . . . . . . . . . . . 67
3 Collaborations . . . . . . . . . . . . . . . . . . . . . 67
Restatement (Third) of Unfair Competition §
42 cmt. e . . . . . . . . . . . . . . . . . . . . 67
C Procedures . . . . . . . . . . . . . . . . . . . . . . . . . . 68
United States v. Lange . . . . . . . . . . . . . . . 69
Rockwell Graphic Systems, Inc. v. DEV Indus-
tries, Inc. . . . . . . . . . . . . . . . . . . . . 69
D Infringement: Similarity . . . . . . . . . . . . . . . . . . 72
Big Vision Private, Ltd. v. E.I. Dupont De
Nemours & Co. . . . . . . . . . . . . . . . . . 72
E Infringement: Prohibited Conduct . . . . . . . . . . . . 72
1 Proving Infringement . . . . . . . . . . . . . . . . . 73
Grynberg v. BP, PLC . . . . . . . . . . . . . . . . 73
2 Direct Infringement . . . . . . . . . . . . . . . . . . 74
Restatement (Third) of Unfair Competitition §
43 . . . . . . . . . . . . . . . . . . . . . . . . 74
UTSA § 1(1) . . . . . . . . . . . . . . . . . . . . 74
E.I. du Pont de Nemours & Co. v. Christopher . . 75
Kamin v. Kuhnau . . . . . . . . . . . . . . . . . . 78
3 Secondary Infringement . . . . . . . . . . . . . . . 81
UTSA § 1(2) . . . . . . . . . . . . . . . . . . . . 82
F Defenses . . . . . . . . . . . . . . . . . . . . . . . . . . . 82
Questions . . . . . . . . . . . . . . . . . . . . . . 83
Flaming Moe’s Problem . . . . . . . . . . . . . 83
Locksmiths Problem . . . . . . . . . . . . . . . 84
G Privacy . . . . . . . . . . . . . . . . . . . . . . . . . . . . 85
Restatement (Second) of Torts § 652B . . . . . . 85
Neil M. Richards & Daniel J. Solove, Privacy’s
Other Path: Recovering the Law of Conﬁden-
tiality . . . . . . . . . . . . . . . . . . . . . . 86
Florida v. Riley . . . . . . . . . . . . . . . . . . . 88
Kyllo v. United States . . . . . . . . . . . . . . . 89
H Government Secrets . . . . . . . . . . . . . . . . . . . . . 91
Freedom of Information Act . . . . . . . . . . . 91
U.S. Dept. of Justice v. Tax Analysts . . . . . . . . 92
Chrysler Corp. v. Brown . . . . . . . . . . . . . . 93
Coastal States Gas Corp. v. Department of Energy 95
Congressional Research Service, The Protec-
tion of Classiﬁed Information: The Legal
Framework . . . . . . . . . . . . . . . . . . . 100
Phillippi v. Central Intelligence Agency . . . . . . 103

3 Patent 107
United States Constitution, art. I, § 8, cl. 8 . . . 107
A Subject Ma er . . . . . . . . . . . . . . . . . . . . . . . . 108
Patent Act § 101 . . . . . . . . . . . . . . . . . . 108
1 Utility . . . . . . . . . . . . . . . . . . . . . . . . . . 108
Juicy Whip, Inc. v. Orange Bang, Inc. . . . . . . . 108
MPEP §§ 2701, 2701.01 . . . . . . . . . . . . . . 112
2 Statutory Subject Ma er . . . . . . . . . . . . . . . 116
Tun-Jen Chiang, The Rules and Standards of
Patentable Subject Ma er . . . . . . . . . . . . 116
Mayo Collaborative v. Prometheus Labs . . . . . . 117
Tax Planning Patent Problem . . . . . . . . . . 120
B Procedures . . . . . . . . . . . . . . . . . . . . . . . . . . 121
1 Claims . . . . . . . . . . . . . . . . . . . . . . . . . . 125
Patent Act § 112(b)-(d) . . . . . . . . . . . . . . 125
a Indeﬁniteness . . . . . . . . . . . . . . . . . . . 125
Nautlius, Inc. v. Biosig Instruments Inc. . . . . . 125
Freeny v. Apple Inc. . . . . . . . . . . . . . . . . 125
Datamize, LLC v. Plumtree Software, Inc. . . . . . 128
b Claim Drafting . . . . . . . . . . . . . . . . . . 130
Catalina Marketing Intern. v. Coolsavings.com . . 130
MPEP §§ 2111, 2173 . . . . . . . . . . . . . . . . 130
2 Disclosure . . . . . . . . . . . . . . . . . . . . . . . . 131
Patent Act § 112(a) . . . . . . . . . . . . . . . . . 131
a Enablement . . . . . . . . . . . . . . . . . . . . 131
O’Reilly v. Morse . . . . . . . . . . . . . . . . . . 131
Wyeth & Cordis Corp. v. Abbo Labs. . . . . . . . 132
Plastic Dye Problem . . . . . . . . . . . . . . . . 136
b Wri en Description . . . . . . . . . . . . . . . 136
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co . . 136
c Best Mode . . . . . . . . . . . . . . . . . . . . . 137
MPEP § 2165 . . . . . . . . . . . . . . . . . . . . 137
Salt Shaker Problem . . . . . . . . . . . . . . . . 138
3 Patent Prosecution . . . . . . . . . . . . . . . . . . . 139
Cuozzo Speed Technologies, LLC v. Lee . . . . . . 139
Patent Act § 122 . . . . . . . . . . . . . . . . . . 139
37 C.F.R. pt 1 . . . . . . . . . . . . . . . . . . . . 140
Therasense, Inc. v. Becton, Dickinson and Co. . . . 140
a Priority Dates . . . . . . . . . . . . . . . . . . . 141
USPTO, General Information Concerning
Patents . . . . . . . . . . . . . . . . . . . . . 141
b Multiple Applications . . . . . . . . . . . . . . 141
Patent Act § 121 . . . . . . . . . . . . . . . . . . 141
MPEP §§ 201.07 . . . . . . . . . . . . . . . . . . 142
c Judicial Review . . . . . . . . . . . . . . . . . . 142
d Post-Grant Proceedings . . . . . . . . . . . . . 143
Patent Act § 121 . . . . . . . . . . . . . . . . . . 143
Cuozzo Speed Technologies, LLC v. Lee . . . . . . 143
4 Term . . . . . . . . . . . . . . . . . . . . . . . . . . . 145
Patent Act § 135(a)(2) . . . . . . . . . . . . . . . 145
C Ownership . . . . . . . . . . . . . . . . . . . . . . . . . . 145
1 Collaborations . . . . . . . . . . . . . . . . . . . . . 145
MPEP § 2137.01 . . . . . . . . . . . . . . . . . . 145
Patent Act § 135 . . . . . . . . . . . . . . . . . . 147
2 Priority: Novelty and Statutory Bars . . . . . . . . 147
a Categories of Prior Art . . . . . . . . . . . . . . 148
1 ”patented” . . . . . . . . . . . . . . . . . . . . . 149
2 ”described in a printed publication” . . . . . . 149
In re Klopfenstein . . . . . . . . . . . . . . . . . . 149
3 ”in public use” . . . . . . . . . . . . . . . . . . . 154
Mark A. Lemley, Does “Public Use” Mean the
Same Thing It Did Last Year? . . . . . . . . . 154
Egbert v. Lippmann . . . . . . . . . . . . . . . . . 156
Lough v. Brunswick Corp . . . . . . . . . . . . . . 159
4 ”on sale” . . . . . . . . . . . . . . . . . . . . . . 161
MPEP §§ 2152.02(d), 2133.03(b) & (c) . . . . . . 161
5 ”otherwise available to the public” . . . . . . . 162
b Anticipation . . . . . . . . . . . . . . . . . . . . 163
MPEP § 2131 . . . . . . . . . . . . . . . . . . . . 163
Titanium Metals Corp. of America v. Banner . . . 164
c Priority . . . . . . . . . . . . . . . . . . . . . . . 169
1 Old § 102 . . . . . . . . . . . . . . . . . . . . . . 169
MPEP § 2138 . . . . . . . . . . . . . . . . . . . . 169
Morway v. Bondi . . . . . . . . . . . . . . . . . . 171
2 New § 102 . . . . . . . . . . . . . . . . . . . . . 172
Patent Act § 102 . . . . . . . . . . . . . . . . . . 172
Questions . . . . . . . . . . . . . . . . . . . . . . 173
Pleistocene Park Problem . . . . . . . . . . . . . 173
3 Nonobviousness . . . . . . . . . . . . . . . . . . . . 174
Patent Act § 103 . . . . . . . . . . . . . . . . . . 174
KSR Intern. Co. v. Teleﬂex Inc. . . . . . . . . . . 175
In re Clay . . . . . . . . . . . . . . . . . . . . . . 185
KSR Problem . . . . . . . . . . . . . . . . . . . . 187
D Infringement: Similarity . . . . . . . . . . . . . . . . . . 188
Jeanne C. Fromer, Claiming Intellectual Property 188
N.D. Cal. Model Patent Jury Instructions . . . 189
1 Claim Construction . . . . . . . . . . . . . . . . . . 190
Phillips v. AWH Corp. . . . . . . . . . . . . . . . 190
Thorner v. Sony Computer Entertainment Amer-
ica LLC . . . . . . . . . . . . . . . . . . . . . 195
2 Literal Infringement . . . . . . . . . . . . . . . . . . 201
Angelo Mongiello’s Children, LLC v. Pizza Hut,
Inc. . . . . . . . . . . . . . . . . . . . . . . . 201
3 Doctrine of Equivalents . . . . . . . . . . . . . . . . 203
Freedman Seating Co. v. American Seating Co. . . 203
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co. . . . . . . . . . . . . . . . . . . . . . . . . 211
Johnson & Johnston Associates v. R.E. Service Co. 212
4 A Hybrid: Means-Plus-Function Claims . . . . . . 213
Kemco Sales, Inc. v. Control Papers Co., Inc. . . . 213
Super Soaker Problem . . . . . . . . . . . . . . 215
E Infringement: Prohibited Conduct . . . . . . . . . . . . 216
Herman v. Youngstown Car Mfg. Co. . . . . . . . 216
1 Direct Infringement . . . . . . . . . . . . . . . . . . 216
Patent Act § 271(a) . . . . . . . . . . . . . . . . . 216
Akamai Technologies, Inc. v. Limelight Networks,
Inc. . . . . . . . . . . . . . . . . . . . . . . . 216
2 Indirect Infringement . . . . . . . . . . . . . . . . . 217
Patent Act § 271(b)-(c) . . . . . . . . . . . . . . . 217
Limelight Networks, Inc. v. Akamai Technologies,
Inc. . . . . . . . . . . . . . . . . . . . . . . . 217
Global-Tech Appliances, Inc. v. SEB S.A. . . . . . 218
Commil USA, LLC v. Cisco Systems Inc. . . . . . 219
Lucent Technologies, Inc. v. Gateway, Inc. . . . . . 219
Questions . . . . . . . . . . . . . . . . . . . . . . 221
F Defenses . . . . . . . . . . . . . . . . . . . . . . . . . . . 221
1 Invalidity . . . . . . . . . . . . . . . . . . . . . . . . 221
Microsoft Corp. v. i4i Ltd. Partnership . . . . . . 221
2 Exhaustion . . . . . . . . . . . . . . . . . . . . . . . 221
Aktiebolag v. E.J. Co. . . . . . . . . . . . . . . . . 221
Quanta Computer, Inc. v. LG Electronics, Inc. . . 226
Lexmark Intern., Inc. v. Impression Products, Inc. 232
3 Miscellaneous . . . . . . . . . . . . . . . . . . . . . 234
Patent Act §§ 273, 287 . . . . . . . . . . . . . . . 234
Madey v. Duke University . . . . . . . . . . . . . 234

4 Copyright 237
A Subject Ma er . . . . . . . . . . . . . . . . . . . . . . . . 237
Copyright Act § 102(a) . . . . . . . . . . . . . . 237
Feist Publications, Inc. v. Rural Telephone Service
Co. . . . . . . . . . . . . . . . . . . . . . . . . 238
1 Creativity: How Much Is a Modicum? . . . . . . . 238
37 C.F.R. § 202.1(a) . . . . . . . . . . . . . . . . 238
Feist Publications, Inc. v. Rural Telephone Service
Co. . . . . . . . . . . . . . . . . . . . . . . . . 239
Arrows Problem . . . . . . . . . . . . . . . . . . 242
Baseball Card Price Report Problem . . . . . . 243
2 Aesthetic Nondiscrimination . . . . . . . . . . . . . 243
Bleistein v. Donaldson Lithographing Co. . . . . . 243
Copyright Compendium § 310 . . . . . . . . . 245
Mitchell Bros. Film Group v. Cinema Adult Theater246
Belcher v. Tarbox . . . . . . . . . . . . . . . . . . 246
3 Idea and Expression . . . . . . . . . . . . . . . . . . 247
Copyright Act § 102(b) . . . . . . . . . . . . . . 247
Blehm v. Jacobs . . . . . . . . . . . . . . . . . . . 247
Walker v. Time Life Films, Inc. . . . . . . . . . . . 254
Hula Problem . . . . . . . . . . . . . . . . . . . 254
Baker v. Selden . . . . . . . . . . . . . . . . . . . 254
Bikram’s Yoga College of India v. Evolation Yoga . 257
Concrete Machinery Co. v. Classic Lawn Orna-
ments . . . . . . . . . . . . . . . . . . . . . . 261
Cooking for Kids Problem . . . . . . . . . . . . 261
B Ownership . . . . . . . . . . . . . . . . . . . . . . . . . . 261
Sheldon v. Metro-Goldwyn Pictures Corp. . . . . . 261
1 Authorship . . . . . . . . . . . . . . . . . . . . . . . 262
Burrow-Giles Lithographic Co. v. Sarony . . . . . 262
Monkey Selﬁe Problem . . . . . . . . . . . . . . 263
Copyright Act § 105 . . . . . . . . . . . . . . . . 264
2 Collaborations . . . . . . . . . . . . . . . . . . . . . 264
Copyright Act §§ 201, 202 . . . . . . . . . . . . 264
Thomson v. Larson . . . . . . . . . . . . . . . . . 265
Greene v. Ablon . . . . . . . . . . . . . . . . . . . 270
Community for Creative Non-Violence v. Reid . . 271
Garcia v. Google, Inc. . . . . . . . . . . . . . . . . 275
3 Derivative Works . . . . . . . . . . . . . . . . . . . 277
Copyright Act § 103 . . . . . . . . . . . . . . . . 277
DC Comics v. Towle . . . . . . . . . . . . . . . . 277
Picke v. Prince . . . . . . . . . . . . . . . . . . . 278
Keeling v. Hars . . . . . . . . . . . . . . . . . . . 280
C Procedures . . . . . . . . . . . . . . . . . . . . . . . . . . 281
1 Formalities Then . . . . . . . . . . . . . . . . . . . . 281
Christopher Sprigman, Reform(aliz)ing Copyright281
Estate of Martin Luther King v. CBS, Inc. . . . . . 282
Estate of Martin Luther King v. CBS, Inc. . . . . . 284
Wildman v. New York Times Co. . . . . . . . . . . 284
2 Formalities Now . . . . . . . . . . . . . . . . . . . . 285
a Fixation . . . . . . . . . . . . . . . . . . . . . . . 285
Copyright Compendium § 305 . . . . . . . . . 285
Stern Electronics, Inc. v. Kaufman . . . . . . . . . 287
Questions . . . . . . . . . . . . . . . . . . . . . . 288
Photoshoot Problem . . . . . . . . . . . . . . . 289
b Registration . . . . . . . . . . . . . . . . . . . . 290
Copyright Compendium § 202 . . . . . . . . . 290
c Deposit . . . . . . . . . . . . . . . . . . . . . . . 291
Copyright Compendium §§ 1502, 1511 . . . . . 291
d Notice . . . . . . . . . . . . . . . . . . . . . . . . 292
Copyright Compendium §§ 2202, 2204 . . . . . 292
3 Term . . . . . . . . . . . . . . . . . . . . . . . . . . . 293
Copyright Act §§ 302, 305 . . . . . . . . . . . . 293
Eldred v. Ashcroft . . . . . . . . . . . . . . . . . . 294
Klinger v. Conan Doyle Estate . . . . . . . . . . . 296
D Infringement: Similarity . . . . . . . . . . . . . . . . . . 298
Sheldon v. Metro-Goldwyn Pictures Corp. . . . . . 298
Nichols v. Universal Pictures Corporation . . . . . 298
Arnstein v. Porter . . . . . . . . . . . . . . . . . 301
Children’s Book Problem . . . . . . . . . . . . . 302
Go lieb Development LLC v. Paramount Pictures . 302
Boisson v. Banian, Ltd. . . . . . . . . . . . . . . . 304
New Yorker Problem . . . . . . . . . . . . . . . 308
E Infringement: Prohibited Conduct . . . . . . . . . . . . 309
1 Proof of Copying . . . . . . . . . . . . . . . . . . . . 309
Three Boys Music Corp. v. Bolton . . . . . . . . . 309
Bee Gees Problem . . . . . . . . . . . . . . . . . 315
2 Direct Infringement . . . . . . . . . . . . . . . . . . 316
Copyright Act § 106 . . . . . . . . . . . . . . . . 316
Capitol Records, LLC v. ReDigi Inc. . . . . . . . . 317
CoStar Group, Inc. v. LoopNet, Inc. . . . . . . . . 319
American Broadcasting v. Aereo, Inc. . . . . . . . 320
Copyright Act § 110 . . . . . . . . . . . . . . . . 324
3 Secondary Liability . . . . . . . . . . . . . . . . . . 325
Fonovisa, Inc. v. Cherry Auction, Inc. . . . . . . . 325
Sony Corp. of America v. Universal City Studios,
Inc. . . . . . . . . . . . . . . . . . . . . . . . 329
Metro-Goldwyn-Mayer Studios Inc. v. Grokster,
Ltd. . . . . . . . . . . . . . . . . . . . . . . . 330
Exclusive Rights Problem . . . . . . . . . . . . 330
4 Paracopyright . . . . . . . . . . . . . . . . . . . . . . 331
Copyright Act § 1201 . . . . . . . . . . . . . . . 331
MDY Industries, LLC. v. Blizzard Entertainment,
Inc. . . . . . . . . . . . . . . . . . . . . . . . 331
Copyright Act § 1202 . . . . . . . . . . . . . . . 336
Murphy v. Millennium Radio Group LLC . . . . . 337
F Defenses . . . . . . . . . . . . . . . . . . . . . . . . . . . 338
1 First Sale . . . . . . . . . . . . . . . . . . . . . . . . 338
Copyright Act § 109 . . . . . . . . . . . . . . . . 338
UMG Recordings, Inc. v. Augusto . . . . . . . . . 339
Capitol Records, LLC v. ReDigi Inc. . . . . . . . . 342
2 Fair Use . . . . . . . . . . . . . . . . . . . . . . . . . 343
Copyright Act § 107 . . . . . . . . . . . . . . . . 343
Fair Use Checklist . . . . . . . . . . . . . . . . . 343
Harper & Row, Publishers, Inc. v. Nation Enter-
prises . . . . . . . . . . . . . . . . . . . . . . 344
Campbell v. Acuﬀ-Rose Music, Inc. . . . . . . . . 351
City of Inglewood v. Teixeira . . . . . . . . . . . . 353
Fox Broadcasting Co., Inc. v. Dish Network LLC . 359
Capitol Records, LLC v. ReDigi Inc. . . . . . . . . 362
Chicago HOPE Problem . . . . . . . . . . . . . 363
3 Section 512 . . . . . . . . . . . . . . . . . . . . . . . 363
Copyright Act § 512 . . . . . . . . . . . . . . . . 363
UMG Recordings, Inc. v. Shelter Capital Partners 365
4 Statutory Licenses . . . . . . . . . . . . . . . . . . . 370
WPIX, Inc. v. ivi, Inc. . . . . . . . . . . . . . . . 370
Fox Television Stations, Inc. v. AereoKiller . . . . 372
5 Miscellaneous . . . . . . . . . . . . . . . . . . . . . 374
Copyright Act §§ 108, 121 . . . . . . . . . . . . 374

5 Music 375
Steve Albini, The Problem with Music . . . . . . 375
A Musical Works and Sound Recordings . . . . . . . . . 376
Robert Brauneis, Musical Work Copyright for
the Era of Digital Sound Technology . . . . . . 376
White-Smith Music Publishing Co. v. Apollo Co. . 377
Copyright Oﬃce, F C P -
P - ₁₉₇₂ S R . . . . 378
Copyright Act §§ 101, 102 . . . . . . . . . . . . 379
Lydia Pallas Loren, Untangling the Web of Mu-
sic Copyrights . . . . . . . . . . . . . . . . . . 379
Newton v. Diamond . . . . . . . . . . . . . . . . 380
B Reproductions . . . . . . . . . . . . . . . . . . . . . . . . 382
1 Musical Works . . . . . . . . . . . . . . . . . . . . . 382
Copyright Act § 115(a) . . . . . . . . . . . . . . 382
37 C.F.R. pt. 385 . . . . . . . . . . . . . . . . . . 383
Lydia Pallas Loren, Untangling the Web of Mu-
sic Copyrights . . . . . . . . . . . . . . . . . . 383
Leadsinger, Inc. v. BMG Music Pub. . . . . . . . 384
2 Sound Recordings . . . . . . . . . . . . . . . . . . . 385
Copyright Act § 114(b) . . . . . . . . . . . . . . 385
Bridgeport Music, Inc. v. Dimension Films . . . . 385
VMG Salsoul, LLC v. Ciccone . . . . . . . . . . . 387
C Performances . . . . . . . . . . . . . . . . . . . . . . . . . 389
United States v. American Society of Composers,
Authors, and Publishers . . . . . . . . . . . . . 389
1 Musical Works . . . . . . . . . . . . . . . . . . . . . 390
a Broadcasting and Receiving . . . . . . . . . . . 390
Buck v. Jewell-LaSalle Realty Co. . . . . . . . . . . 390
Copyright Act § 110(5) . . . . . . . . . . . . . . 391
b The Performing Rights Organizations . . . . . 392
Broadcast Music, Inc. v. Columbia Broadcasting
System, Inc. . . . . . . . . . . . . . . . . . . . 392
ASCAP 2010 Radio Station License Agreement . . 394
Range Road Music, Inc. v. East Coast Foods, Inc. . 395
Robert Stigwood Grp., Ltd. v. Sperber . . . . . . . 396
c Miscellaneous . . . . . . . . . . . . . . . . . . . 398
Copyright Act § 116 . . . . . . . . . . . . . . . . 398
History of the Jukebox License Oﬃce . . . . . . . . 398
Copyright Act § 110 . . . . . . . . . . . . . . . . 398
2 Sound Recordings . . . . . . . . . . . . . . . . . . . 399
Copyright Act § 114 . . . . . . . . . . . . . . . . 399
Copyright Oﬃce, C M
M . . . . . . . . . . . . . . . . . 399
D State-Law Protection for Pre-1972 Sound Recordings . 402
Copyright Act §§ 301(c) . . . . . . . . . . . . . . 402
RCA Mfg. Co. v. Whiteman . . . . . . . . . . . . 403
Copyright Oﬃce, F C P -
P - ₁₉₇₂ S R . . . . 404
Flo & Eddie, Inc. v. Sirius XM Radio, Inc. . . . . 406
Flo & Eddie, Inc. v. Sirius XM Radio, Inc. . . . . 408
UMG Recordings, Inc. v. Escape Media Group, Inc.409
Capitol Records, LLC v. Vimeo, LLC . . . . . . . . 410
E Bootlegging . . . . . . . . . . . . . . . . . . . . . . . . . 411
Metropolitan Opera Assoc. v. Wagner-Nichols
Recorder Corp. . . . . . . . . . . . . . . . . . 412
Copyright Act § 1101(a) . . . . . . . . . . . . . 413
United States v. Martignon . . . . . . . . . . . . 413
Questions . . . . . . . . . . . . . . . . . . . . . . 415

6 Trademark 417
The Trade-Mark Cases . . . . . . . . . . . . . . . 417
A Subject Ma er . . . . . . . . . . . . . . . . . . . . . . . . 418
Lanham Act § 45 (“trademark”) . . . . . . . . . 418
Drug Stamps Problem . . . . . . . . . . . . . . 418
1 Word Marks . . . . . . . . . . . . . . . . . . . . . . 419
Zatarains, Inc. v. Oak Grove Smokehouse, Inc. . . 419
Innovation Ventures, LLC v. N.V.E., Inc. . . . . . 425
TMEP § 1202 . . . . . . . . . . . . . . . . . . . . 426
Elliot v. Google Inc. . . . . . . . . . . . . . . . . . 426
TMEP § 1209.03 . . . . . . . . . . . . . . . . . . 432
2 Designs . . . . . . . . . . . . . . . . . . . . . . . . . 434
Star Industries, Inc. v. Bacardi & Co. Ltd. . . . . . 434
Melting Bad Problem . . . . . . . . . . . . . . . 435
B Ownership . . . . . . . . . . . . . . . . . . . . . . . . . . 436
1 Priority at Common Law . . . . . . . . . . . . . . . 436
Galt House Inc. v. Home Supply Company . . . . 436
United Drug Co. v. Theodore Rectanus Co. . . . . 438
Planetary Motion, Inc. v. Techsplosion, Inc. . . . . 441
Dudley v. HealthSource Chiropractic, Inc. . . . . . 444
CreAgri, Inc. v. USANA Health Sciences, Inc. . . 445
Bilgewater Bill’s Problem . . . . . . . . . . . . . 448
2 Federal Registration . . . . . . . . . . . . . . . . . . 448
a Registration . . . . . . . . . . . . . . . . . . . . 448
Lanham Act §§ 1(a), 7 . . . . . . . . . . . . . . . 448
Burger King of Florida, Inc. v. Hoots . . . . . . . 449
Bilgewater Bill’s Problem, Redux . . . . . . . . 450
b Intent-to-Use Applications . . . . . . . . . . . 451
Lanham Act § 1(b) . . . . . . . . . . . . . . . . . 451
Kelly Services, Inc. v. Creative Harbor, LLC [I] . . 451
Kelly Services, Inc. v. Creative Harbor, LLC [II] . 455
Bilgewater Bill’s Problem, Re-Redux . . . . . . 456
3 Collaborations . . . . . . . . . . . . . . . . . . . . . 456
Boogie Kings v. Guillory . . . . . . . . . . . . . . 456
TMEP § 1201.03 . . . . . . . . . . . . . . . . . . 458
Duﬀ Problem . . . . . . . . . . . . . . . . . . . 459
C Procedures . . . . . . . . . . . . . . . . . . . . . . . . . . 459
1 Registration . . . . . . . . . . . . . . . . . . . . . . . 459
Lanham Act § 2(a) . . . . . . . . . . . . . . . . . 459
Lanham Act § 2 . . . . . . . . . . . . . . . . . . 460
In re Tam . . . . . . . . . . . . . . . . . . . . . . 460
In re Boulevard Entertainment, Inc. . . . . . . . . 461
TMEP §§ 1302–1304 . . . . . . . . . . . . . . . . 461
TMEP §§ 904, 1401, 1402 . . . . . . . . . . . . . 462
TMEP § 906 . . . . . . . . . . . . . . . . . . . . 463
2 Opposition . . . . . . . . . . . . . . . . . . . . . . . 463
Lanham Act §§ 2(d), 12, 13 . . . . . . . . . . . . 463
B&B Hardware, Inc. v. Hargis Industries, Inc. . . 464
B&B Hardware, Inc. v. Hargis Industries, Inc. . . 466
3 Maintenance . . . . . . . . . . . . . . . . . . . . . . 466
Lanham Act §§ 8,9 . . . . . . . . . . . . . . . . . 466
4 Cancellation and Incontestability . . . . . . . . . . 467
Lanham Act §§ 14, 15 . . . . . . . . . . . . . . . 467
Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc. . . . . 468
5 Abandonment . . . . . . . . . . . . . . . . . . . . . 469
Lanham Act § 45 (“abandoned”) . . . . . . . . 469
Procter & Gamble Co. v. Johnson & Johnson Inc. . 469
Trademark Throwback Problem . . . . . . . . . 473
D Infringement: Confusion . . . . . . . . . . . . . . . . . 473
Lanham Act § 32 . . . . . . . . . . . . . . . . . . 474
Virgin Enterprises Ltd. v. Nawab . . . . . . . . . 474
Sally Beauty Co., Inc. v. Beautyco, Inc. . . . . . . 484
Cheat Sheet Problem . . . . . . . . . . . . . . . 485
Boats Problem . . . . . . . . . . . . . . . . . . . 485
E Infringement: Prohibited Conduct . . . . . . . . . . . . 486
1 Threshold Conditions . . . . . . . . . . . . . . . . . 486
Rescuecom Corp. v. Google Inc. . . . . . . . . . . 486
Radiance Foundation, Inc. v. NAACP . . . . . . . 492
2 Theories of Confusion . . . . . . . . . . . . . . . . 496
a Reverse Confusion . . . . . . . . . . . . . . . . 496
Restatement (Third) of Unfair Competition §
20 cmt. f . . . . . . . . . . . . . . . . . . . . 496
b Initial Interest Confusion . . . . . . . . . . . . 497
Grotrian, Helﬀerich, Schul , Th. Steinweg Nachf
v. Steinway & Sons . . . . . . . . . . . . . . . 497
Brookﬁeld Communications v. West Coast Enter-
tainment . . . . . . . . . . . . . . . . . . . . . 497
Hearts on Fire Company, LLC v. Blue Nile, Inc. . . 498
c Post-Sale Confusion . . . . . . . . . . . . . . . 500
General Motors Corp. v. Keystone Automotive In-
dustries, Inc. . . . . . . . . . . . . . . . . . . 500
3 Section 43(a) . . . . . . . . . . . . . . . . . . . . . . 503
Lanham Act § 43(a)(1)(A) . . . . . . . . . . . . . 503
a Unfair Competition . . . . . . . . . . . . . . . 504
Margreth Barre , Finding Trademark Use . . . . 504
William R. Warner & Co. v. Eli Lilly & Co. . . . . 505
Blinded Veterans Association v. Blinded American
Veterans Foundation . . . . . . . . . . . . . . 506
b False Endorsement . . . . . . . . . . . . . . . . 509
Yale Electric Corp. v. Robertson . . . . . . . . . . 509
Conan Properties, Inc. v. Conans Pizza, Inc. . . . 510
International Order of Job’s Daughters v. Linde-
burg & Co. . . . . . . . . . . . . . . . . . . . 512
c Failure to A ribute . . . . . . . . . . . . . . . . 514
Dastar Corp. v. Twentieth Century Fox Film Corp 514
4 Dilution . . . . . . . . . . . . . . . . . . . . . . . . . 519
Frank I. Schechter, The Rational Basis of Trade-
mark Protection . . . . . . . . . . . . . . . . . 519
Jeremy N. Sheﬀ, The (Boundedly) Rational Basis
of Trademark Liability . . . . . . . . . . . . . 520
Ty Inc. v. Perryman . . . . . . . . . . . . . . . . 521
Lanham Act § 43(c) . . . . . . . . . . . . . . . . 521
Nike, Inc. v. Nikepal Intern., Inc. . . . . . . . . . 523
Dilution Lightning Round . . . . . . . . . . . . 530
5 Problems . . . . . . . . . . . . . . . . . . . . . . . . 532
Ambush Marketing Problem . . . . . . . . . . . 532
Jack Daniel’s Problem . . . . . . . . . . . . . . . 533
Paper Handbag Problem . . . . . . . . . . . . . 533
6 Secondary Liability . . . . . . . . . . . . . . . . . . 533
Inwood Laboratories, Inc. v. Ives Laboratories, Inc. 533
Philip Morris USA Inc. v. Lee . . . . . . . . . . . 534
F Defenses . . . . . . . . . . . . . . . . . . . . . . . . . . . 537
Lanham Act § 43(c)(3) . . . . . . . . . . . . . . . 537
1 Descriptive Fair Use . . . . . . . . . . . . . . . . . . 537
Zatarains, Inc. v. Oak Grove Smokehouse, Inc. . . 537
2 Nominative Fair Use . . . . . . . . . . . . . . . . . . 539
New Kids on the Block v. New America Pub., Inc. . 539
Smith v. Chanel, Inc. . . . . . . . . . . . . . . . . 544
3 Exhaustion . . . . . . . . . . . . . . . . . . . . . . . 548
Champion Spark Plug Co. v. Sanders . . . . . . . 548
Hart v. Amazon.com, Inc. . . . . . . . . . . . . . 550
4 Expressive Use . . . . . . . . . . . . . . . . . . . . . 550
Louis Vui on Malletier v. Haute Diggity Dog . . 550
Louis Vui on Mallatier v. Warner Bros. . . . . . . 560
5 Miscellaneous . . . . . . . . . . . . . . . . . . . . . 566
Lanham Act § 32(2) . . . . . . . . . . . . . . . . 566
Trademark Defenses Lightning Round . . . . . 567
G Other Identiﬁer Registries . . . . . . . . . . . . . . . . . 573
1 Phone Numbers . . . . . . . . . . . . . . . . . . . . 573
Holiday Inns, Inc. v. 800 Reservation, Inc. . . . . 573
2 Radio Callsigns . . . . . . . . . . . . . . . . . . . . . 575
In re WSM, Inc. . . . . . . . . . . . . . . . . . . . 575
3 Business Names . . . . . . . . . . . . . . . . . . . . 577
Model Business Corporation Act . . . . . . . . 577
Harvard Business Services v. Coyle . . . . . . . . 579
Cooper v. Goodman . . . . . . . . . . . . . . . . . 580
Friedman v. Rogers . . . . . . . . . . . . . . . . . 580
4 Ticker Symbols . . . . . . . . . . . . . . . . . . . . . 582
Eric Levenson, Investors Buy Up Worthless
Stock After Confusing It for an Actual Success-
ful Company . . . . . . . . . . . . . . . . . . 582
FINRA Uniform Practice Advisory # 39 -13 . . . . 583
Central Parking Corp. v. Park One Inc. . . . . . . 583
Exxon Corp. v. Xoil Energy Resources, Inc. . . . . 584
MDT Corp. v. New York Stock Exchange, Inc. . . 586
Comments of James Angel on General Portability
Filing . . . . . . . . . . . . . . . . . . . . . . 588
5 ISBNs . . . . . . . . . . . . . . . . . . . . . . . . . . 594
ISBN.org, FAQs: General Questions . . . . . . . 594
6 License Plates . . . . . . . . . . . . . . . . . . . . . . 596
Wooley v. Maynard . . . . . . . . . . . . . . . . . 596
Mitchell v. Maryland Motor Vehicle Administration597
Nevada Administrative Code § 482.320 . . . . 602
7 Domain Names . . . . . . . . . . . . . . . . . . . . . 603
Anticybersqua ing Consumer Protection Act . 603
Uniform Domain-Name Dispute Resolution
Policy . . . . . . . . . . . . . . . . . . . . . . 605
8 Online Accounts . . . . . . . . . . . . . . . . . . . . 608
Twi er Rules . . . . . . . . . . . . . . . . . . . . 608
9 Stage Names . . . . . . . . . . . . . . . . . . . . . . 610
Professional Name Policy . . . . . . . . . . . . . . 610
David Fagundes, Talk Derby to Me: Intellec-
tual Property Norms Governing Roller Derby
Pseudonyms . . . . . . . . . . . . . . . . . . . 610

7 Advertising 619
A False Advertising . . . . . . . . . . . . . . . . . . . . . . 620
Lanham Act § 43(a)(1)(B) . . . . . . . . . . . . . 620
1 ”Ownership”: Competitor Standing . . . . . . . . 620
American Washboard Co. v. Saginaw Mfg. Co. . . 621
Ely-Norris Safe Co. v. Mosler Safe Co. . . . . . . . 621
Mosler Safe Co. v. Ely-Norris Safe Co. . . . . . . . 622
Lexmark International, Inc. v. Static Control
Components, Inc. . . . . . . . . . . . . . . . . 622
2 ”Infringement”: Prohibited Conduct . . . . . . . . 626
Greater Houston Transportation Company v.
Uber Technologies, Inc. . . . . . . . . . . . . . 626
Procter & Gamble Co. v. Haugen . . . . . . . . . 628
3 ”Infringement”: Falsity and Materiality . . . . . . 629
Pizza Hut, Inc. v. Papa John’s Intern., Inc. . . . . 629
McNeil-PPC, Inc. v. Pﬁzer Inc. . . . . . . . . . . 642
Satellite TV Problem . . . . . . . . . . . . . . . 645
4 Secondary Liability . . . . . . . . . . . . . . . . . . 646
Duty Free Americas, Inc. v. Estee Lauder Compa-
nies, Inc. . . . . . . . . . . . . . . . . . . . . . 646
B Alternatives to Competitor Suits . . . . . . . . . . . . . 649
1 Commercial Disparagement and Related Torts . . 649
HipSaver, Inc. v. Kiel . . . . . . . . . . . . . . . . 649
Aviation Charter, Inc. v. Aviation Research . . . . 650
2 Consumer Suits . . . . . . . . . . . . . . . . . . . . 653
Perrine v. Sega of America, Inc. . . . . . . . . . . 653
3 FTC Enforcement . . . . . . . . . . . . . . . . . . . 656
Federal Trade Commission v. Winsted Hosiery
Company . . . . . . . . . . . . . . . . . . . . 656
Kraft, Inc. v. FTC . . . . . . . . . . . . . . . . . . 658
Le er from Federal Trade Commission to Mi-
crosoft Corp. and Starcom MediaVest Group . . 659
C Other Sources of Advertising Law . . . . . . . . . . . . 662
1 Trademark . . . . . . . . . . . . . . . . . . . . . . . 662
Lanham Act §§ 2(e)(1), (f) . . . . . . . . . . . . 662
In re Budge Mfg. Co. . . . . . . . . . . . . . . . . 662
2 Certiﬁcations . . . . . . . . . . . . . . . . . . . . . . 664
Lanham Act § 45 (“certiﬁcation mark”) . . . . . 664
TMEP § 1306 . . . . . . . . . . . . . . . . . . . . 665
Fair Trade USA Farm Workers Standard . . . . . 666
Understanding the FCC Regulations for Low-
Power, Non-Licensed Transmi er . . . . . . . 667
Inspection & Grading of Meat and Poultry: What
Are the Diﬀerences? . . . . . . . . . . . . . . . 668
3 Geographic Indications . . . . . . . . . . . . . . . . 669
Justin Hughes, Champagne, Feta, and Bourbon –
The Spirited Debate About Geographical Indi-
cations . . . . . . . . . . . . . . . . . . . . . . 669
TRIPS arts. 22–24 . . . . . . . . . . . . . . . . . 671
Lanham Act § 2 . . . . . . . . . . . . . . . . . . 672
Guantanamera Cigar Co. v. Corporacion Habanos 673
Labeling and Advertising of Distilled Spirits,
27 C.F.R Part 5 . . . . . . . . . . . . . . . . . 677
Textile Products Identiﬁcation Act . . . . . . . 678
Melting Bad Problem, Redux . . . . . . . . . . 679
4 Regulation . . . . . . . . . . . . . . . . . . . . . . . 679
POM Wonderful LLC v. The Coca-Cola Company 680
Rebecca Tushnet, It Depends on What the Mean-
ing of ”False” is: Falsity and Misleadingness
in Commercial Speech Doctrine . . . . . . . . . 682
Commack Self-Service Kosher Meats, Inc. v. Weiss 684
Levy v. Kosher Overseers Ass’n of America, Inc. . 687
5 Mandatory Disclosures . . . . . . . . . . . . . . . . 688
American Meat Institute v. Dept. of Agriculture . 688
National Ass’n of Mfrs. v. Securities and Ex-
change Commission [I] . . . . . . . . . . . . . 690
National Ass’n of Mfrs. v. Securities and Ex-
change Commission [II] . . . . . . . . . . . . . 691
6 Self-Regulation . . . . . . . . . . . . . . . . . . . . . 692
Mead Johnson Nutritionals (Enfamil LIPIL) . . . . 692
CARU Press Release . . . . . . . . . . . . . . . . 695
7 Problems . . . . . . . . . . . . . . . . . . . . . . . . 696
Scavenger Hunt Problem . . . . . . . . . . . . . 696
problems/fortunetelling . . . . . . . . . . . . . 696

8 Personality Rights 697
A Right of Publicity . . . . . . . . . . . . . . . . . . . . . . 697
1 Ownership . . . . . . . . . . . . . . . . . . . . . . . 697
a Privacy Theories . . . . . . . . . . . . . . . . . 698
Roberson v. Rochester Folding Box Co. . . . . . . 698
New York Civil Rights Law § 51 . . . . . . . . . 700
Pavesich v. New England Life Ins. Co. . . . . . . . 701
O’Brien v. Pabst Sales Co. . . . . . . . . . . . . . 704
b Property Theories . . . . . . . . . . . . . . . . . 705
Haelan Laboratories v. Topps Chewing Gum . . . 705
Joseph R. Grodin, Note: The Right of Publicity:
A Doctrinal Innovation . . . . . . . . . . . . . 707
Fraley v. Facebook, Inc. . . . . . . . . . . . . . . . 708
2 Subject Ma er . . . . . . . . . . . . . . . . . . . . . 710
Midler v. Ford Motor Co. . . . . . . . . . . . . . . 710
White v. Samsung Electronics America, Inc. . . . . 713
White v. Samsung Electronics America, Inc. . . . . 716
3 Procedures . . . . . . . . . . . . . . . . . . . . . . . 718
Hebrew University of Jerusalem v. General Motors 718
4 Infringement: Similarity . . . . . . . . . . . . . . . 723
Hooker v. Columbia Pictures Industries, Inc. . . . 723
5 Infringement: Prohibited Conduct . . . . . . . . . 725
a Direct Infringement . . . . . . . . . . . . . . . 725
Stephano v. News Group Publications, Inc. . . . . 725
Washington v. Brown & Williamson Tobacco Corp. 728
b Secondary Liability . . . . . . . . . . . . . . . . 730
Perfect 10, Inc. v. Cybernet Ventures, Inc. . . . . . 730
6 Defenses . . . . . . . . . . . . . . . . . . . . . . . . . 733
Allison v. Vintage Sports Plaques . . . . . . . . . 733
Rosa and Raymond Parks Institute for Self Devel-
opment v. Target Corp. . . . . . . . . . . . . . 735
No Doubt v. Activision Publishing, Inc. . . . . . . 739
7 Problems . . . . . . . . . . . . . . . . . . . . . . . . 748
Governator Problem . . . . . . . . . . . . . . . 748
Tony Twist Problem . . . . . . . . . . . . . . . . 749
B Moral Rights . . . . . . . . . . . . . . . . . . . . . . . . . 750
Peter Baldwin, T C W : T
C T -A B . . . 751
Roberta Rosenthal Kwall, Copyright and the
Moral Right: Is an American Marriage Possible?751
Berne Convention art. 6bis . . . . . . . . . . . . 754
Copyright Act § 106A . . . . . . . . . . . . . . . 754
1 Integrity . . . . . . . . . . . . . . . . . . . . . . . . . 756
Massachuse s Museum of Contemporary Art
Foundation v. Büchel . . . . . . . . . . . . . . 756
Philips v. Pembroke Real Estate, Inc. . . . . . . . . 764
Clean Flicks of Colorado, LLC v. Soderbergh . . . . 768
Prepared Statement of Taylor Hackford on Behalf
of the Directors Guild of America . . . . . . . . 769
2 A ribution . . . . . . . . . . . . . . . . . . . . . . . 771
Williams v. UMG Recordings, Inc. . . . . . . . . . 771
Catherine L. Fisk, Credit Where It’s Due: The
Law and Norms of A ribution . . . . . . . . . 772
C People as Trademarks . . . . . . . . . . . . . . . . . . . 774
Lanham Act §§ 2(c), (d)(4) . . . . . . . . . . . . 774
Peaceable Planet, Inc. v. Ty, Inc. . . . . . . . . . . 774
David B. Findlay, Inc. v. Findlay . . . . . . . . . 775
Hebrew University of Jerusalem v. General Mo-
tors LLC . . . . . . . . . . . . . . . . . . . . . 779
Brown v. Electronic Arts, Inc. . . . . . . . . . . . 780
Melting Bad Problem, Re-Redux . . . . . . . . 782
D Personal Names . . . . . . . . . . . . . . . . . . . . . . . 782
Laura A. Heymann, Naming, Identity, and
Trademark Law . . . . . . . . . . . . . . . . . 782
Carlton F.W. Larson, Naming Baby: The Consti-
tutional Dimensions of Parental Naming Rights 783
In re Mokiligon . . . . . . . . . . . . . . . . . . . 785
Petition of Variable . . . . . . . . . . . . . . . . . 786
In re Ravitch . . . . . . . . . . . . . . . . . . . . 787
In re Serpentfoot . . . . . . . . . . . . . . . . . . 788
Weingand v. Lorre . . . . . . . . . . . . . . . . . 789
Application of Clark . . . . . . . . . . . . . . . . . 790
In re Name Change of Handley . . . . . . . . . . . 791
In re Porter . . . . . . . . . . . . . . . . . . . . . 792
E Defamation and False Light . . . . . . . . . . . . . . . . 792
Milkovich v. Lorain Journal Co. . . . . . . . . . . 792
Restatement (Second) of Torts § 652E . . . . . . 797
Tyne ex rel. Tyne v. Time Warner Entertainment
Co., L.P. . . . . . . . . . . . . . . . . . . . . . 798
Restatement (Second) of Torts § 564 cmt. d . . 801
Jessica Litman, Information Privacy/Information
Property . . . . . . . . . . . . . . . . . . . . . 802

9 Design 803
A Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 803
B Copyright . . . . . . . . . . . . . . . . . . . . . . . . . . . 803
1 Useful Articles . . . . . . . . . . . . . . . . . . . . . 804
Mazer v. Stein . . . . . . . . . . . . . . . . . . . 804
Copyright Act § 101 (”useful article”) . . . . . . 805
H.R. Rep No. 94-1476 . . . . . . . . . . . . . . . 806
Brandir Intern., Inc. v. Cascade Paciﬁc Lumber Co. 807
Eames Chair Problem . . . . . . . . . . . . . . . 813
Copyright Act § 113 . . . . . . . . . . . . . . . . 813
Report of the Register of Copyrights on the
General Revision of the Copyright Law
(1961) . . . . . . . . . . . . . . . . . . . . . . 814
Model Car Problem . . . . . . . . . . . . . . . . 815
2 Architecture . . . . . . . . . . . . . . . . . . . . . . . 815
Kevin Emerson Collins, Economically Defeasi-
ble Rights to Facilitate Information Disclosure:
The Hidden Wisdom of Pre-AWCPA Copyright 816
Copyright Act § 120 . . . . . . . . . . . . . . . . 817
37 C.F.R. § 202.11 . . . . . . . . . . . . . . . . . 817
Intervest Construction., Inc. v. Canterbury Estate
Homes . . . . . . . . . . . . . . . . . . . . . . 817
Zalewski v. Cicero Builder Dev., Inc. . . . . . . . . 818
Embassy Problem . . . . . . . . . . . . . . . . . 821
3 Moral Rights . . . . . . . . . . . . . . . . . . . . . . 821
Cheﬃns v. Stewart . . . . . . . . . . . . . . . . . 821
C Trademark . . . . . . . . . . . . . . . . . . . . . . . . . . 826
Wal-Mart Stores, Inc. v. Samara Brothers, Inc. . . 827
Lanham Act §§ 2(e)(5), 43(a)(3) . . . . . . . . . 830
TrafFix Devices, Inc. v. Marketing Displays, Inc. . 830
In re Florists’ Transworld Delivery, Inc. . . . . . . 835
Maker’s Mark Distillery, Inc. v. Diageo North
America, Inc. . . . . . . . . . . . . . . . . . . 837
Eames Chair Problem, Revisited . . . . . . . . 838
Pez Dispenser Problem . . . . . . . . . . . . . . 838
D Design Patent . . . . . . . . . . . . . . . . . . . . . . . . 838
Patent Act §§ 171, 173 . . . . . . . . . . . . . . . 839
1 Subject Ma er . . . . . . . . . . . . . . . . . . . . . 844
a Articles of Manufacture . . . . . . . . . . . . . 844
In re Hruby . . . . . . . . . . . . . . . . . . . . . 844
In re AlSabah . . . . . . . . . . . . . . . . . . . . 847
b Ornamentality . . . . . . . . . . . . . . . . . . . 849
In re Webb . . . . . . . . . . . . . . . . . . . . . . 849
Rosco, Inc. v. Mirror Lite Co. . . . . . . . . . . . 851
In re Koehring . . . . . . . . . . . . . . . . . . . . 852
2 Procedures . . . . . . . . . . . . . . . . . . . . . . . 854
MPEP § 1503 . . . . . . . . . . . . . . . . . . . . 854
Patent Act § 173 . . . . . . . . . . . . . . . . . . 856
3 Ownership . . . . . . . . . . . . . . . . . . . . . . . 856
a Novelty . . . . . . . . . . . . . . . . . . . . . . . 857
International Seaway Trading Corp. v. Walgreens
Corp. . . . . . . . . . . . . . . . . . . . . . . . 857
b Obviousness . . . . . . . . . . . . . . . . . . . . 859
MRC Innovations, Inc. v. Hunter Mfg., LLP, . . . 859
4 Infringement: Similarity . . . . . . . . . . . . . . . 863
Egyptian Goddess, Inc. v. Swisa, Inc. . . . . . . . 863
Wing Shing Products (BVI) Co. v. Sunbeam Prod-
ucts, Inc. . . . . . . . . . . . . . . . . . . . . . 868
OddzOn Products, Inc. v. Just Toys, Inc. . . . . . 873
L.A. Gear, Inc. v. Thom McAn Shoe Co. . . . . . . 874
5 Infringement: Prohibited Conduct . . . . . . . . . 874
Patent Act § 289 . . . . . . . . . . . . . . . . . . 874
Milo & Gabby, LLC v. Amazon.com . . . . . . . . 875
6 Defenses . . . . . . . . . . . . . . . . . . . . . . . . . 877
Jazz Photo Corp. v. International Trade Com’n . . 877
Ralph D. Cliﬀord & Richard J. Pel -Steele, The
Constitutionality of Design Patents . . . . . . 877
Eames Chair Problem, Re-revisited . . . . . . . 879
E Sui Generis Regimes . . . . . . . . . . . . . . . . . . . . 880
1 Semiconductor Masks . . . . . . . . . . . . . . . . . 880
Pamela Samuelson, Creating a New Kind of In-
tellectual Property: Applying the Lessons of
the Chip Law to Computer Programs . . . . . . 880
Kal Raustiala & Christopher Sprigman, The
Piracy Paradox, Innovation and Intellectual
Property in Fashion Design . . . . . . . . . . . 882
Altera Corp. v. Clear Logic, Inc. . . . . . . . . . . 882
2 Vessel Hulls . . . . . . . . . . . . . . . . . . . . . . . 885
Bonito Boats, Inc. v. Thunder Craft Boats, Inc. . . 885
Copyright Act ch. 13 . . . . . . . . . . . . . . . 887
Maverick Boat Co., Inc. v. American Marine
Holdings, Inc. . . . . . . . . . . . . . . . . . . 890
F Fashion . . . . . . . . . . . . . . . . . . . . . . . . . . . . 893
1 Copyright . . . . . . . . . . . . . . . . . . . . . . . . 893
Jack Adelman, Inc. v. Sonners & Gordon, Inc. . . . 893
Cheney Bros. v. Doris Silk Corporation . . . . . . 894
Fashion Originators’ Guild of America v. Federal
Trade Commission . . . . . . . . . . . . . . . 895
Peter Pan Fabrics, Inc. v. Brenda Fabrics, Inc. . . . 898
Varsity Brands, Inc. v. Star Athletica, LLC . . . . 899
2 Trademark . . . . . . . . . . . . . . . . . . . . . . . 904
Christian Louboutin v. Yves Saint Laurent America904
Christian Louboutin v. Yves Saint Laurent America911
3 Design Patent . . . . . . . . . . . . . . . . . . . . . . 914
Kal Raustiala & Christopher Sprigman, The
Piracy Paradox, Innovation and Intellectual
Property in Fashion Design . . . . . . . . . . . 914
4 Sui Generis Protection? . . . . . . . . . . . . . . . . 915
James Surowiecki, The Piracy Paradox . . . . . . 915
C. Sco Hemphill & Jeannie Suk, The Law, Cul-
ture, and Economics of Fashion . . . . . . . . . 916
Innovative Design Protection Act of 2012 . . . 918

10 Software 925
A Trade Secret . . . . . . . . . . . . . . . . . . . . . . . . . 925
Barr-Mullin, Inc. v. Browning . . . . . . . . . . . 926
Silvaco Data Systems v. Intel Corp. . . . . . . . . 926
B Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 930
1 Subject Ma er . . . . . . . . . . . . . . . . . . . . . 930
a Then . . . . . . . . . . . . . . . . . . . . . . . . 930
In re Bernhart . . . . . . . . . . . . . . . . . . . . 930
In re Alappat . . . . . . . . . . . . . . . . . . . . 931
State Street Bank & Trust Co. v. Signature Finan-
cial Group . . . . . . . . . . . . . . . . . . . . 934
b Now . . . . . . . . . . . . . . . . . . . . . . . . . 935
Alice Corp. v. CLS Bank Int’l . . . . . . . . . . . 935
McRO, Inc. v. Bandai Namco Games America Inc. 941
Synopsys, Inc. v. Mentor Graphics Corp. . . . . . 946
2 Procedures . . . . . . . . . . . . . . . . . . . . . . . 951
Williamson v. Citrix Online, LLC . . . . . . . . . 951
Mark A. Lemley, Software Patents and the Re-
turn of Functional Claiming . . . . . . . . . . 953
3 Obviousness . . . . . . . . . . . . . . . . . . . . . . 954
Apple Inc. v. Samsung Electronics Co., Ltd. . . . . 954
C Copyright . . . . . . . . . . . . . . . . . . . . . . . . . . . 959
1 Subject Ma er . . . . . . . . . . . . . . . . . . . . . 959
Apple Computer, Inc. v. Franklin Computer Corp. 959
Adobe Systems Inc. v. Southern Software Inc. . . . 961
Whelan Associates, Inc. v. Jaslow Dental Labora-
tory, Inc. . . . . . . . . . . . . . . . . . . . . . 963
Computer Associates Intern., Inc. v. Altai, Inc. . . 964
Oracle America, Inc. v. Google Inc. . . . . . . . . 969
Oracle America, Inc. v. Google Inc. . . . . . . . . 975
Tetris Problem . . . . . . . . . . . . . . . . . . . 982
2 Defenses . . . . . . . . . . . . . . . . . . . . . . . . . 982
Copyright Act § 117 . . . . . . . . . . . . . . . . 982
Sega Enterprises Ltd. v. Accolade, Inc. . . . . . . . 983
Universal City Studios, Inc. v. Corley . . . . . . . 985
D Trademark . . . . . . . . . . . . . . . . . . . . . . . . . . 987
Apple Inc. v. Samsung Electronics Co., Ltd. . . . . 987
E Design Patent . . . . . . . . . . . . . . . . . . . . . . . . 988
Michael Risch, Functionality and Graphical User
Interface Design Patents . . . . . . . . . . . . 989
Smartphone Problem . . . . . . . . . . . . . . . 991

11 Biotechnology 993
A Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 993
1 Subject Ma er . . . . . . . . . . . . . . . . . . . . . 993
Association for Molecular Pathology v. Myriad
Genetics, Inc. . . . . . . . . . . . . . . . . . . 993
In re Roslin Institute (Edinburgh) . . . . . . . . . 995
Ariosa Diagnostics, Inc. v. Sequenom, Inc. . . . . 998
DNA Copyright Problem . . . . . . . . . . . . . 1001
2 Ownership . . . . . . . . . . . . . . . . . . . . . . .1001
Schering Corp. v. Geneva Pharmaceuticals . . . . 1001
Eli Lilly and Co. v. Zenith Goldline Pharm. Inc. . 1003
3 Infringement: Similarity . . . . . . . . . . . . . . .1004
Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp. . . . . . . . . . . . . . . . . . . 1004
4 Defenses . . . . . . . . . . . . . . . . . . . . . . . . .1007
Bowman v. Monsanto Co. . . . . . . . . . . . . . 1007
B Plants . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1012
1 Plant Patents . . . . . . . . . . . . . . . . . . . . . .1012
Imazio Nursery, Inc. v. Dania Greenhouses . . . . 1012
Mark D. Janis & Jay P. Kesan, U.S. Plant Variety
Protection: Sound and Fury ... ? . . . . . . . . 1013
Patent Act §§ 161–163 . . . . . . . . . . . . . . . 1014
37 CFR § 1.164 . . . . . . . . . . . . . . . . . . . 1014
a Subject Ma er . . . . . . . . . . . . . . . . . . .1020
In re Arzberger . . . . . . . . . . . . . . . . . . . 1020
b Procedures . . . . . . . . . . . . . . . . . . . . .1021
In re Greer . . . . . . . . . . . . . . . . . . . . . . 1021
c Ownership . . . . . . . . . . . . . . . . . . . . .1024
Ex parte Moore . . . . . . . . . . . . . . . . . . . 1024
Dunn v. Ragin v. Carlile . . . . . . . . . . . . . . 1025
In re LeGrice . . . . . . . . . . . . . . . . . . . . 1028
Yoder Bros., Inc. v. California-Florida Plant Corp. 1030
d Infringement . . . . . . . . . . . . . . . . . . .1032
Imazio Nursery, Inc. v. Dania Greenhouses . . . . 1032
Armstrong Nurseries, Inc. v. Smith . . . . . . . . 1036
2 Plant Variety Protection Act . . . . . . . . . . . . .1037
S. Rep. 91-1246 (1970) . . . . . . . . . . . . . . . 1037
a Subject Ma er . . . . . . . . . . . . . . . . . . .1049
PVPA § 42 . . . . . . . . . . . . . . . . . . . . . 1049
b Procedures . . . . . . . . . . . . . . . . . . . . .1049
PVPA § 52 . . . . . . . . . . . . . . . . . . . . . 1049
Genecorp, Inc. v. Progeny Advanced Genetics, Inc. 1050
PVPA § 83 . . . . . . . . . . . . . . . . . . . . . 1052
c Ownership . . . . . . . . . . . . . . . . . . . . .1053
PVPA § 42 . . . . . . . . . . . . . . . . . . . . . 1053
d Defenses . . . . . . . . . . . . . . . . . . . . . .1055
PVPA §§ 44, 112–115 . . . . . . . . . . . . . . . 1055
Jim Chen, The Parable of the Seeds . . . . . . . . 1056
e Infringement . . . . . . . . . . . . . . . . . . .1061
PVPA § 111 . . . . . . . . . . . . . . . . . . . . . 1061
22 TABLE OF CONTENTS

Delta and Pine Land Co. v. Sinkers Corp. . . . . . 1063
3 The Punchline . . . . . . . . . . . . . . . . . . . . .1073
JEM Ag Supply, Inc. v. Pioneer Hi-Bred Interna-
tional, Inc. . . . . . . . . . . . . . . . . . . . . 1073
C Drug Approval . . . . . . . . . . . . . . . . . . . . . . . .1075
1 Patent Issues . . . . . . . . . . . . . . . . . . . . . .1075
Kara B. Swanson, Food and Drug Law as Intel-
lectual Property Law . . . . . . . . . . . . . . 1075
Merck KGaA v. Integra Lifesciences I, Ltd. . . . . 1079
Eli Lilly & Co. v. Medtronic, Inc. . . . . . . . . . 1079
2 Hatch-Waxman . . . . . . . . . . . . . . . . . . . . .1081
United States v. Generix Drug Corp. . . . . . . . 1082
FTC v. Actavis, Inc. . . . . . . . . . . . . . . . . 1083
Actavis Elizabeth LLC v. U.S. Food and Drug Ad-
min. . . . . . . . . . . . . . . . . . . . . . . . 1083
Erika Lie an, The Myths of Data Exclusivity . . 1085
Caraco Pharmaceutical Labs v. Novo Nordisk . . . 1087
FTC v. Actavis, Inc. . . . . . . . . . . . . . . . . 1090
3 Orphan Drugs . . . . . . . . . . . . . . . . . . . . .1094
Genentech, Inc. v. Bowen . . . . . . . . . . . . . . 1094
Sigma-Tau Pharmaceuticals, Inc. v. Schwe . . . 1096
D Drug Marketing . . . . . . . . . . . . . . . . . . . . . . .1098
1 Names . . . . . . . . . . . . . . . . . . . . . . . . . .1098
Note on Drug Naming . . . . . . . . . . . . . . 1098
S. Rep. 87-448 (1961) . . . . . . . . . . . . . . . 1103
21 C.F.R. § 201.10 . . . . . . . . . . . . . . . . . 1104
Kos Pharmaceuticals, Inc. v. Andrx Corp. . . . . . 1105
666 Problem . . . . . . . . . . . . . . . . . . . . 1108
2 Design . . . . . . . . . . . . . . . . . . . . . . . . . .1108
Shire US Inc. v. Barr Laboratories, Inc. . . . . . . 1108
Jeremy A. Greene & Aaron S. Kesselheim,
Why Do the Same Drugs Look Diﬀerent? Pills,
Trade Dress, and Public Health . . . . . . . . . 1111
3 Labeling and Advertising . . . . . . . . . . . . . . .1113
Consumer-Directed Broadcast Advertisements:
Guidance for Industry . . . . . . . . . . . . . . 1114
Le er from Robert Dean, Division Director,
OPDP, FDA, to Eric Gervais . . . . . . . . . . 1115
United States v. Caronia . . . . . . . . . . . . . . 1117
Wyeth v. Levine . . . . . . . . . . . . . . . . . . . 1120
PLIVA, Inc. v. Mensing . . . . . . . . . . . . . . 1121
SmithKline Beecham v. Watson Pharmaceuticals . 1122
Bizarro World Redux Problem . . . . . . . . . . 1125
Introduction

Why This Book?
This book takes its subtitle from Sheldon Axler’s Linear Algebra Done
Right and its inspiration from a line by the great mathematician Emil
Artin: ”It is my experience that proofs involving matrices can be
shortened by 50% if one throws the matrices out.” Matrices are nu-
merical representations of mathematical operations; proofs involving
them tend to look something like:
   
a1,1 · · · a1,i ··· a1,n ca1,1 · · · ca1,i ··· ca1,n
 .. .. ..   .. .. .. 
 . . .   . . . 
   
c  aj,1 · · · aj,i ··· aj,n  =  caj,1 · · · caj,i ··· caj,n 
 . .. ..   . .. .. 
 .. . .   .. . . 
am,1 · · · am,i · · · am,n cam,1 · · · cam,i · · · cam,n

Axler’s book throws most of the matrices out, and as a result, is one
of the clearest college mathematics textbooks ever wri en. There are
matrices and proofs using them, but they are secondary to the alge-
braic explanations and proofs, which tend to look more like:

cT (v) = T (cv)

This book is my a empt to take intellectual property law and throw
the matrices out. The matrices aren’t literal matrices, of course, or
IP would be much less fun and interesting to study, to teach, and to
practice. Instead, the matrices consist of built-up expectations about
how the subject is structured, and how it should be taught. But many
of these traditions have nothing but tradtion to support them. Cast
them aside, and what emerges is simpler, richer, and more elegant.

Coverage
The ﬁrst tradition to is the assumption that ”intellectual property” pri-
marily means patent, copyright, and trademark. These three ﬁelds
24 TABLE OF CONTENTS

dominate most IP courses and most casebooks. Trade secret law usu-
ally makes a walk-on appearance, as does the right of publicity, but
that is typically it. Design patents, false advertising, and idea protec-
tion may be mentioned as afterthoughts. I don’t mean to denigrate
patent, copyright, and trademark. They are important, and an IP
course that omi ed one of them would be seriously deﬁcient. But
they are not so much more important than other ﬁelds of IP that they
should push those other ﬁelds out of the picture.
For one thing, these other ﬁelds are important in regular ”IP” prac-
tice: just ask any observer of the smartphone design-patent wars, any
employment lawyer negotiating an NDA, or any business lawyer re-
It probably does not help that the Big viewing ad copy for substantiation. A professor who lets students
Three are all federal regimes, leading leave the IP survey unaware these bodies of law even exist commits
students to neglect the importance of
academic malpractice.
state law.
If that weren’t enough, these other ﬁelds help illuminate the tra-
ditional ones. Trademark law’s treatment of descriptive and mis-
descriptive marks looks very diﬀerent after a trip through false-
advertising law: the diﬀerence between an arbitrary mark and a mis-
descriptive one is whether consumers are in on the joke. Recognizing
that the reverse engineering privilege in trade secret law is a form of
exhaustion helps clarify exhaustion in patent law.
Thus, this book casts an extremely broad net when including IP
regimes. In my view, intellectual property consists of any private
right to prevent other people from using information. This encom-
passes contracts for the use of information, trade secrets, copyrights,
trademarks, unfair competition, parts of false advertising law, geo-
graphic indications, rights of publicity, moral rights, design patents,
and a miscellany of federal and state regimes like boat-hull protec-
tions and common-law misappropriation. They are all given serious
a ention.
Having cast a wide net to gather in IP regimes, the book then casts
its net widely again within each system. My working mo o when
debating what to include was no unpleasant surprises. It is ﬁne to ges-
ture at something big and messy whose details are not ﬁlled in in the
slightest – like the compulsory copyright license for satellite broad-
casting, whose rules ﬁll dozens of pages in sections 119 and 122 of title
17. But it is not ﬁne to pass by something that comes up regularly, is
important when it does, and whose existence is not easily predictable
–like the exemption in section 110 for many in-person noncommercial
public performances. Thus, the book is unusually detailed in cov-
ering theories of liability and major defenses: examples include the
DMCA’s prohibition on removing copyright management informa-
tion, the unfair-competition cause of action for deliberate passing oﬀ
even in the absence of trademark rights, and the limitation of patent
remedies against medical practitioners.
TABLE OF CONTENTS 25

And ﬁnally, the book casts its net widely a third time to sweep
in bodies of law that are not traditionally regarded as ”intellectual
property” at all, but have something to teach about how intellectual
property law works. Sometimes, this is because they provide use-
ful points of comparison: FOIA and classiﬁcation eﬀectively create a
body of secrecy law for the government, and seeing how they work
clariﬁes what is distinctive about trade secret law. Sometimes, it is
because they provide the backdrop against which ”intellectual prop-
erty” law plays out: pharmaceutical patent law is unintelligible with-
out a grounding in the drug-approval process. And sometimes, it
is because they really are intellectual property law: Actors Equity
gives out stage names on a ﬁrst-come ﬁrst-served basis, and while
the resulting rights are narrow and privately created, they are abso-
lute within the relevant domain. Thus, the book includes such un-
usual topics as FOIA, privacy torts, drug approval and labeling, state
business name registries, country-of-origin labeling statutes, the law
of personal name changes, and the BBB’s advertising self-regulatory
programs.
Given this wide range of subjects, the book does not cover each of
them in equal depth. Instead, I have tried to do two things. On the
one hand, I try to give a good conceptual sense for how each body
of IP law thinks about the world. Students should know that copy-
right is built around originality and similarity; that trademark is built
around distinctiveness, priority, and confusion; that advertising is
built around truth; and so on. The cases and materials are selected
and arranged to build this intuition, even at the expense of detail. The
point is to leave readers in a position where they can make plausible
interpolations in the parts of the subjects they have not seen. A good
ﬁrst guess and good research skills will take you surprisingly far.
On the other hand, the book is relentlessly comparative. I don’t
mean that it’s internationally comparative, although some sections
do sketch the major distinctions between the U.S. approach and other
countries’ (e.g. on geographic indications and moral rights). In-
stead, it draws every possible comparison within American IP law.
It does this at a macro level, emphasizing the similarities and the
diﬀerences between the basic principles undergirding each body of
IP law. For example, patent and copyright think similarly about in-
centives, while trademark and false advertising think similarly about
consumers. And it does this at a micro level, se ing up similar doc-
trines across IP ﬁelds to compare and contrast. For example, trade
secret law shares with copyright law the requirement that the defen-
dant must have copied from the plaintiﬀ to infringe, which plays out in
their similarly permissive a itude in allowing multiple independent
parties to lay claim to the same information simultaneously. They
stand in sharp contrast to patent and trademark, where subsequent
26 TABLE OF CONTENTS

independent creation can only mitigate the consequences of infringe-
ment, rather than negating it entirely.

A Taxonomy of IP
To make the internal logic of each IP ﬁeld clearer, and to facilitate
comparisons between them, I have imposed a rigorous structure on
The only exceptions are those fields, them. The two basic issues for any form of IP are protection and
like geographic indications, discussed infringement; as far as possible, I try to keep them distinct. I insist
too briefly to bother with the full struc-
on the division even for areas, like rights of publicity, where it is not
ture.
conventionally made. But whether the defendants are trading on the
plaintiﬀ’s identity is a diﬀerent question than which aspects of that
identity are protectable at all, and separating them clariﬁes what is at
stake in each.
I further divide protection into subject ma er, ownership, and
procedures, or, roughly ”what?”, ”who?” and ”how?” In copyright,
for example, subject ma er includes Feist’s famous ”modicum of cre-
ativity” and the idea/expression dichotomy; ownership includes joint
works, works made for hire, and derivative works; and procedures
include term, registration, deposit, notice, and ﬁxation. Yes, ﬁxation.
It isn’t a question of what information is copyrightable so much as
what one must do to obtain a copyright in that information (answer:
not much). This arrangement is a bit unconventional, but I think it’s
clearer. I tend to break up subject ma er doctrines into thresholds,
which ask whether something is [creative, secret, distinctive, etc.]
enough for an IP ﬁeld to care about, and boundary conditions like
functionality, which declare something the wrong kind of thing for
an IP ﬁeld. Ownership rules subdivide into rules to allocate owner-
ship with collaborations, rules to assign priority among competitors,
None of these divisions are as fully im- and rules for derivative creation that builds on others’ information.
plemented as I would like in the current Procedures are too diverse to taxonomize systematically, although
version.
registration and notice are common that I have tried to ﬂag them
wherever they appear, and their absence wherever they don’t.
I subdivide infringement into similarity, prohibited conduct, and
defenses. The distinction between the ﬁrst two is all-important. Sim-
ilarity is a test of the relationship between the plaintiﬀ’s information
and the defendant’s; prohibited conduct deals with what the defen-
dant did with that information. Similarity is the domain of claim con-
struction and the every-element rule, of substantial similarity, and
of the likelihood of confusion. Prohibited conduct is the domain
of ”makes, uses, oﬀers to sell, or sells” and of the exclusive rights.
It further breaks down into threshold conditions like Lanham Act
§ 43(a)(1)(B)’s ”in commercial advertising or promotion,” into intent
requirements (or their absence), (sometimes) into proof of copying
from the plaintiﬀ, into the speciﬁc enumerated or unenumerated the-
TABLE OF CONTENTS 27

ories of direct infringement, and into various secondary liability doc-
trines. Here is where I have found the comparative method most use-
ful; it has forced me to ﬁnd and present cases on topics like secondary
liability for right of publicity violations and on proving copying in
trade secret misappropriation. They exist, and they display interest-
ing and revealing variations from their more familiar cousins.
Some IP defenses are idiosyncratic, like the compulsory mechan-
ical license in copyright or the vestigial experimental use defense in
patent. But others display systematic consistency across almost all of
IP. The exhaustion defenses, which deﬁne the interface between intel-
lectual property rights in information and personal property rights in
tangible things, are essentially universal – and especially revealing,
because while every IP ﬁeld embraces the exhaustion principle, each
IP ﬁeld puts characteristically diﬀerent limits on it. Another cluster
of common defenses protect expressive uses. Sometimes these lim-
its are internal to the doctrinal logic of an IP ﬁeld; sometimes they
appear as separate defenses; sometimes they are explicitly stated as
First Amendment requirements. Again, both the similarities and the
diﬀerences are instructive.

Organization
There are three natural ways to organize material on intellectual prop-
erty. One could – like most casebooks – present it by ﬁeld: trade se-
cret, patent, copyright, trademark, etc., in each case starting with pro-
tectability and moving through infringement. One could present it
by subject ma er: literature, music, characters, industrial design, soft-
ware, etc., in each case discussing all of the relevant IP ﬁelds. Or one
could present it by doctrine: subject ma er, ownership, procedure,
similarity, etc., in each case moving through relevant IP ﬁelds. I have
used all three.
Large parts of the book are organized by IP ﬁeld: there are chap-
ters (or major sections) devoted to trade secret, patent, copyright,
trademark, false advertising, right of publicity, and design patents.
Each of them takes a single IP ﬁeld and marches through the sex-
partite taxonomy of topics. The order varies a bit (the complexity
and centrality of patent prosecution means it makes sense to address
patent procedures before patent ownership), sometimes the divisions
aren’t worth insisting on (in trademark, similarity tests are just one
factor in multiple likelihood of confusion tests), and some areas omit
one or more entirely (there are no meaningful procedural prerequi-
sites to protection against false advertising). But these sections all
more or less stick to this structure. These six topics – subject ma er,
ownership, procedures, similarity, prohibited conduct, and defenses
– suﬃce to give a reasonably clear account of how an IP ﬁeld looks at
28 TABLE OF CONTENTS

the world.
Mixed in with these in-depth treatments are quicker hits on re-
I would have liked to include a chapter lated ﬁelds of IP and IP-adjacent law. The general rule is that they
on federal preemption that also covers are presented in connection with the major IP ﬁelds they shed light
the miscellaneous fragments of state
on. Thus intrusion on seclusion, FOIA, and classiﬁcation show up
IP law that survive preemption and are
not already covered elsewhere. I did in the trade secret chapter; phone numbers, radio callsigns, and busi-
not complete that chapter in time for ness name registries in the trademark chapter; FTC and consumer
my fall 2016 course. false advertising suits in the advertising chapter; and so on.
Conversely, I have also distributed out subject-ma er-speciﬁc
parts of traditional IP ﬁelds to chapters dedicated to IP ﬁelds that
more squarely address those subject ma ers. This ﬁrst happens in
the advertising chapter; I deliberately hold over the material on cer-
tiﬁcation marks and deceptive marks from the trademark chapter so
that I can juxtapose it with the false advertising materials. Materiality
in the context of Lanham Act § 2(a) makes more sense once readers
have seen it at work in § 43(a)(1)(B) cases. I pull similar stunts by
pu ing moral rights in the ”personality rights” chapter rather than
the copyright chapter; geographically descriptive and misdescriptive
marks in the geographic indications chapter; useful articles, architec-
tural works, and functional marks in the design chapter alongside
design patents.
The extreme examples of this approach are the chapters devoted
to software and to biotechnology, both of which are immensely im-
portant and can only properly be understood by considering how
diﬀerent IP ﬁelds interact. Software requires consideration of trade
secret, copyright, and patent; biotechnology law involves patent and
trademark, but also discussion of the FDA drug approval process and
regulation of drug marketing and labeling. (Again, my broad under-
standing of what is relevant to IP means that I have no compunction
against treating these regulatory regimes as establishing de facto IP
regimes.)
This "rest" of the book remains hypo- The rest of the book consists of chapters devoted to cross-cu ing
thetical for now. topics where there is more insight to be gained from se ing out gen-
eral principles and then seeing how diﬀerent IP ﬁelds play out vari-
ations on the theme: litigation, remedies, transactions, and interna-
tional IP. One could include these issues within each substantive
chapter, but for the most part, I ﬁnd it clearer just to save these is-
sues for dedicated chapters.

What This Book Is Not
This is, as I said, a book about the structure of IP law. Traditional
casebooks try to do many other things, and I want to be clear on the
sacriﬁes I have made.
This is not a book on learning to think like a lawyer. I have made
TABLE OF CONTENTS 29

no concessions to making cases ”teachable” in a standard Socratic
sense. I have cut out procedural postures. I have cut out reason-
ing from precedent. I have cut out dissents, even brilliant and well-
argued ones. I have cut judges’ names, and sometimes cut parties’
names. In extreme cases, I have cut out all the facts, or all of the rea-
soning supporting a holding.
Part of this is a sense that traditional case reading and analysis –
valuable skills that they are – are overvalued in most law schools. Part
of it also is the freedom that comes from teaching IP to LLM students,
for whom ”thinking like a lawyer” is not something to be learned but
one of the prerequisites for admission. And part of it is the critical
distance that I have gained on the enterprise of legal education since
moving to an institution where most of my colleagues are not law
professors. Things that once seemed natural to me are strange now.
This is also not a book on IP policy. My discussions of the policy
rationales for IP ﬁelds are exceedingly brief. I have cut substantial
chunks of the policy discussions from the cases I excerpt. In some
cases, the policy arguments are essential to understanding the hold-
ings and the concepts they rely on. But if this book is at all useful for
teeing up discussions of IP policy, it is entirely by accident.

Cases and Materials
The overriding principle for my selection of cases and other materi-
als was clarity. Accordingly, I have tried hard to ﬁnd cases that are
either broadly representative of the doctrinal point they stand for or
that state it succinctly. In my years of teaching the IP survey I came
to loathe the memorable but unusual cases, because students invari-
ably remembered them for the wrong points. I have tried to avoid
including cases that go oﬀ on tangents that haven’t been picked up
on; they give an incorrect impression of where the action is.
Where there is a genuine doctrinal split in contemporary caselaw,
I have tried to make this clear in the materials I have chosen: either by
pairing cases on either side of an issue, by picking a case with a strong
and well-taken dissent, or by picking a case that respectfully presents
the other side of the debate before disagreeing with it. Where there is
not a major split in the caselaw, I have tried hard to present the false
impression of one.
I have also tried to strike a balance between teachability and au-
thority. My sense is that most casebooks tend too much towards re-
spectful but excessive quotation from Supreme Court opinions. But
for various institutional reasons – including the Supreme Court’s rar-
iﬁed docket, its emphasis on following its own precedents to the ex-
clusion of ”inferior” courts’ wisdom, its frequent unwillingness to re-
solve the actual case before it, and some Justices’ regre able writerly
30 TABLE OF CONTENTS

habits – Supreme Court opinions are often terrible teaching cases. I
have responded by excerpting these cases with extreme brevity, or
by presenting them in reﬂection – as other courts apply the Supreme
Court’s holdings to crisper fact pa erns.

Editing
My editorial technique is borrowed from Sweeney Todd: extensive
and shocking cuts. These are pedagogical materials, not a legal brief.
I have not put words in anyone else’s mouth, but I have been uncon-
cerned with the usual editorial apparatus of ellipses and brackets. I
drop words from sentences, sentences from paragraphs, paragraphs
from opinions – all with no indication that anything is gone. I also
reorder paragraphs and sometimes sentences as needed to improve
the readability of a passage. My goal is to make it easy for the reader.
If it ma ers to you what the original said, consult the original.
Similarly, I have been ruthless in pruning citations. Editorial con-
ventions that make sense in briefs and opinions are not appropriate
for teaching materials. Generally, I have kept citations only when
the case being cited is important in its own right or when the citation
is impossible to remove without great awkwardness. I have had no
qualms about a ributing to courts things they quoted other courts as
saying.
I also discarded the tradition that a case should be presented as
a case. There are cases with wonderful discursive passages – like
Judge Posner’s musings on the protectability of names as trademarks
in Peaceable Planet – embedded in larger messes. My edit of peaceable-
planet keeps this discussion of name marks and discards everything
else, including the facts and holding. There are also cases that are
important for their holdings, like Grokster and AWH, but which take
their damn time ge ing there. I kept the holdings and cut everything
else.
Sometimes, the best way to make a point isn’t with a case at all.
The federal government has published outstanding guides to patent,
copyright, and trademark law: the MPEP, Compendium, and TMEP,
respectively. I have freely drawn from them, along with Restatement
sections, regulations, and law-review articles whenever I thought
that they covered the ground be er than the cases I had to work with.
For rarely-litigated ma ers like the deposit requirement, these sec-
ondary materials are far and away the best option. I have wri en
notes and introductory materials where necessary, but I tried to keep
them focused on bringing out structural issues, rather than saying
again what others have already said be er.
TABLE OF CONTENTS 31

Formatting
Another crucial early decision was to format the text with a two-
and-three-quarter-inch outer margin, placing notes and illustrations
in the margin alongside the text they pertain to. The design is not
original; I had seen it used very eﬀectively in Donald Knuth et al’s
Concrete Mathematics, Robert Bringhurst’s The Elements of Typographic
Style, and Edward Tufte’s books on information design. From my
point of view, it solved three problems simultaneously:
First, the narrower text column is typographically a ractive. With There is a reason that law reviews print
such a larger outer margin, the resulting column is ﬁve inches wide, on pages that are narrower than 8.5
inches.
which makes for lines that have a comfortable font size and a com-
fortable length. Extended reading is easier and the page looks nice.
Second, margins are for marginalia. A note in the margin is less
intrusive than a box cut out of the text and easier to glance back and
forth to than a footnote. The result is that I have been free to annotate
the text liberally and a li le Talmudically. I have extensively deco-
rated the margin with illustrations from the cases being excerpted. I
have also included quotations and case summaries that might have
gone in the notes after a case in a traditional casebook, or been pre-
sented as squib cases. Having the margin available lets me include
them precisely where they are relevant. Sometimes I include see also
citations to interesting articles. And occasionally I pop in with a lead-
ing question or just a straight-up joke.
And third, the margin enables me to remove citations and other
unnecessary apparatus from the body of cases themselves. For the
most part, cases are presented with only the name of the case in the
main text: the citation is evacuated to the margin. This is another
way of clarifying of the cases themselves; citations are a remarkable
hindrance to readability. By pu ing citations alongside the text (as
in some law reviews’ online supplements), I believe I have resolved
the Garner-Posner debate over whether citations belong in text or in
footnotes. The best answer is neither: they belong in the margin.

Document Production
I used the XeLaTeX document preparation system to prepare the
manuscript of this book. XeLaTeX is a computer typse ing system
derived from Leslie Lamport’s LATEXand built on Donald Knuth’s TEX.
I type out the text of the book in a set of individual text ﬁles, marked
up with tags like

\textit{this is in italics}

. XeLaTeX then assembles the hundreds of individual ﬁles into a sin-
gle PDF output.
32 TABLE OF CONTENTS

This approach has several advantages compared with a more tra-
ditional word processor. First, where Word or Pages.app might have
choked or slowed down on a document this size, XeLaTeX has no
trouble at all. True, I needed to take a minute to recompile the PDF
each time I make changes. But the editing itself is fast and responsive.
Second, this method gave me ﬁne-grained control over every as-
pect of how the book appears. My choice of a wide margin, for ex-
ample, with sidenotes that ﬂoat with the main text, would have been
extremely diﬃcult to implement in a word processor. With XeLaTeX,
it was a ma er of specifying the width of the margins and then writ-
ing a few commands to place materials in them in particular ways. I
have been able to customize the fonts, the colors, the forma ing of
trademarks and the captioning of images. I have also been able to hy-
perlink the short forms of cases back to the full citation introducing
them – all while automatically pulling them into the indices at the
back of the book.
Some of my more speciﬁc forma ing choices are also worth com-
menting on. At the moment, the book is set primarily in Palatino,
which I chose because it is an a ractive typeface that is widely avail-
able and happens to be Cornell’s principal typeface. (Similarly, the
accent color is Cornell red.) The header typeface, used for the running
heads, the marginal notes and captions, and case names, is Myriad,
which is also widely available.
I think the choice to use splashes of color is a no-brainer. It doesn’t
print out on black-and-white printers, but given that so many people
read so much on screens already, it livens up the experience for the
majority. I also think the use of a contrasting sans-serif font is eas-
ily defensible; it makes entirely clear what is part of the excerpted
material and what is editoral apparatus.

Permissions
Excerpts from cases and statutes are in the public domain as edicts of
government. Congressional reports, excerpts from the MPEP, Copy-
right Compendium and TMEP, and other federal materials are in the
public domain as government works. All other excerpted materials
are used under the fair use provisions of 17 U.S.C. § 107. If you dis-
agree with my interpretation of fair use as applied to any particular
materials, please get in touch with me to discuss.
All of my own contributions to these materials – including any
original writing, edits to existing materials, and the selection and ar-
rangement of those materials – are hereby made available for free
reuse under the terms of the Creative Commons Attribution 4.0 Interna-
tional license. Credit is not important to me, but I do care that you
preserve the license notice if you redistribute these materials.
TABLE OF CONTENTS 33

In Closing
Although I respectfully disagree with the organizational choices and
emphases of all existing casebooks, I have learned a great deal from
them. Many cases in these materials came to my a ention as good
teaching prospects because I found them in other books and admired
how the authors used them. I am grateful to everyone else who has
blazed a trail through the overgrowth that is IP law; I hope they will
not begrudge me blazing one more.
These materials were assembled for my Fall 2016 Intellectual Prop-
erty survey course at Cornell Tech. I may revise and update them the
next time I teach the course. I am sure that many errors remain (in-
deed, I have marked many on my printouts of the chapters) – but
I have not had the to go back and ﬁx even the ones I know of, let
alone to look for the rest. I welcome any comments, suggestions, and
corrections and will try to incorporate them if I am able to make re-
visions. If you would like to customize these materials for your own
use or others’, please get in touch so we can discuss the mechanics.
I hope that you enjoy working with these materials as much as I
have enjoyed assembling them.

November 11, 2016

James Grimmelmann
Cornell Tech and Cornell Law School
james.grimmelmann@cornell.edu
34 TABLE OF CONTENTS
1

Undeveloped Ideas

To understand intellectual property law, it is necessary to understand
the problems it tries to solve. And thus we start with one of the neg-
ative spaces of intellectual property: the submission of undeveloped See Elizabeth L. Rosenblatt, A Theory of
ideas. These ideas – for reasons we will study in detail later – fail to IP's Negative Space, 34 Colum. J. L. &
Arts 317 (2011).
qualify for protection under the various bodies of intellectual prop-
erty law. And yet they still have value, which means there are re-
wards to be reaped by anyone who can create them and get them
into the right hands.

Desny v. Wilder
46 Cal. 2d 715 (1956)
In November, 1949, plaintiﬀ telephoned Wilder’s oﬃce. Wilder’s sec-
Billy Wilder was the famous director of
retary, who was also employed by Paramount, answered, and plain- films such as Double Indemnity (1949)
tiﬀ stated that he wished to see Wilder. At the secretary’s insistence and Some Like It Hot (1959)
that plaintiﬀ explain his purpose, plaintiﬀ “told her about this fantas-
tic unusual story. ... I described to her the story in a few words. ... I
told her that it was the life story of Floyd Collins who was trapped
and made sensational news for two weeks ... and I told her the plot....
I described to her the entrapment and the death, in ten minutes, prob-
ably. She seemed very much interested and she liked it.” Plaintiﬀ In 1925, Floyd Collins was exploring
sought to send Wilder a copy of the story but when the secretary a cave in Kentucky when a rock fell
learned of its length of some 65 pages she stated that Wilder would on his leg, pinning him where he was.
He was trapped about 50 feet under-
not read it, that he wanted stories in synopsis form, that the story
ground and his friends were for sev-
would ﬁrst be sent to the script department, and “in case they think eral days able to reach him from the
it is fantastic and wonderful, they will abbreviate it and condense it cave’s entrance, but neither Collins nor
in about three or four pages, and the producers and directors get to his would-be rescuers could get at the
see it.” Plaintiﬀ protested that he preferred to do the abbreviating rock. The story of the trapped caver
became a media sensation. Unfortu-
of the story himself, and the secretary suggested that he do so. Two nately, by the time a rescue shaft dug
days later plaintiﬀ, after preparing a three or four page outline of the from the surface reached him after two
story, telephoned Wilder’s oﬃce a second time and told the secretary weeks of work, Collins had already died.
the synopsis was ready. The secretary requested plaintiﬀ to read the
synopsis to her over the telephone so that she could take it down in
shorthand, and plaintiﬀ did so. During the conversation the secretary
36 CHAPTER 1. UNDEVELOPED IDEAS

told plaintiﬀ that the story seemed interesting and that she liked it.
“She said that she would talk it over with Billy Wilder and she would
let me know.” Plaintiﬀ on his part told the secretary that defendants
could use the story only if they paid him “the reasonable value of it
... I made it clear to her that I wrote the story and that I wanted to
sell it. ... I naturally mentioned again that this story was my story
which has taken me so much eﬀort and research and time, and there-
fore if anybody used it they will have to pay for it ... She said that if
Billy Wilder of Paramount uses the story, ‘naturally we will pay you
for it.’” Plaintiﬀ’s only subsequent contact with the secretary was a
telephone call to her in July, 1950, to protest the alleged use of his
Ace in The Hole (1951), directed and co- composition and idea in a photoplay. The photoplay, as hereinafter
written by Wilder shown in some detail, closely parallels both plaintiﬀ’s synopsis and
the historical material concerning the life and death of Floyd Collins.
We conclude that conveyance of an idea can constitute valuable
consideration and can be bargained for before it is disclosed to the
proposed purchaser, but once it is conveyed, i.e., disclosed to him
and he has grasped it, it is henceforth his own and he may work with
it and use it as he sees ﬁt. In the ﬁeld of entertainment the producer
may properly and validly agree that he will pay for the service of
conveying to him ideas which are valuable and which he can put to
The court also stated that disclosure proﬁtable use. But, assuming legality of consideration, the idea pur-
might constitute a benefit sufficient to veyor cannot prevail in an action to recover compensation for an ab-
support a future promise to pay. Cf. Re-
stract idea unless (a) before or after disclosure he has obtained an ex-
statement (Second) of Contracts § 86
(“A promise made in recognition of press promise to pay, or (b) the circumstances preceding and a end-
a benefit previously received by the ing disclosure, together with the conduct of the oﬀeree acting with
promisor from the promisee is binding knowledge of the circumstances, show a promise of the type usually
to the extent necessary to prevent in- referred to as “implied” or “implied-in-fact.”
justice.”).
Such inferred or implied promise, if it is to be found at all, must
be based on circumstances which were known to the producer at and
preceding the time of disclosure of the idea to him and he must vol-
untarily accept the disclosure, knowing the conditions on which it
is tendered. The idea man who blurts out his idea without having
ﬁrst made his bargain has no one but himself to blame for the loss
of his bargaining power. The law will not imply a promise to pay
for an idea from the mere facts that the idea has been conveyed, is
valuable, and has been used for proﬁt; this is true even though the
conveyance has been made with the hope or expectation that some
obligation will ensue. So, if the plaintiﬀ here is claiming only for the
conveyance of the idea of making a dramatic production out of the
life of Floyd Collins he must fail unless in conformity with the above
stated rules he can establish a contract to pay.
From plaintiﬀ’s testimony, as epitomized above, it does not ap-
pear that a contract to pay for conveyance of the abstract photoplay
idea had been made, or that the basis for inferring such a contract
37

from subsequent related acts of the defendants had been established,
at the time plaintiﬀ disclosed his basic idea to the secretary. Defen-
dants, consequently, were at that time and from then on free to use
the abstract idea if they saw ﬁt to engage in the necessary research
and develop it to the point of a usable script.
Carter, Justice:
I concur only in the result reached in the majority opinion.
When we consider the diﬀerence in economic and social back-
grounds of those oﬀering such merchandise for sale and those pur-
chasing the same, we are met with the inescapable conclusion that it
is the seller who stands in the inferior bargaining position. It should
be borne in mind that producers are not easy to contact; that those
with authority to purchase for radio and television are surrounded
by a coterie of secretaries and assistants; that magazine editors and
publishers are not readily available to the average person. It should
also be borne in mind that writers have no way of advertising their
wares – that, as is most graphically illustrated by the present opinion,
no producer, publisher, or purchaser for radio or television, is going
to buy a pig in a poke. And, when the writer, in an earnest endeavor
to sell what he has wri en, conveys his idea or his diﬀerent interpre-
tation of an old idea, to such prospective purchaser, he has lost the
result of his labor, deﬁnitely and irrevocably. And, in addition, there
is no way in which he can protect himself. If he says to whomever
he is permi ed to see, or, as in this case, talk with over the telephone,
“I won’t tell you what my idea is until you promise to pay me for it,”
it takes no Sherlock Holmes to ﬁgure out what the answer will be!
This case is a beautiful example of the practical diﬃculties bese ing
a writer with something to sell.
It seems to me that in the ordinary situation, when the so-called
“idea man” has an opportunity to see, or talk with, the prospective
purchaser, or someone in his employ, it is at that time, without any-
thing being said, known to both parties that the one is there to sell,
and the other to buy. This is surely true of a department store when
merchandise is displayed on the counter – it is understood by anyone
entering the store that the merchandise so displayed is for sale – it is
completely unnecessary for the storekeeper, or anyone in his employ,
to state to anyone entering the store that all articles there are for sale.
I am at a loss to see why any diﬀerent rules should apply when it is
ideas for sale rather than normal run of merchandise.

Michael J. Burstein 91 Tex. L. Rev. 227 (2012)
Exchanging Information Without Intellectual Property
An inventor seeking funds or development expertise may be reluc-
tant to disclose information about her invention for fear that the re-
38 CHAPTER 1. UNDEVELOPED IDEAS

cipients of the information can take it for themselves. On the other
side of the transaction, the funders or developers will be unwilling
to commit money or resources to the project unless or until they can
See Kenneth J. Arrow, Economic Welfare assess its value. Arrow observed this dynamic and deemed it a “fun-
and the Allocation of Resources for Inven- damental paradox”: the value of information “for the purchaser is
tion, in The Rate and Direction of Inven-
not known until he has the information, but then he has in eﬀect ac-
tive Activity (1962). It is now usually
called “Arrow’s Information Paradox” in quired it without cost.” More recently, Cooter and his collaborators
his honor. have described this phenomenon as a “double trust dilemma”: “To
develop an innovation, the innovator must trust the investor not to
steal his idea, and the investor must trust the innovator not to steal
his capital.”

Apfel v. Prudential-Bache Securities, Inc.
81 N.Y.2d 470 (1993)
Defendant, an investment bank, seeks to avoid an agreement to pur-
chase plaintiﬀs’ idea for issuing and selling municipal bonds. Its prin-
cipal contention is that plaintiﬀs had no property right in the idea be-
cause it was not novel and, therefore, consideration for the contract
was lacking. For reasons which follow, we conclude that a showing of
novelty is not required to validate the contract. The decisive question
is whether the idea had value, not whether it was novel.
I
In 1982, plaintiﬀs, an investment banker and a lawyer, approached
defendant’s predecessor with a proposal for issuing municipal secu-
rities through a system that eliminated paper certiﬁcates and allowed
bonds to be sold, traded, and held exclusively by means of comput-
erized “book entries”. Initially, the parties signed a conﬁdentiality
agreement that allowed defendant to review the techniques as de-
tailed in a 99-page summary. Nearly a month of negotiations fol-
lowed before the parties entered into a sale agreement under which
plaintiﬀs conveyed their rights to the techniques and certain trade
names and defendant agreed to pay a stipulated rate based on its use
of the techniques for a term from October 1982 to January 1988. Un-
der the provisions of the contract, defendant’s obligation to pay was
to remain even if the techniques became public knowledge or stan-
dard practice in the industry and applications for patents and trade-
marks were denied. Plaintiﬀs asserted that they had not previously
disclosed the techniques to anyone and they agreed to maintain them
in conﬁdence until they became public.
From 1982 until 1985, defendant implemented the contract, al-
though the parties dispute whether amounts due were fully paid.
Defendant actively encouraged bond issuers to use the computerized
“book entry” system and, for at least the ﬁrst year, was the sole under-
writer in the industry employing such a system. However, in 1985,
following a change in personnel, defendant refused to make any fur-
39

ther payments. It maintained that the ideas conveyed by plaintiﬀs
had been in the public domain at the time of the sale agreement and
that what plaintiﬀs sold had never been theirs to sell. Defendant’s
a empts to patent the techniques proved unsuccessful. By 1985, in-
vestment banks were increasingly using computerized systems, and
by 1990 such systems were handling 60% of the dollar volume of all
new issues of municipal securities.
Plaintiﬀs commenced this litigation seeking $45 million in com-
pensatory and punitive damages.
II
Under the traditional principles of contract law, the parties to a con-
tract are free to make their bargain, even if the consideration ex-
changed is grossly unequal or of dubious value. Absent fraud or un-
conscionability, the adequacy of consideration is not a proper subject
for judicial scrutiny. It is enough that something of “real value in the
eye of the law” was exchanged. The fact that the sellers may not have
had a property right in what they sold does not, by itself, render the
contract void for lack of consideration.
Manifestly, defendant received something of value here; its own
conduct establishes that. After signing the conﬁdentiality agreement,
defendant thoroughly reviewed plaintiﬀs’ system before buying it.
Having done so, it was in the best position to know whether the idea
had value. It decided to enter into the sale agreement and aggres-
sively market the system to potential bond issuers. For at least a year,
it was the only underwriter to use plaintiﬀs’ “book entry” system for
municipal bonds, and it handled millions of such bond transactions
during that time. Having obtained full disclosure of the system, used
it in advance of competitors, and received the associated beneﬁts of
precluding its disclosure to others, defendant can hardly claim now
the idea had no value to its municipal securities business. Indeed, de-
fendant acknowledges it made payments to plaintiﬀs under the sale
agreement for more than two years, conduct that would belie any
claim it might make that the idea was lacking in value or that it had
actually been obtained from some other source before plaintiﬀs’ dis-
closure.
III
Defendant’s position rests on Downey v. General Foods Corp., Soule v. Downey: 331 N.Y.2d 56 (1971)
Bon Ami Co. and similar decisions. It contends those cases establish Soule: 201 App. Div. 794 (1922)
an exception to traditional principles of contract law and require that
the idea must be novel before it can constitute valid consideration for
a contract.
In Downey, plaintiﬀ submi ed an idea for an advertising cam-
paign. A short time later, defendant General Foods mounted a cam-
40 CHAPTER 1. UNDEVELOPED IDEAS

paign that was similar to the one plaintiﬀ had suggested and plaintiﬀ
sought damages in a complaint alleging several theories for recovery.
We ordered the dismissal of the complaint on two separate grounds:
ﬁrst, the lack of novelty and, second, defendant’s prior possession of
the idea – i.e., its lack of novelty as to defendant. To the extent plain-
tiﬀ’s causes of action were grounded on assertions of a property right,
we found that they were untenable “if the elements of novelty and
originality [were] absent, since the property right in an idea is based
upon these two elements.” Second, we concluded that the defendant
possessed plaintiﬀ’s ideas prior to plaintiﬀ’s disclosure. Thus, the
ideas could have no value to defendant and could not supply consid-
eration for any agreement between the parties.
In Soule, plaintiﬀ made an express contract with Bon Ami to
disclose a way to increase proﬁts. The idea consisted largely of a
proposal to raise prices. The Appellate Division, in a frequently
cited opinion, denied plaintiﬀ any recovery, ﬁnding that the bargain
lacked consideration because the idea was not novel. This Court af-
ﬁrmed but it did so on a diﬀerent basis: it held that plaintiﬀ had failed
to show that proﬁts resulted from the disclosure.
These decisions do not support defendant’s contention that nov-
elty is required in all cases involving disclosure of ideas. Indeed, we
have explicitly held that it is not. Downey, Soule and cases in that line
of decisions involve a distinct factual pa ern: the buyer and seller
contract for disclosure of the idea with payment based on use, but no
separate postdisclosure contract for use of the idea has been made.
Thus, they present the issue of whether the idea the buyer was using
was, in fact, the seller’s.
Such transactions pose two problems for the courts. On the one
hand, how can sellers prove that the buyer obtained the idea from
them, and nowhere else, and that the buyer’s use of it thus consti-
tutes misappropriation of property? Unlike tangible property, an
idea lacks title and boundaries and cannot be rendered exclusive by
the acts of the one who ﬁrst thinks it. On the other hand, there is no
equity in enforcing a seemingly valid contract when, in fact, it turns
out upon disclosure that the buyer already possessed the idea. In
such instances, the disclosure, though freely bargained for, is mani-
festly without value. A showing of novelty, at least novelty as to the
buyer, addresses these two concerns. Novelty can then serve to estab-
lish both the a ributes of ownership necessary for a property-based
claim and the value of the consideration – the disclosure – necessary
for contract-based claims.
There are no such concerns in a transaction such as the one before
us. Defendant does not claim that it was aware of the idea before
plaintiﬀs disclosed it but, rather, concedes that the idea came from
them. When a seller’s claim arises from a contract to use an idea en-
41

tered into after the disclosure of the idea, the question is not whether
the buyer misappropriated property from the seller, but whether the
idea had value to the buyer and thus constitutes valid consideration.
In such a case, the buyer knows what he or she is buying and has
agreed that the idea has value, and the Court will not ordinarily go be-
hind that determination. The lack of novelty, in and of itself, does not
demonstrate a lack of value. To the contrary, the buyer may reap ben-
eﬁts from such a contract in a number of ways — for instance, by not
having to expend resources pursuing the idea through other channels
or by having a proﬁtmaking idea implemented sooner rather than
later. The law of contracts would have to be substantially rewri en
were we to allow buyers of fully disclosed ideas to disregard their
obligation to pay simply because an idea could have been obtained
from some other source or in some other way.

Bizarro World Problem
Apfel and Desny give us a glimpse of a world without intellectual
property laws. Suppose that you lived in such a world. A client Note that the defendant in Apfel tried
comes to you with one of the following. How would you advise her and failed to obtain a patent on the
computerized-book-entry idea, and
to proceed?
that the plaintiff’s suit proceeded
• A 75,000-word novel about a boy who discovers that he is a wiz- under general principles of contract
ard law. Ideas, such as "a movie about
the death of Floyd Collins," are not
• A new drug for treating heart disease, which will cost $100 mil- copyrightable.
lion to test in humans
• An easier-to-hold design for a pipe wrench
• A process for producing pure aluminum from aluminum ore
that reduces the cost by 85%
• A catchy song about taking revenge on a cheating boyfriend,
recorded in the client’s kitchen with lots of background noise
• A recut version of a popular action movie, which takes ﬁve min-
utes oﬀ the running time and makes it more suspenseful
• A sketch for an elegant oﬀ-the-shoulder dress
• A joke about traﬃc in Los Angeles
• The perfect name for a laundromat

Debt Collection Problem
Debt collection is a shady, high-pressure business. Collection agen-
cies buy unpaid debts in bulk from lenders and from each other, usu-
ally for a fraction of the face value of the debts. The buyer typically re-
ceives a spreadsheet listing the debtors, their addresses, the amounts
they owe, and perhaps some information about previous failed at-
tempts at collection, along with an assignment of the seller’s right to
collect the debt. Then the buyer goes to work, calling the debtor, send-
42 CHAPTER 1. UNDEVELOPED IDEAS

ing le ers, negotiating payment schedules or write-downs of the debt
in exchange for partial payment, and threatening legal action and per-
haps following through, Unsurprisingly, debt collectors are known to
use sharp tactics, including issuing unfounded legal threats, making
repeated calls, trying to collect on debts that have been discharged
in bankruptcy or where the statute of limitations has expired, and
sometimes even intimating the possibility of violence. The federal
Fair Debt Collection Practices Act and numerous state laws try to pre-
vent these abusive tactics. Here is another:
Jake Halpern, Paper Boys, N.Y. Times, Around the same time that Theresa was ge ing phone
Aug. 15, 2014. calls from a mysterious law ﬁrm, Siegel received an email
from the owner of an agency that he had hired to do his
collecting. The collectors at this agency were ge ing the
same message from many debtors: We just paid oﬀ these
accounts – to someone else. Siegel was both ﬂummoxed
and concerned. Was this the work of a renegade collector
at one of his agencies who was collecting on his own and
pocketing the cash? Or had the paper simply been stolen
from his oﬃces?
The notion that a portfolio of debt could be stolen may
seem improbable, but plenty of debt brokers are all too
willing to sell “bad paper.” Such brokers sometimes “dou-
ble sell” or “triple sell” the same ﬁle to multiple unsuspect-
ing buyers. Other times, a broker may sell paper that he
does not own and obtained by nefarious means. I spoke
at length with one debt broker from Buﬀalo, who told me
that he had hired a hacker from China to break into a for-
mer client’s email account and obtain his password. Once
he had the client’s password, the broker had access to his
paper. He then simply took a portfolio and, subsequently,
sold it to another buyer — who didn’t know and didn’t ask
where it came from.
Is this an ”intellectual property” problem? Does it have anything in
common with the problems discussed in Desny and Apfel?
2

Trade Secret

Trade secret law protects against the theft of valuable business secrets. The leading trade secret treatises are
Doctrinally, trade secret law has deep common-law roots as a branch Roger M. Milgrim & Eric Bensen, Mil-
grim on Trade Secrets (Matthew Bender,
of “unfair competition” law. Over time it has become more statutory
on Lexis), Louis Altman & Malla Pol-
and more federal. The Uniform Trade Secrets Act has been adopted lack, Callmann on Unfair Competition,
in some form by 47 states. The federal Economic Espionage Act crimi- Trademarks, and Monopolies (Thomson
nalized an important subset of trade secret misappropriation, and the West, on Westlaw), and Melvin F. Jager,
2016 Defend Trade Secrets Act added a federal civil cause of action Trade Secrets Law (Thomson West, on
Westlaw). The older Restatement (First)
and an important seizure remedy.
of Torts and the newer Restatement
Why protect trade secrets? At least four stories rub elbows in the (Third) of Unfair Competition are regu-
cases and commentary. larly cited.
• Contracting: protecting trade secrets helps resolve Arrow’s In-
formation Paradox by making it possible to contract securely
for disclosing them.
• Innovation: keeping secrets safe gives companies incentives to
invest in creating valuable information in the ﬁrst place.
• Arms Race: unless trade secrets received legal protection, com-
panies would ineﬃciently overinvest in self-help to protect
them, and other companies would ineﬃciently overinvest in
stealing them.
• Competition: trade secret law deters unethical business prac-
tices and encourages companies to compete with each other
fairly.

A Subject Matter

Restatement (Third) of Unfair Competition

A trade secret is any information that can be used in the operation of § 39
a business or other enterprise and that is suﬃciently valuable and se- Definition of Trade Secret
cret to aﬀord an actual or potential economic advantage over others.
44 CHAPTER 2. TRADE SECRET

cmt. e Subject ma er. – A trade secret can consist of a formula, pa ern,
compilation of data, computer program, device, method, tech-
nique, process, or other form or embodiment of economically
valuable information. A trade secret can relate to technical mat-
ters such as the composition or design of a product, a method of
manufacture, or the know-how necessary to perform a particu-
lar operation or service. A trade secret can also relate to other
aspects of business operations such as pricing and marketing
techniques or the identity and requirements of customers.
The prior Restatement of this topic limited the subject ma er
of trade secret law to information capable of ”continuous use in
the operation of a business,” thus excluding information relat-
ing to single events such as secret bids and impending business
announcements or information whose secrecy is quickly de-
stroyed by commercial exploitation. Both the case law and the
prior Restatement, however, oﬀered protection against the ”im-
proper” acquisition of such short-term information under rules
virtually identical to those applicable to trade secrets. The def-
inition of ”trade secret” adopted in the Uniform Trade Secrets
Act does not include any requirement relating to the duration
of the information’s economic value. The deﬁnition adopted in
this Section similarly contains no requirement that the informa-
tion aﬀord a continuous or long-term advantage.

Not every secret is a trade secret. When one ﬁfth-grader asks another
to cross her heart and hope to die before revealing a bit of gossip
about a mutual friend, this is not the kind of secret the courts will
take an interest in. The economic value requirement performs this
screening function.
In theory, economic value could be a threshold test: the courts
could ask whether particular information is valuable enough for
trade secret law to protect. But in practice, the threshold of value
is so low it rarely ma ers. “It is suﬃcient if the secret provides an ad-
Restatement (Third) of Unfair Competi- vantage that is more than trivial.” Instead, economic value expresses
tion § 39 cmt. e a general exclusion from trade secret subject ma er. Personal – rather
than professional – secrets are the wrong sort of thing for trade secret
law.

Religious Technology Center v. Netcom On-Line Communications
Services, Inc.
923 F. Supp. 1231 (N.D. Cal. 1995)
Plaintiﬀs, two Scientology-aﬃliated organizations claiming copy-
right and trade secret protection for the writings of the Church’s
A. SUBJECT MATTER 45

founder, L. Ron Hubbard, brought this suit against defendant Den-
nis Erlich, a former Scientology minister turned vocal critic of the
Church, who allegedly put plaintiﬀs’ protected works onto the In-
ternet.
I. B
Defendant Dennis Erlich was a member of the Church of Scientol-
ogy from approximately 1968 until 1982. During his years with the
Church, Erlich received training to enable him to provide ministerial
counseling services, known as “auditing.” While with the Church, Er-
lich had access to various Scientology writings, including those of the
Church’s founder, L. Ron Hubbard, which the Church alleges include
published literary works as well as unpublished conﬁdential materi-
als (the “Advanced Technology works”). According to plaintiﬀs, Er-
lich had agreed to maintain the conﬁdentiality of the Advanced Tech-
nology works.
Since leaving the Church, Erlich has been a vocal critic of Scien-
tology and he now considers it part of his calling to foster critical de-
bate about Scientology through humorous and critical writings. Er-
lich has expressed his views about the Church by contributing to the
Internet “Usenet news-group” called “alt.religion.scientology” (“the
newsgroup’’), which is an on-line forum for the discussion of issues
related to Scientology.
Plaintiﬀ Religious Technology Center (“RTC’’), a nonproﬁt reli-
gious corporation, “was formed by Scientologists, with the approval
of Hubbard, to act as the protector of the religion of Scientology and
to own, protect, and control the utilization of the Advanced Technol-
ogy in the United States.”
RTC allege[s] that Erlich misappropriated its trade secrets in the
works, the conﬁdentiality of which it alleges has been the subject of
elaborate security measures. RTC further claims that those works are
extremely valuable to the Church. Erlich admits to having posted ex-
cerpts from some of the works, but argues that the quotations were
used to provide context for debate and as a basis for his criticism. Er-
lich further argues that he has neither claimed authorship of any of
the works nor personally proﬁted from his critique, satire, and com-
mentary. Erlich contends that all of the documents he posted had
been previously posted anonymously over the Internet, except for
one, which he claims he received anonymously through the mail.
C. Likelihood of Success on Trade Secret Claim
In the third cause of action, plaintiﬀ RTC alleges that Erlich misap-
propriated its trade secrets. California has adopted a version of the Cal. Civ. Code § 3426.1 et seq.
Uniform Trade Secret Act.
46 CHAPTER 2. TRADE SECRET

To establish its trade secret claim, RTC must show, inter alia,
that the Advanced Technology works (1) have independent economic
value to competitors and (2) have been kept conﬁdential.
1. Nature of Works
As a preliminary ma er, Erlich argues that the Advanced Technol-
ogy works cannot be trade secrets because of their nature as religious
Wollersheim: 796 F.2d 1076 (9th Cir. scriptures. In Religious Technology Center v. Wollersheim, the Ninth Cir-
1986) cuit rejected the Church’s application for a preliminary injunction on
the basis of a trade secret claim against a splinter Scientology group
that had acquired stolen copies of the Advanced Technology. The
Church argued not that the works gave them a competitive market
advantage but that disclosure of the works would cause its adher-
ents “religious harm from premature unsupervised exposure to the
materials.” Although the Ninth Circuit rejected plaintiﬀs’ trade se-
cret argument based on the spiritual value of the harm, it later noted
that it had left open the question of whether the Advanced Technol-
ogy works could qualify as trade secrets, assuming plaintiﬀs could
prove that the secrets confer on them an actual economic advantage
over competitors. Nonetheless, the court noted that such an allega-
tion would “raise grave doubts about the Church’s claim as a religion
and a not-for-proﬁt corporation.”
The Church contends that the Advanced Technology works con-
sist of “processes and the theory behind those processes that are to
be used precisely as set forth by L. Ron Hubbard to assist the parish-
ioner in achieving a greater spiritual awareness and freedom.” Erlich
responds that the works are essentially religious texts. Erlich argues
that the Church cannot have trade secrets because trade secret law
is necessarily related to commerce. The Church contends that, like
other organizations, it must pay bills, and that licensing fees from
these documents allow it to continue operating.
The Church’s status as a religion does not itself preclude it from
holding a trade secret. R § 39 cmt. d (“[N]onproﬁt entities
such as ... religious organizations can also claim trade secret protec-
tion for economically valuable information such as lists of prospec-
tive members or donors.’’); UTSA § 3426.1(c) (deﬁning “person” to
include a “corporation ... or any other legal or commercial entity”).
Vien: 827 F. Supp. 629 (S.D. Cal. 1993) With the exception of Bridge Publications, Inc. v. Vien [(another Sci-
entology case)], there is li le authority to support a ﬁnding that re-
ligious materials can constitute trade secrets. However, there is “no
category of information [that] is excluded from protection as a trade
Clark: 453 F.2d 1006 (9th Cir.1972) secret because of its inherent qualities.” Clark v. Bunker (upholding as
a trade secret a “detailed plan for the creation, promotion, ﬁnancing,
and sale of contracts for ‘prepaid’ or ‘pre-need’ funeral services”).
Nor is there any authority to support Erlich’s argument that the
A. SUBJECT MATTER 47

Church’s religious texts cannot be trade secrets because, unlike most
trade secrets, these secrets are not used in the production or sales
of a commodity but are the commodities themselves. The Church’s Ad-
vanced Technology “course” materials, which are an integral part of
the Church’s spiritual counseling techniques, do not appear funda-
mentally diﬀerent from the course manuals upheld as trade secrets
in SmokEnders, Inc. v. Smoke No More, Inc.: SmokEnders: 184 U.S.P.Q. 309 (S.D. Fla.
1974)
The SmokEnders (“SE’’) program requires a endees to
follow a rigid structured regimen comprised of speciﬁc
assignments and detailed concepts as recited in the man-
ual.
The SE program is a step-by-step regimented program
which requires that each person a ending a SE program
perform each act of the program at a particular time. Each
act required by a SE seminar a endee must be performed
by a endees at the same time in the program, with each a
minimum departure from the program.
The SE trade secret resides in the composite program
as it is arranged for step-by-step delivery to the a endees.
SmokEnders is arguably distinguishable because only the “modera-
tors” and not the a endees were given access to the course materi-
als in that case. However, the adherents of the Church, unlike the
a endees and like the moderators in SmokEnders, are under a duty
of conﬁdentiality as to the materials. This case is analogous to Smok-
Enders because in both cases the “commodity” that is produced from
the trade secrets is the result achieved by the person using the course
materials and their techniques (whether it be stopping smoking or
reaching a “higher spiritual existence”).
Thus, there is at least some precedent for granting trade secret sta-
tus to works that are techniques for improving oneself (though not
speciﬁcally spiritually). Conversely, there is no authority for exclud-
ing religious materials from trade secret protection because of their
nature. Indeed, there is no authority for excluding any type of in-
formation because of its nature. While the trade secret laws did not
necessarily develop to allow a religion to protect a monopoly in its re-
ligious practices, the laws have nonetheless expanded such that the
Church’s techniques, which clearly are “used in the operation of the
enterprise,” are deserving of protection if secret and valuable. Restatement (Third) of Unfair Competi-
Although trade secret status may apply to works that are tech- tion § 39
niques for spiritually improving oneself, the secret aspect of those
techniques must be deﬁned with particularity. See R (re- § 39 cmt. d
quiring plaintiﬀ to deﬁne the information claimed as a trade secret
with suﬃcient deﬁniteness). It appears that plaintiﬀs are claiming
that the entire works themselves, which they describe as “processes
48 CHAPTER 2. TRADE SECRET

and the theory behind those processes,” constitute the trade secrets.
This deﬁnition is problematic because it is impossible to determine
when the “secret” has been lost after portions of the works have been
disclosed. Although plaintiﬀs’ deﬁnition has at least some support
in SmokEnders, where the court upheld as a trade secret a “composite
stop-smoking program” found in an instructional manual, this court
is not satisﬁed that plaintiﬀs have identiﬁed their trade secrets with
suﬃcient deﬁniteness to support injunctive relief.
2. Independent Economic Value
A trade secret requires proof of independent economic value, actual
or potential, from not being generally known to the public or to other
persons who can obtain economic value from its disclosure or use. A
trade secret must have suﬃcient value in the owner’s operation of its
enterprise such that it provides an actual or potential advantage over
others who do not possess the information.
RTC’s president, Warren McShane, a ests that
The Advanced Technology is a source of substantial rev-
enue for RTC in the form of licensing fees paid by
Churches that are licensed to use the Advanced Tech-
nology. These Churches themselves receive a signiﬁcant
amount of their income from donations by parishioners
for services based upon the Advanced Technology. These
Churches pay RTC a percentage of the donations paid by
parishioners for the services based upon the Advanced
Technology. These donations and fees provide the major-
ity of operating expenses of these various Church organi-
zations.
The Church’s need for revenues to support its services is no less be-
cause of its status as a religion. RTC points out that it receives six per-
cent of what the individual churches receive in licensing fees. This
evidence is suﬃcient to establish the value of the Advanced Technol-
ogy works to the Church.
Erlich also argues that, to constitute a trade secret, information
must give its owner a competitive advantage, which implies that the
Church must have competitors. Although Erlich is clearly not a “com-
petitor” of the Church, there is no requirement that a trade secret have
any value to the defendant; the value can be to others who do not pos-
sess it. This evidence can be shown by direct evidence of the impact
of the information on the business or by circumstantial evidence of
the resources invested in producing the information, the precautions
taken to protect its secrecy, and the willingness of others to pay for
its access. The several past instances of breakaway Scientology-like
groups exploiting RTC’s Advanced Technology works for their proﬁt
A. SUBJECT MATTER 49

constitute reasonable circumstantial evidence that these works give
the Church a competitive advantage. In fact, McShane’s declaration
constitutes direct evidence that the works have a signiﬁcant impact
on the donations received by the Church, providing a majority of its
operating expenses. The status of the Advanced Technology works
as trade secrets should not depend on Erlich’s use of them. Accord-
ingly, this court ﬁnds support for the court’s conclusion in Vien that
the Church has shown independent economic value.
3. Secrecy
Information is protectable as a trade secret where the owner has
taken eﬀorts that are reasonable under the circumstances to main-
tain its secrecy. “Reasonable eﬀorts” can include advising employ-
ees of the existence of a trade secret, limiting access to the informa-
tion on a “need to know basis,” The court ﬁnds that RTC has put
forward suﬃcient evidence that it took steps that were reasonable
under the circumstances to protect its purported trade secrets. RTC’s
president describes elaborate means taken to ensure the conﬁdential-
ity of the Advanced Technology works, including use of locked cab-
inets, safes, logging and identiﬁcation of the materials, availability
of the materials at only a handful of sites worldwide, electronic sen-
sors a ached to documents, locked briefcases for transporting works,
alarms, photo identiﬁcations, security personnel, and conﬁdentiality
agreements for all of those given access to the materials. McShane
testiﬁes that all copies of the Advanced Technology works that are
outside of the Church were gained through improper means, such
as by theft. Thirty-ﬁve other declarants conﬁrm that the measures
mentioned by McShane have been used, though not in exactly the
same manner, in other Churches and at other times. There is further
evidence that Erlich himself signed conﬁdentiality agreements with
respect to the Advanced Technology materials and, speciﬁcally, the
upper-level “NOTS” course materials. The court is unpersuaded by
Erlich’s claims that the Church’s measures have not covered all loca-
tions where the Advanced Technology works are found and do not
cover crucial time periods. Eﬀorts at maintaining secrecy need not
be extreme, just reasonable under the circumstances. The Church has
made more than an adequate showing on this issue.25
25
The notion that the Church’s trade secrets are disclosed to thousands of parish-
ioners makes this a rather unusual trade secrets case. However, because parish-
ioners are required to maintain the secrecy of the materials, the court sees no rea-
son why the mere fact that many people have seen the information should negate
the information’s trade secret status. While it is logically more likely that a secret
will leak out when more people are entrusted with it, absent evidence of leakage
the court ﬁnds that giving out the secrets to a large number of people, though no
more than necessary, is not itself an unreasonable security step.
50 CHAPTER 2. TRADE SECRET

Erlich raises a number of objections to the Church’s claims of con-
ﬁdentiality. Erlich argues that the Church’s trade secrets have been
made available to the public through various means. The unpro-
tected disclosure of a trade secret will cause the information to for-
feit its trade secret status, since “information that is generally known
or readily ascertainable through proper means by others is not pro-
Restatement § 39 cmt. f. tectable as a trade secret.” Once trade secrets have been exposed to
the public, they cannot later be recalled.
Erlich argues that many of the Advanced Technology documents
Fishman: No. 91-6426 (C.D. Cal. 1994) have been available in open court records in another case, Church
of Scientology Int’l v. Fishman, destroying the necessary element of
secrecy. However, the Fishman court recently issued an order seal-
ing the ﬁle pending a decision on whether the documents are trade
secrets. Even if those records were temporarily open to the public,
the court will not assume that their contents have been generally dis-
closed, especially when this question is still pending before the dis-
trict court in Fishman. Such a disclosure, without evidence that the se-
crets have become generally known, does not necessarily cause RTC
to forfeit its trade secrets. The contrary result would mean that if doc-
uments were ever ﬁled without a sealing order, even for a short time,
the court would not be able to decide that they should be sealed be-
cause the documents would have lost their potential trade secret sta-
tus by virtue of the temporary unsealing. The only fair result would
be to allow trade secret status for works that are otherwise protectable
as trade secrets unless they were somehow made generally available
to the public during the period they were unsealed, such as by publi-
cation.
Erlich further asserts that the Advanced Technology has been
largely disclosed in the popular press. These articles may reveal in-
formation referring to or hinting at the trade secrets, but may not dis-
close the secrets themselves, see However, as previously noted, the
court is not certain how to properly deﬁne the “secrets.” To the ex-
tent that someone uses or discloses any information taken from any of
these articles, there is clearly no trade secret claim. However, much of
Erlich’s postings copied all or almost all of sections of the Advanced
Technology works, which is far more than has ever been disclosed
in the popular press. In fact, several of the works posted by Erlich
are not mentioned in any of the clippings in the Berger declaration.
Arguably, the Church’s alleged secrets are such that their value de-
pends on the availability of the complete courses and not mere frag-
ments, thus disclosures that describe parts of the works or disclose
isolated portions do not necessarily suﬃce to ruin the value of the en-
tire works as secrets. However, without a clearer deﬁnition of what
constitute the “secrets,” the court is unable to determine whether
some have been made generally known to the public.
A. SUBJECT MATTER 51

Finally, Erlich newly emphasizes in his Reply that the works he
posted were not secrets because he received them through proper
means: eight of the documents were allegedly previously posted
anonymously to a public portion of the Internet and one of the doc-
uments allegedly came to Erlich anonymously through the U.S. mail.
Erlich claims that because the alleged trade secrets were received
from “public sources,” they should lose their trade secret protection.
Although the Internet is a new technology, it requires no great leap
to conclude that because more than 25 million people could have ac-
cessed the newsgroup postings from which Erlich alleges he received
the works, these works would lose their status as secrets. While the
Internet has not reached the status where a temporary posting on a
newsgroup is akin to publication in a major newspaper or on a tele-
vision network, those with an interest in using the Church’s trade se-
crets to compete with the Church are likely to look to the newsgroup.
Thus, posting works to the Internet makes them “generally known”
to the relevant people – the potential “competitors” of the Church.
The court is troubled by the notion that any Internet user, includ-
ing those using “anonymous remailers” to protect their identity, can
destroy valuable intellectual property rights by posting them over the
Internet, especially given the fact that there is li le opportunity to
screen postings before they are made. Nonetheless, one of the Inter-
net’s virtues, that it gives even the poorest individuals the power to
publish to millions of readers, can also be a detriment to the value of
intellectual property rights. The anonymous (or judgment proof) de-
fendant can permanently destroy valuable trade secrets, leaving no
one to hold liable for the misappropriation. Although a work posted
to an Internet newsgroup remains accessible to the public for only a
limited amount of time, once that trade secret has been released into
the public domain there is no retrieving it. While the court is per-
suaded by the Church’s evidence that those who made the original
postings likely gained the information through improper means, as
no one outside the Church or without a duty of conﬁdence would
have had access to those works, this does not negate the ﬁnding that,
once posted, the works lost their secrecy. Although Erlich cannot
rely on his own improper postings to support the argument that the
Church’s documents are no longer secrets, evidence that another in-
dividual has put the alleged trade secrets into the public domain pre-
vents RTC from further enforcing its trade secret rights in those mate-
rials. Because there is no evidence that Erlich is a privy of any of the
alleged original misappropriators, he is not equitably estopped from
raising their previous public disclosures as a defense to his disclo-
sure. The court is thus convinced that those postings made by Erlich
were of materials that were possibly already generally available to
the public. Therefore, RTC has not shown a likelihood of success on
52 CHAPTER 2. TRADE SECRET

an essential element of its trade secret claim.

B Ownership

Uniform Trade Secrets Act

§1
(4) “Trade secret” means information, including a formula, pa ern,
Definitions compilation, program, device, method, technique, or process,
that:
(i) derives independent economic value, actual or potential,
from not being generally known to, and not being readily
ascertainable by proper means by, other persons who can
obtain economic value from its disclosure or use, and
(ii) is the subject of eﬀorts that are reasonable under the cir-
cumstances to maintain its secrecy.

It is clear, uncontroversial, and unsurprising that the essential re-
quirement for owning a trade secret is actual secrecy: the information
must not be widely known. The concept is not complicated, but it is
subtle. “Secrecy” is something of a term of art; whether something is
considered secret as a factual ma er depends heavily on what kinds
Most of this chapter is devoted to help- of observation and disclosure trade secret law will protect against.
ing you understand this sentence. But because this book is, well, this book, we will also direct our at-
tention to two other important facts about the way the actual-secrecy
element operates. It resolves priority questions by allowing multiple
independent parties each to have a trade secret in the same informa-
tion. And it resolves questions of allocating ownership within collab-
orations by looking to contract, agency, and employment law.

1 Actual Secrecy

United States v. Lange
312 F.3d 263 (7th Cir. 2002)
Ma hew Lange has been convicted of violating 18 U.S.C. § 1832, part
of the Economic Espionage Act of 1996. This statute makes it a felony
to sell, disseminate, or otherwise deal in trade secrets, or a empt to
do so, without the owner’s consent. Lange stole computer data from
Replacement Aircraft Parts Co. (RAPCO), his former employer, and
a empted to sell the data to one of RAPCO’s competitors. He allows
that his acts violated § 1832, if the data contained “trade secrets,” but
denies that the data met the statutory deﬁnition [that the] ”informa-
tion derives independent economic value, actual or potential, from
B. OWNERSHIP 53

not being generally known to, and not being readily ascertainable
through proper means by, the public.” 18 U.S.C. § 1839
RAPCO is in the business of making aircraft parts for the after-
market. It buys original equipment parts, then disassembles them to
identify (and measure) each component. This initial step of reverse
engineering, usually performed by a drafter such as Lange, produces
a set of measurements and drawings. Because this case involves an
eﬀort to sell the intellectual property used to make a brake assembly,
we use brakes as an illustration.
Knowing exactly what a brake assembly looks like does not enable
RAPCO to make a copy. It must ﬁgure out how to make a substitute
with the same (or be er) technical speciﬁcations. Aftermarket manu-
facturers must experiment with diﬀerent alloys and compositions un-
til they achieve a process and product that fulﬁls requirements set by
the Federal Aviation Administration for each brake assembly. Com-
pleted assemblies must be exhaustively tested to demonstrate, to the
FAA’s satisfaction, that all requirements have been met; only then
does the FAA certify the part for sale. For brakes this entails 100 de-
structive tests on prototypes, bringing a spinning 60-ton wheel to a
halt at a speciﬁed deceleration measured by a dynamometer. Fur-
ther testing of ﬁnished assemblies is required. It takes RAPCO a
year or two to design, and obtain approval for, a complex part; the
dynamometer testing alone can cost $75,000. But the process of ex-
perimenting and testing can be avoided if the manufacturer demon-
strates that its parts are identical (in composition and manufacturing
processes) to parts that have already been certiﬁed. What Lange, a
disgruntled former employee, oﬀered for sale was all the informa-
tion required to obtain certiﬁcation of several components as identi-
cal to parts for which RAPCO held certiﬁcation. Lange included with
the package – which he oﬀered via the Internet to anyone willing to
pay his price of $100,000 – a pirated copy of AutoCAD, the computer-
assisted drawing software that RAPCO uses to maintain its drawings
and speciﬁcations data. One person to whom Lange tried to peddle
the data informed RAPCO, which turned to the FBI. Lange was ar-
rested following taped negotiations that supply all the evidence nec-
essary for conviction – if the data satisfy the statutory deﬁnition of
trade secrets.
According to Lange, all data obtained by reverse engineering
some other product are “readily ascertainable ... by the public” be-
cause everyone can do what RAPCO did: buy an original part, disas-
semble and measure it, and make a copy. The prosecutor responds
to this contention by observing that “the public” is unable to reverse
engineer an aircraft brake assembly.
The prosecutor’s assumption is that the statutory reference in
§ 1839(3) to “the public” means the general public – the man in the
54 CHAPTER 2. TRADE SECRET

street. Ordinary people don’t have AutoCAD and 60-ton ﬂywheels
ready to hand. But is the general public the right benchmark?
A problem with using the general public as the reference group
for identifying a trade secret is that many things unknown to the pub-
lic at large are well known to engineers, scientists, and others whose
intellectual property the Economic Espionage Act was enacted to pro-
tect. This makes the general public a poor benchmark for separating
commercially valuable secrets from obscure (but generally known)
information. Suppose that Lange had oﬀered to sell Avogadro’s num-
ber for $1. Avogadro’s number, 6.02×1023 , is the number of molecules
per mole of gas. It is an important constant, known to chemists since
1909 but not to the general public (or even to all recent graduates of a
chemistry class). We can’t believe that Avogadro’s number could be
called a trade secret. Other principles are known without being com-
prehended. Most people know that E = mc2 , but a pop quiz of the
general public would reveal that they do not understand what this
means or how it can be used productively.
One might respond that the context of the word “public” ad-
dresses this concern. The full text of § 1839(3)(B) is: “the informa-
tion derives independent economic value, actual or potential, from
not being generally known to, and not being readily ascertainable
through proper means by, the public”. Avogadro’s number and other
obscure knowledge is not “generally known to” the man in the street
but might be deemed “readily ascertainable to” this hypothetical per-
son. It appears in any number of scientiﬁc handbooks. Similarly one
can visit a library and read Einstein’s own discussion of his famous
equation. Members of the general public can ascertain even abstruse
information, such as Schrodinger’s quantum ﬁeld equation, by con-
sulting people in the know – as high school dropouts can take advan-
tage of obscure legal rules by hiring lawyers.
Section 1839(3)(B) as a whole refers to the source of economic
value – that the information is not known to or easily discoverable
by persons who could use it productively. And for purposes of this
case those people would be engineers and manufacturers of aircraft
parts, who have ample means to reverse engineer their competitors’
products. It is by keeping secrets from its rivals that RAPCO captures
the returns of its design and testing work. Thus it is unnecessary here
to decide whether “general” belongs in front of “public” – for even if
it does, the economically valuable information is not “readily ascer-
tainable” to the general public, the educated public, the economically
relevant public, or any sensible proxy for these groups.
Lange wants us to proceed as if all he tried to sell were measure-
ments that anyone could have taken with calipers after disassembling
an original-equipment part. Such measurements could not be called
trade secrets if, as Lange asserts, the assemblies in question were easy
B. OWNERSHIP 55

to take apart and measure. But no one would have paid $100,000
for metes and bounds, while Lange told his customers that the data
on oﬀer were worth more than that asking price. Which they were.
What Lange had, and tried to sell, were the completed speciﬁcations
and engineering diagrams that reﬂected all the work completed af-
ter the measurements had been taken: the metallurgical data, details
of the sintering, the results of the tests, the plans needed to produce
the ﬁnished goods, everything required to get FAA certiﬁcation of a
part supposedly identical to one that had been approved. Those de-
tails “derived independent economic value, actual or potential, from
not being generally known to, and not being readily ascertainable
through proper means by, the public.” Every ﬁrm other than the
original equipment manufacturer and RAPCO had to pay dearly to
devise, test, and win approval of similar parts; the details unknown to
the rivals, and not discoverable with tape measures, had considerable
“independent economic value … from not being generally known”. A
sensible trier of fact could determine that Lange tried to sell trade se-
crets. It was his customer’s cooperation with the FBI, and not public
access to the data, that prevented closing of the sale.

Learning Curve Toys, Inc. v. PlayWood Toys, Inc.
342 F. 3d 714 (7th Cir. 2003)
PlayWood Toys, Inc. (“PlayWood”) obtained a jury verdict against
Learning Curve Toys, Inc. and its representatives, Roy Wilson, Harry
Abraham and John Lee (collectively, “Learning Curve”), for misap-
propriation of a trade secret in a realistic looking and sounding toy
railroad track under the Illinois Trade Secrets Act 765 ILCS 1065/1 et seq.

I. B
In 1992, Robert Clausi and his brother-in-law, Sco Moore, began cre-
ating prototypes of wooden toys under the name PlayWood Toys,
Inc., a Canadian corporation. Clausi was the sole toy designer and
Moore was the sole oﬃcer and director of PlayWood. Neither Clausi
nor Moore had prior experience in the toy industry, but Clausi had
“always been a bit of a doodler and designer,” and the two men de-
sired to “create high-quality hardwood maple toys for the indepen-
dent toy market.” As a newly formed corporation, PlayWood did not
own a facility in which it could produce toys. Instead, it worked in
conjunction with Mario Borsato, who owned a wood-working facil-
ity. Subject to a wri en conﬁdentiality agreement with PlayWood,
Borsato manufactured prototypes for PlayWood based on Clausi’s
design speciﬁcations.
PlayWood’s ﬁrst a empt to market publicly its toys was at the
Toronto Toy Fair on January 31, 1992. PlayWood received favorable
reviews from many of the toy retailers in a endance; PlayWood also
learned that the best way to get recognition for its toys was to a end
56 CHAPTER 2. TRADE SECRET

the New York Toy Fair (“Toy Fair”) the following month. Based on
this information, Clausi and Moore secured a position at the Toy Fair
in order to display PlayWood’s prototypes. It was during this Toy
Fair that Clausi and Moore ﬁrst encountered Learning Curve repre-
sentatives Roy Wilson, Harry Abraham and John Lee.
On the morning of February 12, 1993, the ﬁrst day of the Toy
Fair, Roy Wilson stopped at PlayWood’s booth and engaged Clausi
and Moore in conversation. Wilson identiﬁed himself as Learning
Curve’s toy designer and explained that his company had a license
from the Bri Allcroft Company to develop Thomas the Tank Engine
& Friends™ (hereinafter “Thomas”) trains and accessories. Wilson
commented that he was impressed with the look and quality of Play-
Wood’s prototypes and raised the possibility of working together un-
der a custom manufacturing contract to produce Learning Curve’s
line of Thomas products. Clausi and Moore responded that such
an arrangement would be of great interest to PlayWood. Later that
same day, Harry Abraham, Learning Curve’s vice president, and
John Lee, Learning Curve’s president, also stopped by PlayWood’s
booth. They too commented on the quality of PlayWood’s prototypes
and indicated that PlayWood might be a good candidate for a manu-
facturing contract with Learning Curve.
Clausi and Moore continued to have discussions with Learning
Curve’s representatives over the remaining days of the Toy Fair,
which ended on February 14. During these discussions, Lee indicated
that he would like two of his people, Abraham and Wilson, to visit
PlayWood in Toronto the day after the Toy Fair ended in order to
determine whether the two parties could work out a manufacturing
arrangement for some or all of Learning Curve’s wooden toys.
On February 18, 1993, Abraham and Wilson visited PlayWood
in Toronto as planned. The meeting began with a tour of Borsato’s
woodworking facility, where the prototypes on display at the Toy
Fair had been made. After the tour, the parties went to the confer-
ence room at Borsato’s facility. At this point, according to Clausi and
Moore, the parties agreed to make their ensuing discussion conﬁden-
tial. Clausi testiﬁed:
After we sat down in the board room, Harry [Abraham of
Learning Curve] immediately said: “Look, we’re going to
disclose conﬁdential information to you guys, and we’re
going to disclose some designs that Roy [Wilson of Learn-
ing Curve] has that are pre y conﬁdential. If Brio were to
get their hands on them, then we wouldn’t like that. And
we’re going to do it under the basis of a conﬁdential un-
derstanding.”
And I said: “I also have some things, some ideas on
B. OWNERSHIP 57

how to produce the track and produce the trains now that
I’ve had a chance to look at them for the last couple of
days, and I think they’re conﬁdential as well. So if we’re
both okay with that, we should continue.” So we did.
Moore testiﬁed to the existence of a similar conversation:
It was at this point that Harry Abraham told us that
they were going to disclose some conﬁdential documents,
drawings, pricing, margins, and asked us if we would
keep that information conﬁdential. ...
I believe it was Robert [Clausi] who said that, you
know, absolutely, we would keep it conﬁdential. In fact,
we had some ideas that we felt would be conﬁdential we
would be disclosing to them, and would they keep it, you
know, conﬁdential? Would they reciprocate? And Harry
[Abraham] said: “Absolutely.” And then we proceeded
to go along with the meeting.
Immediately after the parties agreed to keep their discussion conﬁ-
dential, Wilson, at Abraham’s direction, showed Clausi and Moore
drawings of various Thomas characters and provided information on
the projected volume of each of the products. Clausi testiﬁed that he
considered the documents disclosed by Learning Curve during the
meeting conﬁdential because they included information on products
not yet released to the public, as well as Learning Curve’s projected
volumes, costs and proﬁt margins for various products.
The parties’ discussion eventually moved away from train pro-
duction and focused on track design. Wilson showed Clausi and
Moore drawings of Learning Curve’s track and provided samples
of their current product. At this point, Abraham conﬁded to Clausi
and Moore that track had posed “a bit of a problem for Learning
Curve.” Abraham explained that sales were terriﬁc for Learning
Curve’s Thomas trains, but that sales were abysmal for its track.
Abraham a ributed the lack of sales to the fact that Learning Curve’s
track was virtually identical to that of its competitor, Brio, which had
the lion’s share of the track market. Because there was “no diﬀerenti-
ation” between the two brands of track, Learning Curve’s track was
not even displayed in many of the toy stores that carried Learning
Curve’s products. Learning Curve had worked unsuccessfully for
several months a empting to diﬀerentiate its track from that of Brio.
After detailing the problems with Learning Curve’s existing track,
Abraham inquired of Clausi whether “there was a way to diﬀerenti-
ate” its track from Brio’s track. Clausi immediately responded that he
“had had a chance to look at the track and get a feel for it [over] the last
few days” and that his “thoughts were that if the track were more real-
58 CHAPTER 2. TRADE SECRET

istic and more functional, that kids would enjoy playing with it more
and it would give the retailer a reason to carry the product, especially
if it looked diﬀerent than the Brio track.” Clausi further explained
that, if the track “made noise and [] looked like real train tracks, that
the stores wouldn’t have any problem, and the Thomas the Tank line,
product line would have [] its own diﬀerent track” and could “eﬀec-
tively compete with Brio.” Abraham and Wilson indicated that they
were “intrigued” by Clausi’s idea and asked him what he meant by
“making noise.”
Clausi decided to show Abraham and Wilson exactly what he
meant. Clausi took a piece of Learning Curve’s existing track
from the table, drew some lines across the track (about every three-
quarters of an inch), and stated: “We can go ahead and machine
grooves right across the upper section, which would look like railway
tracks, and down below machine li le 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 then called Bor-
sato into the conference room and asked him to cut grooves into the
wood “about a quarter of an inch deep from the top surface.” Borsato
left the room, complied with Clausi’s request, and returned with the
cut track three or four minutes later. Clausi ran a train back and forth
over the cut piece of track. The track looked more realistic than before,
but it did not make noise because the grooves were not deep enough.
Accordingly, Clausi instructed Borsato to cut the grooves “just a li le
bit deeper so that they go through the rails.” Borsato complied with
Clausi’s request once again and returned a few minutes later with
the cut piece of track. Clausi proceeded to run a train back and forth
over the track. This time the track made a “clickety-clack” sound,
but the train did not run smoothly over the track because the grooves
were cut “a li le bit too deep.” Based on the sound produced by the
track, Clausi told Abraham and Moore that if PlayWood procured a
contract with Learning Curve to produce the track, they could call it
“Clickety-Clack Track.”
Both Abraham and Wilson indicated that Clausi’s concept of cut-
ting grooves into the track to produce a clacking sound was a novel
concept. Thereafter, Wilson and Clausi began to discuss how they
could improve the idea to make the train run more smoothly on the
track, but Abraham interrupted them and stated: “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.”
The meeting ended shortly thereafter without further discussion
about Clausi’s concept for the noise-producing track. Before he left,
Wilson asked Clausi if he could take the piece of track that Bor-
sato had cut with him while the parties continued their discussions.
B. OWNERSHIP 59

Clausi gave Wilson the piece of track without hesitation. The piece
of track was the only item that Abraham and Wilson took from the
meeting. Clausi and Moore did not ask Wilson for a receipt for the
cut track, nor did they seek a wri en conﬁdentiality agreement to
protect PlayWood’s alleged trade secret. After the meeting, Clausi
amended PlayWood’s conﬁdentiality agreement with Borsato to en-
sure that materials discussed during the meeting would remain conﬁ-
dential. Clausi also stamped many of the documents that he received
from Learning Curve during the meeting as conﬁdential because they
included information on products not yet released to the public. Play-
Wood never disclosed the contents of Learning Curve’s documents to
anyone.
During March of 1993, PlayWood and Learning Curve met on
three separate occasions to discuss further the possibility of Play-
Wood manufacturing Learning Curve’s Thomas products. At one of
the meetings, and at Learning Curve’s request, PlayWood submi ed
a manufacturing proposal for the Thomas products. Learning Curve
rejected PlayWood’s proposal. Learning Curve told Clausi that its li-
censor wanted the Thomas products to be made in the United States.
Thereafter, PlayWood had no contact with Learning Curve un-
til late October of 1993, when Abraham contacted Clausi to discuss
another possible manufacturing contract because Learning Curve’s
secondary supplier was not providing enough product. Again, Play-
Wood submi ed a manufacturing proposal at Learning Curve’s re-
quest, but it too was rejected. Learning Curve later stated that its new
business partner had decided to manufacture the product in China.
Clausi and Moore continued to work on PlayWood’s toy concepts.
After the 1994 New York Toy Fair, which was not particularly suc-
cessful for PlayWood, Clausi and Moore began to focus their eﬀorts
on reﬁning PlayWood’s concept for the noise-producing track. Dur-
ing this time, Clausi and Moore made no a empt to license or sell the
concept to other toy companies because they believed that PlayWood
still had “an opportunity to get in the door” with Learning Curve if
they could perfect the concept and also because they believed that
they were bound by a conﬁdentiality agreement.
In December of 1994, while shopping for additional track with
which to experiment, Moore discovered that Learning Curve was sell-
ing noise-producing track under the name “Clickety-Clack Track.”
Like the piece of track that Clausi had Borsato cut during PlayWood’s
February 18, 1993, meeting with Learning Curve, Clickety-Clack
Track™ has parallel grooves cut into the wood, which cause a “clack-
ing” sound as train wheels roll over the grooves. Learning Curve was
promoting the new track as
the ﬁrst signiﬁcant innovation in track design since the in-
60 CHAPTER 2. TRADE SECRET

ception of wooden train systems.... It is quite simply the
newest and most exciting development to come along re-
cently in the wooden train industry, and it’s sure to cause
a sensation in the marketplace.... [I]t brings that sound
and feel of the real thing to a child’s world of make-believe
without bells, whistles, electronic sound chips or moving
parts.
PlayWood promptly wrote a cease and desist le er to Learning Curve.
The le er accused Learning Curve of stealing PlayWood’s concept
for the noise-producing track that it disclosed to Learning Curve “in
conﬁdence in the context of a manufacturing proposal.” Learning
Curve responded by seeking a declaratory judgment that it owned
the concept.
Previously, on March 16, 1994, Learning Curve had applied for
U.S. Pat. No. 5,454,513 a patent on the noise-producing track. The patent, which was ob-
tained on October 3, 1995, claims the addition of parallel impressions
or grooves in the rails, which cause a “clacking” sound to be emi ed
On the facts as found by the jury, as train wheels roll over them. The patent identiﬁes Roy Wilson of
Wilson was not the inventor and the Learning Curve as the inventor.
patent should not have issued.
Clickety-Clack Track™provided an enormous boost to Learning
Curve’s sales. Learning Curve had $20 million in track sales by the
ﬁrst quarter of 2000, and $40 million for combined track and accessory
sales.
II. D
The parties agree that their dispute is governed by the Illinois Trade
The relevant portions of the ITSA track Secrets Act (“Act”). To prevail on a claim for misappropriation of a
the UTSA. trade secret under the Act, the plaintiﬀ must demonstrate that the
information at issue was a trade secret, that it was misappropriated
and that it was used in the defendant’s business. The issue currently
before us is whether there was legally suﬃcient evidence for the jury
to ﬁnd that PlayWood had a trade secret in its concept for the noise-
producing toy railroad track that it revealed to Learning Curve on
February 18, 1993.
Although the Act explicitly deﬁnes a trade secret in terms of [ac-
tual secrecy and reasonable eﬀorts], Illinois courts frequently refer
to six common law factors (which are derived from § 757 of the Re-
statement (First) of Torts) in determining whether a trade secret ex-
ists: (1) the extent to which the information is known outside of the
plaintiﬀ’s business; (2) the extent to which the information is known
by employees and others involved in the plaintiﬀ’s business; (3) the
extent of measures taken by the plaintiﬀ to guard the secrecy of the
information; (4) the value of the information to the plaintiﬀ’s busi-
ness and to its competitors; (5) the amount of time, eﬀort and money
expended by the plaintiﬀ in developing the information; and (6) the
B. OWNERSHIP 61

ease or diﬃculty with which the information could be properly ac-
quired or duplicated by others.
Contrary to Learning Curve’s contention, we do not construe the
foregoing factors as a six-part test, in which the absence of evidence
on any single factor necessarily precludes a ﬁnding of trade secret
protection. Instead, we interpret the common law factors as instruc-
tive guidelines for ascertaining whether a trade secret exists under
the Act.
1. Extent to which PlayWood’s concept for noise-producing toy railroad
track was known outside of PlayWood’s business
PlayWood presented substantial evidence from which the jury could
have determined that PlayWood’s concept for noise-producing toy
railroad track was not generally known outside of Playwood’s busi-
ness. It was undisputed at trial that no similar track was on the
market until Learning Curve launched Clickety-Clack Track™ in late
1994, more than a year after PlayWood ﬁrst conceived of the concept.
Of course, as Learning Curve correctly points out, merely being the
ﬁrst or only one to use particular information does not in and of itself
transform otherwise general knowledge into a trade secret. If it did,
the ﬁrst person to use the information, no ma er how ordinary or
well known, would be able to appropriate it to his own use under the
guise of a trade secret. However, in this case, there was additional ev-
idence from which the jury could have determined that PlayWood’s
concept was not generally known within the industry.
First, there was substantial testimony that Learning Curve had at-
tempted to diﬀerentiate its track from that of its competitors for sev-
eral months, but that it had been unable to do so successfully.
Furthermore, PlayWood’s expert witness, Michael Kennedy, tes-
tiﬁed that PlayWood’s concept, as embodied in Clickety-Clack
Track™, was unique and permi ed “its seller to diﬀerentiate itself
from a host of competitors who [were] making a generic product.”
Kennedy explained that the look, sound and feel of the track made
it distinct from other toy railroad track: “[W]hen a child runs a train
across this track, he can feel it hi ing those li le impressions. And
when you’re talking about young children[,] having the idea that they
can see something that they couldn’t see before, feel something that
they couldn’t feel before, hear something that they couldn’t hear be-
fore, that is what diﬀerentiates this toy from its other competitors.”
Finally, PlayWood presented evidence that Learning Curve
sought and obtained a patent on the noise-producing track. It goes
without saying that the requirements for patent and trade secret pro-
tection are not synonymous. Unlike a patentable invention, a trade
secret need not be novel or unobvious. The idea need not be com-
plicated; it may be intrinsically simple and nevertheless qualify as a
62 CHAPTER 2. TRADE SECRET

secret, unless it is common knowledge and, therefore, within the pub-
lic domain. However, it is commonly understood that 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.
2. Extent to which PlayWood’s concept was known to employees and others
involved in PlayWood’s business
We agree with PlayWood that the evidence was suﬃcient to establish
that its concept for noise-producing track was known only by key
individuals in its business.
At the outset, we note brieﬂy that PlayWood was a small business,
consisting only of Clausi and Moore. Illinois courts have recognized
on several occasions that the expectations for ensuring secrecy are
diﬀerent for small companies than for large companies. Apart from
Clausi (PlayWood’s sole toy designer and the person who conceived
of the concept for noise-producing track) and Moore (PlayWood’s
sole oﬃcer and director), the only person who knew about the con-
cept was Borsato, the person who physically produced PlayWood’s
prototype at Clausi’s direction. The concept was disclosed to Borsato
in order for PlayWood to develop fully its trade secret. Moreover,
Borsato’s actions were governed by a wri en conﬁdentiality agree-
ment with PlayWood. Indeed, as an extra precaution, Clausi even
amended PlayWood’s conﬁdentiality agreement with Borsato imme-
diately after the February 18, 1993, meeting to ensure that materials
discussed during the meeting would remain conﬁdential.
3. Measures taken by PlayWood to guard the secrecy of its concept
There also was suﬃcient evidence for the jury to determine that Play-
Wood took reasonable precautions to guard the secrecy of its concept.
The Act requires the trade secret owner to take actions that are “rea-
sonable under the circumstances to maintain [the] secrecy or conﬁ-
dentiality” of its trade secret; it does not require perfection. Whether
the measures taken by a trade secret owner are suﬃcient to satisfy the
Act’s reasonableness standard ordinarily is a question of fact for the
jury. Indeed, we previously have recognized that only in an extreme
case can what is a “reasonable” precaution be determined, because
the answer depends on a balancing of costs and beneﬁts that will vary
from case to case.
Here, the jury was instructed that it must ﬁnd “by a preponder-
ance of the evidence that PlayWood’s trade secrets were given to
Learning Curve as a result of a conﬁdential relationship between
the parties.” By returning a verdict in favor of PlayWood, the jury
necessarily found that Learning Curve was bound to PlayWood by
a pledge of conﬁdentiality. The jury’s determination is amply sup-
ported by the evidence. Both Clausi and Moore testiﬁed that they
B. OWNERSHIP 63

entered into an oral conﬁdentiality agreement with Abraham and
Wilson before beginning their discussion on February 18, 1993. In
particular, Clausi testiﬁed that he told Abraham and Wilson: “I also
have some things, some ideas on how to produce the track and pro-
duce the trains now that I’ve had a chance to look at them for the last
couple of days, and I think they’re conﬁdential as well. So if we’re
both okay with that, we should continue.” In addition to this testi-
mony, the jury heard that Learning Curve had disclosed substantial
information to PlayWood during the February 18th meeting, includ-
ing projected volumes, costs and proﬁt margins for various products,
as well as drawings for toys not yet released to the public. The jury
could have inferred that Learning Curve would not have disclosed
such information in the absence of a conﬁdentiality agreement. Fi-
nally, the jury also heard (from several of Learning Curve’s former
business associates) that Learning Curve routinely entered into oral
conﬁdentiality agreements like the one with PlayWood.
PlayWood might have done more to protect its secret. As Learn-
ing Curve points out, PlayWood gave its only prototype of the noise-
producing track to Wilson without ﬁrst obtaining a receipt or writ-
ten conﬁdentiality agreement from Learning Curve—a decision that
proved unwise in hindsight. Nevertheless, we believe that the jury
was entitled to conclude that PlayWood’s reliance on the oral conﬁ-
dentiality agreement was reasonable under the circumstances of this
case. First, it is well established that the formation of a conﬁdential re-
lationship imposes upon the disclosee the duty to maintain the infor-
mation received in the utmost secrecy and that the unprivileged use
or disclosure of another’s trade secret becomes the basis for an action
in tort. Second, both Clausi and Moore testiﬁed that they believed
PlayWood had a realistic chance to “get in the door” with Learning
Curve and to produce the concept as part of Learning Curve’s line of
Thomas products. Clausi and Moore did not anticipate that Learn-
ing Curve would violate the oral conﬁdentiality agreement and uti-
lize PlayWood’s concept without permission; rather, they believed in
good faith that they “were going to do business one day again with
Learning Curve with respect to the design concept.” Finally, we be-
lieve that, as part of the reasonableness inquiry, the jury could have
considered the size and sophistication of the parties, as well as the
relevant industry. Both PlayWood and Learning Curve were small
toy companies, and PlayWood was the smaller and less experienced
of the two.
4. Value of the concept to PlayWood and to its competitors
There was substantial evidence from which the jury could have de-
termined that PlayWood’s concept had value both to PlayWood and
to its competitors. It was undisputed at trial that Learning Curve’s
64 CHAPTER 2. TRADE SECRET

sales skyrocketed after it began to sell Clickety-Clack Track™. In
addition, PlayWood’s expert witness, Michael Kennedy, testiﬁed
that PlayWood’s concept for noise-producing track had tremendous
value. Kennedy testiﬁed that the “cross-cuts and changes in the
[track’s] surface” imparted value to its seller by causing the track to
“look diﬀerent, feel diﬀerent and sound diﬀerent than generic track.”
Kennedy further testiﬁed that, in his opinion, the track would have
commanded a premium royalty under a negotiated license agree-
ment because the “invention allows its seller to diﬀerentiate itself
from a host of competitors who are making a generic product with
whom it is competing in a way that is proprietary and exclusive, and
it gives [the seller] a signiﬁcant edge over [its] competition.”
Despite this evidence, the district court concluded that Play-
Wood’s concept had no economic value. The court’s conclusion was
based, in part, on the fact that PlayWood’s prototype did not work
perfectly; as noted by the court, the ﬁrst set of cuts were too shallow
to produce sound and the second set of cuts were too deep to per-
mit the train to roll smoothly across the track. In the district court’s
view, even if the concept of cu ing grooves into the wooden track
in order to produce noise originated with Clausi, the concept lacked
value until it was reﬁned, developed and manufactured by Learning
Curve.
We cannot accept the district court’s conclusion because it is be-
lied by the evidence. At trial, Kennedy was asked whether, in his
opinion, the fact that PlayWood’s prototype did not work perfectly af-
fected the value of PlayWood’s concept, and he testiﬁed that it did not.
Kennedy testiﬁed that he would assign the same value to PlayWood’s
concept as it was conceived on February 18, 1993, as he would the
ﬁnished product that became known as Clickety-Clack Track™ be-
cause, at that time, he would have known “that most of the design
[had] already been done and that [he] just need[ed] to go a li le bit
further to make it really lovely.” Kennedy further testiﬁed that it was
standard practice in the industry for a license to be negotiated based
on a prototype (much like the one PlayWood disclosed to Learning
Curve) rather than a ﬁnished product and that the license generally
would cover the prototypical design, as well as any enhancements
or improvements of that design. Based on this testimony, we cannot
accept the district court’s conclusion that PlayWood’s concept pos-
sessed no economic value.
It is irrelevant under Illinois law that PlayWood did not actually
use the concept in its business. The proper criterion is not ‘actual use’
but whether the trade secret is “of value” to the company. Kennedy’s
testimony was more than suﬃcient to permit the jury to conclude that
the concept was “of value” to PlayWood. It is equally irrelevant that
PlayWood did not seek to patent its concept. So long as the concept
B. OWNERSHIP 65

remains a secret, i.e., outside of the public domain, there is no need for
patent protection. Professor Milgrim makes this point well: “Since Milgrim § 1.08[1]
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.” It was up to PlayWood,
not the district court, to determine when and how the concept should
have been disclosed to the public.
5. Amount of time, eﬀort and money expended by PlayWood in developing
its concept
PlayWood expended very li le time and money developing its con-
cept; by Clausi’s own account, the cost to PlayWood was less than
one dollar and the time spent was less than one-half hour. The dis-
trict court determined that “such an insigniﬁcant investment is insuf-
ﬁcient as a ma er of Illinois law to establish the status of a ‘trade
secret.’” We believe that the district court gave too much weight to
the time, eﬀort and expense of developing the track.
A signiﬁcant expenditure of time and/or money in the production
of information may provide evidence of value. However, we do not
understand Illinois law to require such an expenditure in all cases.
As pointed out by the district court, several Illinois cases have
emphasized the importance of developmental costs. However, no-
tably, none of those cases concerned the sort of innovative and cre-
ative concept that we have in this case. Indeed, several of the cases in
Illinois that emphasize developmental costs concern compilations of
data, such as customer lists. In that context, it makes sense to require
the expenditure of signiﬁcant time and money because there is noth-
ing original or creative about the alleged trade secret. Given enough
time and money, we presume that the plaintiﬀ’s competitors could
compile a similar list.
Here, by contrast, we are dealing with a new toy design that has
been promoted as “the ﬁrst signiﬁcant innovation in track design
since the inception of wooden train systems.” Toy designers, like
many artistic individuals, have intuitive ﬂashes of creativity. Often,
that intuitive ﬂash is, in reality, the product of earlier thought and
practice in an artistic craft. We fail to see how the value of PlayWood’s
concept would diﬀer in any respect had Clausi spent several months
and several thousand dollars creating the noise-producing track.
6. Ease or diﬃculty with which PlayWood’s concept could have been prop-
erly acquired or duplicated by others
Finally, we also believe that there was suﬃcient evidence for the jury
to determine that PlayWood’s concept could not have been easily ac-
quired or duplicated through proper means. PlayWood’s expert wit-
66 CHAPTER 2. TRADE SECRET

ness, Michael Kennedy, testiﬁed: “This is a fairly simple product if
you look at it. But the truth is that because it delivers feeling and
sound as well as appearance, it isn’t so simple as it ﬁrst appears. It’s
a li le more elegant, actually, than you might think.” In addition to
Kennedy’s testimony, the jury heard that Learning Curve had spent
months a empting to diﬀerentiate its track from Brio’s before Clausi
disclosed PlayWood’s concept of noise-producing track. From this
evidence, the jury could have inferred that, if PlayWood’s concept
really was obvious, Learning Curve would have thought of it earlier.
Despite this evidence, the district court concluded that Play-
Wood’s concept was not a trade secret because it could have been
easily duplicated, stating that “[h]ad PlayWood succeeded in produc-
ing and marketing [the] notched track, the appearance of the track
product itself would have fully revealed the concept PlayWood now
claims as a secret.” Of course, the district court was correct in one
sense; PlayWood’s own expert recognized that, in the absence of
patent or copyright protection, the track could have been reverse en-
gineered just by looking at it. However, the district court failed to
appreciate the fact that PlayWood’s concept was not publicly avail-
Milgrim § 1.05[4] able. As Professor Milgrim states: “A potent distinction exists be-
tween 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’ embod-
ied in a product which has been placed on sale, which product admits
of discovery of the ’secret’ upon inspection, analysis, or reverse engi-
neering. Until disclosed by sale the trade secret should be entitled to
Callmann § 14.15 protection.” see also Callmann (“The fact that a secret is easy to dupli-
cate after it becomes known does not militate against its being a trade
secret prior to that time.”). Reverse engineering can defeat a trade se-
cret claim, but only if the product could have been properly acquired
by others, as is the case when the product is publicly sold. Here, Play-
Wood disclosed its concept to Learning Curve (and Learning Curve
alone) in the context of a conﬁdential relationship; Learning Curve
had no legal authority to reverse engineer the prototype that it re-
ceived in conﬁdence. Accordingly, we must conclude that the jury
was entitled to determine that PlayWood’s concept could not easily
have been acquired or duplicated through proper means.

Exploits Problem
Exploit brokers are in the business of helping people defeat computer
security. Governments want to thumb through the hard drives of ter-
rorists, criminals, and dissidents. Identity thieves want passwords
and bank account numbers. Extortionists want to delete data and
hold it for ransom. Corporate spies want access to competitors’ com-
puters. All of them are willing to pay handsomely for the technical
tools that enable them to do so. These tools are typically built around
B. OWNERSHIP 67

”exploits”: short pieces of software that take advantage of bugs in
commonly-used software like Windows, Adobe Flash, and iOS. As
soon as as software companies learn about these bugs, they race to
issue updates to ﬁx them; once that happens, any exploits based on
those bugs stop working. Thus, secrecy is essential to the exploit busi-
ness in two ways: many of the uses are illegal, and exploits become
worthless soon after they become public knowledge.
Can exploit brokers – who buy exploits from the computer secu-
rity experts who discover them and then resell those exploits to vari-
ous clients – rely on trade secret law? Should they be able to? Do the
materials in this chapter and the previous one shed any light on how
you would expect the exploit business to work, and how it ought to
be regulated?

2 Priority
Because there is no requirement that a trade secret be unique – more
than one person can have the same information and each has a valid
and independent trade secret provided the other requirements are
met – trade secret does not generally raise diﬃcult issues about which
of several competing claimants developed the information ﬁrst.

3 Collaborations

Restatement (Third) of Unfair Competition

cmt. e. Allocation of ownership between employers and employees. – The § 42
law of agency has established rules governing the ownership of Breach of Confidence by Employees
valuable information created by employees during the course of
an employment relationship. See Restatement, Second, Agency
§ 397. In the absence of a contrary agreement, the law ordinar-
ily assigns ownership of an invention or idea to the person who
conceives it. However, valuable information that is the prod-
uct of an employee’s assigned duties is owned by the employer,
even when the information results from the application of the
employee’s personal knowledge or skill.
An employee is ordinarily entitled to claim ownership of
patents and trade secrets developed outside the scope of the
employee’s assigned duties, even if the invention or idea re-
lates to the employer’s business and was developed using the
employer’s time, personnel, facilities, or equipment. In the lat-
ter circumstances, however, the employer is entitled to a “shop
right”—an irrevocable, nonexclusive, royalty-free license to use
the innovation. Similarly, employees retain ownership of infor-
68 CHAPTER 2. TRADE SECRET

mation comprising their general skill, knowledge, training, and
experience.
Although the rules governing ownership of valuable infor-
mation created during an employment relationship are most
frequently applied to inventions, the rules are also applicable to
information such as customer lists, marketing ideas, and other
valuable business information. If an employee collects or devel-
ops such information as part of the assigned duties of the em-
ployment, the information is owned by the employer. Thus, if
the information qualiﬁes for protection as a trade secret, unau-
thorized use or disclosure will subject the employee to liability.
cmt. g. Contractual protection. – Absent an applicable statutory prohi-
bition, agreements relating to the ownership of inventions and
discoveries made by employees during the term of the employ-
ment are generally enforceable according to their terms. Em-
ployment agreements sometimes include provisions granting
the employer ownership of all inventions and discoveries con-
ceived by the employee during the term of the employment. In
some situations, however, it may be diﬃcult to prove when a
particular invention was conceived. The employee may have an
incentive to delay disclosure of the invention until after the em-
ployment is terminated in order to avoid the contractual or com-
mon law claims of the employer. It may also be diﬃcult to es-
tablish whether a post-employment invention was improperly
derived from the trade secrets of the former employer. Some
employment agreements respond to this uncertainty through
provisions granting the former employer ownership of inven-
tions and discoveries relating to the subject ma er of the for-
mer employment that are developed by the employee even af-
ter the termination of the employment. Such agreements can
restrict the former employee’s ability to exploit the skills and
training desired by other employers and may thus restrain com-
petition and limit employee mobility. The courts have therefore
subjected such “holdover” agreements to scrutiny analogous to
that applied to covenants not to compete. Thus, the agreement
may be unenforceable if it extends beyond a reasonable period
of time or to inventions or discoveries resulting solely from the
general skill and experience of the former employee.

C Procedures
The Restatements treated reasonable The most important – and arguably the only – procedural prerequi-
efforts as part of the secrecy analysis. site to having a valid trade secret is making reasonable eﬀorts to pre-
Under the UTSA, EEA, and DTSA, it is a serve its secrecy. There is no requirement that the owner of a trade
separate element.
C. PROCEDURES 69

secret register it as one with a government agency, or take other for-
mal steps to identify the secret in advance. Remember that everyone
agrees a trade secret must actually be secret to be protected; what
does a reasonable eﬀorts requirement add? Why?

United States v. Lange
312 F.3d 263 (7th Cir. 2002)
One ingredient of a trade secret is that “the owner thereof has taken
reasonable measures to keep such information secret”. Lange con-
tends that the proof fell short, but a sensible trier of fact could have
concluded that RAPCO took “reasonable measures to keep the infor-
mation secret”. RAPCO stores all of its drawings and manufactur-
ing data in its CAD room, which is protected by a special lock, an
alarm system, and a motion detector. The number of copies of sensi-
tive information is kept to a minimum; surplus copies are shredded.
Some information in the plans is coded, and few people know the
keys to these codes. Drawings and other manufacturing information
contain warnings of RAPCO’s intellectual property rights; every em-
ployee receives a notice that the information with which he works is
conﬁdential. None of RAPCO’s subcontractors receives full copies
of the schematics; by dividing the work among vendors, RAPCO en-
sures that none can replicate the product. This makes it irrelevant
that RAPCO does not require vendors to sign conﬁdentiality agree-
ments; it relies on deeds (the spli ing of tasks) rather than promises
to maintain conﬁdentiality. Although, as Lange says, engineers and
drafters knew where to get the key to the CAD room door, keeping
these employees out can’t be an ingredient of “reasonable measures
to keep the information secret”; then no one could do any work. So
too with plans sent to subcontractors, which is why dissemination to
suppliers does not undermine a claim of trade secret.
925 F.2d 174 (7th Cir. 1991)
Rockwell Graphic Systems, Inc. v. DEV Industries, Inc. Rockwell, which manufactures print-
ing presses, sued DEV, a competing
The requirement of reasonable eﬀorts has both evidentiary and reme-
manufacturer, for making replacement
dial signiﬁcance, and this regardless of which of the two diﬀerent con- parts for Rockwell presses. A key com-
ceptions of trade secret protection prevails. (Both conceptions have ponent of Rockwell’s claims ws that
footholds in Illinois law, as we shall see.) The ﬁrst and more common DEV had in its possession about 100
merely gives a remedy to a ﬁrm deprived of a competitively valu- “piece part drawings”: detailed manu-
facturing diagrams for parts to Rock-
able secret as the result of an independent legal wrong, which might
well presses. Rockwell alleged that the
be conversion or other trespass or the breach of an employment con- piece part drawings had been stolen
tract or of a conﬁdentiality agreement. Under this approach, because by former Rockwell employees includ-
the secret must be taken by improper means for the taking to give ing Fleck and Peloso, both of whom
rise to liability, the only signiﬁcance of trade secrecy is that it allows were subequently employed by DEV.
Along the way, DEV argued that Rock-
the victim of wrongful appropriation to obtain damages based on the well failed to make reasonable efforts
competitive value of the information taken. The second conception to keep the diagrams secret, which led
of trade secrecy is that “trade secret” picks out a class of socially valu- Judge Posner to discuss the purpose of
able information that the law should protect even against nontrespas- the reasonable efforts requirement.
70 CHAPTER 2. TRADE SECRET

sory or other lawful conduct.
It should be apparent that the two diﬀerent conceptions of trade
secret protection are be er described as diﬀerent emphases. The ﬁrst
emphasizes the desirability of deterring eﬀorts that have as their sole
purpose and eﬀect the redistribution of wealth from one ﬁrm to an-
other. The second emphasizes the desirability of encouraging inven-
tive activity by protecting its fruits from eﬀorts at appropriation that
are, indeed, sterile wealth-redistributive – not productive – activities.
The approaches diﬀer, if at all, only in that the second does not limit
the class of improper means to those that ﬁt a preexisting pigeonhole
in the law of tort or contract or ﬁduciary duty – and it is by no means
clear that the ﬁrst approach assumes a closed class of wrongful acts,
either.
Under the ﬁrst approach, at least if narrowly interpreted so that
it does not merge with the second, the plaintiﬀ must prove that the
defendant obtained the plaintiﬀ’s trade secret by a wrongful act, il-
lustrated here by the alleged acts of Fleck and Peloso in removing
piece part drawings from Rockwell’s premises without authorization,
in violation of their employment contracts and conﬁdentiality agree-
ments, and using them in competition with Rockwell. Rockwell is
unable to prove directly that the 100 piece part drawings it got from
DEV in discovery were stolen by Fleck and Peloso or obtained by
other improper means. But if it can show that the probability that
DEV could have obtained them otherwise – that is, without engaging
in wrongdoing – is slight, then it will have taken a giant step toward
proving what it must prove in order to recover under the ﬁrst theory
of trade secret protection. The greater the precautions that Rockwell
took to maintain the secrecy of the piece part drawings, the lower
the probability that DEV obtained them properly and the higher the
probability that it obtained them through a wrongful act; the owner
had taken pains to prevent them from being obtained otherwise.
Under the second theory of trade secret protection, the owner’s
precautions still have evidentiary signiﬁcance, but now primarily as
evidence that the secret has real value. For the precise means by
which the defendant acquired it is less important under the second
theory, though not completely unimportant; remember that even the
second theory allows the unmasking of a trade secret by some means,
such as reverse engineering. If Rockwell expended only paltry re-
sources on preventing its piece part drawings from falling into the
hands of competitors such as DEV, why should the law, whose ma-
chinery is far from costless, bother to provide Rockwell with a rem-
edy? The information contained in the drawings cannot have been
worth much if Rockwell did not think it worthwhile to make serious
eﬀorts to keep the information secret.
The remedial signiﬁcance of such eﬀorts lies in the fact that if the
C. PROCEDURES 71

plaintiﬀ has allowed his trade secret to fall into the public domain,
he would enjoy a windfall if permi ed to recover damages merely
because the defendant took the secret from him, rather than from the
public domain as it could have done with impunity. It would be like
punishing a person for stealing property that he believes is owned
by another but that actually is abandoned property. If it were true,
as apparently it is not, that Rockwell had given the piece part draw-
ings at issue to customers, and it had done so without requiring the
customers to hold them in conﬁdence, DEV could have obtained the
drawings from the customers without commi ing any wrong. The
harm to Rockwell would have been the same as if DEV had stolen the
drawings from it, but it would have had no remedy, having parted
with its rights to the trade secret. This is true whether the trade se-
cret is regarded as property protected only against wrongdoers or as
property protected against the world. In the ﬁrst case, a defendant is
perfectly entitled to obtain the property by lawful conduct if he can,
and he can if the property is in the hands of persons who themselves
commi ed no wrong to get it. In the second case the defendant is per-
fectly entitled to obtain the property if the plaintiﬀ has abandoned it
by giving it away without restrictions.
It is easy to understand therefore why the law of trade secrets re-
quires a plaintiﬀ to show that he took reasonable precautions to keep
the secret a secret. If analogies are needed, one that springs to mind
is the duty of the holder of a trademark to take reasonable eﬀorts to
police infringements of his mark, failing which the mark is likely to
be deemed abandoned, or to become generic or descriptive (and in
either event be unprotectable). The trademark owner who fails to po-
lice his mark both shows that he doesn’t really value it very much
and creates a situation in which an infringer may have been unaware
that he was using a proprietary mark because the mark had drifted
into the public domain, much as DEV contends Rockwell’s piece part
drawings have done.
But only in an extreme case can what is a “reasonable” precaution
be determined on a motion for summary judgment, because the an-
swer depends on a balancing of costs and beneﬁts that will vary from
case to case and so require estimation and measurement by persons
knowledgeable in the particular ﬁeld of endeavor involved. On the
one hand, the more the owner of the trade secret spends on prevent-
ing the secret from leaking out, the more he demonstrates that the
secret has real value deserving of legal protection, that he really was
hurt as a result of the misappropriation of it, and that there really was
misappropriation. On the other hand, the more he spends, the higher
his costs. The costs can be indirect as well as direct. The more Rock-
well restricts access to its drawings, either by its engineers or by the
vendors, the harder it will be for either group to do the work expected
72 CHAPTER 2. TRADE SECRET

of it. Suppose Rockwell forbids any copying of its drawings. Then
a team of engineers would have to share a single drawing, perhaps
by passing it around or by working in the same room, huddled over
the drawing. And how would a vendor be able to make a piece part
– would Rockwell have to bring all that work in house? Such recon-
ﬁgurations of pa erns of work and production are far from costless;
and therefore perfect security is not optimum security.

D Infringement: Similarity
The essence of trade secret misappropriation is to obtain or use se-
cret information acquired through “improper means.” Note that this
essence includes an implicit requirement that the information the de-
fendant obtained or used is the same information the plaintiﬀ claims
as a trade secret.

Big Vision Private, Ltd. v. E.I. Dupont De Nemours & Co.
1 F. Supp. 3d 224 (S.D.N.Y. 2014)
Big Vision’s second argument is that DuPont’s recyclable banner
product lines misappropriate Big Vision’s trade secret. Quite sim-
ply, Big Vision cannot demonstrate that its recyclable banners are
substantially similar to DuPont’s. The parties do not dispute that
DuPont’s recyclable banner products are not made by either lamina-
tion or coextrusion. None of DuPont’s recyclable banner products
use the three-layer structures tested at the Trials, the range of CaCO3
tested at the Trials, or “minimal” amounts of Entira (to the extent it
has been deﬁned), since DuPont’s products either use 100% or 0%
Entira. Furthermore, DuPont’s recyclable banner products are not
printable with solvent ink. Thus, to the extent Big Vision’s trade se-
cret is discernible, DuPont’s products implicate almost none of its
elements.60

E Infringement: Prohibited Conduct
Before you dive into the new cases, look back at the cases from the
ﬁrst half of the chapter. You read them as cases on the existence of
trade secrets. They are also cases on misappropriation. What did the
defendants in each case do? Was it misappropriation? This duality
is typical of intellectual property cases. Both protectability and mis-
appropriation are required to ﬁnd a defendant liable, which means
that both protectability and misappropriation are potentially in play
60
Plaintiﬀ argues that because DuPont’s banners do not exhibit the four-item
“wish list” that Big Vision’s trade secret is supposed to cause, DuPont must have
ineptly misappropriated its trade secret. While clever, this argument is not a fair
reading of the record, which makes clear that DuPont’s recyclable banners are sim-
ply not substantially similar to Big Vision’s alleged trade secret.
E. INFRINGEMENT: PROHIBITED CONDUCT 73

in every case. A trade secret defendant can win by showing that the For more on the relationship between
plaintiﬀ lacked a valid protectable trade secret in the ﬁrst place, or by protection and infringement, see Mark
A. Lemley & Mark P. McKenna, Scope, 57
showing that the defendant did not misappropriate that trade secret.
Wm & Mary L. Rev. 2197 (2016).

1 Proving Infringement

Grynberg v. BP, PLC
No. 06 Civ. 6494 (RJH), 2011 U.S. Dist.
In the enormous record before the court, there is no direct evidence LEXIS 34286 (S.D.N.Y. Mar. 30, 2011)
that ARCO used Grynberg’s information in evaluating Tengiz or the
Caspian pipeline. How ARCO came to make those investments is no
mystery however: engineers and executives alike have testiﬁed in de-
tail as to the evaluation and decision-making process. With respect to
both investments, publically available resources were used initially,
and then supplemented at length in data rooms set up by the orga-
nizations managing the investment – for Tengiz the Chevron data
room and for the Caspian Pipeline the Oman data room. Further, al-
though plaintiﬀ’s experts state generally that the publically available
sources were inferior to Grynberg’s information, plaintiﬀ concedes
that his information – obtained in 1989-90 – was ”outdated” by 1996.
Moreover, plaintiﬀ admits that when Chevron invested in Tengiz it
had been given access by the Kazakhs to all the information to which
Grynberg was privy, information that would have been available in
the comprehensive and up to date data rooms prepared for ARCO
when it reviewed the Tengiz investment years later.
Plaintiﬀ argues that ARCO’s alleged use can be proven circum-
stantially, in much the same way that “use of a trade secret can be
proven by showing access to the trade secret plus the subsequent sim-
ilarity of the trade secret and a Defendant’s product.” Indeed, the law
of trade secrets acknowledges the basic logic that when two prod-
ucts look alike, there is probably more than a coincidental connec-
tion between them. See Electro-Miniatures Corp. v. Wendon Co. (mis- Electro-Miniatures: 771 F.2d 23, 26 (2d
appropriation provable by circumstantial evidence where company Cir. 1985)
that had struggled to produce printed circuit slip rings suddenly “is-
sued a catalog depicting an entire line of printed circuit slip ring as-
semblies, resembling those built by the plaintiﬀ”). Nor is there any
inherent reason to limit this approach to cases involving products
(electrical or otherwise). Logically, in any case where what is done
or produced by the alleged thief bears some unique markers of the
allegedly stolen secrets, it may be inferred that the thief used the se-
crets. Thus in Rochester Midland Corp. v. Enerco Corp., use of pricing, Rochester Midland: No. 1:08-cv98,
product, and customer information could be inferred where eighteen 2009 U.S. Dist. LEXIS 46103, 2009 WL
1561817, *19 (W.D. Mich. June 1, 2009)
accounts associated with a poached employee switched to the defen-
dant company shortly after the conﬁdential information was brought
over. However, the inference is only as strong as logic demands –
74 CHAPTER 2. TRADE SECRET

where an alleged thief’s products lack a suspicious similarity to the
secrets, the inference would not lie.
Grynberg could make a circumstantial case for use under this the-
ory, then, only to the extent that ARCO’s actions bore the unique
marks of his information, or showed a suspicious similarity to it.
ARCO did eventually make investments in Tengiz and the Caspian
pipeline, which were among the investments that Grynberg had en-
dorsed and relayed information about. However ARCO also de-
clined to pursue other investments Grynberg had advocated, such as
the Karachaganak oil ﬁeld also in the area of mutual interest. More-
over nothing about ARCO’s investments bears the markers of the
Grynberg information in such a way as to justify inferring the use
of that information. It is not as if ARCO built wells at particular loca-
tions previously suggested by Grynberg, worked primarily through
contacts developed by Grynberg, or tied its investments to Gryn-
berg’s numbers in a suspiciously similar way. Rather, an oil company
chose to invest in one of the largest oil ﬁelds in the world, in a manner
diﬀerent from that envisioned by Grynberg at the time he developed
his proposed consortium. That it did so is unsurprising and does not
evince the kind of suspicious similarity present in Electro-Miniatures
and Rochester Midland. Accordingly an inference of use based on sim-
ilarity is not appropriate here.

2 Direct Infringement

Restatement (Third) of Unfair Competition

§ 43
“Improper” means of acquiring another’s trade secret ... include theft,
Improper Acquisition of Trade Secrets fraud, unauthorized interception of communications, inducement of
or knowing participation in breach of conﬁdence, and other means
either wrongful in themselves or wrongful under the circumstances
of the case. Independent discovery and analysis of publicly available
products or information are not improper means of acquisition.

Uniform Trade Secrets Act

§ 1(1)
“Improper means” includes theft, bribery, misrepresentation, breach
Definitions or inducement of a breach of a duty to maintain secrecy, or espionage
through electronic or other means;

These lists of ”improper means” can be roughly divided into two
types of wrongful conduct. On the one hand there is espionage, which
E. INFRINGEMENT: PROHIBITED CONDUCT 75

often involves theft, trespass, or computer hacking. On the other
hand there is breach of conﬁdence, which often involves violating a
promise to keep someone else’s secrets. It is tempting to to conclude
that “improper means” consist of torts (espionage) and breach of con-
tract (breach of conﬁdence), but this equation is a li le too pat.

E.I. du Pont de Nemours & Co. v. Christopher
431 F.2d 1012 (5th Cir. 1970)
This is a case of industrial espionage in which an airplane is the cloak
and a camera the dagger. The defendants-appellants, Rolfe and Gary
Christopher, are photographers in Beaumont, Texas. The Christo-
phers were hired by an unknown third party to take aerial pho-
tographs of new construction at the Beaumont plant of E. I. DuPont de
Nemours & Company, Inc. Sixteen photographs of the DuPont facil-
ity were taken from the air on March 19, 1969, and these photographs
were later developed and delivered to the third party. Edmund Kitch, in The Law and Eco-
DuPont subsequently ﬁled suit against the Christophers, alleging nomics of Rights in Valuable Information,
that the Christophers had wrongfully obtained photographs reveal- 9 J. Legal Stud. 683 (1980), speculates
that "The appearance of the airplane
ing DuPont’s trade secrets which they then sold to the undisclosed
at such an opportune moment [may
third party. DuPont contended that it had developed a highly se- have] suggested to DuPont that some
cret but unpatented process for producing methanol, a process which kind of inside leak had tipped off the
gave DuPont a competitive advantage over other producers. This photographers (or their client) to the
process, DuPont alleged, was a trade secret developed after much opportunity."
expensive and time-consuming research, and a secret which the com-
pany had taken special precautions to safeguard. The area pho-
tographed by the Christophers was the plant designed to produce
methanol by this secret process, and because the plant was still un-
der construction parts of the process were exposed to view from di-
rectly above the construction area. Photographs of that area, DuPont
alleged, would enable a skilled person to deduce the secret process
for making methanol. DuPont thus contended that the Christophers
had wrongfully appropriated DuPont trade secrets by taking the pho-
tographs and delivering them to the undisclosed third party.
The Christophers argued both at trial and before this court that
they commi ed no “actionable wrong” in photographing the DuPont
facility and passing these photographs on to their client because they
conducted all of their activities in public airspace, violated no gov-
ernment aviation standard, did not breach any conﬁdential relation,
and did not engage in any fraudulent or illegal conduct. In short, the
Christophers argue that for an appropriation of trade secrets to be
wrongful there must be a trespass, other illegal conduct, or breach of
a conﬁdential relationship. We disagree.
It is true, as the Christophers assert, that the previous trade secret
cases have contained one or more of these elements. However, we do
not think that the Texas courts would limit the trade secret protection
exclusively to these elements.
76 CHAPTER 2. TRADE SECRET

Although the previous cases have dealt with a breach of a conﬁ-
dential relationship, a trespass, or other illegal conduct, the rule is
much broader than the cases heretofore encountered. Not limiting
itself to speciﬁc wrongs, Texas adopted subsection (a) of the Restate-
ment which recognizes a cause of action for the discovery of a trade
secret by any “improper” means.
The question remaining, therefore, is whether aerial photography
of plant construction is an improper means of obtaining another’s
trade secret. We conclude that it is and that the Texas courts would
so hold. The Supreme Court of that state has declared that “the un-
doubted tendency of the law has been to recognize and enforce higher
Hyde: 314 S.W.2d 763 (Tex. 1958) standards of commercial morality in the business world.” Hyde Cor-
poration v. Huﬃnes. That court has quoted with approval articles indi-
cating that the proper means of gaining possession of a competitor’s
secret process is through inspection and analysis of the product in
order to create a duplicate. Later another Texas court explained:
The means by which the discovery is made may be obvi-
ous, and the experimentation leading from known factors
to presently unknown results may be simple and lying
in the public domain. But these facts do not destroy the
value of the discovery and will not advantage a competi-
tor who by unfair means obtains the knowledge without
paying the price expended by the discoverer.”
Fowler: 316 S.W.2d 111 (Tex. Civ. App.
Brown v. Fowler. We think, therefore, that the Texas rule is clear. One
1958)
may use his competitor’s secret process if he discovers the process
by reverse engineering applied to the ﬁnished product; one may use
a competitor’s process if he discovers it by his own independent re-
search; but one may not avoid these labors by taking the process from
the discoverer without his permission at a time when he is taking rea-
sonable precautions to maintain its secrecy. To obtain knowledge of
a process without spending the time and money to discover it inde-
pendently is improper unless the holder voluntarily discloses it or
fails to take reasonable precautions to ensure its secrecy.
In the instant case the Christophers deliberately ﬂew over the
DuPont plant to get pictures of a process which DuPont had at-
tempted to keep secret. The Christophers delivered their pictures to
a third party who was certainly aware of the means by which they
had been acquired and who may be planning to use the information
contained therein to manufacture methanol by the DuPont process.
The third party has a right to use this process only if he obtains this
knowledge through his own research eﬀorts, but thus far all informa-
tion indicates that the third party has gained this knowledge solely by
taking it from DuPont at a time when DuPont was making reasonable
eﬀorts to preserve its secrecy. In such a situation DuPont has a valid
E. INFRINGEMENT: PROHIBITED CONDUCT 77

cause of action to prohibit the Christophers from improperly discov-
ering its trade secret and to prohibit the undisclosed third party from
using the improperly obtained information.
In taking this position we realize that industrial espionage of the
sort here perpetrated has become a popular sport in some segments
of our industrial community. However, our devotion to free wheel-
ing industrial competition must not force us into accepting the law
of the jungle as the standard of morality expected in our commercial
relations. Our tolerance of the espionage game must cease when the
protections required to prevent another’s spying cost so much that
the spirit of inventiveness is dampened. Commercial privacy must
be protected from espionage which could not have been reasonably
anticipated or prevented. We do not mean to imply, however, that
everything not in plain view is within the protected vale, nor that all
information obtained through every extra optical extension is forbid-
den. Indeed, for our industrial competition to remain healthy there
must be breathing room for observing a competing industrialist. A
competitor can and must shop his competition for pricing and exam-
ine his products for quality, components, and methods of manufac-
ture. Perhaps ordinary fences and roofs must be built to shut out in-
cursive eyes, but we need not require the discoverer of a trade secret
to guard against the unanticipated, the undetectable, or the unpre-
ventable methods of espionage now available.
In the instant case DuPont was in the midst of constructing a plant.
Although after construction the ﬁnished plant would have protected
much of the process from view, during the period of construction the
trade secret was exposed to view from the air. To require DuPont to
put a roof over the unﬁnished plant to guard its secret would impose
an enormous expense to prevent nothing more than a school boy’s
trick. We introduce here no new or radical ethic since our ethos has
never given moral sanction to piracy. The marketplace must not de-
viate far from our mores. We should not require a person or corpora-
tion to take unreasonable precautions to prevent another from doing
that which he ought not do in the ﬁrst place. Reasonable precautions
against predatory eyes we may require, but an impenetrable fortress
is an unreasonable requirement, and we are not disposed to burden
industrial inventors with such a duty in order to protect the fruits
Would Christopher have been decided
of their eﬀorts. “Improper” will always be a word of many nuances, the same way if it were 2015 and the de-
determined by time, place, and circumstances. We therefore need fendants used publicly available satel-
not proclaim a catalogue of commercial improprieties. Clearly, how- lite photos from Google Earth to ob-
ever, one of its commandments does say “thou shall not appropri- serve the the construction of the plant?
What if they flew a small ten-pound
ate a trade secret through deviousness under circumstances in which
remote-control drone over the plant?
countervailing defenses are not reasonably available.” What if they flew the drone over their
Having concluded that aerial photography, from whatever alti- neighbor's fenced backyard and pho-
tude, is an improper method of discovering the trade secrets exposed tographed him sunbathing nude?
78 CHAPTER 2. TRADE SECRET

during construction of the DuPont plant, we need not worry about
whether the ﬂight pa ern chosen by the Christophers violated any
federal aviation regulations. Regardless of whether the ﬂight was le-
gal or illegal in that sense, the espionage was an improper means of
discovering DuPont’s trade secret.

Kamin v. Kuhnau
374 P.2d 912 (Or. 1962)
For approximately 25 years plaintiﬀ had been employed by a kni ing
mill as a mechanic. In 1953 he entered into the garbage collection
business. From the time plaintiﬀ entered into the garbage collection
business he began thinking of methods of facilitating the loading of
garbage trucks and of compressing or packing the materials after they
were loaded. By 1955 he had done some experimental work on his
own truck, devising a hoist mechanism operated by hydraulic cylin-
ders to lift a bucket from the ground to the top of the truck box. By
this time he had also arrived at the conclusion that the packing of the
loaded materials could best be eﬀected through the use of a hydrauli-
cally operated plow which would move against the loaded materials
and compress them against the interior of the truck. At the time plain-
tiﬀ conceived this solution there were on the market garbage truck
bodies containing various “packer” mechanisms, including hydrauli-
cally operated plows. However, plaintiﬀ and defendant apparently
were not aware of the use of hydraulic cylinders for this purpose and
thought that plaintiﬀ’s idea was novel in this respect.
In January, 1955, plaintiﬀ made arrangements with defendant
Kuhnau, president and manager of Oregon Rental Equipment Com-
pany, to use the company’s machine shop and one or more of its em-
ployees to assist plaintiﬀ in carrying on further experimental work in
developing plaintiﬀ’s ideas. This experimental work was carried on
for approximately one year. According to plaintiﬀ’s evidence, all of
the experimental work was done under his supervision and Kuhnau
had no voice or control as to the manner in which the developmen-
tal work was to be carried on. It is Kuhnau’s contention that he and
the employees of Oregon Rental Equipment Company contributed
suggestions and ideas which were used in the development and im-
provement of the truck body and compressor mechanism.
In the course of working on the project several persons who were
engaged in the garbage collection business came to the defendant’s
machine shop, observed the progress being made by plaintiﬀ and
made suggestions as to the practical application of plaintiﬀ’s idea.
Sometime in the summer of 1956 the truck and compressor mecha-
nism which plaintiﬀ was seeking to develop was crystallized substan-
tially in the form in which it now exists.
When plaintiﬀ had completed his experimental work he began to
receive orders for truck bodies embodying his improvements. The
E. INFRINGEMENT: PROHIBITED CONDUCT 79

ﬁrst two units sold were manufactured by Oregon Rental Equipment
Company. After the sale of these two units (in the spring of 1956)
Kuhnau terminated his connections with Oregon Rental Equipment
Company. He rented a machine shop at another location and began
business under the name of R.K. Truck Sales. Between May and Octo-
ber, 1956, he manufactured ten units for plaintiﬀ. For each unit Kuh-
nau received an amount agreed upon by the parties. Plaintiﬀ ﬁxed
the selling price of the unit and his proﬁt consisted of the diﬀerence
between the selling price and the amount he paid Kuhnau.
On or about October 1, 1956, Kuhnau informed plaintiﬀ that he
was going to manufacture truck bodies in competition with plaintiﬀ.
Kuhnau testiﬁed that the relationship was terminated as a result of a
disagreement over the amount he was to receive for manufacturing
the unit for plaintiﬀ. Plaintiﬀ contends that Kuhnau terminated the
relationship for the purpose of entering into competition with plain-
tiﬀ. The units manufactured by Kuhnau were similar to those which
he had previously manufactured for plaintiﬀ. However, there were
some diﬀerences in the design of the two units. The principal diﬀer-
ence was that Kuhnau mounted the hydraulic cylinder operating the
plow or blade under the truck bed whereas the cylinder in plaintiﬀ’s
truck was above the bed. There was testimony supporting plaintiﬀ’s
assertion that it was his idea to place the cylinder under the bed of
the truck but that suggestion was not adopted because Kuhnau did
not think it was feasible.
Whether the information disclosed was intended to be appropri-
able by the disclosee will depend upon the relationship of the parties
and the circumstances under which the disclosure was made. It is
not necessary to show that the defendant expressly agreed not to use
the plaintiﬀ’s information; the agreement may be implied. And the
implication may be made not simply as a product of the quest for
the intention of the parties but as a legal conclusion recognizing the
need for ethical practices in the commercial world. In the case at bar
the relationship between plaintiﬀ and Kuhnau was such that an obli-
gation not to appropriate the plaintiﬀ’s improvements could be im-
plied. Kuhnau was paid to assist plaintiﬀ in the development of the
la er’s idea. It must have been apparent to Kuhnau that plaintiﬀ was
a empting to produce a unit which could be marketed. Certainly it
would not have been contemplated that as soon as the packer unit
was perfected Kuhnau would have the beneﬁt of plaintiﬀ’s ideas and
the perfection of the unit through painstaking and expensive experi-
mentation. It is to be remembered that the plaintiﬀ’s experimentation
was being carried on, not on the assumption that he was duplicating
an existing machine, but upon the assumption that he was creating a
new product. It has been recognized in the cases that a manufacturer
who has been employed to develop an inventor’s ideas is not entitled
80 CHAPTER 2. TRADE SECRET

to appropriate those ideas to his own use.
Hyde is closely in point. In that case the defendant manufacturer,
having gained knowledge of a garbage compressor through a licens-
ing agreement with the plaintiﬀ inventor, repudiated the agreement
and proceeded to manufacture and sell on its own account a compres-
sor of similar design. Defendant was enjoined. The court held that
the parties were in a conﬁdential relationship and that the informa-
tion relating to the compressor acquired by the defendant incident to
that relationship could not be appropriated by him. In that case, as in
the present case, plaintiﬀ obtained a patent during the course of the
trial. The defendant argued that since plaintiﬀ’s process was revealed
by the patent the process could not be regarded as a trade secret. The
court held that the public disclosure of plaintiﬀ’s process did not re-
move defendant’s duty not to exploit the economic advantage gained
through the information initially disclosed to him by plaintiﬀ. We see
no essential diﬀerence between the facts in the Hyde case and the case
at bar.
The principles applied in the foregoing cases have been recog-
McKinzie: 252 P.2d 564 (Or. 1953) nized by this court. In McKinzie v. Cline, the plaintiﬀ employed the de-
fendants to manufacture a gun swivel which one of the plaintiﬀs had
invented. The defendants discontinued manufacturing the swivel for
the plaintiﬀs and proceeded to manufacture and sell it for their own
account. It was held that defendants violated a conﬁdential relation-
ship which existed between the parties and that therefore plaintiﬀs
were entitled to an injunction and damages. In that case, as in the
present one, plaintiﬀs had placed their product on the market and
had discussed its manufacture with various machinists. The court
noted that there was no “evidence in the record that anyone other
than defendant Cline and the plaintiﬀs had any knowledge of the in-
side workings of the gadget.” The court went further and held that
even though others might have become acquainted with the manufac-
turing process this would not entitle the defendants to violate the con-
ﬁdence reposed in them by the plaintiﬀs. With respect to this point,
defendants in the present case argue that the McKinzie case is distin-
guishable from the case at bar in that the mechanism of the gun swivel
was complex, whereas the mechanism of the garbage truck was not.
The evidence does not support this contention. The description of the
packer mechanism, particularly the manner in which the blade was
a ached (the proper adjustment of which was one of the principal im-
provements claimed by plaintiﬀ), would indicate that it was of such
complexity that more than a general inspection of the unit would be
required to reveal the secret of plaintiﬀ’s improvements. The McK-
inzie case followed the line of authority previously discussed which
de-emphasizes the elements of secrecy and novelty and stresses the
breach of the conﬁdential relation between the parties. The court
E. INFRINGEMENT: PROHIBITED CONDUCT 81

adopted the higher standard of commercial ethics to which we have
already alluded:
If our system of private enterprise on which our nation has
thrived, prospered and grown great is to survive, fair deal-
ing, honesty and good faith between contracting parties
must be zealously maintained; therefore, if one who has
learned of another’s invention through contractual rela-
tionship, such as in the present case, takes unconscionable
and inequitable advantage of the other to his own enrich-
ment and at the expense of the la er, a court of equity will
extend its broad equitable powers to protect the party in-
jured.
We reaﬃrm this declaration of business ethics and hold that defen-
dant Kuhnau violated his duty to plaintiﬀ by appropriating the infor-
mation derived through their business relationship.
Defendants contend that there was no proof that their product
contained the improvements alleged to have been developed by
plaintiﬀ. There is evidence that the plaintiﬀ’s and defendants’ trucks
were similar in structure and design. The trial judge, who inspected
the trucks, concluded that defendants’ trucks used the improvements
developed by plaintiﬀ. Where a person develops a product similar to
that developed by his discloser, the proof of similarity may be suﬃ-
cient to impose upon the disclosee the burden of proving that there
was no misappropriation. Hoeltke v. C.M. Kemp Mfg. Co. stated: “The Hoeltke: 80 F.2d 912 (4th Cir. 1936)
similarity of defendant’s device to that of complainant is strong proof
that one was copied from the other; for it is hardly probable that dif-
ferent persons should independently of each other invent devices so
nearly similar at so nearly the same time.” In the same case the court
said that “one who admi edly receives a disclosure from an inven-
tor, proceeds thereafter to manufacture articles of similar character,
and, when called to account, makes answer that he was using his own
ideas and not the ideas imparted to him” must sustain his position
by proof that is “clear, satisfactory, and beyond a reasonable doubt.”
We are of the opinion that there was suﬃcient evidence to support the
conclusion that defendants appropriated plaintiﬀ’s improvements.

3 Secondary Infringement
If a vice-president at MatrixCorp receives an email from someone call-
ing himself Cypher oﬀering to provide details of a computer graph-
ics technology similar to one used by its competitor NeoCorp, can he
take the deal? A moment’s thought should suggest that the answer
depends on how Cypher obtained the information and on what Ma-
trixCorp knows about it. What about MatrixCorp’s customers? Do
82 CHAPTER 2. TRADE SECRET

they need to worry that their widgets were produced using a misap-
propriated trade secret?

Uniform Trade Secrets Act

§1
(2) “Misappropriation” means:
Definitions (i) acquisition of a trade secret of another by a person who
knows or has reason to know that the trade secret was ac-
quired by improper means; or
(ii) disclosure or use of a trade secret of another without ex-
press or implied consent by a person who
(A) used improper means to acquire knowledge of the
trade secret; or
(B) at the time of disclosure or use, knew or had reason to
know that his knowledge of the trade secret was
(I) derived from or through a person who had utilized
improper means to acquire it;
(II) acquired under circumstances giving rise to a duty
to maintain its secrecy or limit its use; or
(III) derived from or through a person who owed a
duty to the person seeking relief to maintain its se-
crecy or limit its use; or
(C) before a material change of his [or her] position, knew
or had reason to know that it was a trade secret and
that knowledge of it had been acquired by accident or
mistake.

F Defenses
The two most signiﬁcant “defenses” to trade secret infringement are
independent discovery and reverse engineering. I put “defenses” in
quotation marks to emphasize that neither adds anything to the doc-
trines you have already seen. The defendant who establishes that
she independently came up with the same information has actually
defeated a crucial element of the plaintiﬀ’s case-in-chief: that the de-
For more, see Grynberg. fendant stole the information from the plaintiﬀ.
Similarly, the usual deﬁnitions of “improper means” simply ex-
clude reverse engineering: the plaintiﬀ who proves only that the de-
fendant reverse engineered her product has again failed to show an
act of misappropriation. Reverse engineering is conventionally de-
ﬁned as “starting with the known product and working backward
to divine the process which aided in its development or manufac-
Kewanee: 416 U.S. 470 (1974) ture.” Kewanee Oil Co. v. Bicron Corp. Courts sometimes add that the
F. DEFENSES 83

“known product” must have been obtained lawfully: it is no defense
to argue that you reverse engineered the widget-making-machine
you stole from your competitor’s factory.
Why allow reverse engineering? For one thing, it reﬂects a policy
of recognizing personal property owners’ rights over their things. If
you buy it, you can break it down. Reverse engineering also promotes
the same values as trade secret law itself. In the words of the Supreme
Court, it is “an essential part of innovation” that “often leads to sig-
niﬁcant advances in technology.” Bonito Boats, Inc. v. Thunder Craft Bonito Boats: 489 U.S. 14 (1989)
Boats, Inc.

Questions
1. In 2007, the New England Patriots football team videotaped the
hand signals used by coaches for the New York Jets to send in-
structions to players on the ﬁeld. Anyone in the stadium with
a clear line of sight is able to see the signals. The National Foot-
ball League’s rules allow for such videotaping, but only from
speciﬁc areas not including the areas the Patriots taped from
(which had be er views). Did the Patriots misappropriate a
trade secret?
2. In 2011, the Houston Astros baseball team hired Jeﬀ Luhnow
as their new general manager. Previously, Luhnow had been
an executive with the St. Louis Cardinals. While with the Car-
dinals, Luhnow and others build an extensive database with
detailed statistical information about players and reports on
prospective hires. When Luhnow moved to the Astros, several
Cardinals employees went with him. Other Cardinals employ-
ees suspected that Luhnow might have helped design a similar
database for the Astros. They guessed that he and the other ex-
Cardinal employees might have used the same passwords for
the new Astros system, a guess that turned out to be correct.
The Cardinals employees logged into the Astros system using
these passwords and examined some of the information in it.
Identify all of the trade secret issues these facts raise.

Flaming Moe’s Problem
Based on Mason v. Jack Daniel Distillery,
Moe Szyslak is the owner of Moe’s Tavern, where the specialty drink
518 So.2d 130 (Ala. Ct. Civ. App. 1987)
is a “Flaming Moe.” Moe mixes the drinks in a back room, then sets
them on ﬁre in front of customers.
1. Representatives from Tipsy McStagger’s Good-Time Drinking
and Eating Emporium meet with Moe to discuss licensing the
recipe. As part of the negotiations, Moe tells them how it’s
made. Tipsy McStagger’s breaks oﬀ talks and start selling its
own version. What result?
84 CHAPTER 2. TRADE SECRET

2. A Tipsy’s employee orders a Flaming Moe, pours it into a ther-
mos, and uses a gas chromatograph to analyze its chemical com-
position. By so doing, he learns that the secret ingredient is
cough syrup. What result?
3. A Tipsy’s employee goes to Moe’s Tavern and bribes a bar-
tender to tell her the formula. What result?
4. Same facts as before, except that anyone who tastes the drink
can recognize that it’s cough syrup. The Tipsy’s employee still
bribes the bartender to tell them. What result?
5. Woud Moe be be er oﬀ trying to patent the formula for the
Flaming Moe? Would society be be er oﬀ if he did?

Locksmiths Problem
Based on Chicago Lock Co. v. Fanberg,
676 F.2d 400 (9th Cir. 1982)
You represent the Chicago Lock Company, whose “Ace” series of
locks is used in vending machines, burglar alarms, and other high-
security se ings. Ace locks use an unusual cylindrical key that re-
quires specialized equipment to cut. Each lock has a serial number
printed on it; the company uses a secret formula to translate the con-
ﬁguration of tumblers inside the lock into a serial number. The com-
pany’s policy is that it will sell replacement keys only to the registered
owner of a lock with a given serial number. All Ace locks and keys
are stamped “Do Not Duplicate.”
For years, locksmiths have known how to analyze Ace locks. After
a few minutes poking at the lock with their tools, they can write down
the conﬁguration of pins and tumblers inside the lock. They can then
go back to their toolkits and grind a replacement key, which will open
the lock. If the locksmiths keep the conﬁguration information on ﬁle,
they can grind replacement keys in the future without needing to go
back to the lock and analyze it again. Individual locksmiths have, for
years, kept such ﬁles for their local customers.
Recently, Morris and Victor Fanberg, two locksmiths, published
a book entitled “AA Advanced Locksmith’s Tubular Lock Codes.”
They asked locksmiths around the country to send them lists of Ace
lock serial numbers and the corresponding tumbler conﬁgurations.
Based on that information, they were able to program a computer to
reconstruct Chicago’s secret formula. The book contains a table that
shows how to turn an Ace serial number into a key conﬁguration,
which any locksmith with the proper equipment could then use to
cut a key opening the lock with that serial number.
Because the serial numbers on Ace locks are frequently printed
on the outside, Chicago is concerned that the publication of this book
will undermine the security of Ace locks. It has asked you whether it
can and should sue the Fanbergs for damages and to halt publication
of the book. What is your advice? Is there anything further it would
G. PRIVACY 85

be helpful for you to know? Are there changes that Chicago Lock can
and should make to its procedures in the future?

G Privacy

Restatement (Second) of Torts

One who intentionally intrudes, physically or otherwise, upon the § 652B
solitude or seclusion of another or his private aﬀairs or concerns, is Intrusion upon Seclusion
subject to liability to the other for invasion of his privacy, if the intru-
sion would be highly oﬀensive to a reasonable person.
cmt. b The invasion may be by physical intrusion into a place in which
the plaintiﬀ has secluded himself, as when the defendant forces
his way into the plaintiﬀ’s room in a hotel or insists over the
plaintiﬀ’s objection in entering his home. It may also be by the
use of the defendant’s senses, with or without mechanical aids,
to oversee or overhear the plaintiﬀ’s private aﬀairs, as by look-
ing into his upstairs windows with binoculars or tapping his
telephone wires. It may be by some other form of investigation
or examination into his private concerns, as by opening his pri-
vate and personal mail, searching his safe or his wallet, exam-
ining his private bank account, or compelling him by a forged
court order to permit an inspection of his personal documents.
cmt. c The defendant is subject to liability under the rule stated in
this Section only when he has intruded into a private place, or
has otherwise invaded a private seclusion that the plaintiﬀ has
thrown about his person or aﬀairs. Thus there is no liability
for the examination of a public record concerning the plaintiﬀ,
or of documents that the plaintiﬀ is required to keep and make
available for public inspection. Nor is there liability for observ-
ing him or even taking his photograph while he is walking on
the public highway, since he is not then in seclusion, and his ap-
pearance is public and open to the public eye. Even in a public
place, however, there may be some ma ers about the plaintiﬀ,
such as his underwear or lack of it, that are not exhibited to the
public gaze; and there may still be invasion of privacy when
there is intrusion upon these ma ers.

One who gives publicity to a ma er concerning the private life of an- § 652D
other is subject to liability to the other for invasion of his privacy, if Publicity Given to Private Life
the ma er publicized is of a kind that (a) would be highly oﬀensive to
a reasonable person, and (b) is not of legitimate concern to the public.
86 CHAPTER 2. TRADE SECRET

cmt. b Private life. – The rule stated in this Section applies only to pub-
licity given to ma ers concerning the private, as distinguished
from the public, life of the individual. There is no liability
when the defendant merely gives further publicity to informa-
tion about the plaintiﬀ that is already public. Thus there is no
liability for giving publicity to facts about the plaintiﬀ’s life that
are ma ers of public record, such as the date of his birth, the fact
of his marriage, his military record, the fact that he is admi ed
to the practice of medicine or is licensed to drive a taxicab, or
the pleadings that he has ﬁled in a lawsuit. On the other hand,
if the record is one not open to public inspection, as in the case
of income tax returns, it is not public, and there is an invasion
of privacy when it is made so.
Similarly, there is no liability for giving further publicity to
what the plaintiﬀ himself leaves open to the public eye. Thus he
normally cannot complain when his photograph is taken while
he is walking down the public street and is published in the
defendant’s newspaper. Nor is his privacy invaded when the
defendant gives publicity to a business or activity in which the
plaintiﬀ is engaged in dealing with the public. On the other
hand, when a photograph is taken without the plaintiﬀ’s con-
sent in a private place, or one already made is stolen from his
home, the plaintiﬀ’s appearance that is made public when the
picture appears in a newspaper is still a private ma er, and his
privacy is invaded.
Every individual has some phases of his life and his activ-
ities and some facts about himself that he does not expose to
the public eye, but keeps entirely to himself or at most reveals
only to his family or to close friends. Sexual relations, for exam-
ple, are normally entirely private ma ers, as are family quar-
rels, many unpleasant or disgraceful or humiliating illnesses,
most intimate personal le ers, most details of a man’s life in
his home, and some of his past history that he would rather for-
get. When these intimate details of his life are spread before the
public gaze in a manner highly oﬀensive to the ordinary reason-
able man, there is an actionable invasion of his privacy, unless
the ma er is one of legitimate public interest.

96 Geo. L.J. 123 (2007)
Neil M. Richards & Daniel J. Solove
Privacy's Other Path: Recovering the Law of Confidentiality
According to the oft-told legend, the right to privacy was born when
Samuel Warren and Louis Brandeis penned The Right to Privacy in
1890. Spanning just twenty-eight pages in the Harvard Law Review,
the article identiﬁed privacy as an implicit concept running through-
G. PRIVACY 87

out Anglo-American common law. Warren and Brandeis also based
much of their argument for a right to privacy upon Prince Albert v. Prince Albert: (1848) 41 Eng. Rep. 1171
Strange, an English case from 1848. (Ch.)
The dispute arose when Queen Victoria and her husband Al-
bert, the Prince Consort, sued in equity to prevent the exhibition by
William Strange of etchings that the royal couple had made of their
family. They intended the etchings to be shared only with their fam-
ily and close friends. On appeal, the Lord Chancellor agreed that
Strange had no right to print and sell the etchings or the catalog. The
Chancellor concluded that Prince Albert had a common law literary
property right in the unpublished work – essentially, a common law
copyright in unpublished works. Prince Albert suggested that intel- Put this thought aside for now; com-
lectual property law could aﬀord a remedy of restricting publication mon law literary property will return in
the Copyright and Music chapters.
in unpublished works. Warren and Brandeis took this facet of the
opinion and used it to turn Prince Albert from an opinion protecting
intellectual property rights to a case protecting individual feelings
and emotions from the pain of unwanted publicity.
The story of privacy in Britain serves as an interesting contrast to
the American experience. English law, like American law, also de-
veloped a law of “private” information. As in America, this English
strand of the common law also traces its origins back to Prince Albert.
Warren and Brandeis minimized the second basis for the judgment
– breach of conﬁdence. Because Victoria and Albert had circulated
copies of the etchings only to a few friends, and had only sent copies
outside such a circle to the printer for purpose of making these copies,
the Lord Chancellor concluded that Strange’s possession “must have
originated in a breach of trust, conﬁdence, or contract,” most likely
by a clerk to the royal printer. Disclosure represented a breach of con-
ﬁdence because a clerk to trusted professionals like printers and mer-
chants owed the same implied contractual duty as his master “that
he will not make public that which he learns in the execution of his
duty as clerk.” Thus, the printer’s assistant had a duty to the Queen
and the Prince to maintain the conﬁdentiality of their etchings. The
breach of this duty could be enforced against subsequent holders of
the etchings and the plates used to make copies of them.
The English law of conﬁdence is quite diﬀerent from the Amer-
ican law of privacy. Consider the case of Barrymore v. News Group Barrymore: [1997] F.S.R. 600 (Ch.) (U.K.)
Newspapers, Ltd.. Actor Michael Barrymore had a homosexual aﬀair
with Paul Winco , who worked for a company Barrymore jointly
owned with his wife. Winco provided details of the aﬀair to a news-
paper, including le ers wri en by Barrymore. The court held that
there was a breach of conﬁdence: “When people enter into a personal
relationship of this nature, they do not do so for the purpose of it sub-
sequently being published in The Sun, or any other newspaper. The
information about the relationship is for the relationship and not for
88 CHAPTER 2. TRADE SECRET

a wider purpose.”
The results in these cases would very likely be diﬀerent under
American privacy law. Courts might dismiss the cases, either con-
cluding that the information was not private since others knew about
it or ﬁnding that the information was “of legitimate concern to the
public.” Beyond the privacy torts, the American breach of conﬁden-
tiality tort would have diﬃculty because only a few courts have held
that it can make third parties liable for knowingly using information
obtained via a breach. Moreover, the American tort currently has
been applied only to a limited set of relationships; courts have not
yet extended the tort to friends or lovers. In contrast, English law is
much more open-ended in the relationships it protects.

Florida v. Riley
488 U.S. 445 (1989)
This case originated with an anonymous tip to the Pasco County Sher-
iﬀ’s oﬃce that marijuana was being grown on respondent’s prop-
erty. When an investigating oﬃcer discovered that he could not see
the contents of [respondent’s] greenhouse from the road, he circled
twice over respondent’s property in a helicopter at the height of 400
feet. With his naked eye, he was able to see through the openings in
the roof and one or more of the open sides of the greenhouse and to
identify what he thought was marijuana growing in the structure. A
warrant was obtained based on these observations, and the ensuing
search revealed marijuana growing in the greenhouse. Respondent
was charged with possession of marijuana under Florida law. The
trial court granted his motion to suppress [for violating the Fourth
Amendment’s prohibition on ”unreasonable searches and seizures.”]
Ciraolo: 476 U.S. 207 (1986)
California v. Ciraolo controls this case. There, acting on a tip, the
police inspected the backyard of a particular house while ﬂying in a
ﬁxed-wing aircraft at 1,000 feet. With the naked eye the oﬃcers saw
what they concluded was marijuana growing in the yard. A search
warrant was obtained on the strength of this airborne inspection, and
marijuana plants were found.
We recognized that the yard was within the curtilage of the house,
that a fence shielded the yard from observation from the street, and
that the occupant had a subjective expectation of privacy. We held,
however, that such an expectation was not reasonable and not one
that society is prepared to honor. Our reasoning was that the home
and its curtilage are not necessarily protected from inspection that
involves no physical invasion. What a person knowingly exposes to
the public, even in his own home or oﬃce, is not a subject of Fourth
Amendment protection. As a general proposition, the police may see
what may be seen from a public vantage point where they have a
right to be, Thus the police, like the public, would have been free to
inspect the backyard garden from the street if their view had been
G. PRIVACY 89

unobstructed. They were likewise free to inspect the yard from the
vantage point of an aircraft ﬂying in the navigable airspace as this
plane was.
We arrive at the same conclusion in the present case.

Kyllo v. United States
533 U.S. 27 (2001)
This case presents the question whether the use of a thermal-imaging
device aimed at a private home from a public street to detect relative
amounts of heat within the home constitutes a ”search” within the
meaning of the Fourth Amendment.
In 1991 Agent William Ellio of the United States Department
of the Interior came to suspect that marijuana was being grown in
the home belonging to petitioner Danny Kyllo. Indoor marijuana
growth typically requires high-intensity lamps. In order to determine
whether an amount of heat was emanating from petitioner’s home
consistent with the use of such lamps, at 3:20 a.m. on January 16,
1992, Agent Ellio and Dan Haas used an Agema Thermovision 210
thermal imager to scan the triplex. Thermal imagers detect infrared
radiation, which virtually all objects emit but which is not visible to
the naked eye. The imager converts radiation into images based on
relative warmth—black is cool, white is hot, shades of gray connote
relative diﬀerences; in that respect, it operates somewhat like a video
camera showing heat images. The scan of Kyllo’s home took only a
few minutes and was performed from the passenger seat of Agent
Ellio ’s vehicle across the street from the front of the house and also
from the street in back of the house. The scan showed that the roof
over the garage and a side wall of petitioner’s home were relatively
hot compared to the rest of the home and substantially warmer than
neighboring homes in the triplex. Agent Ellio concluded that peti-
tioner was using halide lights to grow marijuana in his house, which
indeed he was. Based on tips from informants, utility bills, and the
thermal imaging, a Federal Magistrate Judge issued a warrant autho-
rizing a search of petitioner’s home, and the agents found an indoor
growing operation involving more than 100 plants.
One might think that examining the portion of a house that is in
plain public view, while it is a ”search” despite the absence of tres-
pass, is not an ”unreasonable” one under the Fourth Amendment.
But in fact we have held that visual observation is no ”search” at all.
In assessing when a search is not a search, we have applied somewhat
in reverse the principle ﬁrst enunciated in Ka v. United States. Ka Katz: 389 U.S. 347 (1967)
involved eavesdropping by means of an electronic listening device
placed on the outside of a telephone booth – a location not within
the catalog (”persons, houses, papers, and eﬀects”) that the Fourth
Amendment protects against unreasonable searches. We held that
the Fourth Amendment nonetheless protected Ka from the warrant-
90 CHAPTER 2. TRADE SECRET

less eavesdropping because he ”justiﬁably relied” upon the privacy of
the telephone booth. As Justice Harlan’s oft-quoted concurrence de-
scribed it, a Fourth Amendment search occurs when the government
violates a subjective expectation of privacy that society recognizes as
reasonable. We have applied the test on two diﬀerent occasions in
holding that aerial surveillance of private homes and surrounding
areas does not constitute a search. Ciraolo; Florida v. Riley.
We think that obtaining by sense-enhancing technology any in-
formation regarding the interior of the home that could not otherwise
have been obtained without physical intrusion into a constitutionally
protected area, constitutes a search – at least where (as here) the tech-
nology in question is not in general public use. This assures preserva-
tion of that degree of privacy against government that existed when
the Fourth Amendment was adopted. On the basis of this criterion,
the information obtained by the thermal imager in this case was the
product of a search.
The Government also contends that the thermal imaging was con-
stitutional because it did not ”detect private activities occurring in
Dow Chemical: 476 U.S. 227 (1986) private areas,” It points out that in Dow Chemical Co. v. United States
we observed that the enhanced aerial photography did not reveal
any ”intimate details.” Dow Chemical, however, involved enhanced
aerial photography of an industrial complex, which does not share
the Fourth Amendment sanctity of the home. The Fourth Amend-
ment’s protection of the home has never been tied to measurement
Silverman: 365 U.S. 505 (1961) of the quality or quantity of information obtained. In Silverman v.
United States, for example, we made clear that any physical invasion
of the structure of the home, ”by even a fraction of an inch,” was too
much, and there is certainly no exception to the warrant requirement
for the oﬃcer who barely cracks open the front door and sees nothing
but the nonintimate rug on the vestibule ﬂoor. In the home, our cases
show, all details are intimate details, because the entire area is held
safe from prying government eyes.
Justice Stevens, dissenting:
There is, in my judgment, a distinction of constitutional magni-
tude between ”through-the-wall surveillance” that gives the observer
or listener direct access to information in a private area, on the one
hand, and the thought processes used to draw inferences from in-
formation in the public domain, on the other hand. The Court has
crafted a rule that purports to deal with direct observations of the
inside of the home, but the case before us merely involves indirect
deductions from ”oﬀ-the-wall” surveillance, that is, observations of
the exterior of the home.
H. GOVERNMENT SECRETS 91

H Government Secrets

Freedom of Information Act

(a) Each agency shall make available to the public information as 5 U.S.C. § 552
follows: Public information; agency rules, opin-
(3) (A) … each agency, upon any request for records which ions, orders, records, and proceedings
(i) reasonably describes such records and (ii) is made
in accordance with published rules stating the time,
place, fees (if any), and procedures to be followed,
shall make the records promptly available to any per-
son.
(b) This section does not apply to ma ers that are –
(1) (A) speciﬁcally authorized under criteria established by an
Executive order to be kept secret in the interest of national
defense or foreign policy and (B) are in fact properly clas-
siﬁed pursuant to such Executive order;
(2) related solely to the internal personnel rules and practices
of an agency;
(3) speciﬁcally exempted from disclosure by statute …
(4) trade secrets and commercial or ﬁnancial information ob-
tained from a person and privileged or conﬁdential;
(5) inter-agency or intra-agency memorandums or le ers
which would not be available by law to a party other than
an agency in litigation with the agency;
(6) personnel and medical ﬁles and similar ﬁles the disclosure
of which would constitute a clearly unwarranted invasion
of personal privacy;
(7) records or information compiled for law enforcement pur-
poses, but only to the extent that the production of such
law enforcement records or information (A) could reason-
ably be expected to interfere with enforcement proceed-
ings, (B) would deprive a person of a right to a fair trial
or an impartial adjudication, (C) could reasonably be ex-
pected to constitute an unwarranted invasion of personal
privacy, (D) could reasonably be expected to disclose the
identity of a conﬁdential source … (E) would disclose tech-
niques and procedures for law enforcement investigations
or prosecutions … if such disclosure could reasonably be
expected to risk circumvention of the law, or (F) could rea-
sonably be expected to endanger the life or physical safety
of any individual;
92 CHAPTER 2. TRADE SECRET

(8) contained in or related to examination, operating, or con-
dition reports prepared by, on behalf of, or for the use of
an agency responsible for the regulation or supervision of
ﬁnancial institutions; or
(9) geological and geophysical information and data, includ-
ing maps, concerning wells.

U.S. Dept. of Justice v. Tax Analysts
492 U.S. 136 (1989)
The question presented is whether the Freedom of Information Act re-
quires the United States Department of Justice (Department) to make
available copies of district court decisions that it receives in the course
of litigating tax cases on behalf of the Federal Government. We hold
that it does.
We consider ﬁrst whether the district court decisions at issue are
Kissinger: 445 U.S. 136 (1980) ”agency records,” a term elaborated upon both in Kissinger v. Re-
Forsham: 445 US 169 (1980) porters Comm. for Freedom of Press and in Forsham v. Harris. Kissinger
involved three separate FOIA requests for wri en summaries of
telephone conversations in which Henry Kissinger had participated
when he served as Assistant to the President for National Security Af-
fairs from 1969 to 1975, and as Secretary of State from 1973 to 1977. At
the time of this request, these summaries were stored in Kissinger’s
oﬃce at the State Department in his personal ﬁles. We ﬁrst concluded
that the summaries were not ”agency records” at the time they were
made because the FOIA does not include the Oﬃce of the President
in its deﬁnition of ”agency.” We further held that these documents
did not acquire the status of ”agency records” when they were re-
moved from the White House and transported to Kissinger’s oﬃce at
the State Department, a FOIA-covered agency.
Forsham, in turn, involved a request for raw data that formed the
basis of a study conducted by a private medical research organization.
Although the study had been funded through federal agency grants,
the data never passed into the hands of the agencies that provided
the funding, but instead was produced and possessed at all times by
the private organization. We recognized that records of a nonagency
certainly could become records of an agency as well, but the fact that
the study was ﬁnancially supported by a FOIA-covered agency did
not transform the source material into ”agency records.” Nor did the
agencies’ right of access to the materials under federal regulations
change this result. As we explained, ”the FOIA applies to records
which have been in fact obtained, and not to records which merely
could have been obtained.”
Two requirements emerge from Kissinger and Forsham, each of
which must be satisﬁed for requested materials to qualify as ”agency
records.” First, an agency must either create or obtain the requested
H. GOVERNMENT SECRETS 93

materials. In performing their oﬃcial duties, agencies routinely avail
themselves of studies, trade journal reports, and other materials pro-
duced outside the agencies both by private and governmental orga-
nizations. To restrict the term ”agency records” to materials gener-
ated internally would frustrate Congress’ desire to put within public
reach the information available to an agency in its decision-making
processes.
Second, the agency must be in control of the requested materials
at the time the FOIA request is made. By control we mean that the ma-
terials have come into the agency’s possession in the legitimate con-
duct of its oﬃcial duties. This requirement accords with Kissinger’s
teaching that the term ”agency records” is not so broad as to include
personal materials in an employee’s possession, even though the ma-
terials may be physically located at the agency.
Applying these requirements here, we conclude that the re-
quested district court decisions constitute ”agency records.” First, it is
undisputed that the Department has obtained these documents from
the district courts. Second, the Department clearly controls the dis-
trict court decisions that Tax Analysts seeks.

Chrysler Corp. v. Brown
441 U.S. 281 (1979)
The expanding range of federal regulatory activity and growth in the
Government sector of the economy have increased federal agencies’
demands for information about the activities of private individuals
and corporations. These developments have paralleled a related con-
cern about secrecy in Government and abuse of power. The Freedom
of Information Act (hereinafter FOIA) was a response to this concern,
but it has also had a largely unforeseen tendency to exacerbate the
uneasiness of those who comply with governmental demands for in-
formation. For under the FOIA third parties have been able to obtain
Government ﬁles containing information submi ed by corporations
and individuals who thought that the information would be held in
conﬁdence.
This case belongs to a class that has been popularly denominated
”reverse-FOIA” suits. Chrysle seeks to enjoin agency disclosure on
the grounds that it is inconsistent with the FOIA and 18 U.S.C. § 1905,
a criminal statute with origins in the 19th century that proscribes dis-
closure of certain classes of business and personal information. We
agree with the Court of Appeals for the Third Circuit that the FOIA
is purely a disclosure statute and aﬀords Chrysler no private right
of action to enjoin agency disclosure. But we cannot agree with that
court’s conclusion that this disclosure is ”authorized by law” within
the meaning of § 1905.
As a party to numerous Government contracts, Chrysler is re-
quired to comply with Executive Orders 11246 and 11375, which
94 CHAPTER 2. TRADE SECRET

charge the Secretary of Labor with ensuring that corporations that
beneﬁt from Government contracts provide equal employment op-
portunity regardless of race or sex. The United States Department of
Labor’s Oﬃce of Federal Contract Compliance Programs (OFCCP)
has promulgated regulations which require Government contrac-
tors to furnish reports and other information about their aﬃrmative-
action programs and the general composition of their work forces.
OFCCP regulations require that Chrysler make available to this
agency wri en aﬃrmative-action programs (AAP’s) and annually
submit Employer Information Reports, known as EEO-1 Reports.
Regulations promulgated by the Secretary of Labor provide for
public disclosure of information from records of the OFCCP and its
compliance agencies. It is the voluntary disclosure contemplated by
this regulation, over and above that mandated by the FOIA, which is
the gravamen of Chrysler’s complaint in this case.
This controversy began on May 14, 1975, when the [government]
informed Chrysler that third parties had made an FOIA request for
disclosure of the 1974 AAP for Chrysler’s Newark, Del., assembly
plant.
Although we have not had to face squarely the question whether
the FOIA textitex proprio vigore forbids governmental agencies from
disclosing certain classes of information to the public, we have con-
sistently recognized that the basic objective of the Act is disclosure.
Chrysler contends that the nine exemptions in general, and Ex-
emption 4 in particular, reﬂect a sensitivity to the privacy interests of
private individuals and nongovernmental entities. That contention
may be conceded without inexorably requiring the conclusion that
the exemptions impose aﬃrmative duties on an agency to withhold
information sought. In fact, that conclusion is not supported by the
language, logic, or history of the Act.
Enlarged access to governmental information undoubtedly cuts
against the privacy concerns of nongovernmental entities, and as a
ma er of policy some balancing and accommodation may well be de-
sirable. We simply hold here that Congress did not design the FOIA
exemptions to be mandatory bars to disclosure.
Chrysler contends, however, that even if its suit for injunctive re-
lief cannot be based on the FOIA, such an action can be premised on
18 U.S.C. § 1905 the Trade Secrets Act. The Act provides:
Whoever, being an oﬃcer or employee of the United
States or of any department or agency thereof, publishes,
divulges, discloses, or makes known in any manner or to
any extent not authorized by law any information coming
to him in the course of his employment or oﬃcial duties
or by reason of any examination or investigation made by,
H. GOVERNMENT SECRETS 95

or return, report or record made to or ﬁled with, such de-
partment or agency or oﬃcer or employee thereof which
information concerns or relates to the trade secrets, pro-
cesses, operations, style of work, or apparatus, or to the
identity, conﬁdential statistical data, amount or source of
any income, proﬁts, losses, or expenditures of any person,
ﬁrm, partnership, corporation, or association; or permits
any income return or copy thereof or any book containing
any abstract or particulars thereof to be seen or examined
by any person except as provided by law; shall be ﬁned
not more than $1,000, or imprisoned not more than one
year, or both; and shall be removed from oﬃce or employ-
ment.
The Court of Appeals held that the Trade Secrets Act was not appli-
cable to the agency disclosure at issue here because such disclosure
was ”authorized by law” within the meaning of the Act. The court
found the source of that authorization to be the OFCCP regulations
that DLA relied on in deciding to disclose information on the Ham-
tramck and Newark plants. [The Court disagreed.]
We reject, however, Chrysler’s contention that the Trade Secrets
Act aﬀords a private right of action to enjoin disclosure in violation
of the statute. Most importantly, a private right of action is not nec-
essary to make eﬀective the congressional purpose, for we ﬁnd that
review of DLA’s decision to disclose Chrysler’s employment data is
available under the Administrative Procedures Act.
Section 10(a) of the APA provides that ”a person suﬀering legal
wrong because of agency action, or adversely aﬀected or aggrieved
by agency action, is entitled to judicial review thereof.” We conclude 5 U.S.C. § 702.
that DLA’s decision to disclose the Chrysler reports is reviewable
agency action and Chrysler is a person ”adversely aﬀected or ag-
grieved” within the meaning of § 10(a).

Coastal States Gas Corp. v. Department of Energy
617 F.2d 854 (D.C. Cir. 1980)
This case raises issues concerning the scope of Exemptions 5 and 7
to the general disclosure requirements of the Freedom of Informa-
tion Act. In 1975 and 1976, plaintiﬀ Coastal States Gas Corporation
(Coastal States) ﬁled Freedom of Information requests with the de-
fendant, seeking copies of agency interpretations of its regulations
which had not been made public. The issue in this appeal is focused
on memoranda from regional counsel to auditors working in DOE’s
ﬁeld oﬃces, issued in response to requests for interpretations of reg-
ulations within the context of particular facts encountered while con-
ducting an audit of a ﬁrm. The plaintiﬀ contends that these memo-
randa constituted a body of ”secret law” which the agency was using
96 CHAPTER 2. TRADE SECRET

in its dealings with the public and which must be disclosed, while
DOE responds that the documents were properly withheld under Ex-
emption 5, as documents which would not be subject to disclosure
during discovery, and in a few cases, under Exemption 7 as docu-
ments within an investigatory ﬁle.
After the 1973 oil embargo, a compliance program was established
to assure the observance of petroleum pricing and allocation regula-
tions. Ten regional oﬃces were established within which regional
counsel were located. Each regional oﬃce also employed auditors
and other investigative personnel, whose job was auditing individual
ﬁrms to assure compliance with the regulations. These audits were
not ”investigations;” at that point, no charge had been made nor was
a violation necessarily suspected.
While the regional counsel has many responsibilities, the partic-
ular task relevant to this case is that of providing interpretations of
the pertinent regulations to the auditors at this early stage of compli-
ance review. If the auditors should encounter a problem of regula-
tory interpretation, a request for advice would be sent to the regional
counsel, couched in a speciﬁc factual context, either real or hypothet-
ical. The response would be a legal memorandum, interpreting any
applicable regulations in light of those facts, and often pointing out
additional factors which might make a diﬀerence in the application
of the regulation.
The agency points out that these were not ”formal” interpreta-
tions of the regulations, emphasizing that there is a published pro-
cedure for issuing such interpretations. Also, the agency insists that
the interpretations were not ”binding” on the audit staﬀ; it contends
that the agency staﬀ ”is free to reject the memorandum.” The district
court found, however, that in fact the advice was regularly and consis-
tently followed by the non-legal staﬀ, a conclusion which we ﬁnd to
be fully supported by the evidence. There is evidence in the record
that agency staﬀ failed to follow a regional counsel opinion only if
it could be distinguished on the facts, or if the ma er were referred
to a higher authority within the agency. Furthermore, in some of
the oﬃces the documents were indexed by subject ma er and used
as precedent in later cases; they were circulated among the area of-
ﬁces and supplied to new personnel; they were at times ”amended”
or ”rescinded,” which would hardly be necessary if the documents
contained merely informal suggestions to staﬀ which could be disre-
garded; and on at least one occasion a regional counsel memorandum
involving the audit of a diﬀerent ﬁrm was cited to a member of the
public as binding precedent.
The language of Exemption 5 is cast in terms of discovery law; the
agencies need turn over no documents ”which would not be available
by law to a private party in litigation with the agency.” This discovery
H. GOVERNMENT SECRETS 97

standard can only serve as a rough guide to the courts, since decisions
as to discovery are usually based on a balancing of the relative need
of the parties, and standards vary according to the kind of litigation
involved. It is clear, however, that Congress intended that agencies
should not lose the protection traditionally aﬀorded through the ev-
identiary privileges simply because of the passage of the FOIA. The
courts have recognized that Exemption 5 protects, as a general rule,
materials which would be protected under the a orney-client privi-
lege, the a orney work-product privilege, or the executive ”delibera-
tive process” privilege.
We have diﬃculty in perceiving any purpose which would be
served by applying the a orney-client privilege in this case. While it
is clear that an agency can be a ”client” and agency lawyers can func-
tion as ”a orneys” within the relationship contemplated by the priv-
ilege, this does not seem to be such a case. It is hard to imagine the
”conﬁdential information” which an auditor might have communi-
cated to the regional counsel. The factual situations the auditor com-
municates to the a orneys are encountered in the course of auditing
third parties, the companies. They do not contain private information
concerning the agency. Rather than ”counseling,” intended to assist
the agency in protecting its interests, the memoranda here seem to
be neutral, objective analyses of agency regulations. They resemble,
in fact, question and answer guidelines which might be found in an
agency manual. In sharp contrast are the documents and memoranda
in issue in Mead Data Cent., Inc. v. US Dept. of Air Force, in which dis- Mead Data: 566 F.2d 242 (D.C. Cir. 1977)
closure was sought of material generated in the course of negotiating
a contract between the Air Force and a private company. In such a
case, the Government is dealing with its a orneys as would any pri-
vate party seeking advice to protect personal interests, and needs the
same assurance of conﬁdentiality so it will not be deterred from full
and frank communications with its counselors. This case bears li le
resemblance to that situation.
Assuming, however, that the purposes of the a orney-client priv-
ilege might be served by extending its protection to the situation here,
we agree with the district court that DOE has failed to demonstrate
a fundamental prerequisite to assertion of the privilege: conﬁdential-
ity both at the time of the communication and maintained since. The
agency has admi ed that it does not know who has had access to the
documents, and there is undisputed testimony that at least in some
regions, copies of the memoranda were circulated to all area oﬃces,
ﬁled and indexed for future use, relied on as precedent and used as
training materials for new personnel.
Another traditional area of privilege which has been recognized
under Exemption 5 is a orney work-product. This doctrine stands in
contrast to the a orney-client privilege; rather than protecting conﬁ-
98 CHAPTER 2. TRADE SECRET

dential communications from the client, it provides a working a or-
ney with a ”zone of privacy” within which to think, plan, weigh facts
and evidence, candidly evaluate a client’s case, and prepare legal the-
ories. There is one signiﬁcant limitation of the doctrine, however,
which defeats the agency’s claim of privilege here; it has uniformly
been held to be limited to documents prepared in contemplation of lit-
igation. o the extent the Government provided some indication in its
index that a speciﬁc claim had taken shape in the course of an audit,
so that the a orney’s work could fairly, if generously, be character-
ized as ”in contemplation of litigation,” the district court permi ed
these documents to be withheld. Beyond that, the DOE has failed to
carry its burden of establishing that litigation was fairly foreseeable
at the time the memoranda were prepared, and thus is not entitled to
invoke the exception.
A privilege unique to the government is one which is variously
described as predecisional or deliberative process privilege. The priv-
ilege has a number of purposes: it serves to assure that subordi-
nates within an agency will feel free to provide the decisionmaker
with their uninhibited opinions and recommendations without fear
of later being subject to public ridicule or criticism; to protect against
premature disclosure of proposed policies before they have been ﬁ-
nally formulated or adopted; and to protect against confusing the is-
sues and misleading the public by dissemination of documents sug-
gesting reasons and rationales for a course of action which were not
in fact the ultimate reasons for the agency’s action.
In deciding whether a document should be protected by the privi-
lege we look to whether the document is ”predecisional” –whether it
was generated before the adoption of an agency policy – and whether
the document is ”deliberative” – whether it reﬂects the give-and-take
of the consultative process. The exemption thus covers recommenda-
tions, draft documents, proposals, suggestions, and other subjective
documents which reﬂect the personal opinions of the writer rather
than the policy of the agency. Documents which are protected by the
privilege are those which would inaccurately reﬂect or prematurely
disclose the views of the agency, suggesting as agency position that
which is as yet only a personal position. To test whether disclosure
of a document is likely to adversely aﬀect the purposes of the priv-
ilege, courts ask themselves whether the document is so candid or
personal in nature that public disclosure is likely in the future to sti-
ﬂe honest and frank communication within the agency. Human ex-
perience teaches that those who expect public dissemination of their
remarks may well temper candor with a concern for appearances and
for their own interests to the detriment of the decisionmaking process.
We also ask whether the document is recommendatory in nature or is
a draft of what will become a ﬁnal document, and whether the docu-
H. GOVERNMENT SECRETS 99

ment is deliberative in nature, weighing the pros and cons of agency
adoption of one viewpoint or another. Finally, even if the document
is predecisional at the time it is prepared, it can lose that status if it is
adopted, formally or informally, as the agency position on an issue
or is used by the agency in its dealings with the public.
It is readily apparent that the memoranda in issue bear li le re-
semblance to the types of documents intended to be protected under
the deliberative process privilege. The documents were not sugges-
tions or recommendations as to what agency policy should be. Unlike
the documents in EPA v. Mink and Murphy v. Dep’t of the ArmyMur- Mink: 410 U.S. 73 (1973)
phymurphy613 F.2d 1151 (1979), the memoranda are not advice to a
superior, nor are they suggested dispositions of a case, as in Renego- Grumman: 421 U.S. 168 (1975)
tiation Bd. v. Grumman Aircraft Engineering Corp.. They are not one
step of an established adjudicatory process, which would result in a
formal opinion, as were the documents held exempt in NLRB v. Sears, Sears, Roebuck: 421 U.S. 132 (1975)
Roebuck & Co. There is nothing subjective or personal about the mem-
oranda; they are simply straightforward explanations of agency reg-
ulations in speciﬁc factual situations. They are more akin to a ”re-
source” opinion about the applicability of existing policy to a certain
state of facts, like examples in a manual, to be contrasted to a factual
or strategic advice giving opinion. Nor do they reﬂect agency give-
and-take – of the deliberative process – by which the decision itself
is made. Characterizing these documents as ”predecisional” simply
because they play into an ongoing audit process would be a serious
warping of the meaning of the word. No ”decision” is being made or
”policy” being considered; rather the documents discuss established
policies and decisions – the agency regulations – in the light of a spe-
ciﬁc, and often hypothetical, fact pa ern.
Exemption 7 aﬀords protection to investigatory ﬁles to prevent
harm to the government’s case in court. In 1974, the scope of the
privilege was sharply narrowed when Congress, dissatisﬁed with the
broad scope given to Exemption 7 by the courts, amended the exemp-
tion to make it clear that the Government must establish not only that
the document was prepared in the course of an ”investigation,” but
that disclosure of the document would ”interfere with enforcement
proceedings.” The Government asserts this privilege as to ﬁfty-three
documents.
We need not decide whether any of these memoranda are of a sort
which would be protected if the Government had demonstrated – or
even conclusorily asserted – that there are presently active investiga-
tions underway or contemplated in each of these ﬁfty-three cases. .
There is no reason to protect yellowing documents contained in long-
closed ﬁles. DOE made no eﬀort whatsoever in the district court to
demonstrate that any of these cases are still under investigation or
being actively pursued. The district court was correct in concluding
100 CHAPTER 2. TRADE SECRET

that DOE had failed generally to meet its burden of establishing the
prerequisites to invocation of Exemption 7.

Congressional Research Service
(2013)
The Protection of Classified Information: The Legal Framework
Congress has directed the President to establish procedures govern-
ing the access to classiﬁed material so that no person can gain such
access without having undergone a background check. With the au-
thority to determine classiﬁcation standards vested in the President,
these standards tend to change whenever a new administration takes
control of the White House.
The present standards for classifying and declassifying informa-
Exec. Order No. 13526, 3 C.F.R. 298 tion were last amended on December 29, 2009. Under these stan-
(2009). dards, the President, Vice President, agency heads, and any other of-
ﬁcials designated by the President may classify information upon a
determination that the unauthorized disclosure of such information
could reasonably be expected to damage national security. Such in-
formation must be owned by, produced by, or under the control of
the federal government, and must concern one of the following:
• military plans, weapons systems, or operations;
• foreign government information;
• intelligence activities, intelligence sources/methods, cryptol-
ogy;
• foreign relations or foreign activities of the United States, in-
cluding conﬁdential sources;
• scientiﬁc, technological, or economic ma ers relating to na-
tional security;
• federal programs for safeguarding nuclear materials or facili-
ties;
• vulnerabilities or capabilities of national security systems; or
• weapons of mass destruction.
Information may be classiﬁed at one of three levels based on the
amount of danger that its unauthorized disclosure could reasonably
be expected to cause to national security. Information is classiﬁed
as ”Top Secret” if its unauthorized disclosure could reasonably be
expected to cause ”exceptionally grave damage” to national secu-
rity. The standard for ”Secret” information is ”serious damage” to
national security, while for ”conﬁdential” information the standard is
”damage” to national security. Signiﬁcantly, for each level, the orig-
inal classifying oﬃcer must identify or describe the speciﬁc danger
potentially presented by the information’s disclosure. In case of sig-
niﬁcant doubt as to the need to classify information or the level of
classiﬁcation appropriate, the information is to remain unclassiﬁed
H. GOVERNMENT SECRETS 101

or be classiﬁed at the lowest level of protection considered appropri-
ate.
The oﬃcer who originally classiﬁes the information establishes
a date for declassiﬁcation based upon the expected duration of the
information’s sensitivity. If the oﬃce cannot set an earlier declassiﬁ-
cation date, then the information must be marked for declassiﬁcation
in 10 years’ time or 25 years, depending on the sensitivity of the in-
formation. The deadline for declassiﬁcation can be extended if the
threat to national security still exists.
Classiﬁed information is required to be declassiﬁed ”as soon as
it no longer meets the standards for classiﬁcation.” The original clas-
sifying agency has the authority to declassify information when the
public interest in disclosure outweighs the need to protect that infor-
mation. On December 31, 2006, and every year thereafter, all informa-
tion that has been classiﬁed for 25 years or longer and has been deter-
mined to have ”permanent historical value” under Title 44 of the U.S.
Code will be automatically declassiﬁed, although agency heads can
exempt from this requirement classiﬁed information that continues
to be sensitive in a variety of speciﬁc areas.
Access to classiﬁed information is generally limited to those who
demonstrate their eligibility to the relevant agency head, sign a
nondisclosure agreement, and have a need to know the information.
The need-to-know requirement can be waived, however, for former
Presidents and Vice Presidents, historical researchers, and former
policy-making oﬃcials who were appointed by the President or Vice
President. The information being accessed may not be removed from
the controlling agency’s premises without permission. Each agency
is required to establish systems for controlling the distribution of clas-
siﬁed information.
Under E.O. 13526, each respective agency is responsible for main-
taining control over classiﬁed information it originates and is respon-
sible for establishing uniform procedures to protect classiﬁed infor-
mation and automated information systems in which classiﬁed in-
formation is stored or transmi ed. Agencies that receive informa-
tion classiﬁed elsewhere are not permi ed to transfer the informa-
tion further without approval from the classifying agency. Persons
authorized to disseminate classiﬁed information outside the execu-
tive branch are required to ensure it receives protection equivalent to
those required internally.
Generally, federal law prescribes a prison sentence of no more
than a year and/or a $1,000 ﬁne for oﬃcers and employees of the fed-
eral government who knowingly remove classiﬁed material without
the authority to do so and with the intention of keeping that material
at an unauthorized location. Stiﬀer penalties – ﬁnes of up to $10,000
and imprisonment for up to 10 years – a ach when a federal em-
102 CHAPTER 2. TRADE SECRET

ployee transmits classiﬁed information to anyone that the employee
has reason to believe is an agent of a foreign government. A ﬁne
and a 10-year prison term also await anyone, government employee
or not, who publishes, makes available to an unauthorized person,
or otherwise uses to the United States’ detriment classiﬁed informa-
tion regarding the codes, cryptography, and communications intelli-
gence utilized by the United States or a foreign government. Finally,
the disclosure of classiﬁed information that discloses any informa-
tion identifying a covert agent, when done intentionally by a person
with authorized access to such identifying information, is punishable
by imprisonment for up to 15 years. A similar disclosure by one who
learns the identity of a covert agent as a result of having authorized ac-
cess to classiﬁed information is punishable by not more than 10 years’
imprisonment. Under the same provision, a person who undertakes
a ”pa ern of activities intended to identify and expose covert agents”
with reason to believe such activities would impair U.S. foreign intel-
ligence activities, and who then discloses the identities uncovered as
a result is subject to three years’ imprisonment, whether or not viola-
tor has access to classiﬁed information.
In addition to the criminal penalties outlined above, the executive
branch employs numerous means of deterring unauthorized disclo-
sures by government personnel using administrative measures based
on terms of employment contracts. The agency may impose disci-
plinary action or revoke a person’s security clearance. The revocation
of a security clearance is usually not reviewable by the Merit System
Protection Board and may mean the loss of government employment.
Government employees may be subject to monetary penalties for dis-
closing classiﬁed information. Violators of the Espionage Act and the
Atomic Energy Act provisions may be subject to loss of their retire-
ment pay.
Agencies also rely on contractual agreements with employees,
who typically must sign non-disclosure agreements prior to obtain-
ing access to classiﬁed information, sometimes agreeing to submit
all materials that the employee desires to publish to a review by the
agency. The Supreme Court enforced such a contract against a for-
mer employee of the Central Intelligence Agency (CIA), upholding
the government’s imposition of a constructive trust on the proﬁts of
a book the employee sought to publish without ﬁrst submi ing it to
Snepp v. United States, 444 U.S. 507 CIA for review.
(1980)
Under some circumstances, the government can also use injunc-
tions to prevent disclosures of information. The courts have gener-
ally upheld injunctions against former employees’ publishing infor-
mation they learned through access to classiﬁed information. The
Supreme Court also upheld the State Department’s revocation of
passports for overseas travel by persons planning to expose U.S.
H. GOVERNMENT SECRETS 103

covert intelligence agents, despite the fact that the purpose was to
disrupt U.S. intelligence activities rather than to assist a foreign gov-
ernment. Haig v. Agee, 453 U.S. 280 (1981).

As noted above, E.O. 13526 sets the oﬃcial procedures for the de-
classiﬁcation of information. Once information is declassiﬁed, it may
be released to persons without a security clearance. Leaks, by con-
trast, might be deﬁned as the release of classiﬁed information to per-
sons without a security clearance, typically journalists. Recent high-
proﬁle leaks of information regarding sensitive covert operations in
news stories that seemed to some to portray the Obama Administra-
tion in a favorable light raised questions regarding the practice of
“instant declassiﬁcation,” or whether disclosure of classiﬁed informa-
tion to journalists may ever be said to be an “authorized disclosure”
by a senior oﬃcial.
The processes for declassiﬁcation set forth in E.O. 13526 seem to
presuppose that agencies and classifying oﬃcials will not have any
need or desire to disclose classiﬁed information in their possession
other than to comply with the regulations. Yet it has long been noted
that there seems to be an informal process for “instant declassiﬁca-
tion” of information whose release to the public serves an immediate
need.
As a practical ma er, there is li le to stop agency heads and other
high-ranking oﬃcials from releasing classiﬁed information to per-
sons without a security clearance when it is seen as suiting govern-
ment needs. The A orney General has prosecutorial discretion to
choose which leaks to prosecute. If in fact a case can be made that
a senior oﬃcial has made or authorized the disclosure of classiﬁed
information, successful prosecution under current laws may be im-
possible because the scienter requirement (i.e., guilty state of mind)
is not likely to be met.
Executive branch policy appears to treat an oﬃcial disclosure as
a declassifying event, while non- a ributed disclosures have no ef-
fect on the classiﬁcation status of the information. For example, the
Department of Defense instructs agency oﬃcials, in the event that
classiﬁed information appears in the media, to neither conﬁrm nor
deny the accuracy of the information.

Phillippi v. Central Intelligence Agency
546 F.2d 1009 (D.C. Cir. 1976)
This is an action under the Freedom of Information Act, in which
plaintiﬀ-appellant seeks to compel the Central Intelligence Agency
to disclose certain records alleged to be in its possession concerning
its relationship with the Hughes Glomar Explorer.
In March 1975 several news organizations published stories pur-
porting to describe a secret operation conducted by the United States.
The central ﬁgure in these stories was the Hughes Glomar Explorer., a
104 CHAPTER 2. TRADE SECRET

large vessel publicly listed as a research ship owned and operated by
the Summa Corporation. According to the stories, the ship’s actual
owner and operator was the Government of the United States.
Following publication of these stories, other stories described the
alleged eﬀorts of the CIA to convince the news media not to make
public what they had learned about the Glomar Explorer. The la er
stories interested appellant, a journalist, and she ﬁled a FOIA request
for all Agency records relating to the reported contacts with the me-
dia. That request was denied on two grounds. First, the Agency
claimed that ”any records that might exist which reveal any CIA con-
nection with or interest in the activities of the Glomar Explorer; and,
indeed, any data that might reveal the existence of any such records”
would be classiﬁed and therefore exempt from disclosure. Second,
the Agency stated that
the fact of the existence or non-existence of the records you
request would relate to information pertaining to intelli-
gence sources and methods which the Director of Central
Intelligence has the responsibility to protect from unau-
thorized disclosure in accordance with the National Secu-
50 U.S.C. § 403(d)(3) rity Act of 1947.
We are dealing with a case in which the Agency has refused to con-
ﬁrm or deny the existence of materials requested under the FOIA.
In eﬀect, the situation is as if appellant had requested and been re-
fused permission to see a document which says either ”Yes, we have
records related to contacts with the media concerning the Glomar Ex-
plorer” or ”No, we do not have any such records.” On appeal appel-
lant does not assert that the Government may never claim that na-
tional security considerations require it to refuse to disclose whether
or not requested documents exist. Rather, her principal argument,
and the only question we decide, is that the Agency should have been
required to support its position on the basis of the public record.
It is clear that the FOIA contemplates that the courts will resolve
fundamental issues in contested cases on the basis of in camera ex-
aminations of the relevant documents. Appellant maintains that this
authority does not extend to in camera examination of aﬃdavits, the
procedure used below. In the peculiar context of this case we must re-
ject this contention. When the Agency’s position is that it can neither
conﬁrm nor deny the existence of the requested records, there are no
relevant documents for the court to examine other than the aﬃdavits
which explain the Agency’s refusal. Therefore, to fulﬁll its congres-
sionally imposed obligation to make a de novo determination of the
propriety of a refusal to provide information in response to a FOIA
request the District Court may have to examine classiﬁed aﬃdavits
in camera and without participation by plaintiﬀ’s counsel.
H. GOVERNMENT SECRETS 105

Before adopting such a procedure, however, the District Court
should a empt to create as complete a public record as is possible.
Adapting these procedures to the present case would require the
Agency to provide a public aﬃdavit explaining in as much detail as
is possible the basis for its claim that it can be required neither to
conﬁrm nor to deny the existence of the requested records.[7] The
Agency’s arguments should then be subject to testing by appellant,
who should be allowed to seek appropriate discovery when neces-
sary to clarify the Agency’s position or to identify the procedures by
which that position was established. Only after the issues have been
identiﬁed by this process should the District Court, if necessary, con-
sider arguments or information which the Agency is unable to make
public.
106 CHAPTER 2. TRADE SECRET
3

Patent

United States Constitution
art. I, § 8, cl. 8

The Congress shall have Power … To promote the Progress of Science Looking at these cases is much like
and useful Arts, by securing for limited Times to Authors and Inven- looking at a wonderful machine. But,
tors the exclusive Right to their respective Writings and Discoveries. of course, when looking at a beautiful
piece of machinery that functions like a
Patent law provides exclusive rights over new and useful inven-
clock or like clockwork, the next question
tions. Although it structure has shifted over time, the modern syn- might be whether this wonderful
thesis of patent law (appropriately enough) is an intricately interlock- precision instrument bears any relation
ing doctrinal machine. The mainspring of this system is the claim: a to reality.
precise statement of the technologies over which the inventor asserts —Dan L. Burk, Biotechnology in the
Federal Circuit: A Clockwork Lemon", 46
rights. The point of of patent prosecution is to generate appropriately Ariz. L. Rev. 441 (2004)
clear claim language that covers (or ”reads on”) what the inventor ac- The name of the game is the claim.
tually invented; patent infringement is directed to comparing claims —Giles S. Rich
with the defendant’s product or process. As we will see, patent law No economist, on the basis of present
uses a handful of basic concepts – e.g., ”prior art reference,” ”the per- knowledge, could possibly state with cer-
son of ordinary skill in the art,” and ”equivalent” – but it uses them tainty that the patent system, as it now
operates, confers a net benefit or a net
again and again. The key to understanding patent law is to pay at-
loss upon society. If we did not have a
tention to these recurring concepts. patent system, it would be irresponsible,
Why patent law? Three stories are usually advanced, two of on the basis of our present knowledge
which should already be familiar. It is said that patent law serves of its economic consequences, to recom-
an innovation function by giving incentives that enable investors to mend instituting one. But since we have
had a patent system for a long time, it
recoup their investment and a contracting function by enabling them
would be irresponsible, on the basis of
to commercialize their inventions without fear of being ripped oﬀ by our current knowledge, to recommend
business partners or imitated by competitors. But patent law also is abolishing it.
designed to serve a disclosure function: it requires inventors to make —Fritz Machlup
public signiﬁcant information about how their inventions work, and The leading patent treatises are Donald
multiple doctrines subtly push actors toward greater disclosure. S. Chisum, Chisum on Patents (Matthew
Bender, on Lexis), R. Carl Moy, Moy's
Walker on Patents (Thomson Reuters,
on Westlaw), and Robert C. Faber, Faber
on Mechanics of Patent Claim Drafting
(PLI, on Bloomberg Law).
108 CHAPTER 3. PATENT

A Subject Matter

Patent Act

35 U.S.C. § 101
Whoever invents or discovers any new and useful process, machine,
Inventions patentable manufacture, or composition of ma er, or any new and useful im-
provement thereof, may obtain a patent therefor, subject to the con-
ditions and requirements of this title.

As interpreted by the courts, this section imposes two conditions on
patentability: utility and statutory subject ma er. It is conventional
to begin with statutory subject ma er. We begin with utility.

1 Utility
Utility was at one time a subject ma er exclusion from patentability.
No longer. But it still does some important work as a threshold con-
dition, which can signiﬁcantly aﬀect the timing of patentability.

Juicy Whip, Inc. v. Orange Bang, Inc.
185 F.3d 1364 (Fed. Cir. 1999)
I
Juicy Whip, Inc., is the assignee of United States Patent No. 5,575,405,
which is entitled “Post-Mix Beverage Dispenser With an Associated
Simulated Display of Beverage.” A “post-mix” beverage dispenser
stores beverage syrup concentrate and water in separate locations un-
til the beverage is ready to be dispensed. The syrup and water are
mixed together immediately before the beverage is dispensed, which
is usually after the consumer requests the beverage. In contrast, in a
“pre-mix” beverage dispenser, the syrup concentrate and water are
pre-mixed and the beverage is stored in a display reservoir bowl un-
til it is ready to be dispensed. The display bowl is said to stimulate
impulse buying by providing the consumer with a visual beverage
display. A pre-mix display bowl, however, has a limited capacity and
is subject to contamination by bacteria. It therefore must be reﬁlled
and cleaned frequently.
The invention claimed in the ‘405 patent is a post-mix beverage
dispenser that is designed to look like a pre-mix beverage dispenser.
The claims require the post-mix dispenser to have a transparent bowl
that is ﬁlled with a ﬂuid that simulates the appearance of the dis-
pensed beverage and is resistant to bacterial growth. The claims also
require that the dispenser create the visual impression that the bowl
is the principal source of the dispensed beverage, although in fact the
A. SUBJECT MATTER 109

beverage is mixed immediately before it is dispensed, as in conven-
tional post-mix dispensers.
The District Court concluded that the invention lacked utility be-
cause its purpose was to increase sales by deception, i.e., through
imitation of another product. The court explained that the purpose
of the invention “is to create an illusion, whereby customers believe
that the ﬂuid contained in the bowl is the actual beverage that they
are receiving, when of course it is not.” Although the court acknowl-
edged Juicy Whip’s argument that the invention provides an accurate
representation of the dispensed beverage for the consumer’s beneﬁt
while eliminating the need for retailers to clean their display bowls,
the court concluded that those claimed reasons for the patent’s utility
“are not independent of its deceptive purpose, and are thus insuﬃ-
cient to raise a disputed factual issue to present to a jury.”
II
The threshold of utility is not high: An invention is “useful” under
section 101 if it is capable of providing some identiﬁable beneﬁt.
To be sure, since Justice Story’s opinion in Lowell v. Lewis, it has Lowell: 15 F. Cas. 1018 (C.C.D. Mass.
been stated that inventions that are “injurious to the well-being, good 1817)
policy, or sound morals of society” are unpatentable. As examples of
such inventions, Justice Story listed “a new invention to poison peo-
ple, or to promote debauchery, or to facilitate private assassination.”
Courts have continued to recite Justice Story’s formulation, but the
principle that inventions are invalid if they are principally designed
to serve immoral or illegal purposes has not been applied broadly in
recent years. For example, years ago courts invalidated patents on
gambling devices on the ground that they were immoral, but that is
no longer the law.
In holding the patent in this case invalid for lack of utility, the dis-
trict court relied on two Second Circuit cases dating from the early
years of this century, Rickard v. Du Bon, and Sco & Williams v. Aristo Rickard: 103 F. 868 (2d Cir. 1900)
Hosiery Co.. In the Rickard case, the court held invalid a patent on a Aristo Hosiery: 7 F.2d 1003 (2d Cir. 1925)
process for treating tobacco plants to make their leaves appear spot-
ted. At the time of the invention, according to the court, cigar smok-
ers considered cigars with spo ed wrappers to be of superior quality,
and the invention was designed to make unspo ed tobacco leaves ap-
pear to be of the spo ed – and thus more desirable – type. The court
noted that the invention did not promote the burning quality of the
leaf or improve its quality in any way; “the only eﬀect, if not the only
object, of such treatment, is to spot the tobacco, and counterfeit the
leaf spo ed by natural causes.”
The Aristo Hosiery case concerned a patent claiming a seamless
stocking with a structure on the back of the stocking that imitated a
seamed stocking. The imitation was commercially useful because at
110 CHAPTER 3. PATENT

US. Patent Nov. 19, 1996 Sheet 1 of 3 5,575,405

55%,. K55
W
/
9Q
as? /

U.S. Patent No. 5,575,405, Post-Mix Beverage Dispenser With an As-
sociated Simulated Display of Beverage.
A. SUBJECT MATTER 111

the time of the invention many consumers regarded seams in stock-
ings as an indication of higher quality. The court noted that the im-
itation seam did not “change or improve the structure or the utility
of the article,” and that the record in the case justiﬁed the conclusion
that true seamed stockings were superior to the seamless stockings
that were the subject of the patent. “At best,” the court stated, “the
seamless stocking has imitation marks for the purposes of deception,
and the idea prevails that with such imitation the article is more sal-
able.” That was not enough, the court concluded, to render the inven-
tion patentable.
We decline to follow Rickard and Aristo Hosiery, as we do not re-
gard them as representing the correct view of the doctrine of utility
under the Patent Act of 1952. The fact that one product can be altered
to make it look like another is in itself a speciﬁc beneﬁt suﬃcient to
satisfy the statutory requirement of utility.
It is not at all unusual for a product to be designed to appear to
viewers to be something it is not. For example, cubic zirconium is
designed to simulate a diamond, imitation gold leaf is designed to
imitate real gold leaf, synthetic fabrics are designed to simulate ex-
pensive natural fabrics, and imitation leather is designed to look like
real leather. In each case, the invention of the product or process
that makes such imitation possible has “utility” within the meaning
of the patent statute, and indeed there are numerous patents directed
toward making one product imitate another. See, e.g., U.S. Pat. No.
5,762,968 (method for producing imitation grill marks on food with-
out using heat); U.S. Pat. No. 5,899,038 (laminated ﬂooring imitating
wood); U.S. Pat. No. 5,571,545 (imitation hamburger). Much of the
value of such products resides in the fact that they appear to be some-
thing they are not. Thus, in this case the claimed post-mix dispenser
meets the statutory requirement of utility by embodying the features
of a post-mix dispenser while imitating the visual appearance of a
pre-mix dispenser.
The fact that customers may believe they are receiving ﬂuid di-
rectly from the display tank does not deprive the invention of utility.
Orange Bang has not argued that it is unlawful to display a repre-
sentation of the beverage in the manner that ﬂuid is displayed in the
reservoir of the invention, even though the ﬂuid is not what the cus-
tomer will actually receive. Moreover, even if the use of a reservoir
containing ﬂuid that is not dispensed is considered deceptive, that is
not by itself suﬃcient to render the invention unpatentable. The re-
quirement of “utility” in patent law is not a directive to the Patent and
Trademark Oﬃce or the courts to serve as arbiters of deceptive trade
practices. Other agencies, such as the Federal Trade Commission and
the Food and Drug Administration, are assigned the task of protect-
ing consumers from fraud and deception in the sale of food prod-
112 CHAPTER 3. PATENT

Watson: 517 F.2d 465 (C.C.P.A. 1975) ucts. Cf. In re Watson (stating that it is not the province of the Patent
Oﬃce to determine, under section 101, whether drugs are safe). As
the Supreme Court put the point more generally, “Congress never in-
tended that the patent laws should displace the police powers of the
States, meaning by that term those powers by which the health, good
order, peace and general welfare of the community are promoted.”
Webber: 103 U.S. (13 Otto) 344 (1880) Webber v. Virginia.
"The patent for a dynamite powder Of course, Congress is free to declare particular types of inven-
does not prevent the State from pre- tions unpatentable for a variety of reasons, including deceptiveness.
scribing the conditions of its manufac-
Cf. 42 U.S.C. § 2181(a) (exempting from patent protection inventions
ture, storage, and sale, so as to protect
the community from the danger of ex- useful solely in connection with special nuclear material or atomic
plosion. A patent for the manufacture weapons). Until such time as Congress does so, however, we ﬁnd no
and sale of a deadly poison does not basis in section 101 to hold that inventions can be ruled unpatentable
lessen the right of the State to control for lack of utility simply because they have the capacity to fool some
its handling and use."
members of the public. The district court therefore erred in holding
---Webber
that the invention of the ‘405 patent lacks utility because it deceives
the public through imitation in a manner that is designed to increase
product sales.

Manual of Patent Examination Procedure (Rev. Nov. 2013)

§ 2107
A claimed invention must have a speciﬁc and substantial utility. This
Guidelines for Examination of Applica- requirement excludes “throw-away,” “insubstantial,” or “nonspe-
tions for Compliance with the Utility Re- ciﬁc” utilities, such as the use of a complex invention as landﬁll.
quirement Credibility is assessed from the perspective of one of ordinary
skill in the art in view of the disclosure and any other evidence of
record (e.g., test data, aﬃdavits or declarations from experts in the art,
patents or printed publications) that is probative of the applicant’s
assertions. An applicant need only provide one credible assertion of
speciﬁc and substantial utility for each claimed invention to satisfy
the utility requirement.

§ 2107.01 I. S S R
General Principles Governing Utility Re-
Courts have recognized that the term “useful” used with reference
jections
to the utility requirement can be a diﬃcult term to deﬁne. Where an
applicant has set forth a speciﬁc and substantial utility, courts have
been reluctant to uphold a rejection under 35 U.S.C. § 101 solely on
the basis that the applicant’s opinion as to the nature of the speciﬁc
and substantial utility was inaccurate.
Practical considerations require the Oﬃce to rely on the inventor’s
understanding of his or her invention in determining whether and in
what regard an invention is believed to be “useful.” Because of this,
Oﬃce personnel should focus on and be receptive to assertions made
by the applicant that an invention is “useful” for a particular reason.
A. SUBJECT MATTER 113

A. Speciﬁc Utility
A “speciﬁc utility” is speciﬁc to the subject ma er claimed and can
“provide a well-deﬁned and particular beneﬁt to the public.” In re Fisher: 421 F.3d 1365 (Fed. Cir. 2005)
Fisher. This contrasts with a general utility that would be applicable
to the broad class of the invention. Oﬃce personnel should distin-
guish between situations where an applicant has disclosed a speciﬁc
use for or application of the invention and situations where the ap-
plicant merely indicates that the invention may prove useful without
identifying with speciﬁcity why it is considered useful. For example,
indicating that a compound may be useful in treating unspeciﬁed
disorders, or that the compound has “useful biological” properties,
would not be suﬃcient to deﬁne a speciﬁc utility for the compound.
Similarly, a claim to a polynucleotide whose use is disclosed simply
as a “gene probe” or “chromosome marker” would not be considered
to be speciﬁc in the absence of a disclosure of a speciﬁc DNA target.
See Fisher (“Any EST [expressed sequence tag] transcribed from any
gene in the maize genome has the potential to perform any one of the
alleged uses. Nothing about applicant’s seven alleged uses set the
ﬁve claimed ESTs apart from the more than 32,000 ESTs disclosed in
the application or indeed from any EST derived from any organism.
Accordingly, we conclude that applicant has only disclosed general
uses for its claimed ESTs, not speciﬁc ones that satisfy § 101.”). A gen-
eral statement of diagnostic utility, such as diagnosing an unspeciﬁed
disease, would ordinarily be insuﬃcient absent a disclosure of what
condition can be diagnosed. Contrast the situation where an appli-
cant discloses a speciﬁc biological activity and reasonably correlates
that activity to a disease condition. Assertions falling within the la er
category are suﬃcient to identify a speciﬁc utility for the invention.
Assertions that fall in the former category are insuﬃcient to deﬁne a
speciﬁc utility for the invention, especially if the assertion takes the
form of a general statement that makes it clear that a “useful” inven-
tion may arise from what has been disclosed by the applicant.
B. Substantial Utility
“[A]n application must show that an invention is useful to the pub-
lic as disclosed in its current form, not that it may prove useful at
some future date after further research. Simply put, to satisfy the
‘substantial’ utility requirement, an asserted use must show that the
claimed invention has a signiﬁcant and presently available beneﬁt to
the public.” Fisher. The claims at issue in ﬁsher were directed to ex-
pressed sequence tags (ESTs), which are short nucleotide sequences
that can be used to discover what genes and downstream proteins are
expressed in a cell. The court held that “the claimed ESTs can be used
only to gain further information about the underlying genes and the
114 CHAPTER 3. PATENT

proteins encoded for by those genes. The claimed ESTs themselves
are not an end of [applicant’s] research eﬀort, but only tools to be used
along the way in the search for a practical utility. Applicant does not
identify the function for the underlying protein-encoding genes. Ab-
sent such identiﬁcation, we hold that the claimed ESTs have not been
researched and understood to the point of providing an immediate,
well-deﬁned, real world beneﬁt to the public meriting the grant of a
patent.” Thus a “substantial utility” deﬁnes a “real world” use. Utili-
ties that require or constitute carrying out further research to identify
or reasonably conﬁrm a “real world” context of use are not substan-
tial utilities. For example, both a therapeutic method of treating a
known or newly discovered disease and an assay method for identi-
fying compounds that themselves have a “substantial utility” deﬁne
a “real world” context of use. An assay that measures the presence of
a material which has a stated correlation to a predisposition to the on-
set of a particular disease condition would also deﬁne a “real world”
context of use in identifying potential candidates for preventive mea-
sures or further monitoring. On the other hand, the following are
examples of situations that require or constitute carrying out further
research to identify or reasonably conﬁrm a “real world” context of
use and, therefore, do not deﬁne “substantial utilities”:
(A) Basic research such as studying the properties of the claimed
product itself or the mechanisms in which the material is in-
volved;
(B) A method of treating an unspeciﬁed disease or condition;
(C) A method of assaying for or identifying a material that itself has
no speciﬁc and/or substantial utility;
(D) A method of making a material that itself has no speciﬁc, sub-
stantial, and credible utility; and
(E) A claim to an intermediate product for use in making a ﬁnal
product that has no speciﬁc, substantial and credible utility.
Oﬃce personnel must be careful not to interpret the phrase “imme-
diate beneﬁt to the public” or similar formulations in other cases to
mean that products or services based on the claimed invention must
be “currently available” to the public in order to satisfy the utility
requirement. Rather, any reasonable use that an applicant has iden-
tiﬁed for the invention that can be viewed as providing a public ben-
eﬁt should be accepted as suﬃcient, at least with regard to deﬁning
a “substantial” utility.
C. Research Tools
Some confusion can result when one a empts to label certain types
of inventions as not being capable of having a speciﬁc and substantial
A. SUBJECT MATTER 115

utility based on the se ing in which the invention is to be used. One
example is inventions to be used in a research or laboratory se ing.
Many research tools such as gas chromatographs, screening assays,
and nucleotide sequencing techniques have a clear, speciﬁc and un-
questionable utility (e.g., they are useful in analyzing compounds).
An assessment that focuses on whether an invention is useful only
in a research se ing thus does not address whether the invention is
in fact “useful” in a patent sense. Instead, Oﬃce personnel must dis-
tinguish between inventions that have a speciﬁcally identiﬁed sub-
stantial utility and inventions whose asserted utility requires further
research to identify or reasonably conﬁrm. Labels such as “research
tool,” “intermediate” or “for research purposes” are not helpful in
determining if an applicant has identiﬁed a speciﬁc and substantial
utility for the invention.
II. W I I ; ”I ”U
An invention that is “inoperative” (i.e., it does not operate to produce
the results claimed by the patent applicant) is not a “useful” invention
in the meaning of the patent law. However, as the Federal Circuit has
stated, “[t]o violate 35 U.S.C. § 101 the claimed device must be totally
incapable of achieving a useful result.” Brooktree Corp.v.Advanced Mi- Brooktree: 977 F.2d 1555,(Fed. Cir.
cro Devices, Inc.. See also E.I. du Pont De Nemours and Co. v. Berkley 1992)
and Co. (“A small degree of utility is suﬃcient. The claimed inven- Berkley: 620 F.2d 1247 (8th Cir. 1980)
tion must only be capable of performing some beneﬁcial function. An
invention does not lack utility merely because the particular embodi-
ment disclosed in the patent lacks perfection or performs crudely. A
commercially successful product is not required. Nor is it essential
that the invention accomplish all its intended functions or operate
under all conditions, partial success being suﬃcient to demonstrate
patentable utility. In short, the defense of non-utility cannot be sus-
tained without proof of total incapacity.”) If an invention is only par-
tially successful in achieving a useful result, a rejection of the claimed
invention as a whole based on a lack of utility is not appropriate.
Situations where an invention is found to be “inoperative” and
therefore lacking in utility are rare, and rejections maintained solely
on this ground by a Federal court even rarer. In many of these cases,
the utility asserted by the applicant was thought to be incredible in
the light of the knowledge of the art, or factually misleading when
initially considered by the Oﬃce. Other cases suggest that on ini-
tial evaluation, the Oﬃce considered the asserted utility to be incon-
sistent with known scientiﬁc principles or speculative at best as to
whether a ributes of the invention necessary to impart the asserted
utility were actually present in the invention. However cast, the un-
derlying ﬁnding by the court in these cases was that, based on the fac-
tual record of the case, it was clear that the invention could not and
116 CHAPTER 3. PATENT

did not work as the inventor claimed it did. Indeed, the use of many
labels to describe a single problem (e.g., a false assertion regarding
utility) has led to some of the confusion that exists today with regard
Consider U.S. Pat No. 6,960,975 B1 to a rejection based on the “utility” requirement. Examples of such
for a "Space Vehicle Propelled by the cases include: an invention asserted to change the taste of food us-
Pressure of Inflationary Vacuum State."
ing a magnetic ﬁeld, a perpetual motion machine, a ﬂying machine
Does it matter if the USPTO occasion-
ally issues a patent on a device that vio- operating on “ﬂapping or ﬂu er function,” a “cold fusion” process
lates the known laws of physics? for producing energy, a method for increasing the energy output of
fossil fuels upon combustion through exposure to a magnetic ﬁeld,
uncharacterized compositions for curing a wide array of cancers, and
a method of controlling the aging process. These examples are fact
speciﬁc and should not be applied as a per se rule. Thus, in view of
the rare nature of such cases, Oﬃce personnel should not label an
asserted utility “incredible,” “speculative” or otherwise unless it is
clear that a rejection based on “lack of utility” is proper.

2 Statutory Subject Matter

Tun-Jen Chiang
2010 Wisc. L. Rev. 1353
The Rules and Standards of Patentable Subject Matter
A close examination of all of the patentable subject-ma er categories
reveals a clear distinction. Virtually all of the restrictions, save two,
have been in the nature of categorical rules. The two exceptions are
the closely-related (indeed, for all practical purposes, identical) prohi-
bitions on patenting “laws of nature” and “abstract ideas.” The laws
of nature and abstract ideas prohibitions account for almost the en-
tirety of patentable subject-ma er case law, and the consequent un-
certainty in the area. Section 101 thus contains a dichotomy: clear
exclusionary rules that have almost never caused administrative dif-
ﬁculty or litigation; and a vague scope limiting standard that has
caused tremendous diﬃculty and much litigation.

At present, there are two clear subject-ma er exclusions from
patentability: nuclear weapons and human organisms. Federal
statutes direct that ”No patent shall hereafter be granted for any in-
vention or discovery which is useful solely in the utilization of spe-
Nuclear weapons: 42 U.S.C. § 2181(a). cial nuclear material or atomic energy in an atomic weapon” and that
”Notwithstanding any other provision of law, no patent may issue on
Human organisms: America Invents a claim directed to or encompassing a human organism.” What poli-
Act § 33(a). cies do these exclusions express?
As for laws of nature and abstract ideas, the Supreme Court pro-
foundly shifted course in a series of four major decisions between
2010 and 2014. Three of them are excerpted in this book: Mayo here,
A. SUBJECT MATTER 117

Myriad in the biotechnology chapter, and CLS Bank in the software
chapter. (The fourth, Bilski, is discussed in CLS Bank.)

Mayo Collaborative v. Prometheus Labs
132 S. Ct. 1289 (2012)
Section 101 of the Patent Act deﬁnes patentable subject ma er. The
Court has long held that this provision contains an important implicit
exception. Laws of nature, natural phenomena, and abstract ideas are
not patentable.
I
A
The patents before us concern the use of thiopurine drugs in the treat-
ment of autoimmune diseases, such as Crohn’s disease and ulcerative
colitis. When a patient ingests a thiopurine compound, his body me-
tabolizes the drug, causing metabolites to form in his bloodstream.
Because the way in which people metabolize thiopurine compounds
varies, the same dose of a thiopurine drug aﬀects diﬀerent people
diﬀerently, and it has been diﬃcult for doctors to determine whether
for a particular patient a given dose is too high, risking harmful side
eﬀects, or too low, and so likely ineﬀective.
At the time the discoveries embodied in the patents were made,
scientists already understood that the levels in a patient’s blood of
certain metabolites, including, in particular, 6-thioguanine and its nu-
cleotides (6-TG) and 6-methyl-mercaptopurine (6-MMP), were corre-
lated with the likelihood that a particular dosage of a thiopurine drug
could cause harm or prove ineﬀective. But those in the ﬁeld did not
know the precise correlations between metabolite levels and likely
harm or ineﬀectiveness. The patent claims at issue here set forth pro-
cesses embodying researchers’ ﬁndings that identiﬁed these correla-
tions with some precision.
More speciﬁcally, the patents – U.S. Patent No. 6,355,623 (623
patent) and U.S. Patent No. 6,680,302 (302 patent) – embody ﬁndings
that concentrations in a patient’s blood of 6-TG or of 6-MMP metabo-
lite beyond a certain level (400 and 7000 picomoles per 8 × 108 red
blood cells, respectively) indicate that the dosage is likely too high
for the patient, while concentrations in the blood of 6-TG metabolite
lower than a certain level (about 230 picomoles per 8 × 108 red blood
cells) indicate that the dosage is likely too low to be eﬀective.
The patent claims seek to embody this research in a set of pro-
cesses. Like the Federal Circuit we take as typical claim 1 of the 623
Patent, which describes one of the claimed processes as follows:
A method of optimizing therapeutic eﬃcacy for treatment
of an immune-mediated gastrointestinal disorder, com-
prising:
118 CHAPTER 3. PATENT

(a) administering a drug providing 6-thioguanine to a
subject having said immune-mediated gastrointesti-
nal disorder; and
(b) determining the level of 6-thioguanine in said sub-
ject having said immune-mediated gastrointestinal
disorder,
wherein the level of 6-thioguanine less than about 230
pmol per 8×108 red blood cells indicates a need to increase
the amount of said drug subsequently administered to
said subject and
wherein the level of 6-thioguanine greater than about 400
pmol per 8 × 108 red blood cells indicates a need to de-
crease the amount of said drug subsequently adminis-
tered to said subject.”

B
Respondent, Prometheus Laboratories, Inc. (Prometheus), is the sole
and exclusive licensee of the 623 and 302 patents. It sells diagnostic
tests that embody the processes the patents describe. For some time
petitioners, Mayo Clinic Rochester and Mayo Collaborative Services
(collectively Mayo), bought and used those tests. But in 2004 Mayo
announced that it intended to begin using and selling its own test–
a test using somewhat higher metabolite levels to determine toxicity
(450 pmol per 8 × 108 for 6-TG and 5700 pmol per 8 × 108 for 6-MMP).
Prometheus then brought this action claiming patent infringement.
The District Court found that Mayo’s test infringed claim 7 of the
623 patent. In interpreting the claim, the court accepted Prometheus’
view that the toxicity-risk level numbers in Mayo’s test and the claim
were too similar to render the tests signiﬁcantly diﬀerent. The num-
ber Mayo used (450) was too close to the number the claim used (400)
to ma er given appropriate margins of error. The District Court also
accepted Prometheus’ view that a doctor using Mayo’s test could vio-
late the patent even if he did not actually alter his treatment decision
in the light of the test. In doing so, the court construed the claim’s lan-
guage, ”indicates a need to decrease” (or ”to increase”), as not limited
to instances in which the doctor actually decreases (or increases) the
dosage level where the test results suggest that such an adjustment is
advisable.
II
Prometheus’ patents set forth laws of nature – namely, relationships
between concentrations of certain metabolites in the blood and the
likelihood that a dosage of a thiopurine drug will prove ineﬀective
A. SUBJECT MATTER 119

or cause harm. Claim 1, for example, states that if the levels of 6-TG
in the blood (of a patient who has taken a dose of a thiopurine drug)
exceed about 400 pmol per 8 × 108 red blood cells, then the admin-
istered dose is likely to produce toxic side eﬀects. While it takes a
human action (the administration of a thiopurine drug) to trigger a
manifestation of this relation in a particular person, the relation it-
self exists in principle apart from any human action. The relation is a
consequence of the ways in which thiopurine compounds are metab-
olized by the body – entirely natural processes. And so a patent that
simply describes that relation sets forth a natural law.
The question before us is whether the claims do signiﬁcantly more
than simply describe these natural relations. To put the ma er more
precisely, do the patent claims add enough to their statements of the
correlations to allow the processes they describe to qualify as patent-
eligible processes that apply natural laws? We believe that the answer
to this question is no.
A
If a law of nature is not patentable, then neither is a process reciting
a law of nature, unless that process has additional features that pro-
vide practical assurance that the process is more than a drafting eﬀort
designed to monopolize the law of nature itself. A patent, for exam-
ple, could not simply recite a law of nature and then add the instruc-
tion ”apply the law.” Einstein, we assume, could not have patented
his famous law by claiming a process consisting of simply telling lin-
ear accelerator operators to refer to the law to determine how much
energy an amount of mass has produced (or vice versa). Nor could
Archimedes have secured a patent for his famous principle of ﬂota-
tion by claiming a process consisting of simply telling boat builders
to refer to that principle in order to determine whether an object will
ﬂoat.
What else is there in the claims before us? The process that each
claim recites tells doctors interested in the subject about the corre-
lations that the researchers discovered. In doing so, it recites an ”ad-
ministering” step, a ”determining” step, and a ”wherein” step. These
additional steps are not themselves natural laws but neither are they
suﬃcient to transform the nature of the claim.
First, the ”administering” step simply refers to the relevant audi-
ence, namely doctors who treat patients with certain diseases with
thiopurine drugs. That audience is a pre-existing audience; doctors
used thiopurine drugs to treat patients suﬀering from autoimmune
disorders long before anyone asserted these claims. In any event, the
prohibition against patenting abstract ideas cannot be circumvented
by a empting to limit the use of the formula to a particular techno-
logical environment.
120 CHAPTER 3. PATENT

Second, the ”wherein” clauses simply tell a doctor about the rel-
evant natural laws, at most adding a suggestion that he should take
those laws into account when treating his patient. That is to say, these
clauses tell the relevant audience about the laws while trusting them
to use those laws appropriately where they are relevant to their de-
cisionmaking (rather like Einstein telling linear accelerator operators
about his basic law and then trusting them to use it where relevant).
Third, the ”determining” step tells the doctor to determine the
level of the relevant metabolites in the blood, through whatever pro-
cess the doctor or the laboratory wishes to use. As the patents state,
methods for determining metabolite levels were well known in the
art. Indeed, scientists routinely measured metabolites as part of their
investigations into the relationships between metabolite levels and
eﬃcacy and toxicity of thiopurine compounds. Thus, this step tells
doctors to engage in well-understood, routine, conventional activity
previously engaged in by scientists who work in the ﬁeld. Purely con-
ventional or obvious pre-solution activity is normally not suﬃcient to
transform an unpatentable law of nature into a patent-eligible appli-
cation of such a law. The prohibition against patenting abstract ideas
cannot be circumvented by adding insigniﬁcant post-solution activ-
A patent lawyer walks into a barber shop. ity.
The barber takes a look at the lawyer for Fourth, to consider the three steps as an ordered combination
a bit, and then says, “Ok, that’ll be $20.”
adds nothing to the laws of nature that is not already present when
The lawyer responds, “But you didn’t cut
my hair!” The barber replies, “That’s ‘in- the steps are considered separately. Anyone who wants to make use
significant post-solution activity.'" of these laws must ﬁrst administer a thiopurine drug and measure the
Michael S. Kwun, Alice Tells a Joke, 19 resulting metabolite concentrations, and so the combination amounts
Green Bag 2d 329 (2016). Unfair? to nothing signiﬁcantly more than an instruction to doctors to apply
the applicable laws when treating their patients.
The upshot is that the three steps simply tell doctors to gather
data from which they may draw an inference in light of the correla-
tions. To put the ma er more succinctly, the claims inform a relevant
audience about certain laws of nature; any additional steps consist
of well-understood, routine, conventional activity already engaged
in by the scientiﬁc community; and those steps, when viewed as a
whole, add nothing signiﬁcant beyond the sum of their parts taken
separately. For these reasons we believe that the steps are not suﬃ-
cient to transform unpatentable natural correlations into patentable
Is there anything here that the inven- applications of those regularities.
tors could have patented with better
drafting, or were their claims unsal- Tax Planning Patent Problem
vageable?
You are staﬀ counsel to Representative Helvering (R-IA), who has
read a number of newspaper articles on the growing phenomenon
of “tax planning patents.” These patents describe transactions de-
signed to help a company reduce the taxes it owes. For example, one
such patent describes dividing a real estate portfolio into a number
B. PROCEDURES 121

of shares held as tenancies in common subject to a master lease, in
which each holder receives guaranteed annual income and is subject
to repurchase at fair market value at a speciﬁed date, such that the
investments qualify for tax-deferred treatment under … you get the
picture.
The Representative has asked you to help her think through For purposes of evaluating an inven-
the policy and legal issues these patents raise. She wants to know tion under section 102 [novelty] or 103
[nonobviousness], any strategy for reduc-
whether they are valid under current law and whether they’re con-
ing, avoiding, or deferring tax liability,
tributing to tax evasion. If they’re problematic, she would like your whether known or unknown at the time
suggestions on possible legislative ﬁxes (either to the Patent Act or to of the invention or application for patent,
the Internal Revenue Code). shall be deemed insufficient to differen-
tiate a claimed invention from the prior
art.
B Procedures America Invents Act § 14(a). What do
you think of this solution?
A patent (an example follows) has two jobs. It must describe the
scope of the owner’s rights in the invention. This is the job of the
claims. It must also disclose the invention in enough detail that others
could (if not for the patent) make use of it. This is the job of the speci-
ﬁcation. The process of patent prosecution is designed not just to check
that the invention is substantively eligible to be patented (discussed
in the next section), but also to ensure that the claims and speciﬁca-
tion adequately carry out their jobs.
B. PROCEDURES 125

1 Claims

Patent Act

(b) Conclusion. – The speciﬁcation shall conclude with one or more 35 U.S.C. § 112
claims particularly pointing out and distinctly claiming the sub- Specification
ject ma er which the inventor or a joint inventor regards as the
invention.
(c) Form. – A claim may be wri en in independent or, if the nature
of the case admits, in dependent or multiple dependent form.
(d) Reference in Dependent Forms. – A claim in dependent form shall
contain a reference to a claim previously set forth and then spec-
ify a further limitation of the subject ma er claimed. A claim in
dependent form shall be construed to incorporate by reference
all the limitations of the claim to which it refers.
a Indefiniteness

Nautlius, Inc. v. Biosig Instruments Inc.
134 S. Ct. 2120 (2014)
The Patent Act requires that a patent speciﬁcation ”conclude with one
or more claims particularly pointing out and distinctly claiming the sub-
ject ma er which the applicant regards as [the] invention.” According
to the Federal Circuit, a patent claim passes the threshold so long as
the claim is ”amenable to construction,” and the claim, as construed,
is not ”insolubly ambiguous.” We conclude that the Federal Circuit’s
formulation, which tolerates some ambiguous claims but not others,
does not satisfy the statute’s deﬁniteness requirement. In place of
the ”insolubly ambiguous” standard, we hold that a patent is invalid
for indeﬁniteness if its claims, read in light of the speciﬁcation delin-
eating the patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the scope of the
invention.

Freeny v. Apple Inc.
No.2:13–CV–00361–WCB, 2014 WL
[Patent No. 7,110,744 (“the ’744 patent”), described a single device 4294505 (E.D. Tex. Aug. 28, 2014)
that can communicate wirelessly with a variety of providers, such as
hotel systems, vehicle parking systems, and toll systems, using mul-
tiple frequencies. It claimed:
A communication unit connected to a public communi-
cation system, the communication unit capable of detect- For "public communication system,"
ing a plurality of wireless devices and servicing each of think "Internet"
the plurality of wireless devices by providing access to
126 CHAPTER 3. PATENT

the public communication system when the wireless de-
vices are within a predetermined proximity distance from
the communication unit, the communication unit com-
prising [various elements, including a] transceiver simul-
taneously communicating with at least two wireless de-
vices with diﬀerent types of low power communication
signals.]
The ﬁnal term in dispute for purposes of claim construction is the
term “low power communication signals.” The plaintiﬀs argue that
the term “low power communication signals” should be construed to
mean “signals having a power for transmission up to a maximum of
several hundred feet.” The defendant argues that the term is indeﬁ-
nite because the words “low power” are wholly lacking in speciﬁcity.
While it is true that the patent does not deﬁne the term “low
power” with precision, precision is not required as long as the claim
language is as speciﬁc as is reasonably possible under the circum-
stances, and as long as a person of skill in the art would understand
the scope of the claims with reasonable certainty. The Federal Circuit
has frequently addressed claim language that was imprecise and has
frequently upheld claims containing similar language, based on the
commonsense observation that sometimes precision is impossible to
achieve, consistent with an accurate description of the full scope of
the invention. As the court has explained: “Deﬁniteness problems
often arise when words of degree are used in a claim. That some
claim language may not be precise, however, does not automatically
Seattle Box: 731 F.2d 818 (Fed. Cir. render a claim invalid.” Sea le Box Co. v. Indus. Crating & Packing,
1984) Inc. (upholding claim using term “substantially equal to”). When a
word of degree is used, “the district court must determine whether
the patent’s speciﬁcation provides some standard for measuring that
degree. The trial court must decide, that is, whether one of ordinary
skill in the art would understand what is claimed when the claim is
read in light of the speciﬁcation.”
Indeﬁniteness is a legal determination; if the court concludes that
a person of ordinary skill in the art, with the aid of the speciﬁcation,
would understand what is claimed, the claim is not indeﬁnite. For
example, the term “substantially” has frequently been held not in-
deﬁnite if a person of ordinary skill can discern from the claims and
speciﬁcation what the bounds of the claim are with reasonable cer-
tainty. [Cases cited found the terms ”about 0.06,” ”substantially pla-
nar,” ”to increase substantially,” ”not interfering substantially,” ”rel-
atively small,” ”substantially equal to,” ”closely approximate,” and
”about 5:1 to about 7:1” not indeﬁnite.] On numerous occasions, dis-
trict courts, including this court, have held similarly imprecise claim
language not indeﬁnite. [Cases cited found the phrases “substan-
B. PROCEDURES 127

tially collimated,” ”roughly the same,” ”low frequency forces,” ”low
hydroxyl ion content,” and ”low DC electrical voltage” not indeﬁ-
nite.]
In pressing its indeﬁniteness argument, the defendant relies heav-
ily on the Supreme Court’s recent decision in Nautilus, which ad-
dressed the issue of indeﬁniteness and modiﬁed the test applied in
some prior Federal Circuit cases. The Nautilus Court held “a patent’s
claims, viewed in light of the speciﬁcation and prosecution history,
[must] inform those skilled in the art about the scope of the inven-
tion with reasonable certainty.” Contrary to the defendant’s sugges-
tion, that standard does not render all of the prior Federal Circuit and
district court cases inapplicable, nor does it require that the claim lan-
guage in this case be held indeﬁnite. The Supreme Court recognized
that “some modicum of uncertainty” is “the price of ensuring the ap-
propriate incentives for innovation,” and that because patents are di-
rected to persons of skill in the art, all that is required is that the patent
apprise such persons of the scope of the invention. Indeed, the Court
cited with approval Eibel Process Co. v. Minn. & Ontario Paper Co., Eibel: 261 U.S. 45 (1923)
where the Court upheld claim language requiring a wire to be placed
at a “high” or “substantial” elevation. That language, the Eibel Court
held, would be suﬃciently clear in context for persons of skill in the
art to understand and therefore was not invalid for indeﬁniteness.
In light of the applicable caselaw, including the Nautilus case, the
Court concludes that the term “low power communication signals”
is not indeﬁnite. The speciﬁcation on several occasions refers to low
power signals as those that do not communicate farther than a few
hundred feet. See, e.g., ’744 patent, col. 32, ll. 29–31 (“low power
wireless link ... does not typically communicate farther than about
300 feet”); id., col. 35, ll. 50–51 (detection range of “say several hun-
dred feet”); id., col. 36, ll. 31–38 (wireless connection ranges “will
vary from several hundred feet to only several feet”); id., col. 39,
ll. 13–15 (transmissions possible “within several hundred feet” of a
communication unit); id., col. 7, ll. 4–8 (transceiver capable of com-
municating “up to at least a predetermined proximity distance such
as a hundred feet”); id., col. 13, ll. 49–52 (diﬀerent signal strengths
designed for detection at 500 feet and 20 feet); id., col. 16, ll. 49–
51 (authorization distance set at 500 feet and 20 feet). Moreover, the
plaintiﬀs’ expert ﬁled a declaration pointing to the references in the
patent to infrared signals, 900 MHz signals, 1.8 GHz signals, and 2.4
GHz signals as examples of diﬀerent types of low power communi-
cation signals. He explained that a common characteristic of such
signals is the limited distance over which they can be transmi ed,
as discussed in the speciﬁcation. One of ordinary skill in the art, he
explained, would understand from reading the ’744 speciﬁcation that
the claim term “diﬀerent types of low power communication signals”
128 CHAPTER 3. PATENT

means “diﬀerent types of communication signals having a power for
transmission up to a maximum of several hundred feet.” The defen-
dant has not submi ed a contrary expert declaration on the issue of
indeﬁniteness.
Accordingly, the Court concludes that the term “low power com-
munication signals,” viewed in light of the speciﬁcation, would be un-
derstood by persons of skill in the art with reasonable certainty. The
asserted claims in the ’744 patent are therefore not indeﬁnite. Further-
more, in light of the discussion of low power communications in the
speciﬁcation, the Court agrees with the plaintiﬀs that the term should
be interpreted to mean “communication signals having a power for
transmission of up to a maximum of several hundred feet.”

Datamize, LLC v. Plumtree Software, Inc.
417 F.3d 1342 (Fed. Cir. 2005)
[U.S. Patent No. 6,014,137], entitled “Electronic Kiosk Authoring Sys-
tem,” discloses a software program that allows a person to author
user interfaces for electronic kiosks. “The authoring system enables
the user interface for each individual kiosk to be customized quickly
and easily within wide limits of variation, yet subject to constraints
adhering the resulting interface to good standards of aesthetics and
user friendliness.” ‘137 patent, Abstract. [It claimed, in relevant part
(emphasis added):
In an electronic kiosk system ... a method for deﬁning
custom interface screens ... said method comprising the
steps of: ... providing a plurality of pre-deﬁned interface
screen element types, each element type deﬁning a form
of element available for presentation on said custom inter-
face screens, wherein each said element type permits lim-
ited variation in its on-screen characteristics in conformity
with a desired uniform and aesthetically pleasing look and
feel for said interface screens on all kiosks of said kiosk
system ... .
Datamize, the patentee, argued that the term “aesthetically pleasing”
should be contrued to refer to the intent of a person practicing the
invention. That person must intend to create an aesthetically pleasing
interface screen; whether she succeeds is irrelevant.]
Datamize’s proposed construction of “aesthetically pleasing” in
the context of claim 1 is not reasonable for several reasons. First and
foremost, the plain meaning of the claim language requires that the
look and feel of interface screens actually be “aesthetically pleasing.”
That the uniform and “aesthetically pleasing” look and feel must also
be “desired” does not alter that fact.
Here Datamize has oﬀered no objective deﬁnition identifying a
standard for determining when an interface screen is “aesthetically
B. PROCEDURES 129

pleasing.” In the absence of a workable objective standard, “aes-
thetically pleasing” does not just include a subjective element, it is
completely dependent on a person’s subjective opinion. To the ex-
tent Datamize argues that such a construction of “aesthetically pleas-
ing” does not render the phrase indeﬁnite, we disagree. The scope of
claim language cannot depend solely on the unrestrained, subjective
opinion of a particular individual purportedly practicing the inven-
tion. Some objective standard must be provided in order to allow
the public to determine the scope of the claimed invention. Even if
the relevant perspective is that of the system creator, the identity of
who makes aesthetic choices fails to provide any direction regarding
the relevant question of how to determine whether that person suc-
ceeded in creating an “aesthetically pleasing” look and feel for inter-
face screens. A purely subjective construction of “aesthetically pleas-
ing” would not notify the public of the patentee’s right to exclude
since the meaning of the claim language would depend on the un-
predictable vagaries of any one person’s opinion of the aesthetics of
interface screens. While beauty is in the eye of the beholder, a claim
term, to be deﬁnite, requires an objective anchor. Thus, even if we
adopted a completely subjective construction of “aesthetically pleas-
ing,” this would still render the ‘137 patent invalid.
And while the description of an embodiment provides examples
of aesthetic features of screen displays that can be controlled by the
authoring system, it does not explain what selection of these features
would be “aesthetically pleasing.” Major aesthetic choices appar-
ently may include some aspect of bu on styles and sizes, window
borders, color combinations, and type fonts. The wri en descrip-
tion, however, provides no guidance to a person making aesthetic
choices such that their choices will result in an “aesthetically pleas-
ing” look and feel of an interface screen. For example, the speciﬁca-
tion does not explain what factors a person should consider when se-
lecting a feature to include in the authoring system. Left unanswered
are questions like: which color combinations would be “aesthetically
pleasing” and which would not? And more generally, how does one
determine whether a color combination is “aesthetically pleasing”?
Again, one skilled in the art reading the speciﬁcation is left with the
unhelpful direction to consult the subjective opinions of aesthetic de-
sign specialists, database specialists, and academic studies.
Simply put, the deﬁnition of “aesthetically pleasing” cannot de-
pend on an undeﬁned standard. We therefore aﬃrm the district
court’s grant of summary judgment of invalidity of all claims of the
‘137 patent.
130 CHAPTER 3. PATENT

b Claim Drafting

Catalina Marketing Intern. v. Coolsavings.com
289 F.3d 801 (Fed. Cir. 2002)
In general, a preamble limits the invention if it recites essential struc-
ture or steps, or if it is necessary to give life, meaning, and vitality to
the claim. Conversely, a preamble is not limiting where a patentee de-
ﬁnes a structurally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the invention.
Perhaps a hypothetical best illustrates these principles: Inventor
A invents a shoe polish for shining shoes (which, for the sake of exam-
ple, is novel, useful, and nonobvious). Inventor A receives a patent
having composition claims for shoe polish. Indeed, the preamble of
these hypothetical claims recites ”a composition for polishing shoes.”
Clearly, Inventor B could not later secure a patent with composition
claims on the same composition because it would not be novel. Upon
discovering, however, that the polish composition grows hair when
rubbed on bare human skin, Inventor B can likely obtain method
claims directed to the new use of the composition to grow hair.

Manual of Patent Examination Procedure (Rev. Aug. 2012)

MPEP § 2111.03
The transitional phrases “comprising”, “consisting essentially of”
Transitional Phrases and “consisting of” deﬁne the scope of a claim with respect to what
unrecited additional components or steps, if any, are excluded from
the scope of the claim. The determination of what is or is not excluded
by a transitional phrase must be made on a case-by-case basis in light
of the facts of each case.
The transitional term “comprising”, which is synonymous with
“including,” “containing,” or “characterized by,” is inclusive or
open-ended and does not exclude additional, unrecited elements or
Gillette: 405 F.3d 1367 (Fed. Cir. 2005) method steps. In Gille e Co. v. Energizer Holdings Inc., the court held
that a claim to “a safety razor blade unit comprising a guard, a cap,
and a group of ﬁrst, second, and third blades” encompasses razors
with more than three blades because the transitional phrase “compris-
ing” in the preamble and the phrase “group of” are presumptively
open-ended. The transitional phrase “consisting of” excludes any el-
ement, step, or ingredient not speciﬁed in the claim. The transitional
phrase “consisting essentially of” limits the scope of a claim to the
speciﬁed materials or steps and those that do not materially aﬀect
the basic and novel characteristic(s) of the claimed invention.

MPEP 2173.05(e)
A claim is indeﬁnite when it contains words or phrases whose mean-
Lack of Antecedent Basis ing is unclear. The lack of clarity could arise where a claim refers to
“said lever” or “the lever,” where the claim contains no earlier recita-
B. PROCEDURES 131

tion or limitation of a lever and where it would be unclear as to what
element the limitation was making reference. Similarly, if two diﬀer-
ent levers are recited earlier in the claim, the recitation of “said lever”
in the same or subsequent claim would be unclear where it is uncer-
tain which of the two levers was intended.

Alternative expressions are permi ed if they present no uncertainty MPEP 2173.05(h)
or ambiguity with respect to the question of scope or clarity of the Alternative Limitations
claims. A “Markush” claim recites a list of alternatively useable
species. A Markush claim is commonly forma ed as: “selected from
the group consisting of A, B, and C;” however, the phrase “Markush
claim” means any claim that recites a list of alternatively useable
species regardless of format. Inventions in metallurgy, refractories,
ceramics, pharmacy, pharmacology and biology are most frequently
claimed under the Markush formula but purely mechanical features
or process steps may also be claimed by using the Markush style of
claiming. It is improper to use the term “comprising” instead of “con-
sisting of.”

2 Disclosure

Patent Act

The speciﬁcation shall contain a wri en description of the invention, 35 U.S.C. § 112(a)
and of the manner and process of making and using it, in such full, Specification
clear, concise, and exact terms as to enable any person skilled in the
art to which it pertains, or with which it is most nearly connected, The phrase "person skilled in the art"
to make and use the same, and shall set forth the best mode contem- and the related phrase "person hav-
ing ordinary skill in the art" from Sec-
plated by the inventor or joint inventor of carrying out the invention.
tion 103 are frequently abbreviated to
"PHOSITA." The PHOSITA is the hypo-
thetical reasonable person of patent
law.
This language has been interpreted by the courts to create three dis-
tinct disclosure requirements: enablement, wri en description, and best
mode. Of the three, enablement is the most practically signiﬁcant.
a Enablement

O'Reilly v. Morse
56 U.S. 62 (1853)
[Morse sued O’Reilly for infringing his patent on the telegraph. The
Supreme Court found that Morse was the inventor of the technology
and found that O’Reilly’s ”Columbian Telegraph” infringed. But it
narrowed Morse’s patent by striking its now-famous eighth claim:]
132 CHAPTER 3. PATENT

Eighth. I do not propose to limit myself to the speciﬁc ma-
chinery or parts of machinery described in the foregoing
speciﬁcation and claims; the essence of my invention be-
ing the use of the motive power of the electric or galvanic
current, which I call electro-magnetism, however devel-
oped for marking or printing intelligible characters, signs,
or le ers, at any distances, being a new application of that
power of which I claim to be the ﬁrst inventor or discov-
erer.
It is impossible to misunderstand the extent of this claim. He claims
the exclusive right to every improvement where the motive power
is the electric or galvanic current, and the result is the marking or
printing intelligible characters, signs, or le ers at a distance.
If this claim can be maintained, it ma ers not by what process or
machinery the result is accomplished. For aught that we now know
some future inventor, in the onward march of science, may discover
a mode of writing or printing at a distance by means of the electric
or galvanic current, without using any part of the process or combi-
nation set forth in the plaintiﬀ’s speciﬁcation. His invention may be
less complicated –less liable to get out of orderl– ess expensive in con-
struction, and in its operation. But yet if it is covered by this patent
the inventor could not use it, nor the public have the beneﬁt of it with-
out the permission of this patentee.
Nor is this all, while he shuts the door against inventions of other
persons, the patentee would be able to avail himself of new discov-
eries in the properties and powers of electro-magnetism which scien-
tiﬁc men might bring to light. For he says he does not conﬁne his
claim to the machinery or parts of machinery, which he speciﬁes; but
claims for himself a monopoly in its use, however developed, for the
purpose of printing at a distance. New discoveries in physical sci-
ence may enable him to combine it with new agents and new ele-
ments, and by that means a ain the object in a manner superior to
the present process and altogether diﬀerent from it. And if he can
secure the exclusive use by his present patent he may vary it with ev-
ery new discovery and development of the science, and need place
no description of the new manner, process, or machinery, upon the
records of the patent oﬃce. And when his patent expires, the public
must apply to him to learn what it is. In ﬁne he claims an exclusive
right to use a manner and process which he has not described and
indeed had not invented, and therefore could not describe when he
obtained his patent. The court is of opinion that the claim is too broad,
and not warranted by law.

Wyeth & Cordis Corp. v. Abbott Labs.
720 F.3d 1380 (Fed. Cir. 2013)
B. PROCEDURES 133

Wyeth and Cordis Corporation (Wyeth) appeal from the U.S. District
Court for the District of New Jersey’s grant of summary judgment
that claims 1 and 2 of U.S. Patent No. 5,516,781 (’781 patent) and claim
1 of U.S. Patent No. 5,563,146 (’146 patent) are invalid for nonenable-
ment. Because we hold that there is no genuine issue of material fact
that the speciﬁcation does not enable one of ordinary skill to practice
the asserted claims without undue experimentation, we aﬃrm.
B
The patents-in-suit relate to the use of rapamycin for the treatment
and prevention of restenosis, which is the renarrowing of an artery.
To open a blocked artery, a physician guides a balloon catheter to the
site of accumulated plaque, and then inﬂates the balloon to crush the
plaque. As the balloon inﬂates, however, it may cause injury to the
arterial wall. That vascular injury causes smooth muscle cells to pro-
liferate, which thickens the arterial wall, and, in turn, leads to resteno-
sis.
The claims recite a method of treating or preventing “restenosis in
a mammal ... which comprises administering an antirestenosis eﬀec-
tive amount of rapamycin to said mammal.” In general, “rapamycin”
may refer to a class of compounds. While the patents-in-suit use
the term “rapamycin,” the parties agree that the shared speciﬁcation
discloses only one rapamycin species called sirolimus. Sirolimus is
naturally produced by a bacterium called Streptomyces hygroscopicus.
[Sirolimus’s chemical structure has two relevant features: a “macro-
cyclic triene ring” and a speciﬁc “substituent group.”]
The parties do not dispute that the eﬀective ﬁling date of both
patents is January 9, 1992. At that time, it was known that sirolimus
acts in part by binding two proteins at sites within the macrocyclic
ring. It was also known that there were four additional compounds
with the same macrocyclic ring as sirolimus, but diﬀerent substituent
groups.
The parties also do not dispute that the speciﬁcation discloses the
immunosuppressive and antirestenotic properties of sirolimus. The
speciﬁcation discloses in vitro test data indicating that sirolimus in-
hibits rat smooth muscle cell proliferation. It also discloses in vivo
test data indicating that intraperitoneal injection of sirolimus in rats
reduced the thickening of the arterial wall following vascular injury.
In two separate actions, Wyeth sued the defendants for infringe-
ment of the patents-in-suit. The defendants market stent products
that elute everolimus and zotarolimus, two drugs that have the same
macrocyclic ring as sirolimus but diﬀerent [substituent groups]. Af-
ter brieﬁng and a hearing, the district court adopted Wyeth’s pro-
posed construction of “rapamycin” as “a compound containing a
macrocyclic triene ring structure produced by Streptomyces hygroscop-
134 CHAPTER 3. PATENT

icus, having immuno-suppressive and anti-restenotic eﬀects.” Based
in part on that construction, the court granted defendants’ joint mo-
tions for summary judgment of invalidity for nonenablement and
lack of wri en description.
D
I.
A patent’s speciﬁcation must describe the invention and “the man-
ner 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 which it
pertains ... to make and use the same.” 35 U.S.C. § 112(a). Claims
are not enabled when, at the eﬀective ﬁling date of the patent, one
of ordinary skill in the art could not practice their full scope without
undue experimentation.
II.
The central issue on appeal is whether practicing the full scope of
the claims requires excessive – and thus undue – experimentation.
The district court held that it does. It found that the claims cover
any structural analog of sirolimus that exhibits immunosuppressive
and antirestenotic eﬀects. The court also found that, while the speci-
ﬁcation describes assays to ascertain whether a potential rapamycin
compound exhibits the recited functional eﬀects, the only species dis-
closed is sirolimus. In further support of its holding of nonenable-
ment, the court relied on the unpredictability of the chemical arts, the
complexity of the invention, and the limited knowledge of treatment
of restenosis using sirolimus at the time of the invention.
Wyeth argues that the district court ignored evidence that prac-
ticing the full scope of the claims would have required only rou-
tine experimentation. First, a skilled artisan could ascertain whether
a candidate rapamycin compound has the same macrocyclic ring
as sirolimus. Second, a skilled artisan could routinely determine
whether a candidate has immunosuppressive and antirestenotic ef-
fects using the assays disclosed in the speciﬁcation.
Regarding the amount of experimentation, Wyeth acknowledges
that one of its experts testiﬁed that there could be millions of
compounds made by varying the substituent groups outside of
sirolimus’s macrocyclic ring. Wyeth counters that the same expert
testiﬁed that the number of compounds that would exhibit the recited
functional eﬀects would be signiﬁcantly smaller. [Wyeth’s expert ar-
gued that a PHOSITA would have known that only compounds per-
meable across cell membranes, typically having molecular weights
below 1,200 Daltons would need to be considered. For purposes of
summary judgment, the court accepted this claim as true, and also the
claim that the assays would eﬀectively conﬁrm whether a candidate
B. PROCEDURES 135

compound had the desired immunosuppressive and antirestinotic ef-
fects.]
We agree with Appellees and the district court that there is no gen-
uine dispute that practicing the full scope of the claims, measured
at the time of ﬁling, would require excessive experimentation. The
scope of the claims at issue is broad. Under the district court’s unchal-
lenged construction of “rapamycin,” the invention is a new method
of use of a known compound (sirolimus) and any other compounds
that meet the construction’s structural and functional requirements.
We also agree that there is no genuine dispute that the speciﬁcation’s
guidance is limited to disclosures of the immunosuppressive and
antirestenotic properties of sirolimus and assays to screen for those
properties.
Yet, even accepting Wyeth’s assertions, we ﬁnd no genuine dis-
pute that practicing the full scope of the claims would require more
than routine experimentation for two reasons.
First, there is no dispute that, even if potential rapamycin com-
pounds must have a molecular weight below 1,200 Daltons, there
are still at least tens of thousands of candidates. The speciﬁcation
is silent about how to structurally modify sirolimus, let alone in a
way that would preserve the recited utility. Second, there is no gen-
uine dispute that it would be necessary to ﬁrst synthesize and then
screen each candidate compound using the assays disclosed in the
speciﬁcation to determine whether it has immunosuppressive and
antirestenotic eﬀects. There is no evidence in the record that any par-
ticular substitutions outside of the macrocyclic ring are preferable. In-
deed, a Wyeth scientist conﬁrmed the unpredictability of the art and
the ensuing need to assay each candidate by testifying that, “until
you test [compounds], you really can’t tell whether they work or not
[i.e., have antirestenotic eﬀects].” In sum, there is no genuine dispute
that practicing the full scope of the claims would require synthesizing
and screening each of at least tens of thousands of compounds.
The remaining question is whether having to synthesize and
screen each of at least tens of thousands of candidate compounds
constitutes undue experimentation. We hold that it does. Undue
experimentation is a ma er of degree. Even a considerable amount
of experimentation is permissible, as long as it is merely routine or
the speciﬁcation provides a reasonable amount of guidance regard-
ing the direction of experimentation. Yet, routine experimentation is
not without bounds.
Our cases have described limits on permissible experimentation
in the context of enablement. For example, in ALZA Corp. v. An- ALZA: 603 F.3d 935 (Fed. Cir. 2010)
drx Pharmaceuticals, LLC, we aﬃrmed a judgment of nonenablement
where the speciﬁcation provided “only a starting point, a direction
for further research.” We concluded that one of ordinary skill “would
136 CHAPTER 3. PATENT

have been required to engage in an iterative, trial-and-error process
to practice the claimed invention even with the help of the speciﬁca-
Vaeck: 947 F.2d 488 (Fed. Cir. 1991) tion.” Finally, in In re Vaeck, we aﬃrmed the PTO’s nonenablement
rejection of claims reciting heterologous gene expression in as many
as 150 genera of cyanobacteria. The speciﬁcation disclosed only nine
genera, despite cyanobacteria being a “diverse and relatively poorly
understood group of microorganisms,” with unpredictable heterol-
ogous gene expression. Here, the speciﬁcation similarly discloses
only a starting point for further iterative research in an unpredictable
and poorly understood ﬁeld. Synthesizing candidate compounds de-
rived from sirolimus could, itself, require a complicated and lengthy
series of experiments in synthetic organic chemistry. Even pu ing
the challenges of synthesis aside, one of ordinary skill would need
to assay each of at least tens of thousands of candidates. Wyeth’s ex-
pert conceded that it would take technicians weeks to complete each
of these assays. The speciﬁcation oﬀers no guidance or predictions
about particular substitutions that might preserve the immunosup-
pressive and antirestenotic eﬀects observed in sirolimus. The result-
ing need to engage in a systematic screening process for each of the
many rapamycin candidate compounds is excessive experimentation.
We thus hold that there is no genuine dispute that practicing the full
scope of the claims, measured at the ﬁling date, required undue ex-
perimentation.

Plastic Dye Problem
You are drafting claims for a patent application for an industrial dye
that turns certain plastics an a ractive shade of blue. Your client has
tested it, with success, on PETE, HDPE, PEEK, and PVDC (all semi-
crystalline plastics). You could draft a broad claim that refers to “plas-
tic” or you could draft a narrow claim that refers to “a plastic selected
from the group of PETE, HDPE, PEEK, and PVDC.” What are the ad-
vantages and disadvantages of each approach?
b Written Description

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co
598 F.3d 1336 (Fed Cir. 2010) (en Since its inception, this court has consistently held that § 112, ﬁrst
banc)
paragraph, contains a wri en description requirement separate from
enablement, and we have articulated a fairly uniform standard,
which we now aﬃrm. Speciﬁcally, the description must clearly al-
low persons of ordinary skill in the art to recognize that the inventor
invented what is claimed. In other words, the test for suﬃciency is
whether the disclosure of the application relied upon reasonably con-
veys to those skilled in the art that the inventor had possession of the
claimed subject ma er as of the ﬁling date.
B. PROCEDURES 137

The term “possession,” however, has never been very enlighten-
ing. It implies that as long as one can produce records documenting a
wri en description of a claimed invention, one can show possession.
But the hallmark of wri en description is disclosure. Thus, “posses-
sion as shown in the disclosure” is a more complete formulation. Yet
whatever the speciﬁc articulation, the test requires an objective in-
quiry into the four corners of the speciﬁcation from the perspective of
a person of ordinary skill in the art. Based on that inquiry, the spec-
iﬁcation must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention
claimed.
We have made clear that the wri en description requirement does
not demand either examples or an actual reduction to practice; a con-
structive reduction to practice that in a deﬁnite way identiﬁes the
claimed invention can satisfy the wri en description requirement.
Conversely, we have repeatedly stated that actual “possession” or re-
duction to practice outside of the speciﬁcation is not enough. Rather,
as stated above, it is the speciﬁcation itself that must demonstrate
possession. And while the description requirement does not demand
any particular form of disclosure, or that the speciﬁcation recite the
claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement.
c Best Mode

Manual of Patent Examination Procedure (Rev. Nov. 2013)

The best mode requirement is a safeguard against the desire on the § 2165
part of some people to obtain patent protection without making a The Best Mode Requirement
full disclosure as required by the statute. The requirement does not
permit inventors to disclose only what they know to be their second-
best embodiment, while retaining the best for themselves.
Determining compliance with the best mode requirement re-
quires a two-prong inquiry. First, it must be determined whether,
at the time the application was ﬁled, the inventor possessed a best
mode for practicing the invention. This is a subjective inquiry which
focuses on the inventor’s state of mind at the time of ﬁling. Second, if
the inventor did possess a best mode, it must be determined whether
the wri en description disclosed the best mode such that a person
skilled in the art could practice it. This is an objective inquiry, focus-
ing on the scope of the claimed invention and the level of skill in the
art. All applicants are required to disclose for the claimed subject mat-
ter the best mode contemplated by the inventor even if the inventor
was not the discoverer of that mode.
138 CHAPTER 3. PATENT

Failure to disclose the best mode need not rise to the level of ac-
tive concealment or inequitable conduct in order to support a rejec-
tion. Where an inventor knows of a speciﬁc material or method that
will make possible the successful reproduction of the claimed inven-
tion, but does not disclose it, the best mode requirement has not been
satisﬁed.
Section 15 of the Leahy-Smith America Invents Act (AIA) did not
eliminate the requirement for a disclosure of the best mode, but ef-
fective September 16, 2011, it amended 35 U.S.C. 282 (the provision
that sets forth defenses in a patent validity or infringement proceed-
ing) to provide that the failure to disclose the best mode shall not be
a basis on which any claim of a patent may be canceled or held in-
valid or otherwise unenforceable. As this change is applicable only
in patent validity or infringement proceedings, it does not alter cur-
rent patent examining practices as set forth above for evaluation of
an application for compliance with the best mode requirement of 35
U.S.C. 112.

Salt Shaker Problem
Assume that you represent the inventor of the ﬁrst screw-top salt
shaker. (In this alternate universe, prior art salt shakers were ﬁlled
through a hole in the bo om.) Draft a claim for this new invention.
Suggestions:
• What are the constituent parts of the screw-top shaker? Your
claim will need to describe them and explain how they are re-
lated.
• Which features of the screw-top shaker are essential to its use?
Which can safely be omi ed?
• Once the new screw-top shaker is publicly available, competing
shaker-makers will try to invent around the patent. How can
you make their job harder?
• Inventors in other industries may be inspired by the screw-top
design. Can you make sure that your claim is not restricted to
the one use your client has in mind?
B. PROCEDURES 139

3 Patent Prosecution

Cuozzo Speed Technologies, LLC v. Lee
136 S. Ct. 2131 (2016)
An inventor obtains a patent by applying to the Patent Oﬃce. A
patent examiner with expertise in the relevant ﬁeld reviews an appli-
cant’s patent claims, considers the prior art, and determines whether
each claim meets the applicable patent law requirements.
If the examiner rejects a claim, the applicant can resubmit a nar-
rowed (or otherwise modiﬁed) claim, which the examiner will con-
sider anew, measuring the new claim against the same patent law
requirements. If the examiner rejects the new claim, the inventor typ-
ically has yet another chance to respond with yet another amended
claim. Ultimately, the Patent Oﬃce makes a ﬁnal decision allowing
or rejecting the application. The applicant may seek judicial review
of any ﬁnal rejection.

Patent Act

(a) Conﬁdentiality. – Except as provided in subsection (b), applica- 35 U.S.C. § 122
tions for patents shall be kept in conﬁdence by the Patent and Confidential status of applications;
Trademark Oﬃce. publication of patent applications
(b) Publication. –
(1)(A) Subject to paragraph (2), each application for a patent shall
be published, in accordance with procedures determined
by the Director, promptly after the expiration of a period of
18 months from the earliest ﬁling date for which a beneﬁt is
sought under this title. At the request of the applicant, an
application may be published earlier than the end of such
18-month period.
140 CHAPTER 3. PATENT

(2)(B)(i) If an applicant makes a request upon ﬁling, certifying that
the invention disclosed in the application has not and will
not be the subject of an application ﬁled in another coun-
try, or under a multilateral international agreement, that
requires publication of applications 18 months after ﬁling,
the application shall not be published as provided in para-
graph (1)

Code of Federal Regulations

A patent by its very nature is aﬀected with a public interest. The pub-
37 C.F.R. § 1.56(a) (2015)
lic interest is best served, and the most eﬀective patent examination
Duty to disclose information material
to patentability. occurs when, at the time an application is being examined, the Oﬃce
is aware of and evaluates the teachings of all information material to
patentability. Each individual associated with the ﬁling and prose-
cution of a patent application has a duty of candor and good faith in
dealing with the Oﬃce, which includes a duty to disclose to the Oﬃce
all information known to that individual to be material to patentabil-
ity as deﬁned in this section. The duty to disclose information exists
with respect to each pending claim until the claim is cancelled or with-
drawn from consideration, or the application becomes abandoned.

Therasense, Inc. v. Becton, Dickinson and Co.
649 F.3d 1276 (Fed. Cir. 2011) (en Inequitable conduct is an equitable defense to patent infringement
banc)
that, if proved, bars enforcement of a patent. This judge-made doc-
trine evolved from a trio of Supreme Court cases that applied the doc-
trine of unclean hands to dismiss patent cases involving egregious
misconduct before the PTO.
As the inequitable conduct doctrine evolved from these unclean
hands cases, it came to embrace a broader scope of misconduct, in-
cluding not only egregious aﬃrmative acts of misconduct intended to
deceive both the PTO and the courts but also the mere nondisclosure
of information to the PTO. Inequitable conduct also diverged from
the doctrine of unclean hands by adopting a diﬀerent and more po-
tent remedy – unenforceability of the entire patent rather than mere
dismissal of the instant suit.
To prevail on a claim of inequitable conduct, the accused infringer
must prove that the patentee acted with the speciﬁc intent to deceive
the PTO. A ﬁnding that the misrepresentation or omission amounts
to gross negligence or negligence under a “should have known” stan-
dard does not satisfy this intent requirement. In a case involving
nondisclosure of information, clear and convincing evidence must
show that the applicant made a deliberate decision to withhold a
known material reference. In other words, the accused infringer must
B. PROCEDURES 141

prove by clear and convincing evidence that the applicant knew of the
reference, knew that it was material, and made a deliberate decision
to withhold it.
Because direct evidence of deceptive intent is rare, a district court
may infer intent from indirect and circumstantial evidence. However,
to meet the clear and convincing evidence standard, the speciﬁc in-
tent to deceive must be the single most reasonable inference able to
be drawn from the evidence. Indeed, the evidence must be suﬃcient
to require a ﬁnding of deceitful intent in the light of all the circum-
stances.
This court holds that, as a general ma er, the materiality required
to establish inequitable conduct is but-for materiality. When an ap-
plicant fails to disclose prior art to the PTO, that prior art is but-for
material if the PTO would not have allowed a claim had it been aware
of the undisclosed prior art.
a Priority Dates

USPTO, General Information Concerning Patents

A provisional application for patent (provisional application) is a U.S.
national application ﬁled in the USPTO under 35 U.S.C. § 111(b). A Provisional Application for Patent
provisional application is not required to have a formal patent claim
or an oath or declaration. Provisional applications also should not
include any information disclosure (prior art) statement since provi-
sional applications are not examined. A provisional application pro-
vides the means to establish an early eﬀective ﬁling date in a later
ﬁled nonprovisional patent application ﬁled under 35 U.S.C. § 111(a).
It also allows the term ”Patent Pending” to be applied in connection
with the description of the invention.
A provisional application for patent has a pendency lasting 12
months from the date the provisional application is ﬁled. The 12-
month pendency period cannot be extended. Therefore, an appli-
cant who ﬁles a provisional application must ﬁle a corresponding
nonprovisional application for patent (nonprovisional application)
during the 12-month pendency period of the provisional application
in order to beneﬁt from the earlier ﬁling of the provisional applica-
tion.
b Multiple Applications

Patent Act

If two or more independent and distinct inventions are claimed in one 35 U.S.C. § 121
application, the Director may require the application to be restricted Divisional Applications
142 CHAPTER 3. PATENT

to one of the inventions. If the other invention is made the subject of
a divisional application it shall be entitled to the beneﬁt of the ﬁling
date of the original application. The validity of a patent shall not be
questioned for failure of the Director to require the application to be
restricted to one invention.

Manual of Patent Examination Procedure (Rev. July. 2015)

MPEP § 201.07
A continuation application is an application for the invention(s) dis-
Continuation Application closed in a prior-ﬁled copending nonprovisional application. The dis-
closure presented in the continuation must not include any subject
ma er which would constitute new ma er if submi ed as an amend-
ment to the parent application. The inventorship in the continuation
application must include at least one inventor named in the prior-
ﬁled application. At any time before the patenting, abandonment,
or termination of proceedings on an earlier application, an applicant
may have recourse to ﬁling a continuation application in order to in-
troduce into the application a new set of claims and to establish a
right to further examination by the Oﬃce.

MPEP § 201.08
A continuation-in-part is an application ﬁled during the lifetime of an
Continuation-in-Part Application earlier nonprovisional application, repeating some substantial por-
tion or all of the earlier nonprovisional application and adding ma er
not disclosed in the said earlier nonprovisional application.

What’s the diﬀerence? Divisionals and continuations repeat the spec-
iﬁcation of their parent applications; they are entitled to share its pri-
ority date. Divisionals are required when the examiner concludes
that an inventor is trying to claim two distinct inventions in the same
patent; they split the claims across two distinct applications. Contin-
uations allow an applicant to appeal the rejection of claims, or to add
new claims, without holding up the examination and issuance of the
claims the examiner allows. A continuation-in-part (CIP) adds new
subject ma er to the speciﬁcation, so it is not automatically entitled
to the same priority date. Instead, priority dates are assessed on a
claim-by-claim basis.
c Judicial Review
Applicants can appeal rejections to the Patent Trial and Appeal Board
(PTAB). 35 U.S.C. § 134(a). If the PTAB also rejects the application, the
applicant can seek judicial review either before the Federal Circuit, id.
§ 141, or the Eastern District of Virginia, id. § 145.
B. PROCEDURES 143

d Post-Grant Proceedings

Patent Act

(a)In general. – Whenever any patent is, through error, deemed
35 U.S.C. § 251
wholly or partly inoperative or invalid, by reason of a defective Reissue of defective patents
speciﬁcation or drawing, or by reason of the patentee claiming
more or less than he had a right to claim in the patent, the Di-
rector shall, on the surrender of such patent and the payment
of the fee required by law, reissue the patent for the invention
disclosed in the original patent, and in accordance with a new
and amended application, for the unexpired part of the term of
the original patent. No new ma er shall be introduced into the
application for reissue.
(d) Reissue patent enlarging scope of claims. – No reissued patent
shall be granted enlarging the scope of the claims of the orig-
inal patent unless applied for within two years from the grant
of the original patent.

Cuozzo Speed Technologies, LLC v. Lee
136 S. Ct. 2131 (2016)
For several decades, the Patent Oﬃce has also possessed the author-
ity to reexamine – and perhaps cancel – a patent claim that it had
previously allowed. In 1980, for example, Congress enacted a statute
providing for ”ex parte reexamination.”. That statute (which remains See 35 U.S.C. S 302 et seq.
in eﬀect) gives ”any person at any time” the right to ”ﬁle a request
for reexamination” on the basis of certain prior art ”bearing on the
patentability” of an already-issued patent. If the Patent Oﬃce con-
cludes that the cited prior art raises ”a substantial new question of
patentability,” the agency can reexamine the patent. And that reex-
amination can lead the Patent Oﬃce to cancel the patent (or some of
its claims). Alternatively, the Director of the Patent Oﬃce can, on her
”own initiative,” trigger such a proceeding. And, as with examina-
tion, the patent holder can seek judicial review of an adverse ﬁnal
decision.
In 1999 and 2002, Congress enacted statutes that established
another, similar procedure, known as ”inter partes reexamination.”
Those statutes granted third parties greater opportunities to partic-
ipate in the Patent Oﬃce’s reexamination proceedings as well as in
any appeal of a Patent Oﬃce decision.
In 2011, Congress enacted the statute before us. That statute mod-
iﬁes ”inter partes reexamination,” which it now calls ”inter partes re-
view” (IPR). Like inter partes reexamination, any third party can ask See 35 U.S.C. § 311 et seq.
the agency to initiate inter partes review of a patent claim. But the
new statute has changed the standard that governs the Patent Oﬃce’s
144 CHAPTER 3. PATENT

institution of the agency’s process. Instead of requiring that a request
for reexamination raise a ”substantial new question of patentability,”
it now requires that a petition show ”a reasonable likelihood that” the
challenger ”would prevail.”
The new statute provides a challenger with broader participation
rights. It creates within the Patent Oﬃce a Patent Trial and Appeal
Board (Board) composed of administrative patent judges, who are
patent lawyers and former patent examiners, among others. That
Board conducts the proceedings, reaches a conclusion, and sets forth
its reasons.
The statute sets forth time limits for completing this review. It
grants the Patent Oﬃce the authority to issue rules. Like its predeces-
sors, the statute authorizes judicial review of a ”ﬁnal wri en decision”
canceling a patent claim. And, the statute says that the agency’s ini-
tial decision ”whether to institute an inter partes review” is ”ﬁnal and
nonappealable.” Like the Court of Appeals, we believe that Cuozzo’s
contention that the Patent Oﬃce unlawfully initiated its agency re-
view is not appealable.
Cuozzo further argues that the Patent Oﬃce lacked the legal au-
thority to issue its regulation requiring the agency, when conducting
an inter partes review, to give a patent claim ”its broadest reasonable
construction in light of the speciﬁcation of the patent in which it ap-
37 CFR S 42.100(b). Why would the PTO pears.” Instead, Cuozzo contends that the Patent Oﬃce should, like
use a different standard of construction the courts, give claims their ordinary meaning as understood by a
than the courts? Why would it matter?
person of skill in the art.
The statute, however, contains a provision that grants the Patent
Oﬃce authority to issue ”regulations ... establishing and governing
inter partes review under this chapter.” The Court of Appeals held
that this statute gives the Patent Oﬃce the legal authority to issue its
broadest reasonable construction regulation. We agree.

Even more confusingly, the AIA also introduced ”post-grant review”
See 35 U.S.C. § 321 et seq. (PGR). PGR is only available within nine months after a patent issues
– except for a ”transitional” program that allows for PGR of any ”cov-
See AIA § 18 ered business method patent” at any time, but sunsets in 2020. IPR be-
comes available after the nine-month PGR window closes. The major
diﬀerences are that IPR only allows for challenges under § 102 (nov-
elty) and § 103 (nonobviousness) and that the threshold for the PTO
to hear an IPR is higher. Paradoxically, because of the wider range
of challenges available in PGR, the potential estoppel against parties
who bring one is much broader.
C. OWNERSHIP 145

4 Term

Patent Act

Subject to the payment of fees under this title, such grant shall be for a § 135
term beginning on the date on which the patent issues and ending 20 Contents and term of patent
years from the date on which the application for the patent was ﬁled Prior to June 8, 1995, patent terms were
in the United States or, if the application contains a speciﬁc reference set at 17 years from the date of the
to an earlier ﬁled application or applications under section 120, 121, patent grant. Given that applicants can
365(c), or 386(c), from the date on which the earliest such application partially control the pace at which ap-
plications move, can you think of ways
was ﬁled. this rule was vulnerable to gamesman-
ship?

Section 135 also contains an extensive and intricate set of provisions
for adjusting the patent term ”if the issue of an original patent is de-
layed due to the failure of the Patent and Trademark Oﬃce” to act
expeditiously, as speciﬁed by the statute, in its examination of the
application.

C Ownership
1 Collaborations

Manual of Patent Examination Procedure (Rev. Nov. 2013)

The inventor, or each individual who is a joint inventor of a claimed § 2137
invention, in an application for patent (other than a provisional ap- Inventorship
plication) must execute an oath or declaration directed to the appli-
cation, except as provided for in 37 CFR 1.64.
The deﬁnition for inventorship can be simply stated: The thresh-
old question in determining inventorship is who conceived the inven-
tion. Unless a person contributes to the conception of the invention,
he is not an inventor. Insofar as deﬁning an inventor is concerned,
reduction to practice, per se, is irrelevant. One must contribute to
the conception to be an inventor. With regard to the inventorship of
chemical compounds, an inventor must have a conception of the spe-
ciﬁc compounds being claimed. General knowledge regarding the
anticipated biological properties of groups of complex chemical com-
pounds is insuﬃcient to confer inventorship status with respect to
speciﬁcally claimed compounds. One who suggests an idea of a re-
sult to be accomplished, rather than the means of accomplishing it,
is not an coinventor. See MPEP § 2138.04 - § 2138.05 for a discussion
146 CHAPTER 3. PATENT

of what evidence is required to establish conception or reduction to
practice.
In arriving at conception the inventor may consider and adopt
ideas and materials derived from many sources such as a suggestion
from an employee, or hired consultant so long as he maintains in-
tellectual domination of the work of making the invention down to
the successful testing, selecting or rejecting as he goes even if such
suggestion or material proves to be the key that unlocks his prob-
lem. (Adoption of the ideas and materials from another can become
a derivation.)
Diﬃculties arise in separating members of a team eﬀort, where
each member of the team has contributed something, into those mem-
bers that actually contributed to the conception of the invention, such
as the physical structure or operative steps, from those members that
merely acted under the direction and supervision of the conceivers.
It is not essential for the inventor to be personally involved in carry-
ing out process steps where implementation of those steps does not
require the exercise of inventive skill. There is no requirement that
the inventor be the one to reduce the invention to practice so long as
Mattor: 530 F.2d 1391 (CCPA 1976) the reduction to practice was done on his behalf. See also Ma or v.
Coolegem (one following oral instructions is viewed as merely a tech-
Tucker: , nician); Tucker v. Naito 188 USPQ 260 (Bd. Pat. Inter. 1975) (inven-
Carrier: 81 F.2d 250 (CCPA 1936) tors need not “personally construct and test their invention”); Davis
v. Carrier (noninventor’s work was merely that of a skilled mechanic
carrying out the details of a plan devised by another).
The inventive entity for a particular application is based on some
contribution to at least one of the claims made by each of the named
inventors. “Inventors may apply for a patent jointly even though (1)
they did not physically work together or at the same time, (2) each
did not make the same type or amount of contribution, or (3) each
did not make a contribution to the subject ma er of every claim of
35 U.S.C. 116. the patent.” The statute neither states nor implies that two inventors
can be ”joint inventors” if they have had no contact whatsoever and
are completely unaware of each other’s work. What is required is
some quantum of collaboration or connection. In other words, for
persons to be joint inventors, there must be some element of joint be-
havior, such as collaboration or working under common direction,
one inventor seeing a relevant report and building upon it or hearing
another’s suggestion at a meeting. It is not necessary that the inven-
tive concept come to both joint inventors at the same time.
Each joint inventor must generally contribute to the conception
of the invention. A coinventor need not make a contribution to ev-
ery claim of a patent. A contribution to one claim is enough. “The
contributor of any disclosed means of a means-plus-function claim
element is a joint inventor as to that claim, unless one asserting sole
C. OWNERSHIP 147

inventorship can show that the contribution of that means was sim-
ply a reduction to practice of the sole inventor’s broader concept.”
Ethicon Inc. v. United States Surgical Corp. (The electronics technician Ethicon: 135 F.3d 1456 (Fed. Cir. 1998)
who contributed to one of the two alternative structures in the speci-
ﬁcation to deﬁne “the means for detaining” in a claim limitation was
held to be a joint inventor.).

Patent Act

(a)Institution of Proceeding. – 35 U.S.C. § 135
(1) In general. – An applicant for patent may ﬁle a petition Derivation proceedings
with respect to an invention to institute a derivation pro-
ceeding in the Oﬃce. The petition shall set forth with par-
ticularity the basis for ﬁnding that an individual named
in an earlier application as the inventor or a joint inventor
derived such invention from an individual named in the
petitioner’s application as the inventor or a joint inventor
and, without authorization, the earlier application claim-
ing such invention was ﬁled.
(b) Determination by Patent Trial and Appeal Board. – In a derivation
proceeding instituted under subsection (a), the Patent Trial and
Appeal Board shall determine whether an inventor named in
the earlier application derived the claimed invention from an
inventor named in the petitioner’s application and, without au-
thorization, the earlier application claiming such invention was
ﬁled. In appropriate circumstances, the Patent Trial and Appeal
Board may correct the naming of the inventor in any application
or patent at issue.

2 Priority: Novelty and Statutory Bars
Priority rules determine which of competing claimants is entitled to
an IP right based on an earlier claim. It is rarely as simple as ”ﬁrst
in time” because what counts as ”ﬁrst” could be assessed in diﬀerent
ways. Priority rules select one of these ways of determining who is
”ﬁrst” and determine the consequences of this fact. As we shall also
see, U.S. patent law mostly creates priority by preventing all but one –
or sometimes all – of the potential claimants from obtaining a patent.
As we shall also see, the AIA dramatically changed the priority rules
of U.S. patent law; it is the single biggest change made by the AIA.
Under Section 102, an applicant “shall be entitled to a patent un-
less” someone somewhere has done something that makes the inven-
tion not patentable. That something is called a prior art reference and it
is said to anticipate the applicant’s invention. Conceptually, any such
rule raises three questions:
148 CHAPTER 3. PATENT

• Which kinds of activities count as prior art? The present sec-
tion 102 uses the words “patented, described in a printed pub-
lication, or in public use, on sale, or otherwise available to the
public.” They are broad, but they do not exhaust the universe
of human activity. If Alﬁe ﬁles for a patent on an oven of a
type that Beth once built and then demolished without using or
telling anyone else, Beth’s secret use does not quality as prior
art and will not stand in the way of Alﬁe’s application. Exten-
sive caselaw glosses the meanings of these phrases, which are
far subtler than they may appear at ﬁrst glance, and which have
changed substantially over time.
• What makes a prior art reference suﬃciently similar to the ap-
plicant’s “claimed invention” to make it unpatentable? If Alﬁe
applies to patent an oven, Beth’s previous work on metalwork-
ing is irrelevant to the novelty of Alﬁe’s oven. Patent law has
se led on a remarkably elegant test to capture this idea: the test
for anticipation is simply the test for infringement plus the test
for enablement. A claim is anticipated by an enabling prior art
reference (and hence not novel) if that reference would infringe
the claim. “That which infringes, if later, would anticipate, if
Peters: 129 U.S. 530 (1889) earlier.” Peters v. Active Mfg. Co..
• When must an activity have taken place to qualify as prior art?
The present section 102 uses the words “before the eﬀective ﬁl-
ing date of the claimed invention,” so the patent applicant must
not only think of the invention and make it work but must also
make it to the Patent Oﬃce before anyone else goes public with
the same idea. If Alﬁe invents in January and ﬁles in March but
Beth publishes (or worse, ﬁles her own application) in Febru-
ary, Alﬁe is out of luck. This is one of the major changes in the
America Invents Act: under pre-AIA law, Alﬁe’s March appli-
cation based oﬀ a January invention date would have been good
enough. As we dig into the text of the AIA, we will see why it
is said to create a rule of “ﬁrst inventor to ﬁle.”
Not coincidentally, these are the same kinds of questions one
must also ask about infringement: what kinds of conduct are prohib-
ited, what makes a defendant’s use too similar, and when does it fall
within the term of the plaintiﬀ’s rights? This symmetry is baked into
patent law, as it is to many other ﬁelds of intellectual property law.
a Categories of Prior Art
Under the new § 102(a)(1), ”A person shall be entitled to a patent
unless the claimed invention was patented, described in a printed publi-
cation, or in public use, on sale, or otherwise available to the public before
the eﬀective ﬁling date of the claimed invention.” Most of the caselaw
C. OWNERSHIP 149

bearing on these phrases was developed under the old § 102; signiﬁ-
cant relevant diﬀerences will be noted.
1 "patented"
U.S. patents pose few conceptual or practical diﬃculties; they are
prior art as of the day they issue. It is not always so easy to tell
whether a foreign right is a ”patent” within the meaning of § 102. In Carlson: 983 F.2d 1032 (Fed. Cir. 1992)
re Carlson held that a German Geschmacksmuster counted as a patent
for prior art purposes. A person may obtain one by ”depositing with
a local oﬃce an application with a drawing, photograph or sample
of the article.” That was enough, even though ”Geschmacksmuster
on display for public view in remote cities in a far-away land may
create a burden of discovery for one without the time, desire, or re-
sources to journey there in person or by agent to observe that which
was registered and protected under German law.” Such is life.
2 "described in a printed publication"

In re Klopfenstein
380 F.3d 1345 (Fed Cir. 2004)
Carol Klopfenstein and John Brent appeal a decision from the Patent
and Trademark Oﬃce’s Board of Patent Appeals and Interferences
(“Board”) upholding the denial of their patent application. The Board
upheld the Patent and Trademark Oﬃce’s (“PTO’s”) initial denial of
their application on the ground that the invention described in the
patent application was not novel under 35 U.S.C. § 102(b) because it
had already been described in a printed publication more than one
year before the date of the patent application. We aﬃrm.
B
The appellants applied for a patent on October 30, 2000. Their patent
application, Patent Application Serial No. 09/699,950 (“the ‘950 appli-
cation”), discloses methods of preparing foods comprising extruded
soy cotyledon ﬁber (“SCF”). The ‘950 application asserts that feeding
mammals foods containing extruded SCF may help lower their serum
cholesterol levels while raising HDL cholesterol levels. The fact that
extrusion reduces cholesterol levels was already known by those of
ordinary skill in the art that worked with SCF. What was not known
at the time was that double extrusion increases this eﬀect and yielded
even stronger results.
In October 1998, the appellants, along with colleague M. Liu, pre-
sented a printed slide presentation (“Liu” or “the Liu reference”)
entitled “Enhancement of Cholesterol-Lowering Activity of Dietary
Fibers By Extrusion Processing” at a meeting of the American Associ-
ation of Cereal Chemists (“AACC”). The fourteen-slide presentation
150 CHAPTER 3. PATENT

was printed and pasted onto poster boards. The printed slide pre-
sentation was displayed continuously for two and a half days at the
AACC meeting.
In November of that same year, the same slide presentation was
put on display for less than a day at an Agriculture Experiment Sta-
tion (“AES”) at Kansas State University.
Both parties agree that the Liu reference presented to the AACC
and at the AES in 1998 disclosed every limitation of the invention dis-
closed in the ‘950 patent application. Furthermore, at neither presen-
tation was there a disclaimer or notice to the intended audience pro-
hibiting note-taking or copying of the presentation. Finally, no copies
of the presentation were disseminated either at the AACC meeting or
at the AES, and the presentation was never catalogued or indexed in
any library or database.
DISCUSSION
B.
The appellants argue on appeal that the key to establishing whether
or not a reference constitutes a “printed publication” lies in determin-
ing whether or not it had been disseminated by the distribution of re-
productions or copies and/or indexed in a library or database. They
assert that because the Liu reference was not distributed and indexed,
it cannot count as a “printed publication” for the purposes of 35 U.S.C.
§ 102(b). To support their argument, they rely on several precedents
from this court and our predecessor court on “printed publications.”
Cronyn: F.2d 1158 (Fed. Cir. 1989) They argue that In re Cronyn, In re Hall, Massachuse s Institute of Tech-
Hall: 781 F.2d 897 (Fed. Cir. 1986) nology v. AB Fortia, and In re Wyer, among other cases, all support the
MIT: 774 F.2d 1104 (Fed. Cir. 1985) view that distribution and/or indexing is required for something to
Wyer: 655 F.2d 221 (CCPA 1981) be considered a “printed publication.”
We ﬁnd the appellants’ argument unconvincing and disagree
with their characterization of our controlling precedent. Even if the
cases cited by the appellants relied on inquiries into distribution and
indexing to reach their holdings, they do not limit this court to ﬁnd-
ing something to be a “printed publication” only when there is distri-
bution and/or indexing. Indeed, the key inquiry is whether or not a
reference has been made “publicly accessible.”
The statutory phrase “printed publication” has been interpreted
to mean that before the critical date the reference must have been
suﬃciently accessible to the public interested in the art; dissemina-
tion and public accessibility are the keys to the legal determination
whether a prior art reference was “published.”
For example, a public billboard targeted to those of ordinary skill
in the art that describes all of the limitations of an invention and that is
on display for the public for months may be neither “distributed” nor
C. OWNERSHIP 151

“indexed” – but it most surely is “suﬃciently accessible to the public
interested in the art” and therefore, under controlling precedent, a
“printed publication.”
Furthermore, the cases that the appellants rely on can be clearly
distinguished from this case. Cronyn involved college students’ pre-
sentations of their undergraduate theses to a defense commi ee
made up of four faculty members. Their theses were later catalogued
in an index in the college’s main library. The index was made up of
thousands of individual cards that contained only a student’s name
and the title of his or her thesis. The index was searchable by stu-
dent name and the actual theses themselves were neither included
in the index nor made publicly accessible. We held that because the
theses were only presented to a handful of faculty members and had
not been catalogued or indexed in a meaningful way, they were not
suﬃciently publicly accessible for the purposes of 35 U.S.C. § 102(b).
In Hall, this court determined that a thesis ﬁled and indexed in
a university library did count as a “printed publication.” The Hall
court arrived at its holding after taking into account that copies of the
indexed thesis itself were made freely available to the general public
by the university more than one year before the ﬁling of the relevant
patent application in that case. But the court in Hall did not rest its
holding merely on the indexing of the thesis in question. Instead, it
used indexing as a factor in determining “public accessibility.” As
the court asserted:
The “printed publication” bar is grounded on the princi-
ple that once an invention is in the public domain, it is
no longer patentable by anyone. Because there are many
ways in which a reference may be disseminated to the
interested public, “public accessibility” has been called
the touchstone in determining whether a reference consti-
tutes a “printed publication” bar under 35 U.S.C. § 102(b).
In MIT, a paper delivered orally to the First International Cell Cul-
ture Congress was considered a “printed publication.” In that case,
as many as 500 persons having ordinary skill in the art heard the pre-
sentation, and at least six copies of the paper were distributed. The
key to the court’s ﬁnding was that actual copies of the presentation
were distributed. The court did not consider the issue of indexing.
The MIT court determined the paper in question to be a “printed pub-
lication” but did not limit future determinations of the applicability
of the “printed publication” bar to instances in which copies of a ref-
erence were actually oﬀered for distribution. 4
4
With regard to scientiﬁc presentations, it is important to note than an entirely
oral presentation at a scientiﬁc conference that includes neither slides nor copies of
152 CHAPTER 3. PATENT

Finally, the Wyer court determined that an Australian patent ap-
plication kept on microﬁlm at the Australian Patent Oﬃce was suf-
ﬁciently accessible to the public and to persons skilled in the perti-
nent art to qualify as a ”printed publication.” The court so found even
though it did not determine whether or not there was “actual view-
ing or dissemination” of the patent application. Id. It was suﬃcient
for the court’s purposes that the records of the application were kept
so that they could be accessible to the public. Id.5 According to the
Wyer court, the entire purpose of the “printed publication” bar was
to “prevent withdrawal” of disclosures already in the possession of
the public by the issuance of a patent.
Thus, throughout our case law, public accessibility has been the
criterion by which a prior art reference will be judged for the pur-
poses of § 102(b). Oftentimes courts have found it helpful to rely
on distribution and indexing as proxies for public accessibility. But
when they have done so, it has not been to the exclusion of all other
measures of public accessibility. In other words, distribution and in-
dexing are not the only factors to be considered in a § 102(b) “printed
publication” inquiry.
C.
In this case, the Liu reference was displayed to the public approxi-
mately two years before the ‘950 application ﬁling date. The reference
was shown to a wide variety of viewers, a large subsection of whom
possessed ordinary skill in the art of cereal chemistry and agriculture.
Furthermore, the reference was prominently displayed for approxi-
mately three cumulative days at AACC and the AES at Kansas State
University. The reference was shown with no stated expectation that
the information would not be copied or reproduced by those viewing
it. Finally, no copies of the Liu display were distributed to the pub-
lic and the display was not later indexed in any database, catalog or
library.
The duration of the display is important in determining the oppor-
tunity of the public in capturing, processing and retaining the infor-
mation conveyed by the reference. The more transient the display,
the less likely it is to be considered a “printed publication.” Con-
versely, the longer a reference is displayed, the more likely it is to
the presentation is without question not a “printed publication” for the purposes
of 35 U.S.C. § 102(b). Furthermore, a presentation that includes a transient display
of slides is likewise not necessarily a “printed publication.” See, e.g., Regents of the
Univ. of Cal. v. Howmedica, Inc., 530 F.Supp. 846 (D.N.J. 1981) (holding that “the
projection of slides at the lecture that was limited in duration and could not disclose
the invention to the extent necessary to enable a person of ordinary skill in the art
to make or use the invention” was not a “printed publication”).
5
Unlike in Cronyn, it was the actual patent application — and not just an index
card searchable by author name only — that was made publicly accessible.
C. OWNERSHIP 153

be considered a “printed publication.” In this case, the Liu reference
was displayed for a total of approximately three days. It was shown
at the AACC meeting for approximately two and a half days and at
the AES at Kansas State University for less than one day.
The expertise of the intended audience can help determine how
easily those who viewed it could retain the displayed material. As
Judge Learned Hand explained in Jockmus v. Leviton, a reference, Jockmus: 28 F.2d 812, (2d Cir. 1928)
“however ephemeral its existence,” may be a “printed publication”
if it “goes direct to those whose interests make them likely to observe
and remember whatever it may contain that is new and useful.” In
this case, the intended target audience at the AACC meeting was com-
prised of cereal chemists and others having ordinary skill in the art
of the ‘950 patent application. The intended viewers at the AES most
likely also possessed ordinary skill in the art.
Whether a party has a reasonable expectation that the information
it displays to the public will not be copied aids our § 102(b) inquiry.
Where professional and behavioral norms entitle a party to a reason-
able expectation that the information displayed will not be copied, we
are more reluctant to ﬁnd something a “printed publication.” This
reluctance helps preserve the incentive for inventors to participate
in academic presentations or discussions. Where parties have taken
steps to prevent the public from copying temporarily posted infor-
mation, the opportunity for others to appropriate that information
and assure its widespread public accessibility is reduced. These pro-
tective measures could include license agreements, non-disclosure
agreements, anti-copying software or even a simple disclaimer in-
forming members of the viewing public that no copying of the infor-
mation will be allowed or countenanced. Protective measures are to
be considered insofar as they create a reasonable expectation on the
part of the inventor that the displayed information will not be copied.
In this case, the appellants took no measures to protect the informa-
tion they displayed — nor did the professional norms under which
they were displaying their information entitle them to a reasonable
expectation that their display would not be copied. There was no dis-
claimer discouraging copying, and any viewer was free to take notes
from the Liu reference or even to photograph it outright.
Finally, the ease or simplicity with which a display could be
copied gives further guidance to our § 102(b) inquiry. The more com-
plex a display, the more diﬃcult it will be for members of the public to
eﬀectively capture its information. The simpler a display is, the more
likely members of the public could learn it by rote or take notes ade-
quate enough for later reproduction. The Liu reference was made up
of 14 separate slides. One slide was a title slide; one was an acknowl-
edgement slide; and four others represented graphs and charts of ex-
periment results. The other eight slides contained information pre-
154 CHAPTER 3. PATENT

sented in bullet point format, with no more than three bullet points
to a slide. Further, no bullet point was longer than two concise sen-
tences. Finally, as noted earlier, the fact that extrusion lowers choles-
terol levels was already known by those who worked with SCF. The
discovery disclosed in the Liu reference was that double extrusion
increases this eﬀect. As a result, most of the eight substantive slides
only recited what had already been known in the ﬁeld, and only a
few slides presented would have needed to have been copied by an
observer to capture the novel information presented by the slides.
Suppose that the Liu presentation had
Upon reviewing the above factors, it becomes clear that the Liu ref-
not been shown at the AACC meeting
but instead been posted to Liu's per-
erence was suﬃciently publicly accessible to count as a “printed pub-
sonal webpage. Printed publication? lication” for the purposes of 35 U.S.C. § 102(b). The reference itself
What if Liu had emailed it to a mailing was shown for an extended period of time to members of the public
list for cereal chemists? Are there fur- having ordinary skill in the art of the invention behind the ‘950 patent
ther questions you would want to ask
application. Those members of the public were not precluded from
before committing to an answer on ei-
ther of these hypotheticals? taking notes or even photographs of the reference. And the reference
itself was presented in such a way that copying of the information it
contained would have been a relatively simple undertaking for those
to whom it was exposed — particularly given the amount of time they
had to copy the information and the lack of any restrictions on their
copying of the information. For these reasons, we conclude that the
Liu reference was made suﬃciently publicly accessible to count as a
“printed publication” under § 102(b).
3 "in public use"
The old § 102 got at this concept in two diﬀerent ways. It denied a
patent where the invention was ”known or used by others” before
the date of invention (a ”novelty” rule) or where it was ”in public use”
It also used the phrase "in this coun- more than a year before the ﬁling date (a ”statutory bar”). While the
try," which the AIA drops. Don't worry two provisions diﬀered in their timing (more on this in the Priority
about the geographic issues for now.
section below), the most fundamental distinction was that ”known or
used by others” only applied to uses made by third parties, whereas
”in public use” also could be triggered by anyone, including the inven-
tor.

Mark A. Lemley
93 Tex. L. Rev. 1119 (2015)
Does “Public Use” Mean the Same Thing It Did Last Year?
An inventor can obtain a patent only if the invention is “novel” – that
is, that no one has done the same thing before. Rather than adopting
an absolute novelty rule, however, patent law has traditionally re-
quired that most categories of prior art be “accessible to the public.”
Thus, while [old] 35 U.S.C. § 102(a) bars a patent if the invention was
“known or used by others” before the applicant invented it, courts
have interpreted that term to mean “publicly known or used.” At
C. OWNERSHIP 155

the same time, the public accessibility requirement does not require
that the public have a realistic chance of accessing the information;
“public” seems to mean merely “not secret.” An invention performed
underground on private property in a rural area, an invention found
only inside the walls of a safe, and a single copy of a graduate thesis in
the basement of a library in Germany have all been held suﬃciently
“public” to constitute prior art.
In addition to novelty, the Patent Act of 1952, like its predeces-
sors, created a series of “statutory bars” designed to prevent inven-
tors from making commercial use of their invention while keeping it
secret. [Old] section 102(b) provides that even a true ﬁrst inventor
is not entitled to a patent if the invention has been “on sale” or “in
public use” more than a year before the inventor ﬁles her patent ap-
plication. As with [old] section 102(a), the courts have interpreted the
word “public” quite loosely, so that even uses that are extremely un-
likely to be viewed by the public are nonetheless classed as “public
uses” so long as they are not aﬃrmatively secret. In the most extreme
example, the Supreme Court held that a woman engaged in a public
use of a corset invented by her ﬁancé when she wore it under her
clothing.
But even a very broad deﬁnition of “public” left a signiﬁcant loop-
hole – an inventor could avoid the one-year statutory bar by commer-
cializing his invention but treating it as a trade secret. Because a secret
use is by deﬁnition not a public use, a company could make commer-
cial use of an invention indeﬁnitely without triggering the one-year
period for ﬁling. To solve this problem, courts for more than sev-
enty years have created a special rule for secret commercial uses: a
secret commercial use is not prior art that bars a third party from
later obtaining a patent, but it does start the one-year clock running
for the user. This rule originated in a 1940 opinion by Judge Learned
Hand in Metallizing Engineering v. Kenyon Bearing & Auto Parts. The Metallizing: 153 F.2d 516 (2d Cir. 1946)
court acknowledged that interpreting the same term (“public use”) to
have diﬀerent meanings was hard to reconcile with the statute. But
Judge Hand reasoned that it was not the intent of the statute to en- It is a condition upon an inventor's right
courage secrecy, but instead to encourage disclosure. Metallizing’s to a patent that he shall not exploit his
discovery competitively after it is ready
split interpretation of public use served that goal in two ways. First,
for patenting. [If he does,] he forfeits his
it encouraged inventors to ﬁle a patent quickly rather than relying right regardless of how little the public
in trade secrecy, because they would lose the right to patent if they may have learned about the invention."
waited longer than a year. Second, the fact that a secret commercial —Judge Hand
use wouldn’t prevent a later patent from issuing to a third party adds
to the disclosure incentive, because an inventor who opts for trade se-
crecy may ﬁnd that a later inventor has patented their own idea and
there is nothing they can do to stop it.
156 CHAPTER 3. PATENT

The PTO takes the position that the AIA, by collapsing the two
phrases (”known or used by others” and ”in public use”), and by
adding the new category of uses ”otherwise available to the public,”
eliminated this per se rule against secret commercialization by the
inventor. Some commentators agree; others, including Lemley, vehe-
mently disagreee. The courts have not yet se led on a clear answer.

Egbert v. Lippmann
104 U.S. 333 (1881)
This suit was brought for an alleged infringement of the com-
plainant’s reissued le ers-patent, No. 5216, dated Jan. 7, 1873, for
an improvement in corset-springs.
The original le ers bear date July 17, 1866, and were issued to
Samuel H. Barnes. The reissue was made to the complainant, under
her then name, Frances Lee Barnes, executrix of the original patentee.
The speciﬁcation for the reissue declares:
This invention consists in forming the springs of corsets
of two or more metallic plates, placed one upon another,
and so connected as to prevent them from sliding oﬀ each
other laterally or edgewise, and at the same time admit of
their playing or sliding upon each other, in the direction
of their length or longitudinally, whereby their ﬂexibility
and elasticity are greatly increased, while at the same time
much strength is obtained.
The second claim is as follows:
A pair of corset-springs, each member of the pair being
composed of two or more metallic plates, placed one on
another, and fastened together at their centres, and so con-
nected at or near each end that they can move or play on
each other in the direction of their length.
[The patent statute in force at the time had a two-year statutory bar,
whose] eﬀect is to render le ers-patent invalid if the invention which
they cover was in public use, with the consent and allowance of the
inventor, for more than two years prior to his application.
The evidence on which the defendants rely to establish a prior
public use of the invention consists mainly of the testimony of the
complainant.
She testiﬁes that Barnes invented the improvement covered by
his patent between January and May, 1855; that between the dates
named the witness and her friend Miss Cugier were complaining of
the breaking of their corset-steels. Barnes, who was present, and was
an intimate friend of the witness, said he thought he could make her
a pair that would not break. At their next interview he presented her
with a pair of corset-steels which he himself had made. The witness
C. OWNERSHIP 157

wore these steels a long time. In 1858 Barnes made and presented to
her another pair, which she also wore a long time. When the corsets
in which these steels were used wore out, the witness ripped them
open and took out the steels and put them in new corsets. This was
done several times.
It is admi ed, and, in fact, is asserted, by complainant, that these
steels embodied the invention afterwards patented by Barnes and
covered by the reissued le ers-patent on which this suit is brought.
Joseph H. Sturgis, another witness for complainant, testiﬁes that
in 1863 Barnes spoke to him about two inventions made by himself,
one of which was a corset-steel, and that he went to the house of
Barnes to see them. Before this time, and after the transactions testi-
ﬁed to by the complainant, Barnes and she had intermarried. Barnes
said his wife had a pair of steels made according to his invention in
the corsets which she was then wearing, and if she would take them
oﬀ he would show them to witness. Mrs. Barnes went out, and re-
turned with a pair of corsets and a pair of scissors, and ripped the
corsets open and took out the steels. Barnes then explained to wit-
ness how they were made and used.
The question for our decision is, whether this testimony shows a
public use within the meaning of the statute.
We observe, in the ﬁrst place, that to constitute the public use of
an invention it is not necessary that more than one of the patented
articles should be publicly used. The use of a great number may tend
to strengthen the proof, but one well-deﬁned case of such use is just
as eﬀectual to annul the patent as many. For instance, if the inventor
of a mower, a printingpress, or a railway-car makes and sells only one
of the articles invented by him, and allows the vendee to use it for two
years, without restriction or limitation, the use is just as public as if
he had sold and allowed the use of a great number.
We remark, secondly, that, whether the use of an invention is pub-
lic or private does not necessarily depend upon the number of per-
sons to whom its use is known. If an inventor, having made his de-
vice, gives or sells it to another, to be used by the donee or vendee,
without limitation or restriction, or injunction of secrecy, and it is so
used, such use is public, even though the use and knowledge of the
use may be conﬁned to one person.
We say, thirdly, that some inventions are by their very character
only capable of being used where they cannot be seen or observed by
the public eye. An invention may consist of a lever or spring, hidden
in the running gear of a watch, or of a rachet, shaft, or cog-wheel cov-
ered from view in the recesses of a machine for spinning or weaving.
Nevertheless, if its inventor sells a machine of which his invention
forms a part, and allows it to be used without restriction of any kind,
the use is a public one. So, on the other hand, a use necessarily open
158 CHAPTER 3. PATENT

to public view, if made in good faith solely to test the qualities of
the invention, and for the purpose of experiment, is not a public use
City of Elizabeth: 97 U.S. 126 (1878) within the meaning of the statute. City of Elizabeth v. American Nichol-
son Pavement Co..
Tested by these principles, we think the evidence of the com-
plainant herself shows that for more than two years before the appli-
cation for the original le ers there was, by the consent and allowance
of Barnes, a public use of the invention, covered by them. He made
and gave to her two pairs of corset-steels, constructed according to
his device, one in 1855 and one in 1858. They were presented to her
for use. He imposed no obligation of secrecy, nor any condition or
restriction whatever. They were not presented for the purpose of ex-
periment, nor to test their qualities. No such claim is set up in her
testimony. The invention was at the time complete, and there is no
evidence that it was afterwards changed or improved. The donee of
the steels used them for years for the purpose and in the manner de-
signed by the inventor. They were not capable of any other use. She
might have exhibited them to any person, or made other steels of the
same kind, and used or sold them without violating any condition or
restriction imposed on her by the inventor.
According to the testimony of the complainant, the invention was
completed and put to use in 1855. The inventor slept on his rights
for eleven years. Le ers-patent were not applied for till March, 1866.
In the mean time, the invention had found its way into general, and
almost universal, use. A great part of the record is taken up with the
testimony of the manufacturers and venders of corset-steels, show-
ing that before he applied for le ers the principle of his device was
almost universally used in the manufacture of corset-steels. It is fair
to presume that having learned from this general use that there was
some value in his invention, he a empted to resume, by his applica-
tion, what by his acts he had clearly dedicated to the public.
An abandonment of an invention to the public may be
evinced by the conduct of the inventor at any time, even
within the two years named in the law. The eﬀect of the
law is that no such consequence will necessarily follow
from the invention being in public use or on sale, with the
inventor’s consent and allowance, at any time within two
years before his application; but that, if the invention is
in public use or on sale prior to that time, it will be con-
clusive evidence of abandonment, and the patent will be
void.
City of Elizabeth We are of opinion that the defence of two years’ pub-
lic use, by the consent and allowance of the inventor, before he made
application for le ers-patent, is satisfactorily established by the evi-
C. OWNERSHIP 159

dence.

Lough v. Brunswick Corp
86 F.3d 1113 (Fed. Cir. 1996)
[Lough designed an improved seal for outboard motors.] After some
trial and error with his grand-father’s metal lathe, he made six usable
prototypes in the spring of 1986. He installed one prototype in his
own boat at home. Three months later, he gave a second prototype
to a friend who installed it in his boat. He also installed prototypes in
the boat of the owner of the marina where he worked and in the boat
of a marina customer. He gave the remaining prototypes to longtime
friends who were employees at another marina in Sarasota. Lough
did not charge anyone for the prototypes. For over a year following
the installation of these prototypes, Lough neither asked for nor re-
ceived any comments about the operability of the prototypes. During
this time, Lough did not a empt to sell any seal assemblies.
On June 6, 1988, Lough ﬁled a patent application entitled ”Liquid
Seal for Marine Stern Drive Gear Shift Shafts,” which issued as [U.S.
Patent No. 4,848,775A patent on July 18, 1989.
One is entitled to a patent unless, inter alia, ”the invention was ...
in public use ... in this country, more than one year prior to the date
of the application for patent in the United States.” . We have deﬁned 35 U.S.C. § 102(b) (1994)
”public use” as including any use of the claimed invention by a per-
son other than the inventor who is under no limitation, restriction or
obligation of secrecy to the inventor. An evaluation of a question of
public use depends on how the totality of the circumstances of the
case comports with the policies underlying the public use bar. These
policies include: (1) discouraging the removal, from the public do-
main, of inventions that the public reasonably has come to believe are
freely available; (2) favoring the prompt and widespread disclosure
of inventions; (3) allowing the inventor a reasonable amount of time
following sales activity to determine the potential economic value of
a patent; and (4) prohibiting the inventor from commercially exploit-
ing the invention for a period greater than the statutorily prescribed
time.
Neither party disputes that Lough’s prototypes were in use before
the critical date. Thus, both parties agree that the issue presented on
appeal is whether the jury properly decided that the use of Lough’s
six prototypes in 1986, prior to the critical date, constituted experi-
mental use so as to negate the conclusion of public use.
”The use of an invention by the inventor himself, or of any other
person under his direction, by way of experiment, and in order to
bring the invention to perfection, has never been regarded as [a pub-
lic] use.” City of Elizabeth. This doctrine is based on the underlying
policy of providing an inventor time to determine if the invention is
suitable for its intended purpose, in eﬀect, to reduce the invention
160 CHAPTER 3. PATENT

to practice. See id. (”It is sometimes said that an inventor acquires
an undue advantage over the public by delaying to take out a patent,
but this cannot be said with justice when the delay is occasioned by
a bona ﬁde eﬀort to bring his invention to perfection, or to ascertain
whether it will answer the purpose intended.”). If a use is experi-
mental, it is not, as a ma er of law, a public use within the meaning
of section 102.
To determine whether a use is ”experimental,” a question of law,
the totality of the circumstances must be considered, including vari-
ous objective indicia of experimentation surrounding the use, such as
the number of prototypes and duration of testing, whether records or
progress reports were made concerning the testing, the existence of
a secrecy agreement between the patentee and the party performing
the testing, whether the patentee received compensation for the use
of the invention, and the extent of control the inventor maintained
over the testing.
In order to justify a determination that legally suﬃcient experi-
mentation has occurred, there must be present certain minimal indi-
cia. The framework might be quite formal, as may be expected when
large corporations conduct experiments, governed by contracts and
explicit wri en obligations. When individual inventors or small busi-
ness units are involved, however, less formal and seemingly casual
experiments can be expected. Such less formal experiments may be
deemed legally suﬃcient to avoid the public use bar, but only if they
demonstrate the presence of the same basic elements that are required
to validate any experimental program.
It cannot be reasonably disputed that Lough’s use of the invention
was not ”experimental” so as to negate a conclusion of public use. It
is true that Lough did not receive any compensation for the use of the
prototypes. He did not place the seal assembly on sale before apply-
ing for a patent. Lough’s lack of commercialization, however, is not
dispositive of the public use question in view of his failure to present
objective evidence of experimentation. Lough kept no records of the
alleged testing. Nor did he inspect the seal assemblies after they had
been installed by other mechanics. He provided the seal assemblies
to friends and acquaintances, but without any provision for follow-
up involvement by him in assessment of the events occurring during
the alleged experiments, and at least one seal was installed in a boat
that was later sold to strangers. Thus, Lough did not maintain any
supervision and control over the seals during the alleged testing.
Lough argues that other evidence supports a ﬁnding that his uses
were experimental, including his own testimony that the prototypes
were installed for experimental purposes and the fact that the proto-
types were used in such a manner that they were unlikely to be seen
by the public. However, the expression by an inventor of his subjec-
C. OWNERSHIP 161

tive intent to experiment, particularly after institution of litigation, is
generally of minimal value. n addition, the fact that the prototypes
were unlikely to be seen by the public does not support Lough’s po-
sition. As the Supreme Court stated in Egbert:
Some inventions are by their very character only capable
of being used where they cannot be seen or observed by
the public eye. An invention may consist of a lever or
spring, hidden in the running gear of a watch, or of a ra-
chet, shaft, or cogwheel covered from view in the recesses
of a machine for spinning or weaving. Nevertheless, if its
inventor sells a machine of which his invention forms a
part, and allows it to be used without restriction of any
kind, the use is a public one.
Moreover, those to whom he gave the prototypes constituted ”the
public,” in the absence of meaningful evidence of experimentation.
We therefore hold that the jury had no legal basis to conclude that
the uses of Lough’s prototypes were experimental and that the pro-
totypes were not in public use prior to the critical date. Our holding
is consistent with the policy underlying the experimental use nega-
tion, that of providing an inventor time to determine if the invention
is suitable for its intended purpose, i.e., to reduce the invention to
practice. Lough’s activities clearly were not consistent with that pol-
icy. We do not dispute that it may have been desirable in this case
for Lough to have had his prototypes installed by mechanics of vari-
ous levels of skill in boats that were exposed to diﬀerent conditions.
Moreover, Lough was free to test his invention in boats of friends
and acquaintances to further verify that his invention worked for its
intended purpose; however, Lough was required to maintain some
degree of control and feedback over those uses of the prototypes if
those tests were to negate public use.
4 "on sale"
The old § 102 used the phrase ”on sale,” as does the new § 102, so
the AIA would appear to have left the law here unchanged. But, as
it does with ”public use,” the PTO now takes the position that the
AIA no longer reaches secret commercialization. In its view, a secret
sale – for example, one subject to a conﬁdentiality agreement – is not
”available to the public” and thus does not count as prior art. Again,
commentators are split and the courts have not yet se led the ques-
tion. Bracket the issue for now; we still need to understand what it
means for something to be ”on sale” at all.

Manual of Patent Examination Procedure (Rev. Nov. 2013) § 2152.02(d)
On Sale
162 CHAPTER 3. PATENT

The pre-AIA case law indicates that on sale activity will bar
patentability if the claimed invention was: (1) the subject of a com-
mercial sale or oﬀer for sale, not primarily for experimental purposes;
Pfaff : 525 U.S. 55 (1998) and (2) ready for patenting. See Pfaﬀ v. Wells Elecs., Inc.. Contract law
principles apply in order to determine whether a commercial sale or
oﬀer for sale occurred.

§ 2133.03(b)
A sale is a contract between parties wherein the seller agrees to give
"On Sale" (describing pre-AIA law) and to pass rights of property in return for the buyer’s payment or
promise “to pay the seller for the things bought or sold.. A contract
for the sale of goods requires a concrete oﬀer and acceptance of that
oﬀer. See, e.g., Linear Tech. Corp. v. Micrel, Inc., 275 F.3d at 1040 (2001)
(Court held there was no sale where prospective purchaser submi ed
an order for goods at issue, but received an order acknowledgement
reading “will advise-not booked.” Prospective purchaser would un-
derstand that order was not accepted.).
An assignment or sale of the rights in the invention and potential
patent rights is not a sale of ”the invention.” In re Kollar, 286 F.3d 1326
(Fed. Cir. 2002), distinguishes licenses which trigger the on-sale bar
(e.g., a standard computer software license wherein the product is
just as immediately transferred to the licensee as if it were sold), from
licenses that merely grant rights to an invention which do not per se
trigger the on-sale bar (e.g., exclusive rights to market the invention
or potential patent rights).

2133.03(c)
The Supreme Court’s “ready for patenting” prong applies in the con-
The “Invention” (describing pre-AIA text of both the on sale and public use bars. “Ready for patenting,”
law) the second prong of the Pfaﬀ test, may be satisﬁed in at least two ways:
by proof of reduction to practice before the critical date; or by proof
that prior to the critical date the inventor had prepared drawings or
other descriptions of the invention that were suﬃciently speciﬁc to
enable a person skilled in the art to practice the invention. In Invit-
rogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d 1374 (Fed. Cir.
2005), The patent was held invalid because the invention for a com-
puter chip socket was “ready for patenting” when it was oﬀered for
sale more than one year prior to the application ﬁling date. Even
though the invention had not yet been reduced to practice, the manu-
facturer was able to produce the claimed computer chip sockets using
the inventor’s detailed drawings and speciﬁcations, and those sock-
ets contained all elements of invention claimed in the patent.
5 "otherwise available to the public"
The old § 102 had a closed list of prior art categories. The open-ended
language ”otherwise available to the public” is new with the AIA. In
C. OWNERSHIP 163

the PTO’s view, ”This ’catch-all’ provision permits decision makers
to focus on whether the disclosure was ’available to the public,’ rather
than on the means by which the claimed invention became available
to the public or whether a disclosure constitutes a ’printed publica-
tion’ or falls within another category of prior art.” MPEP § 2152.02(e)

b Anticipation

Manual of Patent Examination Procedure

A claimed invention may be rejected under 35 U.S.C. 102 when the
§ 2131
invention is anticipated (or is “not novel”) over a disclosure that is Anticipation -- Application of 35 U.S.C.
available as prior art. To anticipate a claim, the disclosure must teach § 102
every element of the claim.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single
prior art reference. “When a claim covers several structures or com-
positions, either generically or as alternatives, the claim is deemed
anticipated if any of the structures or compositions within the scope
of the claim is known in the prior art.” Brown v. 3M, 265 F.3d 1349
(Fed. Cir. 2001) (claim to a system for se ing a computer clock to
an oﬀset time to address the Year 2000 (Y2K) problem, applicable to
records with year date data in “at least one of two-digit, three-digit,
or four-digit” representations, was held anticipated by a system that
oﬀsets year dates in only two-digit formats). The elements must be
arranged as required by the claim, but this is not an ipsissimis verbis
test, i.e., identity of terminology is not required.

A generic claim cannot be allowed to an applicant if the prior art dis-
§ 2131.02
closes a species falling within the claimed genus. The species in that Genus-Species Situations
case will anticipate the genus.
A genus does not always anticipate a claim to a species within
the genus. However, when the species is clearly named, the species
claim is anticipated no ma er how many other species are addition-
ally named. See Ex parte A, 17 USPQ 2d 1716 (BPAI 1990) (”The tenth
edition of the Merck Index lists ten thousand compounds. In our view,
each and every one of those compounds is ‘described’ as that term is
used in [pre-AIA] 35 U.S.C. § 102(a), in that publication.”).
Whether a generic disclosure necessarily anticipates everything
within the genusdepends on the factual aspects of the speciﬁc disclo-
sure and the particular products at issue. How one of ordinary skill
in the art would understand the relative size of a genus or species in
a particular technology is of critical importance.
In In re Petering, the prior art disclosed a generic chemical for-
mula “wherein X, Y, Z, P, and R’- represent either hydrogen or alkyl
164 CHAPTER 3. PATENT

radicals, R a side chain containing an OH group.” The court held
that this formula, without more, could not anticipate a claim to 7-
methyl-9-[d, l’-ribityl]-isoalloxazine because the generic formula en-
compassed a vast number and perhaps even an inﬁnite number of
compounds. However, the reference also disclosed preferred sub-
stituents for X, Y, Z, P, R, and R. The court determined that this more
limited generic class consisted of about 20 compounds. The limited
number of compounds covered by the preferred formula in combi-
nation with the fact that the number of substituents was low at each
site, the ring positions were limited, and there was a large unchanging
structural nucleus, resulted in a ﬁnding that the reference suﬃciently
described “each of the various permutations here involved as fully as
if he had drawn each structural formula or had wri en each name.”
The claimed compound was 1 of these 20 compounds. Therefore, the
reference “described” the claimed compound and the reference antic-
ipated the claims.

§ 2121
When the reference relied on expressly anticipates or makes obvious
Prior Art; General Level of Operability all of the elements of the claimed invention, the reference is presumed
Required to Make a Prima Facie Case to be operable. Once such a reference is found, the burden is on ap-
plicant to provide facts rebu ing the presumption of operability.
A prior art reference provides an enabling disclosure and thus an-
ticipates a claimed invention if the reference describes the claimed in-
vention in suﬃcient detail to enable a person of ordinary skill in the
art to carry out the claimed invention; proof of eﬃcacy is not required
for a prior art reference to be enabling for purposes of anticipation.

Titanium Metals Corp. of America v. Banner
778 F.2d 775 (Fed. Cir. 1985)
This appeal is from an Order of the United States District Court for the
District of Columbia in a civil action brought pursuant to 35 U.S.C. §
145 against Donald W. Banner as Commissioner of Patents and Trade-
marks authorizing the Commissioner to issue to appellee a patent
containing claims 1, 2, and 3 of patent application serial No. 598,935
for “TITANIUM ALLOY.” The Commissioner has appealed. We re-
verse.
B
The inventors, Loren C. Covington and Howard R. Palmer, employ-
ees of appellee to whom they have assigned their invention and the
application thereon, ﬁled an application on March 29, 1974, serial
No. 455,964, to patent an alloy they developed. The application in-
volved in this appeal contains the three claims on appeal. The alloy is
made primarily of titanium (Ti) and contains small amounts of nickel
(Ni) and molybdenum (Mo) as alloying ingredients to give the alloy
C. OWNERSHIP 165

certain desirable properties, particularly corrosion resistance in hot
brine solutions, while retaining workability so that articles such as
tubing can be fabricated from it by rolling, welding and other tech-
niques. The inventors apparently also found that iron content should
be limited, iron being an undesired impurity rather than an alloying
ingredient. They determined the permissible ranges of the compo-
nents, above and below which the desired properties were not ob-
tained. A precise deﬁnition of the invention sought to be patented
is found in the claims, set forth below, claim 3 representing the pre-
ferred composition, it being understood, however, that no iron at all
would be even more preferred.
1. A titanium base alloy consisting essentially by weight of about
0.6
2. A titanium base alloy as set forth in Claim 1 having up to 0.1
3. A titanium base alloy as set forth in Claim 1 having 0.8
The examiner’s ﬁnal rejection, repeated in his Answer on appeal to
the Patent and Trademark Oﬃce (PTO) Board of Appeals (board),
was on the grounds that claims 1 and 2 are anticipated (fully met)
by, and claim 3 would have been obvious from, an article by Kal-
abukhova and Mikheyew, Investigation of the Mechanical Properties of
Ti-Mo-Ni Alloys, R M ₍M ₎ No. 3, pages 130-133
(1970) (in the court below and hereinafter called “the Russian article”)
under 35 U.S.C. §§ 102 and 103, respectively. The board aﬃrmed the
examiner’s rejection.
The Russian article is short (3 pages), highly technical, and con-
tains 10 graphs as part of the discussion. As its title indicates, it re-
lates to ternary Ti-Mo-Ni alloys, the subject of the application at bar.
The examiner and the board both found that it would disclose to one
skilled in the art an alloy on which at least claims 1 and 2 read, so that
those claims would not be allowable under the statute because of lack
of novelty of their subject ma er. Since the article does not specif-
ically disclose such an alloy in words, a li le thinking is required
about what it would disclose to one knowledgeable about Ti-Ni-Mo
alloys. The PTO did that thinking as follows:
Figure 1c [a graph] shows data for the ternary titanium al-
loy which contains Mo and Ni in the ratio of 1:3. Amongst
the actual points on the graph is one at 1% Mo + Ni. At
this point, the amounts of Mo and Ni would be 0.25% and
0.75% respectively. A similar point appears on the graph
shown in Figure 2 of the article.
Appellants do not deny that the data points are dis-
closed in the reference. In fact, the Hall aﬃdavit indi-
cates at least two speciﬁc points (at 1% and 1.25% Mo +
166 CHAPTER 3. PATENT

Ni) which would represent a description of alloys falling
within the scope of the instant claims.
On that basis, the board found that the claimed alloys were not new,
because they were disclosed in the prior art. It having been argued
that the Russian article contains no disclosure of corrosion-resistant
properties of any of the alloys, the board held: “The fact that a par-
ticular property or the end use for this alloy as contemplated by ap-
pellants was not recognized in the article is of no consequence.” It
therefore held the Russian article to be an anticipation, noting that
although the article does not discuss corrosion resistance, it does dis-
close other properties such as strength and ductility. The PTO further
points out that the authors of the reference must have made the alloys
to obtain the data points.
Being dissatisﬁed with the decision of the board, Titanium Metals
Corporation of America, as assignee of the Covington and Palmer ap-
plication, then brought an action in the District Court for the District
of Columbia against the Commissioner pursuant to 35 U.S.C. § 145.
The case came on for trial on January 24, 1980, before the Honor-
able John G. Penn and was concluded in two and a half hours. The tes-
timony of one witness was heard by the court, Dr. James C. Williams,
professor at Carnegie-Mellon University in Pi sburgh and an expert
in titanium metallurgy.
The court then concluded that claims 1-3 were not anticipated and
that claim 3 was wrongly rejected as directed to obvious subject mat-
ter. In the court’s view, Dr. Williams’ testimony tipped the scales in
favor of issuing a patent.
A. Anticipation, § 102
We are left in no doubt that the court was impressed by the totality of
the evidence that the applicants for patent had discovered or invented
and disclosed knowledge which is not to be found in the reference,
nor do we have any doubt about that ourselves. But those facts are
beside the point. The patent law imposes certain fundamental condi-
tions for patentability, paramount among them being the condition
that what is sought to be patented, as determined by the claims, be
new. The title of the application here involved is “Titanium Alloy,”
a composition of ma er. Surprisingly, in all of the evidence, nobody
discussed the key issue of whether the alloy was new, which is the
essence of the anticipation issue, including the expert Dr. Williams.
Plaintiﬀ’s counsel, bringing Dr. Williams’ testimony to its climax, af-
ter he had explained the nature of the ingredients, the alloys made
therefrom, and their superior corrosion resistance in hot brine, etc.,
repetitively asked him such questions as “Does the [Russian] article
direct you as one skilled in the art to a titanium alloy having nickel
C. OWNERSHIP 167

present in an amount between .6 and .9 percent molybdenum in an
amount between .2 and .4 percent?” (emphasis ours) followed by “Is
there anything mentioned in the article about corrosion resistance?”
Of course, the answers were emphatically negative. But this and like
testimony does not deal with the critical question: do claims 1 and
2, to which the questions obviously relate, read on or encompass an
alloy which was already known by reason of the disclosure of the
Russian article?
Section 102, the usual basis for rejection for lack of novelty or an-
ticipation, lays down certain principles for determining the novelty
[of an invention], among which are the provisions in § 102(a) and (b)
that the claimed invention has not been “described in a printed publi-
cation in this or a foreign country,” either (a) before the invention by
the applicant or (b) more than one year before the application date to
which he is entitled (strictly a “loss of right” provision similar to nov-
elty). Either provision applies in this case, the Russian article having
a date some 5 years prior to the ﬁling date and its status as “prior art”
not being questioned. The question, therefore, is whether claims 1
and 2 encompass and, if allowed, would enable plaintiﬀ-appellee to
exclude others from making, using, or selling an alloy described in
the Russian article.
To answer the question we need only turn to the aﬃdavit of James
A. Hall, a metallurgist employed by appellee’s TIMET Division, who
undertook to analyze the Russian article disclosure by calculating the
ingredient percentages shown in the graph data points, which he pre-
sented in tabular form. There are 15 items in his table. The second
item shows a titanium base alloy containing 0.25% by weight Mo and
0.75% Ni and this is squarely within the ranges of 0.2-0.4% Mo and
0.6-0.9% Ni of claims 1 and 2. As to that disclosed alloy of the prior
art, there can be no question that claims 1 and 2 read on it and would
be infringed by anyone making, using, or selling it. Therefore, the
statute prohibits a patent containing them. This seems to be a case
either of not adequately considering the novelty requirement of the
statute, the true meaning of the correlative term “anticipation,” or the
meaning of the claims.
By reason of the court’s quotations from cases holding that a ref-
erence is not an anticipation which does not enable one skilled in the
art to practice the claimed invention, it appears that the trial court
thought there was some deﬁciency in the Russian article on that score.
Enablement in this case involves only being able to make the alloy,
given the ingredients and their proportions without more. The evi-
dence here, however, clearly answers that question in two ways. Ap-
pellee’s own patent application does not undertake to tell anyone
how to make the alloy it describes and seeks to patent. It assumes
that those skilled in the art would know how. Secondly, appellee’s
168 CHAPTER 3. PATENT

expert, Dr. Williams, testiﬁed on cross examination that given the
alloy information in the Russian article, he would know how to pre-
pare the alloys “by at least three techniques.” Enablement is not a
problem in this case.
As we read the situation, the court was misled by the arguments
and evidence to the eﬀect that the inventors here found out and dis-
closed in their application many things that one cannot learn from
reading the Russian article and that this was suﬃcient in law to justify
granting them a patent for their contributions—such things as what
good corrosion resistance the claimed alloys have against hot brine,
which possibly was not known, and the range limits of the Ni and Mo
content, outside of which that resistance diminishes, which are teach-
ings of very useful information. These things the applicants teach the
art and the Russian article does not. But throughout the trial counsel
never came to grips with the real issues: (1) what do the claims cover
and (2) is what they cover new? Under the laws Congress wrote, they
must be considered. Congress has not seen ﬁt to permit the patenting
of an old alloy, known to others through a printed publication, by one
who has discovered its corrosion resistance or other useful properties,
or has found out to what extent one can modify the composition of
the alloy without losing such properties.
In hindsight, is there a claim that the
For all of the foregoing reasons, the court below commi ed clear
patentee's counsel could have drafted
that would have captured the newly-
error and legal error in authorizing the issuance of a patent on claims
discovered properties of the alloy (cor- 1 and 2 since, properly construed, they are anticipated under § 102
rosion resistance in hot brine) without by the Russian article which admi edly discloses an alloy on which
being anticipated by the Russian arti- these claims read.
cle?
B. Obviousness, § 103
Li le more need be said in support of the examiner’s rejection of claim
3, aﬃrmed by the board, on the ground that its more speciﬁc subject
ma er would have been obvious at the time the invention was made
from the knowledge disclosed in the reference.
As admi ed by appellee’s aﬃdavit evidence from James A. Hall,
the Russian article discloses two alloys having compositions very
close to that of claim 3, which is 0.3% Mo and 0.8% Ni, balance ti-
tanium. The two alloys in the prior art have 0.25% Mo-0.75% Ni and
0.31% Mo-0.94% Ni, respectively. The proportions are so close that
prima facie one skilled in the art would have expected them to have
the same properties. Appellee produced no evidence to rebut that
prima facie case. The speciﬁc alloy of claim 3 must therefore be con-
sidered to have been obvious from known alloys.
C. OWNERSHIP 169

c Priority
1 Old § 102
A person shall be entitled to a patent unless –
(a) the invention was [prior art by someone else] before the As hinted above, the categories of prior
invention thereof by the applicant for patent, or art under the old § 102 varied signif-
icantly from subsection to subsection.
(b) the invention was [prior art by anyone] more than one year It's not necessary to get into the de-
prior to the date of the application for patent, or tails to understand the modern prior-
(g) before such person’s invention thereof, the invention was ity rules. Some additional subsections
have been omitted. Old § 102 was ab-
made by another inventor who had not abandoned, sup- surdly intricate.
pressed, or concealed it. In determining priority of inven-
tion under this subsection, there shall be considered not
only the respective dates of conception and reduction to
practice of the invention, but also the reasonable diligence
of one who was ﬁrst to conceive and last to reduce to prac-
tice, from a time prior to conception by the other.

Pay a ention to the structural diﬀerences between old subsections
(a), (b), and (g). Old § 102(a) was a novelty provision: it denied a
patent where someone else engaged in activity showing that the ap-
plicant’s invention was not novel when it was supposedly ”invented.”
Old § 102(b) was a statutory bar: it denied a patent to an applicant
who waited too long to apply. And old § 102(g) was a truepriority
provision that dealt with the non-uncommon situation in which two
parties independently came up with the same invention and neither
of them generated prior art that would block the other’s application.
To apply old § 102(a), it was necessary to break down the inven-
tive process. The basic concepts were ”invention” (i.e. ”conception”),
”reduction to practice,” and ”reasonable diligence,” which the follow-
ing materials gloss.

Manual of Patent Examination Procedure

Pre-AIA 35 U.S.C. 102(g) issues such as conception, reduction to prac- § 2138
tice and diligence, while more commonly applied to interference mat- Pre-AIA 35 U.S.C. 102(g)
ters, also arise in other contexts.
Subsection (g) of pre-AIA 35 U.S.C. 1§ 02 is the basis of interfer-
ence practice for determining priority of invention between two par-
ties. An interference is an inter partes proceeding directed at deter-
mining the ﬁrst to invent as among the parties to the proceeding, in-
volving two or more pending applications naming diﬀerent inven-
tors or one or more pending applications and one or more unexpired
170 CHAPTER 3. PATENT

patents naming diﬀerent inventors. The United States [was] unusual
in having a ﬁrst to invent rather than a ﬁrst to ﬁle system. Upon con-
clusion of an interference, subject ma er claimed by the losing party
that was the basis of the interference is rejected under pre-AIA 35
U.S.C. 102(g).
Conception has been deﬁned as “the complete performance of the
mental part of the inventive act” and it is “the formation in the mind
of the inventor of a deﬁnite and permanent idea of the complete and
operative invention as it is thereafter to be applied in practice.” Con-
ception is established when the invention is made suﬃciently clear
to enable one skilled in the art to reduce it to practice without the ex-
ercise of extensive experimentation or the exercise of inventive skill.
Conception has also been deﬁned as a disclosure of an invention
which enables one skilled in the art to reduce the invention to a prac-
tical form without “exercise of the inventive faculty.” It is se led that
in establishing conception a party must show possession of every fea-
ture recited in the count, and that every limitation of the count must
have been known to the inventor at the time of the alleged conception.
Hitzeman: 243 F.3d 1345 (Fed. Cir. Conception must be proved by corroborating evidence. In Hi eman
2001) v. Ru er, the inventor’s “hope” that a genetically altered yeast would
produce antigen particles having the particle size and sedimentation
rates recited in the claims did not establish conception, since the in-
ventor did not show that he had a “deﬁnite and permanent under-
standing” as to whether or how, or a reasonable expectation that, the
yeast would produce the recited antigen particles. There must be a
contemporaneous recognition and appreciation of the invention for
there to be conception. On rare occasions conception and reduction
to practice occur simultaneously.
Reduction to practice may be an actual reduction or a constructive
reduction to practice which occurs when a patent application on the
claimed invention is ﬁled. The ﬁling of a patent application serves as
conception and constructive reduction to practice of the subject mat-
ter described in the application. Thus the inventor need not provide
evidence of either conception or actual reduction to practice when
relying on the content of the patent application.
In an interference proceeding, a party seeking to establish an ac-
tual reduction to practice must satisfy a two-prong test: (1) the party
constructed an embodiment or performed a process that met every
element of the interference count, and (2) the embodiment or process
operated for its intended purpose. Actual reduction to practice re-
quires a showing of the invention in a physical or tangible form that
shows every element of the count. For an actual reduction to practice,
the invention must have been suﬃciently tested to demonstrate that
it will work for its intended purpose, but it need not be in a commer-
cially satisfactory stage of development. If a device is so simple, and
C. OWNERSHIP 171

its purpose and eﬃcacy so obvious, construction alone is suﬃcient
to demonstrate workability. The invention must be recognized and
appreciated for a reduction to practice to occur. An inventor need not
understand precisely why his invention works in order to achieve an
actual reduction to practice.

Morway v. Bondi
203 F.2d 742 (CCPA 1953)
[Morway (appellants) conceived on or before April 12, 1945 and ﬁled
on December 27, 1946. Bondi (appellees) conceived on June 14, 1945
and ﬁled on October 31, 1945. Both parties were entitled to construc-
tive reduction to practice as of their ﬁling dates.]
Appellants contend that there was a reduction to practice between
January 31, 1945 and March 13, 1945. It is claimed that on January 30,
1945 Beerbower, one of the joint appellants herein, compounded a
grease containing Carbowax 1500, which grease is said to meet the is-
sue counts. That grease was subjected to a standard Norma-Hoﬀman
oxidation test. It is claimed that the results of this test were good, and
counsel for Morway et al. contends that there was an actual reduction
to practice when this grease was successfully tested.
Mr. Alan Beerbower, one of the appellants herein, testiﬁed on
cross-examination that the Norma-Hoﬀman bomb test merely mea-
sures resistance of the grease to oxidation under static or storage con-
ditions, but not under service conditions; and that he would not be
able to predict service life from Norma-Hoﬀman bomb results. In
view of the foregoing testimony by appellants’ expert witnesses, we
think it clear that a successful Norma-Hoﬀman laboratory test falls
far short of simulating actual service tests with suﬃcient closeness to
constitute a reduction to practice.
Thus, appellants, although ﬁrst to conceive, were last to reduce
to practice. If they are to prevail, they must aﬃrmatively establish
continuing and reasonable diligence in reducing to practice or rea-
sonable excuse for failure to act. Such diligence must be shown from
a date immediately prior to the time that Bondi conceived, on June
14, 1945, until reduction to practice by themselves as ﬁrst conceivers.
The record shows the following activities by appellants:
• On June 7, August 1, August 15, and September 28, 1945, greases
meeting the counts were prepared, and laboratory tests, such as
the A.S.T.M. penetration test, were conducted on them.
• On October 2, 1945, Miss O’Halloran conducted a Ford Wheel
Bearing Test on the grease prepared September 28.
• On December 26, 1945, a grease meeting the counts was pre-
pared, and laboratory tests conducted on it.
• The record then shows further activities (mainly aimed at possi-
ble commercial exploitation of the grease in issue) in February,
172 CHAPTER 3. PATENT

May, August, and November of 1946.
There was no activity at all between June 7 and August 1, 1945,
thereby creating a hiatus of one and one-half months right at the out-
set of the critical period when Bondi entered the ﬁeld. There is a fur-
ther hiatus of one and one-half months, during the early part of the
critical period, from August 15 to September 28, 1945, when there was
no activity at all by Morway et al. It seems manifest from the above
chronology that the activities by Morway et al. from early June 1945
to December 1946 were quite sporadic throughout that period.
In our opinion, the foregoing activities by appellants do not consti-
tute reasonable diligence in reducing the invention to practice during
the critical period.
Appellants have introduced testimony to the eﬀect that the joint
inventors herein and other assisting members of the research team
which developed the grease of the issue counts had many other
projects and duties. For example, there is testimony indicating that
Mr. Morway’s primary assignment at the time in question was the
development of a carbon black lubricant; and that Mr. Beerbower’s
primary assignment was the development of a continuous process for
manufacturing greases. When the party ﬁrst to conceive voluntarily
lays aside his inventive concept because he is engrossed in pursuit
of other projects, this is generally not an acceptable excuse for fail-
ure to act diligently in reducing to practice. Clearly there may be
circumstances creating exceptions to this rule, but we ﬁnd no such
circumstances in this record.
Morway et al. also seek to explain their lack of diligence by refer-
ence to wartime assignments which allegedly took ﬁrst call on their
time. In proper cases, war activities may reasonably excuse the ﬁrst
conceiver’s failure to act diligently, but lack of diligence is not ex-
cused by a mere assertion that the applicant was engaged in war work.
We fail to ﬁnd in the record before us adequate evidence of such war
activities as would excuse appellants’ lack of reasonable diligence.
2 New § 102
The AIA’s novelty provisions took eﬀect on March 16, 2013. They
apply to any applications ﬁled on or after that date. Applications
ﬁled before that date are examined under the old pre-AIA rules.

Patent Act

35 U.S.C. § 102
(a) A person shall be entitled to a patent unless—
Conditions for patentability; novelty (1) the claimed invention was [prior art] before the eﬀective
ﬁling date of the claimed invention; or
C. OWNERSHIP 173

(2) the claimed invention was described in a [published patent
or application that] names another inventor and was eﬀec-
tively ﬁled before the eﬀective ﬁling date of the claimed
invention.
(b) Exceptions. –
(1) A disclosure made 1 year or less before the eﬀective ﬁling
date of a claimed invention shall not be prior art to the
claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inven-
tor or by another who obtained the subject ma er dis-
closed directly or indirectly from the inventor or a joint
inventor; or
(B) the subject ma er disclosed had, before such disclo-
sure, been publicly disclosed by the inventor or a joint
inventor or another who obtained the subject ma er
disclosed directly or indirectly from the inventor or a
joint inventor.

Do you see why the passage of the AIA is described as taking the
United States from a ”ﬁrst to invent” system to a ”ﬁrst inventor to
ﬁle” system? And also, in view of Morway, why the AIA’s propo-
nents described it as simplifying interference practice and giving in-
ventors greater certainty about their rights? (Who would have won
in Morway under the AIA?)
The AIA’s proponents also described it as harmonizing the United
States with the rest of the world, where priority is assessed strictly on
a ﬁrst-to-ﬁle basis. The one-year grace period of new § 102(b)(1)(B),
however, is not typical of true ﬁrst-to-ﬁle systems.

Questions
1. Suppose that from 1960 to 1972, the Acme Corporation sold
the Bait-o-Matic, a grey egg-shaped plastic container contain-
ing sharp-grained sand with a grain size of 1/25 of an inch de-
signed to be used to immobilize earthworms. Which claims, if
any, of the Lukehart worm-immobilizing patent are invalid be-
cause they were anticipated by the Bait-o-Matic?
2. Ivan Inventor is working on a new ba ery design. Ivan has iden-
tiﬁed promising materials, but has not yet found a way to com-
bine them safely in a sealed container. Ivan is afraid that others
are working on a similar invention. What factors do Ivan and
his patent a orney need to consider in deciding when to ﬁle?
174 CHAPTER 3. PATENT

Pleistocene Park Problem
Two biotechnology ﬁrms, Crichton Industries and Spielberg Genetics,
have been a empting to clone a wooly mammoth (an elephant-like
mammal that became extinct about 3,500 years ago) from sca ered
preserved DNA fragments. The teams made only slow progress at
ﬁrst; the available mammoth DNA fragments were too short and too
numerous to combine into a complete DNA sequence using standard
laboratory techniques.
Then, on January 1, 2004, mathematician Rube Goldblum pub-
lished an academic paper describing eﬃcient ways to arrange books
in libraries. Crichton’s lead researcher read the paper on February 2,
2005 and realized that the method Goldblum was describing could
be used to arrange DNA fragments and compile complete DNA se-
quences.
Goldblum published (on March 3, 2006), a follow-up academic pa-
per explaining how to apply his book-sorting method to the problem
of DNA compilation. An executive at Spielberg read the paper on
April 4, 2007, and decided to try the technique on the wooly mam-
moth problem.
On May 5, 2013, in a Crichton laboratory, a modern elephant im-
planted with a wooly mammoth embryo using standard artiﬁcial in-
semination techniques gave birth to a live wooly mammoth. On June
6, 2013, a Spielberg elephant successfully gave birth to a wooly mam-
moth. Because both teams started from the same, publicly available
sets of wooly mammoth DNA fragments, their DNA sequences were
identical. The next day, June 7, 2013, Spielberg held a press confer-
ence to announce the birth; it showed video of the baby mammoth
and its scientists passed out CDs with the DNA sequence.
On July 12, 2013, Spielberg ﬁled a patent application claiming “a
wooly mammoth, having the DNA sequence …” Crichton ﬁled its
own patent application on August 20, 2013 with an identical claim.
Which application, if either, should the PTO allow, and why?
Would the answer be diﬀerent under the old § 102?

3 Nonobviousness

Patent Act

35 U.S.C. § 103
A patent for a claimed invention may not be obtained, notwithstand-
Conditions for patentability; non- ing that the claimed invention is not identically disclosed as set forth
obvious subject matter in section 102, 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 of the claimed inven-
tion to a person having ordinary skill in the art to which the claimed
C. OWNERSHIP 175

invention pertains. Patentability shall not be negated by the manner
in which the invention was made.

KSR Intern. Co. v. Teleflex Inc. 550 U.S. 398 (2007)
The patent at issue, United States Patent No. 6,237,565 B1, is enti-
tled “Adjustable Pedal Assembly With Electronic Thro le Control.”
Supplemental App. 1. The patentee is Steven J. Engelgau, and the
patent is referred to as “the Engelgau patent.” Claim 4 of the Engel-
gau patent describes a mechanism for combining an electronic sensor
with an adjustable automobile pedal so the pedal’s position can be
transmi ed to a computer that controls the thro le in the vehicle’s
engine.
In Graham v. John Deere Co., the Court set out a framework for Graham: 383 U.S. 1 (1966)
applying the statutory language of § 103:
Under § 103, the scope and content of the prior art are to
be determined; diﬀerences between the prior art and the
claims at issue are to be ascertained; and the level of ordi-
nary skill in the pertinent art resolved. Against this back-
ground the obviousness or nonobviousness of the subject
ma er is determined. Such secondary considerations as
commercial success, long felt but unsolved needs, failure
of others, etc., might be utilized to give light to the cir-
cumstances surrounding the origin of the subject ma er
sought to be patented.
If a court, or patent examiner, conducts this analysis and concludes
the claimed subject ma er was obvious, the claim is invalid under §
103.
Seeking to resolve the question of obviousness with more unifor-
mity and consistency, the Court of Appeals for the Federal Circuit
has employed an approach referred to by the parties as the “teach-
ing, suggestion, or motivation” test (TSM test), under which a patent
claim is only proved obvious if “some motivation or suggestion to
combine the prior art teachings” can be found in the prior art, the na-
ture of the problem, or the knowledge of a person having ordinary
skill in the art. KSR challenges that test, or at least its application in
this case.
I
A
In car engines without computer-controlled thro les, the accelerator
pedal interacts with the thro le via cable or other mechanical link.
The pedal arm acts as a lever rotating around a pivot point. In a cable-
actuated thro le control the rotation caused by pushing down the
176 CHAPTER 3. PATENT

pedal pulls a cable, which in turn pulls open valves in the carburetor
or fuel injection unit. The wider the valves open, the more fuel and air
are released, causing combustion to increase and the car to accelerate.
When the driver takes his foot oﬀ the pedal, the opposite occurs as the
cable is released and the valves slide closed.
In the 1990’s it became more common to install computers in cars
to control engine operation. Computer-controlled thro les open and
close valves in response to electronic signals, not through force trans-
ferred from the pedal by a mechanical link. Constant, delicate ad-
justments of air and fuel mixture are possible. The computer’s rapid
processing of factors beyond the pedal’s position improves fuel eﬃ-
ciency and engine performance.
For a computer-controlled thro le to respond to a driver’s oper-
ation of the car, the computer must know what is happening with
the pedal. A cable or mechanical link does not suﬃce for this pur-
pose; at some point, an electronic sensor is necessary to translate the
mechanical operation into digital data the computer can understand.
Before discussing sensors further we turn to the mechanical de-
sign of the pedal itself. In the traditional design a pedal can be pushed
down or released but cannot have its position in the footwell adjusted
by sliding the pedal forward or back. As a result, a driver who wishes
to be closer or farther from the pedal must either reposition himself
in the driver’s seat or move the seat in some way. In cars with deep
footwells these are imperfect solutions for drivers of smaller stature.
To solve the problem, inventors, beginning in the 1970’s, designed
pedals that could be adjusted to change their location in the footwell.
Important for this case are two adjustable pedals disclosed in U.S.
Patent Nos. 5,010,782 (ﬁled July 28, 1989) (Asano) and 5,460,061 (ﬁled
Sept. 17, 1993) (Redding). The Asano patent reveals a support struc-
ture that houses the pedal so that even when the pedal location is ad-
justed relative to the driver, one of the pedal’s pivot points stays ﬁxed.
The pedal is also designed so that the force necessary to push the
pedal down is the same regardless of adjustments to its location. The
Redding patent reveals a diﬀerent, sliding mechanism where both
the pedal and the pivot point are adjusted.
We return to sensors. Well before Engelgau applied for his chal-
lenged patent, some inventors had obtained patents involving elec-
tronic pedal sensors for computer-controlled thro les. These inven-
tions, such as the device disclosed in U.S. Patent No. 5,241,936 (ﬁled
Sept. 9, 1991) (‘936), taught that it was preferable to detect the pedal’s
position in the pedal assembly, not in the engine. The ‘936 patent dis-
closed a pedal with an electronic sensor on a pivot point in the pedal
assembly. U.S. Patent No. 5,063,811 (ﬁled July 9, 1990) (Smith) taught
that to prevent the wires connecting the sensor to the computer from
chaﬁng and wearing out, and to avoid grime and damage from the
C. OWNERSHIP 177

driver’s foot, the sensor should be put on a ﬁxed part of the pedal
assembly rather than in or on the pedal’s footpad.
In addition to patents for pedals with integrated sensors inventors
obtained patents for self-contained modular sensors. A modular sen-
sor is designed independently of a given pedal so that it can be taken
oﬀ the shelf and a ached to mechanical pedals of various sorts, en-
abling the pedals to be used in automobiles with computer-controlled
thro les. One such sensor was disclosed in U.S. Patent No. (ﬁled Dec.
18, 1992) (‘068). In 1994, Chevrolet manufactured a line of trucks us-
ing modular sensors a ached to the pedal support bracket, adjacent
to the pedal and engaged with the pivot shaft about which the pedal
rotates in operation.
The prior art contained patents involving the placement of sensors
on adjustable pedals as well. For example, U.S. Patent No. 5,819,593
(ﬁled Aug. 17, 1995) (Rixon) discloses an adjustable pedal assembly
with an electronic sensor for detecting the pedal’s position. In the
Rixon pedal the sensor is located in the pedal footpad. The Rixon
pedal was known to suﬀer from wire chaﬁng when the pedal was
depressed and released.
This short account of pedal and sensor technology leads to the
instant case.
B
Engelgau ﬁled the patent application on August 22, 2000 as a con-
tinuation of a previous application for U.S. Patent No. 6,109,241,
which was ﬁled on January 26, 1999. He has sworn he invented the
patent’s subject ma er on February 14, 1998. The Engelgau patent
discloses an adjustable electronic pedal described in the speciﬁcation
as a “simpliﬁed vehicle control pedal assembly that is less expensive,
and which uses fewer parts and is easier to package within the vehi-
cle.” Claim 4 of the patent, at issue here, describes:
A vehicle control pedal apparatus comprising:
a support adapted to be mounted to a vehicle structure;
an adjustable pedal assembly having a pedal arm move-
able in for[e] and aft directions with respect to said sup-
port;
a pivot for pivotally supporting said adjustable pedal as-
sembly with respect to said support and deﬁning a pivot
axis; and
an electronic control a ached to said support for control-
ling a vehicle system;
said apparatus characterized by said electronic control be-
ing responsive to said pivot for providing a signal that cor-
178 CHAPTER 3. PATENT

responds to pedal arm position as said pedal arm pivots
about said pivot axis between rest and applied positions
wherein the position of said pivot remains constant while
said pedal arm moves in fore and aft directions with re-
spect to said pivot.
We agree with the District Court that the claim discloses “a position-
adjustable pedal assembly with an electronic pedal position sensor
a ached to the support member of the pedal assembly. A aching
the sensor to the support member allows the sensor to remain in a
ﬁxed position while the driver adjusts the pedal.”
Before issuing the Engelgau patent the U.S. Patent and Trademark
Oﬃce (PTO) rejected one of the patent claims that was similar to, but
broader than, the present claim 4. The claim did not include the re-
quirement that the sensor be placed on a ﬁxed pivot point. The PTO
concluded the claim was an obvious combination of the prior art dis-
closed in Redding and Smith, explaining:
Since the prior art references are from the ﬁeld of en-
deavor, the purpose disclosed would have been recog-
nized in the pertinent art of Redding. Therefore it would
have been obvious to provide the device of Redding with
the means a ached to a support member as taught by
Smith.
In other words Redding provided an example of an adjustable pedal
and Smith explained how to mount a sensor on a pedal’s support
structure, and the rejected patent claim merely put these two teach-
ings together.
Although the broader claim was rejected, claim 4 was later al-
lowed because it included the limitation of a ﬁxed pivot point, which
distinguished the design from Redding’s. Engelgau had not included
Asano among the prior art references, and Asano was not mentioned
in the patent’s prosecution. Thus, the PTO did not have before it an
adjustable pedal with a ﬁxed pivot point. The patent issued on May
29, 2001 and was assigned to Teleﬂex.
C
The District Court determined, in light of the expert testimony and
the parties’ stipulations, that the level of ordinary skill in pedal de-
sign was “an undergraduate degree in mechanical engineering (or an
equivalent amount of industry experience) and familiarity with pedal
control systems for vehicles.” Following Graham’s direction, the court
compared the teachings of the prior art to the claims of Engelgau. It
found “li le diﬀerence.” Asano taught everything contained in claim
4 except the use of a sensor to detect the pedal’s position and transmit
it to the computer controlling the thro le. That additional aspect was
C. OWNERSHIP 179

revealed in sources such as the ‘068 patent and the sensors used by
Chevrolet.
Under the controlling cases from the Court of Appeals for the Fed-
eral Circuit, however, the District Court was not permi ed to stop
there. The court was required also to apply the TSM test. The Dis-
trict Court held KSR had satisﬁed the test. It reasoned (1) the state
of the industry would lead inevitably to combinations of electronic
sensors and adjustable pedals, (2) Rixon provided the basis for these
developments, and (3) Smith taught a solution to the wire chaﬁng
problems in Rixon, namely locating the sensor on the ﬁxed structure
of the pedal. This could lead to the combination of Asano, or a pedal
like it, with a pedal position sensor.
The conclusion that the Engelgau design was obvious was sup-
ported, in the District Court’s view, by the PTO’s rejection of the
broader version of claim 4. Had Engelgau included Asano in his
patent application, it reasoned, the PTO would have found claim 4
to be an obvious combination of Asano and Smith, as it had found
the broader version an obvious combination of Redding and Smith.
As a ﬁnal ma er, the District Court held that the secondary factor
of Teleﬂex’s commercial success with pedals based on Engelgau’s de-
sign did not alter its conclusion.
With principal reliance on the TSM test, the Court of Appeals re-
versed. It ruled the District Court had not been strict enough in apply-
ing the test, having failed to make “ﬁndings as to the speciﬁc under-
standing or principle within the knowledge of a skilled artisan that
would have motivated one with no knowledge of the invention to at-
tach an electronic control to the support bracket of the Asano assem-
bly.” The Court of Appeals held that the District Court was incorrect
that the nature of the problem to be solved satisﬁed this requirement
because unless the “prior art references address[ed] the precise prob-
lem that the patentee was trying to solve,” the problem would not
motivate an inventor to look at those references.
Here, the Court of Appeals found, the Asano pedal was designed
to solve the “constant ratio problem” – that is, to ensure that the
force required to depress the pedal is the same no ma er how the
pedal is adjusted—whereas Engelgau sought to provide a simpler,
smaller, cheaper adjustable electronic pedal. As for Rixon, the court
explained, that pedal suﬀered from the problem of wire chaﬁng but
was not designed to solve it. In the court’s view Rixon did not teach
anything helpful to Engelgau’s purpose. Smith, in turn, did not relate
to adjustable pedals and did not “necessarily go to the issue of mo-
tivation to a ach the electronic control on the support bracket of the
pedal assembly.” When the patents were interpreted in this way, the
Court of Appeals held, they would not have led a person of ordinary
skill to put a sensor on the sort of pedal described in Asano.
180 CHAPTER 3. PATENT

That it might have been obvious to try the combination of Asano
and a sensor was likewise irrelevant, in the court’s view, because ”’ob-
vious to try’ has long been held not to constitute obviousness.”
II
A
We begin by rejecting the rigid approach of the Court of Appeals.
Throughout this Court’s engagement with the question of obvious-
ness, our cases have set forth an expansive and ﬂexible approach in-
consistent with the way the Court of Appeals applied its TSM test
here. To be sure, Graham recognized the need for “uniformity and
deﬁniteness.” Yet the principles laid down in Graham reaﬃrmed the
Hotchkiss: 52 U.S. 248 (1851) “functional approach” of Hotchkiss v. Greenwood.
Neither the enactment of § 103 nor the analysis in Graham dis-
turbed this Court’s earlier instructions concerning the need for cau-
tion in granting a patent based on the combination of elements found
in the prior art. For over a half century, the Court has held that
a patent for a combination which only unites old elements with no
change in their respective functions obviously withdraws what is al-
ready known into the ﬁeld of its monopoly and diminishes the re-
sources available to skillful men. This is a principal reason for declin-
ing to allow patents for what is obvious. The combination of familiar
elements according to known methods is likely to be obvious when
it does no more than yield predictable results. Three cases decided
after Graham illustrate the application of this doctrine.
Adams: 383 U.S. 39 (1966) In United States v. Adams, a companion case to Graham, the Court
considered the obviousness of a “wet ba ery” that varied from prior
designs in two ways: It contained water, rather than the acids con-
ventionally employed in storage ba eries; and its electrodes were
magnesium and cuprous chloride, rather than zinc and silver chlo-
ride. The Court recognized that when a patent claims a structure al-
ready known in the prior art that is altered by the mere substitution
of one element for another known in the ﬁeld, the combination must
do more than yield a predictable result. It nevertheless rejected the
Government’s claim that Adams’s ba ery was obvious. The Court re-
lied upon the corollary principle that when the prior art teaches away
from combining certain known elements, discovery of a successful
means of combining them is more likely to be nonobvious. When
Adams designed his ba ery, the prior art warned that risks were in-
volved in using the types of electrodes he employed. The fact that the
elements worked together in an unexpected and fruitful manner sup-
ported the conclusion that Adams’s design was not obvious to those
Anderson's Black-Rock: 396 U.S. 57 skilled in the art.
(1969) In Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., the Court
C. OWNERSHIP 181

elaborated on this approach. The subject ma er of the patent be-
fore the Court was a device combining two pre-existing elements: a
radiant-heat burner and a paving machine. The device, the Court con-
cluded, did not create some new synergy: The radiant-heat burner
functioned just as a burner was expected to function; and the paving
machine did the same. The two in combination did no more than
they would in separate, sequential operation. In those circumstances,
“while the combination of old elements performed a useful function,
it added nothing to the nature and quality of the radiant-heat burner
already patented,” and the patent failed under § 103. Compare Adams and Anderson’s Black-
Finally, in Sakraida v. Ag Pro, Inc., the Court derived from the Rock What makes the two cases distin-
guishable
precedents the conclusion that when a patent “simply arranges old
Sakraida: 425 U.S. 273 (1976)
elements with each performing the same function it had been known
to perform” and yields no more than one would expect from such an
arrangement, the combination is obvious..
The principles underlying these cases are instructive when the
question is whether a patent claiming the combination of elements
of prior art is obvious. When a work is available in one ﬁeld of en-
deavor, design incentives and other market forces can prompt vari-
ations of it, either in the same ﬁeld or a diﬀerent one. If a person
of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a technique has been
used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same
way, using the technique is obvious unless its actual application is
beyond his or her skill. Sakraida and Anderson’s Black-Rock are illus-
trative – a court must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions.
Following these principles may be more diﬃcult in other cases
than it is here because the claimed subject ma er may involve more
than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready
for the improvement. Often, it will be necessary for a court to look
to interrelated teachings of multiple patents; the eﬀects of demands
known to the design community or present in the marketplace; and
the background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an appar-
ent reason to combine the known elements in the fashion claimed by
the patent at issue. To facilitate review, this analysis should be made
explicit. As our precedents make clear, however, the analysis need
not seek out precise teachings directed to the speciﬁc subject ma er
of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would em-
ploy.
182 CHAPTER 3. PATENT

B
When it ﬁrst established the requirement of demonstrating a teach-
ing, suggestion, or motivation to combine known elements in order
to show that the combination is obvious, the Court of Customs and
Patent Appeals captured a helpful insight. As is clear from cases such
as Adams, a patent composed of several elements is not proved obvi-
ous merely by demonstrating that each of its elements was, indepen-
dently, known in the prior art. Although common sense directs one
to look with care at a patent application that claims as innovation
the combination of two known devices according to their established
functions, it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant ﬁeld to combine
the elements in the way the claimed new invention does. This is so
because inventions in most, if not all, instances rely upon building
blocks long since uncovered, and claimed discoveries almost of neces-
sity will be combinations of what, in some sense, is already known.
Helpful insights, however, need not become rigid and mandatory
formulas; and when it is so applied, the TSM test is incompatible with
our precedents. The obviousness analysis cannot be conﬁned by a
formalistic conception of the words teaching, suggestion, and moti-
vation, or by overemphasis on the importance of published articles
and the explicit content of issued patents. The diversity of inventive
pursuits and of modern technology counsels against limiting the anal-
ysis in this way. In many ﬁelds it may be that there is li le discussion
of obvious techniques or combinations, and it often may be the case
that market demand, rather than scientiﬁc literature, will drive de-
sign trends. Granting patent protection to advances that would occur
in the ordinary course without real innovation retards progress and
may, in the case of patents combining previously known elements,
deprive prior inventions of their value or utility.
C
One of the ways in which a patent’s subject ma er can be proved ob-
vious is by noting that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by
the patent’s claims.
The ﬁrst error of the Court of Appeals in this case was to foreclose
this reasoning by holding that courts and patent examiners should
look only to the problem the patentee was trying to solve. The Court
of Appeals failed to recognize that the problem motivating the paten-
tee may be only one of many addressed by the patent’s subject mat-
ter. The question is not whether the combination was obvious to
the patentee but whether the combination was obvious to a person
with ordinary skill in the art. Under the correct analysis, any need
C. OWNERSHIP 183

or problem known in the ﬁeld of endeavor at the time of invention
and addressed by the patent can provide a reason for combining the
elements in the manner claimed.
The second error of the Court of Appeals lay in its assumption
that a person of ordinary skill a empting to solve a problem will be
led only to those elements of prior art designed to solve the same
problem. The primary purpose of Asano was solving the constant
ratio problem; so, the court concluded, an inventor considering how
to put a sensor on an adjustable pedal would have no reason to con-
sider pu ing it on the Asano pedal. Common sense teaches, however, In cases in which “common sense” is used
that familiar items may have obvious uses beyond their primary pur- to supply a missing limitation, as dis-
tinct from a motivation to combine, our
poses, and in many cases a person of ordinary skill will be able to
search for a reasoned basis for resort to
ﬁt the teachings of multiple patents together like pieces of a puzzle. common sense must be searching. Ap-
Regardless of Asano’s primary purpose, the design provided an obvi- pellees have failed to show why it would
ous example of an adjustable pedal with a ﬁxed pivot point; and the be common sense for the “Add to address
prior art was replete with patents indicating that a ﬁxed pivot point book” function to operate by first search-
ing for entries with the same telephone
was an ideal mount for a sensor. The idea that a designer hoping
number.
to make an adjustable electronic pedal would ignore Asano because Arendi S.A.R.I. v. Apple, Inc., No. 2015-
Asano was designed to solve the constant ratio problem makes li le 2073, --- F.3d --- (Fed. Cir Aug. 10, 2016).
sense. A person of ordinary skill is also a person of ordinary creativ- SRSLY?
ity, not an automaton.
The same constricted analysis led the Court of Appeals to con-
clude, in error, that a patent claim cannot be proved obvious merely
by showing that the combination of elements was obvious to try.
When there is a design need or market pressure to solve a problem
and there are a ﬁnite number of identiﬁed, predictable solutions, a
person of ordinary skill has good reason to pursue the known op-
tions within his or her technical grasp. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill
and common sense. In that instance the fact that a combination was
obvious to try might show that it was obvious under § 103.
III
When we apply the standards we have explained to the instant facts,
claim 4 must be found obvious.
B
The District Court was correct to conclude that, as of the time Engel-
gau designed the subject ma er in claim 4, it was obvious to a person
of ordinary skill to combine Asano with a pivot-mounted pedal po-
sition sensor. There then existed a marketplace that created a strong
incentive to convert mechanical pedals to electronic pedals, and the
prior art taught a number of methods for achieving this advance. The
Court of Appeals considered the issue too narrowly by, in eﬀect, ask-
ing whether a pedal designer writing on a blank slate would have
184 CHAPTER 3. PATENT

chosen both Asano and a modular sensor similar to the ones used in
the Chevrolet truckline and disclosed in the ‘068 patent. The proper
question to have asked was whether a pedal designer of ordinary skill,
facing the wide range of needs created by developments in the ﬁeld
of endeavor, would have seen a beneﬁt to upgrading Asano with a
sensor.
In automotive design, as in many other ﬁelds, the interaction of
multiple components means that changing one component often re-
quires the others to be modiﬁed as well. Technological developments
made it clear that engines using computer-controlled thro les would
become standard. As a result, designers might have decided to de-
sign new pedals from scratch; but they also would have had reason
to make pre-existing pedals work with the new engines. Indeed, up-
grading its own pre-existing model led KSR to design the pedal now
accused of infringing the Engelgau patent.
For a designer starting with Asano, the question was where to
a ach the sensor. The consequent legal question, then, is whether
a pedal designer of ordinary skill starting with Asano would have
found it obvious to put the sensor on a ﬁxed pivot point. The prior art
discussed above leads us to the conclusion that a aching the sensor
where both KSR and Engelgau put it would have been obvious to a
person of ordinary skill.
The ‘936 patent taught the utility of pu ing the sensor on the pedal
device, not in the engine. Smith, in turn, explained to put the sensor
not on the pedal’s footpad but instead on its support structure. And
from the known wire-chaﬁng problems of Rixon, and Smith’s teach-
ing that “the pedal assemblies must not precipitate any motion in the
connecting wires,” the designer would know to place the sensor on
a nonmoving part of the pedal structure. The most obvious nonmov-
ing point on the structure from which a sensor can easily detect the
pedal’s position is a pivot point. The designer, accordingly, would
follow Smith in mounting the sensor on a pivot, thereby designing
an adjustable electronic pedal covered by claim 4.
Just as it was possible to begin with the objective to upgrade
Asano to work with a computer-controlled thro le, so too was it pos-
sible to take an adjustable electronic pedal like Rixon and seek an
improvement that would avoid the wire-chaﬁng problem. Follow-
ing similar steps to those just explained, a designer would learn from
Smith to avoid sensor movement and would come, thereby, to Asano
because Asano disclosed an adjustable pedal with a ﬁxed pivot.
The Bud Light Foozie consists of a foam
Like the District Court, ﬁnally, we conclude Teleﬂex has shown no
can holder attached to a foam we’re-
number-one finger. Obvious? What
secondary factors to dislodge the determination that claim 4 is obvi-
about a Sawzie -- a foam can holder at- ous. Proper application of Graham and our other precedents to these
tached to a rotary saw? facts therefore leads to the conclusion that claim 4 encompassed obvi-
ous subject ma er. As a result, the claim fails to meet the requirement
C. OWNERSHIP 185

of § 103.
IV
We build and create by bringing to the tangible and palpable real-
ity around us new works based on instinct, simple logic, ordinary
inferences, extraordinary ideas, and sometimes even genius. These
advances, once part of our shared knowledge, deﬁne a new thresh-
old from which innovation starts once more. And as progress be-
ginning from higher levels of achievement is expected in the normal
course, the results of ordinary innovation are not the subject of exclu-
sive rights under the patent laws. Were it otherwise patents might
stiﬂe, rather than promote, the progress of useful arts.

In re Clay
Clay’s invention, assigned to Marathon Oil Company, is a process 966 F.2d 656 (Fed. Cir. 1992)
for storing reﬁned liquid hydrocarbon product in a storage tank hav-
ing a dead volume between the tank bo om and its outlet port. The
process involves preparing a gelation solution which gels after it is
placed in the tank’s dead volume; the gel can easily be removed by
adding to the tank a gel-degrading agent such as hydrogen peroxide.
Two prior art references were applied against the claims on ap-
peal. They were U.S. Patent 4,664,294 (Hetherington), which dis-
closes an apparatus for displacing dead space liquid using impervi-
ous bladders, or large bags, formed with ﬂexible membranes; and
U.S. Patent 4,683,949 (Sydansk), also assigned to Clay’s assignee,
Marathon Oil Company, which discloses a process for reducing the
permeability of hydrocarbon-bearing formations and thus improving
oil production, using a gel similar to that in Clay’s invention.
The Board agreed with the examiner that, although neither ref-
erence alone describes Clay’s invention, Hetherington and Sydansk
combined support a conclusion of obviousness. It held that one
skilled in the art would glean from Hetherington that Clay’s inven-
tion “was appreciated in the prior art and solutions to that problem
generally involved ﬁlling the dead space with something.”
The Board also held that Sydansk would have provided one
skilled in the art with information that a gelation system would have
been impervious to hydrocarbons once the system gelled. The Board
combined the references, ﬁnding that the “cavities” ﬁlled by Sydansk
are suﬃciently similar to the “volume or void space” being ﬁlled by
Hetherington for one of ordinary skill to have recognized the appli-
cability of the gel to Hetherington.
DISCUSSION
The issue presented in this appeal is whether the Board’s conclusion
was correct that Clay’s invention would have been obvious from the
combined teachings of Hetherington and Sydansk.
186 CHAPTER 3. PATENT

A prerequisite to making this ﬁnding is determining what is
“prior art.” Although § 103 does not, by its terms, deﬁne the “art to
which [the] subject ma er [sought to be patented] pertains,” this de-
termination is frequently couched in terms of whether the art is anal-
ogous or not, i.e., whether the art is too remote to be treated as prior
art. Clay argues that the claims at issue were improperly rejected over
Hetherington and Sydansk, because Sydansk is nonanalogous art.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same ﬁeld of endeavor,
regardless of the problem addressed, and (2) if the reference is not
within the ﬁeld of the inventor’s endeavor, whether the reference still
is reasonably pertinent to the particular problem with which the in-
ventor is involved.
The Board found Sydansk to be within the ﬁeld of Clay’s en-
deavor because, as the Examiner stated, “one of ordinary skill in the
art would certainly glean from Sydansk that the rigid gel as taught
therein would have a number of applications within the manipula-
tion of the storage and processing of hydrocarbon liquids and that the
gel as taught in Sydansk would be expected to function in a similar
manner as the bladders in the Hetherington patent.” These ﬁndings
are clearly erroneous.
The PTO argues that Sydansk and Clay’s inventions are part of
a common endeavor – “maximizing withdrawal of petroleum stored
in petroleum reservoirs.” However, Sydansk cannot be considered
to be within Clay’s ﬁeld of endeavor merely because both relate to
the petroleum industry. Sydansk teaches the use of a gel in uncon-
ﬁned and irregular volumes within generally underground natural
oil-bearing formations to channel ﬂow in a desired direction; Clay
teaches the introduction of gel to the conﬁned dead volume of a man-
made storage tank. The Sydansk process operates in extreme condi-
tions, with petroleum formation temperatures as high as 115°C and
at signiﬁcant well bore pressures; Clay’s process apparently operates
at ambient temperature and atmospheric pressure. Clay’s ﬁeld of en-
deavor is the storage of reﬁned liquid hydrocarbons. The ﬁeld of en-
deavor of Sydansk’s invention, on the other hand, is the extraction of
crude petroleum. The Board clearly erred in considering Sydansk to
be within the same ﬁeld of endeavor as Clay’s.
Even though the art disclosed in Sydansk is not within Clay’s ﬁeld
of endeavor, the reference may still properly be combined with Het-
herington if it is reasonably pertinent to the problem Clay a empts to
solve. A reference is reasonably pertinent if, even though it may be in
a diﬀerent ﬁeld from that of the inventor’s endeavor, it is one which,
because of the ma er with which it deals, logically would have com-
mended itself to an inventor’s a ention in considering his problem.
Thus, the purposes of both the invention and the prior art are impor-
C. OWNERSHIP 187

tant in determining whether the reference is reasonably pertinent to
the problem the invention a empts to solve. If a reference disclosure
has the same purpose as the claimed invention, the reference relates
to the same problem, and that fact supports use of that reference in
an obviousness rejection. An inventor may well have been motivated
to consider the reference when making his invention. If it is directed
to a diﬀerent purpose, the inventor would accordingly have had less
motivation or occasion to consider it.
Sydansk’s gel treatment of underground formations functions to
ﬁll anomalies1 so as to improve ﬂow proﬁles and sweep eﬃciencies
of injection and production ﬂuids through a formation, while Clay’s
gel functions to displace liquid product from the dead volume of a
storage tank. Sydansk is concerned with plugging formation anoma-
lies so that ﬂuid is subsequently diverted by the gel into the formation
matrix, thereby forcing bypassed oil contained in the matrix toward a
production well. Sydansk is faced with the problem of recovering oil
from rock, i.e., from a matrix which is porous, permeable sedimentary
rock of a subterranean formation where water has channeled through
formation anomalies and bypassed oil present in the matrix. Such a
problem is not reasonably pertinent to the particular problem with
which Clay was involved – preventing loss of stored product to tank
dead volume while preventing contamination of such product.
A person having ordinary skill in the art would not reasonably
have expected to solve the problem of dead volume in tanks for stor-
ing reﬁned petroleum by considering a reference dealing with plug-
ging underground formation anomalies. The Board’s ﬁnding to the
contrary is clearly erroneous. Since Sydansk is non-analogous art, the
rejection over Hetherington in view of Sydansk cannot be sustained.

KSR Problem
In relevant part, claim 4 of the patent in suit in KSR comprises:
• A pedal
• that is adjustable
• and has a ﬁxed pivot,
• and a sensor
• that is in the pedal
• and is and mounted on a ﬁxed position
The Court had before it a number of pieces of prior art, and had
1
Sydansk refers to an anomaly, one of two general region types in an oil-bearing
geological formation, as “a volume or void space [e.g., ‘streaks, fractures, fracture
networks, vugs, solution channels, caverns, washouts, cavities, etc.’] in the forma-
tion having very high permeability relative to the matrix [the other region type,
consisting of homogeneous porous rock].”
188 CHAPTER 3. PATENT

to decide whether claim 4 was obvious in light of them. Please look
closely at the Court’s descriptions of the following prior art:
• Asano
• Redding
• ‘936
• Smith
• ‘068
• Certain 1994 Chevrolet trucks
• Rixon
Which of the characteristics of claim 4, as listed above, do each of
these prior art references disclose? Make a chart. What improvements,
if any, does each prior art reference suggest to a person having ordi-
nary skill in the art. Using your chart as a guide, explain whether the
Supreme Court’s analysis is persuasive.

D Infringement: Similarity

76 U. Chi. L. Rev. 719 (2009)
Jeanne C. Fromer
Claiming Intellectual Property
To claim the set of things protected by an intellectual property right,
one might be required to delineate to the public the set’s bounds so
that a third party could determine whether any particular embodi-
ment is a set member thus protected by the right. This sort of claiming
is known as peripheral claiming.” Alternatively, one might publicly
describe only some members of the set, which are clearly protected
under the right, and use them to determine whether other items are
similar enough to the enumerated members to fall also within the
same right. This sort of claiming is known as central claiming, in that
the rightsholder describes the central, or prototypical, set members,
but the right tends to cover a broader, similar set of items.
There is another important dimension on which claiming can
vary, which until now has not been readily appreciated. Either pe-
ripheral or central claiming can be done by exemplar or by charac-
teristic. Claiming by exemplar entails enumerating particular mem-
bers of the set of protected embodiments. In the case of peripheral
claiming by exemplar, one would enumerate each set member, while
for central claiming by exemplar, one would catalog only some set
members. Claiming by characteristic, on the other hand, requires a
description of the essential properties of the set’s members. For pe-
ripheral claiming by characteristic, one would describe the necessary
and suﬃcient features common to all members of the set of protected
embodiments. And for central claiming by characteristic, one would
D. INFRINGEMENT: SIMILARITY 189

express the features common to at least some central members of the
set of protected embodiments. Claiming by exemplar and by charac-
teristic can be seen as opposing points on a spectrum of how much
distillation of the actual works’ characteristics is necessary.

A statutory change in 1870 – requiring a patent applicant to ”par-
ticularly point out and distinctly claim the part, improvement, or
combination which he claims as his invention or discovery” – oﬃ-
cially (though gradually) brought peripheral claiming, almost always
by characteristic, to American patent law. The Supreme Court held
that, pursuant to this statutory language, the articulated bounds of
the patent claim would govern the scope of the set of things pro-
tected by the patent right. Validity and infringement would thus be
measured by construing the claim’s bounds and then determining
whether particular embodiments fell within those bounds. Charac-
teristic peripheral claiming- – in contrast to central claiming (by char-
acteristic or exemplar) – thus did not require courts to decide which
of an invention’s properties were essential, as the patentee would de-
lineate these qualities in the patent claims.
At least two vestiges of central claiming have remained in the
patent system, namely the doctrine of equivalents and means-plus-
function claims.
190 CHAPTER 3. PATENT

Model Patent Jury Instructions for the Northern District of California
A patent’s claims deﬁne what is covered by the patent. A [product]
[method] directly infringes a patent if it is covered by at least one
claim of the patent.
Deciding whether a claim has been directly infringed is a two-step
process. The ﬁrst step is to decide the meaning of the patent claim.
I have already made this decision, [and I will instruct you later as
to the meaning of the asserted patent claims] [and I have already in-
structed you as to the meaning of the asserted patent claims]. The
second step is to decide whether [alleged direct infringer] has [made,]
[used,] [sold,] [oﬀered for sale] or [imported] within the United States
a [product] [method] covered by a claim of the [ ] patent. If it has, it
infringes. You, the jury, make this decision.
[With one exception,] you must consider each of the asserted
claims of the patent individually, and decide whether [alleged direct
infringer]’s [product] [method] infringes that claim. [The one excep-
tion to considering claims individually concerns dependent claims.
A dependent claim includes all of the requirements of a particular
independent claim, plus additional requirements of its own. As a re-
sult, if you ﬁnd that an independent claim is not infringed, you must
also ﬁnd that its dependent claims are not infringed. On the other
hand, if you ﬁnd that an independent claim has been infringed, you
must still separately decide whether the additional requirements of
its dependent claims have also been infringed.]
There are two ways in which a patent claim may be directly in-
fringed. A claim may be “literally” infringed, or it may be infringed
under the “doctrine of equivalents.”
To decide whether [alleged infringer]’s [product] [method] liter-
ally infringes a claim of the [ ] patent, you must compare that [prod-
uct] [method] with the patent claim and determine whether every
requirement of the claim is included in that [product] [method]. If so,
[alleged infringer]’s [product] [method] literally infringes that claim.
If, however, [alleged infringer]’s [product] [method] does not have
every requirement in the patent claim, [alleged infringer]’s [product]
[method] does not literally infringe that claim. You must decide lit-
eral infringement for each asserted claim separately.

1 Claim Construction

Phillips v. AWH Corp.
415 F.3d 1303 (2005) (en banc)
It is a ”bedrock principle” of patent law that the claims of a patent
deﬁne the invention to which the patentee is entitled the right to ex-
clude. We have frequently stated that the words of a claim are gen-
erally given their ordinary and customary meaning. We have made
D. INFRINGEMENT: SIMILARITY 191

clear, moreover, that the ordinary and customary meaning of a claim
term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the
eﬀective ﬁling date of the patent application.
The inquiry into how a person of ordinary skill in the art under-
stands a claim term provides an objective baseline from which to
begin claim interpretation. That starting point is based on the well-
se led understanding that inventors are typically persons skilled in
the ﬁeld of the invention and that patents are addressed to and in-
tended to be read by others of skill in the pertinent art. S
Importantly, the person of ordinary skill in the art is deemed to
read the claim term not only in the context of the particular claim
in which the disputed term appears, but in the context of the entire
patent, including the speciﬁcation. This court explained that point
well in Multiform Desiccants, Inc. v. Medzam, Ltd.: Multiform: 133 F.3d 1473 (Fed. Cir.
1998)
It is the person of ordinary skill in the ﬁeld of the inven-
tion through whose eyes the claims are construed. Such
person is deemed to read the words used in the patent
documents with an understanding of their meaning in the
ﬁeld, and to have knowledge of any special meaning and
usage in the ﬁeld. The inventor’s words that are used
to describe the invention – the inventor’s lexicography –
must be understood and interpreted by the court as they
would be understood and interpreted by a person in that
ﬁeld of technology. Thus the court starts the decisionmak-
ing process by reviewing the same resources as would that
person, viz., the patent speciﬁcation and the prosecution
history.

B
In some cases, the ordinary meaning of claim language as understood
by a person of skill in the art may be readily apparent even to lay
judges, and claim construction in such cases involves li le more than
the application of the widely accepted meaning of commonly under-
stood words. In such circumstances, general purpose dictionaries
may be helpful. In many cases that give rise to litigation, however, de-
termining the ordinary and customary meaning of the claim requires
examination of terms that have a particular meaning in a ﬁeld of art.
Because the meaning of a claim term as understood by persons of
skill in the art is often not immediately apparent, and because paten-
tees frequently use terms idiosyncratically, the court looks to those
sources available to the public that show what a person of skill in the
art would have understood disputed claim language to mean. Those
sources include the words of the claims themselves, the remainder of
192 CHAPTER 3. PATENT

the speciﬁcation, the prosecution history, and extrinsic evidence con-
cerning relevant scientiﬁc principles, the meaning of technical terms,
and the state of the art.
1
Quite apart from the wri en description and the prosecution history,
the claims themselves provide substantial guidance as to the meaning
of particular claim terms.
To begin with, the context in which a term is used in the asserted
claim can be highly instructive. To take a simple example, the claim
in this case refers to ”steel baﬄes,” which strongly implies that the
term ”baﬄes” does not inherently mean objects made of steel. This
court’s cases provide numerous similar examples in which the use
of a term within the claim provides a ﬁrm basis for construing the
term. [Cited cases construed the claim term ”ingredients” in light of
the use of the term ”mixture” in the same claim phrase and the claim
term ”discharge rate” in light of the use of the same term in another
limitation of the same claim.]
Other claims of the patent in question, both asserted and
unasserted, can also be valuable sources of enlightenment as to the
meaning of a claim term. Because claim terms are normally used con-
sistently throughout the patent, the usage of a term in one claim can
often illuminate the meaning of the same term in other claims. Dif-
ferences among claims can also be a useful guide in understanding
the meaning of particular claim terms. For example, 1315*1315 the
presence of a dependent claim that adds a particular limitation gives
rise to a presumption that the limitation in question is not present in
the independent claim.
2
The claims, of course, do not stand alone. Rather, they are part of a
fully integrated wri en instrument, consisting principally of a speci-
ﬁcation that concludes with the claims. For that reason, claims must
be read in view of the speciﬁcation, of which they are a part. The spec-
iﬁcation 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 importance of the speciﬁcation in claim construction derives
from its statutory role. The close kinship between the wri en descrip-
tion and the claims is enforced by the statutory requirement that the
speciﬁcation describe the claimed invention in ”full, clear, concise,
and exact terms.” In light of the statutory directive that the inven-
tor provide a ”full” and ”exact” description of the claimed invention,
the speciﬁcation necessarily informs the proper construction of the
claims.
D. INFRINGEMENT: SIMILARITY 193

Consistent with that general principle, our cases recognize that
the speciﬁcation may reveal a special deﬁnition given to a claim term
by the patentee that diﬀers from the meaning it would otherwise pos-
sess. In such cases, the inventor’s lexicography governs. In other
cases, the speciﬁcation may reveal an intentional disclaimer, or dis-
avowal, of claim scope by the inventor. In that instance as well, the
inventor has dictated the correct claim scope, and the inventor’s in-
tention, as expressed in the speciﬁcation, is regarded as dispositive.
3
In addition to consulting the speciﬁcation, we have held that a court
should also consider the patent’s prosecution history, if it is in evi-
dence. The prosecution history, which we have designated as part of
the ”intrinsic evidence,” consists of the complete record of the pro-
ceedings before the PTO and includes the prior art cited during the
examination of the patent. Like the speciﬁcation, the prosecution his-
tory provides evidence of how the PTO and the inventor understood
the patent. Furthermore, like the speciﬁcation, the prosecution his-
tory was created by the patentee in a empting to explain and ob-
tain the patent. Yet because the prosecution history represents an
ongoing negotiation between the PTO and the applicant, rather than
the ﬁnal product of that negotiation, it often lacks the clarity of the
speciﬁcation and thus is less useful for claim construction purposes.
Nonetheless, the prosecution history can often inform the meaning
of the claim language by demonstrating how the inventor under-
stood the invention and whether the inventor limited the invention
in the course of prosecution, making the claim scope narrower than
it would otherwise be.
C
Although we have emphasized the importance of intrinsic evidence
in claim construction, we have also authorized district courts to rely
on extrinsic evidence, which consists of all evidence external to the
patent and prosecution history, including expert and inventor testi-
mony, dictionaries, and learned treatises. However, while extrinsic
evidence can shed useful light on the relevant art, it is less signiﬁcant
than the intrinsic record in determining the legally operative meaning
of claim language.
Within the class of extrinsic evidence, dictionaries and treatises
can be useful in claim construction. We have especially noted the
help that technical dictionaries may provide to a court to be er un-
derstand the underlying technology and the way in which one of skill
in the art might use the claim terms. Because dictionaries, and espe-
cially technical dictionaries, endeavor to collect the accepted mean-
ings of terms used in various ﬁelds of science and technology, those
194 CHAPTER 3. PATENT

resources have been properly recognized as among the many tools
that can assist the court in determining the meaning of particular ter-
minology to those of skill in the art of the invention. Such evidence,
may be considered if the court deems it helpful in determining the
true meaning of language used in the patent claims.
Extrinsic evidence in the form of expert testimony can be useful to
a court for a variety of purposes, such as to provide background on
the technology at issue, to explain how an invention works, to ensure
that the court’s understanding of the technical aspects of the patent is
consistent with that of a person of skill in the art, or to establish that
a particular term in the patent or the prior art has a particular mean-
ing in the pertinent ﬁeld. However, conclusory, unsupported asser-
tions by experts as to the deﬁnition of a claim term are not useful to a
court. Similarly, a court should discount any expert testimony that is
clearly at odds with the claim construction mandated by the claims
themselves, the wri en description, and the prosecution history, in
other words, with the wri en record of the patent.
We have viewed extrinsic evidence in general as less reliable than
the patent and its prosecution history in determining how to read
claim terms, for several reasons. First, extrinsic evidence by deﬁni-
tion is not part of the patent and does not have the speciﬁcation’s
virtue of being created at the time of patent prosecution for the pur-
pose of explaining the patent’s scope and meaning. Second, while
claims are construed as they would be understood by a hypothetical
person of skill in the art, extrinsic publications may not be wri en by
or for skilled artisans and therefore may not reﬂect the understanding
of a skilled artisan in the ﬁeld of the patent. Third, extrinsic evidence
consisting of expert reports and testimony is generated at the time of
and for the purpose of litigation and thus can suﬀer from bias that is
not present in intrinsic evidence. The eﬀect of that bias can be exacer-
bated if the expert is not one of skill in the relevant art or if the expert’s
opinion is oﬀered in a form that is not subject to cross-examination.
Fourth, there is a virtually unbounded universe of potential extrinsic
evidence of some marginal relevance that could be brought to bear on
any claim construction question. In the course of litigation, each party
will naturally choose the pieces of extrinsic evidence most favorable
to its cause, leaving the court with the considerable task of ﬁltering
the useful extrinsic evidence from the ﬂuﬀ. Finally, undue reliance
on extrinsic evidence poses the risk that it will be used to change the
meaning of claims in derogation of the indisputable public records
consisting of the claims, the speciﬁcation and the prosecution history,
thereby undermining the public notice function of patents.
In sum, extrinsic evidence may be useful to the court, but it is
unlikely to result in a reliable interpretation of patent claim scope un-
less considered in the context of the intrinsic evidence. Nonetheless,
D. INFRINGEMENT: SIMILARITY 195

because extrinsic evidence can help educate the court regarding the
ﬁeld of the invention and can help the court determine what a person
of ordinary skill in the art would understand claim terms to mean, it
is permissible for the district court in its sound discretion to admit
and use such evidence. In exercising that discretion, and in weighing
all the evidence bearing on claim construction, the court should keep
in mind the ﬂaws inherent in each type of evidence and assess that
evidence accordingly.

Thorner v. Sony Computer Entertainment America LLC
669 F.3d 1362 (Fed. Cir. 2012)
Craig Thorner and Virtual Reality Feedback Corporation (Appellants,
collectively) accused Sony Computer Entertainment America LLC
and a number of other Sony entities (Sony, collectively) of infringing
claims of U.S. patent no. 6,422,941 (‘941 patent) relating to a tactile
feedback system for computer video games. The district court con-
strued disputed claim terms and the parties stipulated to a judgment
of noninfringement. Because the district court improperly limited the
term “a ached to said pad” to mean a achment only to an external
surface and erred in its construction of the term “ﬂexible”, we vacate
and remand.
BACKGROUND
The ‘941 patent describes a tactile feedback system for use with video
games. Figure 2 shows the many diﬀerent embodiments of the inven-
tion:
Tactile feedback controller 110 is part of a larger gaming system
that operates one or more of the devices shown above. Each device
includes some type of actuator that provides tactile feedback to a user
in response to certain game activities. For instance, the actuators in
hand-held game controller 598 may vibrate during a crash in a car rac-
ing game. Independent claim 1 requires “a ﬂexible pad,” “a plurality
of actuators a ached to said pad” and a control circuit that activates
the actuators in response to game activity. The accused products are
hand-held game controllers.
Two claim limitations are relevant to this appeal, “ﬂexible pad”
and “a ached to said pad.” The district court held that ﬂexible does
not mean simply “capable of being ﬂexed.” It reasoned that this def-
inition was inappropriate because “many objects that are capable of
being ﬂexed are not ﬂexible. A steel I-beam is capable of being ﬂexed,
but no one would call it ‘ﬂexible.’” The court thus construed the term
to mean “capable of being noticeably ﬂexed with ease.”
The district court then turned to the construction of “a ached to
said pad.” Appellants argued that a ached should be given its plain
and ordinary meaning and that an actuator can be a ached to the in-
side of an object. Sony argued that “a ached to said pad” should be
196 CHAPTER 3. PATENT

U.S. Patent Jul. 23, 2002 Sheet 2 0f 37 US 6,422,941 B1

@
F LO

U.S. Patent No. 6,422,941, Universal tactile feedback system for com-
puter video games and simulations
D. INFRINGEMENT: SIMILARITY 197

construed as aﬃxed to the exterior surface of the pad and does not
include embedded within said pad. The court held that “the speciﬁ-
cation redeﬁnes ‘a ached’ by implication.” The court held that the
word a ached was limited to a ached to the outside of an object be-
cause the embodiments in the speciﬁcation consistently use the term
“a ached” to indicate aﬃxing an actuator to the outer surface of an
object and use the word “embedded” when referring to an actuator
inside an object. For additional support for the notion that a ached
and embedded have diﬀerent meanings, the court pointed to claim 1
which uses the word “a ached” and dependent claim 10 which uses
the word “embedded.”
Following claim construction, the parties stipulated to nonin-
fringement by the accused products. They stated that “under the
Court’s construction of the phrase ‘a ached to said pad,’ Defendants
have not infringed....” The stipulation further stated that the “parties
reserve their rights to challenge this or any other construction of the
disputed claim phrases of the ‘941 patent on appeal.”
DISCUSSION
The words of a claim are generally given their ordinary and custom-
ary meaning as understood by a person of ordinary skill in the art
when read in the context of the speciﬁcation and prosecution history.
See AWH. There are only two exceptions to this general rule: 1) when
a patentee sets out a deﬁnition and acts as his own lexicographer, or
2) when the patentee disavows the full scope of a claim term either
in the speciﬁcation or during prosecution. The use of the term “at-
tached” in this speciﬁcation does not meet either of these exceptions.
To act as its own lexicographer, a patentee must clearly set forth a
deﬁnition of the disputed claim term other than its plain and ordinary
meaning. . It is not enough for a patentee to simply disclose a single
embodiment or use a word in the same manner in all embodiments,
the patentee must clearly express an intent to redeﬁne the term. For
example, in 3M Innovative Properties Co. v. Avery Dennison Corp., we 3M Innovative Properties: 350 F.3d 1365
held that the patentee acted as its own lexicographer when the speci- (Fed.Cir. 2004)
ﬁcation stated: “‘Multiple embossed’ means two or more embossing
pa erns are superimposed on the web to create a complex pa ern of
diﬀering depths of embossing.”). Similarly, we limited a patentee to
particular examples of solubilizers when it stated in the speciﬁcation
that “[t]he solubilizers suitable according to the invention are deﬁned
below.” Astrazeneca AB v. Mutual Pharm. Co.. Astrazeneca: 384 F.3d 1333 (Fed. Cir.
2004)
The standard for disavowal of claim scope is similarly exacting.
Where the speciﬁcation makes clear that the invention does not in-
clude a particular feature, that feature is deemed to be outside the
reach of the claims of the patent, even though the language of the
claims, read without reference to the speciﬁcation, might be consid-
198 CHAPTER 3. PATENT

ered broad enough to encompass the feature in question. The paten-
tee may demonstrate intent to deviate from the ordinary and accus-
tomed meaning of a claim term by including in the speciﬁcation ex-
pressions of manifest exclusion or restriction, representing a clear dis-
SciMed: 242 F.3d 1337 (Fed. Cir. 2001) avowal of claim scope. For example, in SciMed Life Sys., Inc. v. Ad-
vanced Cardiovascular Sys., Inc., the patentee described two diﬀerent
types of catheters in the prior art, those with dual lumens (side-by-
side) and those with coaxial lumens. In discussing the prior art, the
patentee disparaged the dual lumen conﬁguration as larger than nec-
essary and less pliable than the coaxial type. Further, the speciﬁcation
repeatedly described the “present invention” as a coaxial design. Fi-
nally, the speciﬁcation stated: “The intermediate sleeve structure de-
ﬁned above [coaxial design] is the basic sleeve structure for all embod-
iments of the present invention contemplated and disclosed herein.”
This court held that collectively this amounted to disavowal of the
dual lumen design.
Mere criticism of a particular embodiment encompassed in the
plain meaning of a claim term is not suﬃcient to rise to the level of
clear disavowal. Even where a particular structure makes it particu-
larly diﬃcult to obtain certain beneﬁts of the claimed invention, this
does not rise to the level of disavowal of the structure. It is likewise
not enough that the only embodiments, or all of the embodiments,
contain a particular limitation. We do not read limitations from the
speciﬁcation into claims; we do not redeﬁne words. Only the paten-
tee can do that. To constitute disclaimer, there must be a clear and
unmistakable disclaimer.
It is the claims that deﬁne the metes and bounds of the patentee’s
invention. The patentee is free to choose a broad term and expect
to obtain the full scope of its plain and ordinary meaning unless the
patentee explicitly redeﬁnes the term or disavows its full scope.
Claim 1 of the patent at issue includes the disputed claim terms:
In a computer or video game system, apparatus for provid-
ing, in response to signals generated by said computer or video
game system, a tactile sensation to a user of said computer or
video game system, said apparatus comprising:
a ﬂexible pad;
a plurality of actuators, a ached to said pad, for selectively
generating tactile sensation; and a control circuit ... for gen-
erating a control signal to control activation of said plural-
ity of actuators....

I. “a ached to said pad”
Appellants argue that the district court erred by holding that the spec-
iﬁcation implicitly deﬁned “a ached” to mean “aﬃxed to an exterior
D. INFRINGEMENT: SIMILARITY 199

surface.” They argue that the term does not require any construction
and that the plain and ordinary meaning includes aﬃxing an item to
either an exterior or an interior surface. They contend that the spec-
iﬁcation explicitly states whether an a achment is to an interior or
exterior surface: “a vibratory actuator can be a ached to [the] outer
side of the thro le handle.” They argue this shows that when the ap-
plicant wished to distinguish an internal from an external a achment,
he did so with deliberate, express language. Thus, appellants argue
that the speciﬁcation contemplates “a ached” to have its plain and
ordinary meaning—a ached to either an interior or exterior surface.
Finally, appellants argue that the fact that claim 10 includes the word
“embedded” does not mean that “a ached” can only mean connected
to an exterior surface. Rather, appellants argue that “embedded” is
merely a narrower term that includes only a achment to an interior
surface.
Sony responds that the patent clearly identiﬁed two diﬀerent con-
nections, “a ached to” and “embedded within.” It argues that in ev-
ery instance where the speciﬁcation uses the term “a ached,” it refers
to an a achment to an outer surface. Conversely, in every embodi-
ment where the actuator is placed inside a housing, the speciﬁcation
uses the term “embedded.” See, e.g., ‘941 patent col.32 l.66 (“embed-
ded within or a ached to”).
Our case law is clear, claim terms must be given their plain and
ordinary meaning to one of skill in the art. The plain meaning of
the term “a ached” encompasses either an external or internal a ach-
ment. We must decide whether the patentee has redeﬁned this term
to mean only a achment to an external surface. As Sony argues, the
speciﬁcation repeatedly uses the term “a ached” in reference to em-
bodiments where the actuators are “a ached to [an] outer side.” In
fact, the speciﬁcation never uses the word “a ached” when referring
to an actuator located on the interior of a controller. We hold that this
does not rise to the level of either lexicography or disavowal. Both ex-
ceptions require a clear and explicit statement by the patentee. It is
not enough that the patentee used the term when referencing an at-
tachment to an outer surface in each embodiment. In fact, the speciﬁ-
cation explains that an actuator was “a ached to [an] outer surface.”
If the applicant had redeﬁned the term “a ached” to mean only “at-
tached to an outer surface,” then it would have been unnecessary to
specify that the a achment was “to [an] outer surface” in the speciﬁ-
cation. We conclude that the term a ached should be given its plain
and ordinary meaning. The speciﬁcation does not redeﬁne a ached
nor is there any disavowal.
The fact that the speciﬁcation uses the two terms “a ached” and
“embedded” as alternatives does not require a diﬀerent result. There
is nothing inconsistent about the applicant’s use of the narrower term,
200 CHAPTER 3. PATENT

“embedded,” to describe embodiments aﬃxed to an internal surface.
The plain and ordinary meaning of embedded, “a ached within,” is
narrower than “a ached.” Hence it makes sense that the applicant
would want to use embedded when it meant to explicitly claim at-
tached to the inside only. That does not mean the word a ached au-
tomatically means a ached to the external surface, as opposed to the
broader plain meaning—a ached to either the interior or exterior.
Other parts of the claim and speciﬁcation also support this con-
struction. The claim at issue requires a “ﬂexible pad.” The only em-
bodiment in the speciﬁcation that includes ﬂexible material is the seat
cushion 510 shown in Figure 2. The speciﬁcation states that “the tac-
tile feedback seating unit 510 is a semi-rigid ﬂexible foam structure
... with a plurality of actuators embedded within the foam structure.”
Thus, the only ﬂexible embodiment in the speciﬁcation has embed-
ded actuators. If we agreed with Sony that “a ached” must mean
a ached to an outer surface, then the claim would exclude the only
ﬂexible embodiment disclosed in the speciﬁcation. This is further ev-
idence that the term “a ached” should have its plain and ordinary
meaning which includes either internal or external a achments.
We hold that the term “a ached to said pad” should be given its
plain and ordinary meaning which encompasses either internal or ex-
ternal a achment. Because the parties based the stipulation of nonin-
fringement on the district court’s erroneous construction of this claim
term, we vacate and remand.
II. “ﬂexible pad” …
Appellants argue that the term “ﬂexible” simply means “capable of
being ﬂexed” and that the district court erred by requiring “capable of
being noticeably ﬂexed with ease.” They note that the speciﬁcation
only uses the term “ﬂexible pad” when referring to a “semi-rigid”
structure and that a “semi-rigid” structure would certainly not be
“noticeably ﬂexed with ease.”
Sony responds that although the speciﬁcation uses the term to re-
fer to a “semi-rigid” structure, that structure is made out of foam in
every embodiment. It argues that foam is capable of being noticeably
ﬂexed with ease and thus a rigid, barely bendable material should not
be considered “ﬂexible.” Sony also points to portions of the Mark-
man hearing where the district court judge inspected one of the ac-
cused hard plastic controllers. The judge noted that the controller
was rigid and “[i]f I try to ﬂex this thing, I think that you’re going to
see it snap.”
We agree with the appellants that the district court improperly
limited the term. Neither the claims nor the speciﬁcation requires
the “ﬂexible pad” to be noticeably ﬂexed with ease. The speciﬁca-
tion says only that the ﬂexible pad must be a semi-rigid structure.
D. INFRINGEMENT: SIMILARITY 201

The task of determining the degree of ﬂexibility, the degree of rigid-
ity that amounts to “semi-rigid,” is part of the infringement analysis,
not part of the claim construction. The district court is of course free
on summary judgment to decide that there is no genuine issue of ma-
terial fact that the accused products in this case do not meet the plain
and ordinary meaning of the term “ﬂexible.” We do not mean to sug-
gest that summary judgment is improper in this case, only that claim
construction is the wrong venue for this determination.

2 Literal Infringement

Angelo Mongiello's Children, LLC v. Pizza Hut, Inc.
70 F. Supp. 2d 196 (E.D.N.Y. 1999)
The complaint alleges that defendant’s method for making stuﬀed-
crust pizzas, in use between March of 1994 and at least July of 1996, in-
fringed plaintiﬀ’s method for making pizza claimed in United States
Patent No. 4,661,361 dated April 28, 1987 (the ’361 patent).
In essence, plaintiﬀ’s method is to create multiple, individually
sealed pockets made of dough that are ﬁlled with cheese (or other
ingredients) and enclosed within the outer rim of a pizza crust or
placed on a portion of the pizza crust. Tomato sauce and cheese cov-
ers the rest of the pie. The claims describe two basic methods: one
uses dough pulled over from the edge of the crust to cover the ﬁll-
ings and form the pockets; the other places a separate piece of dough,
not from the edge, over the ﬁllings to form a pocket.
[Claim 1 reads] as follows:
1. A method of making a pizza comprising the steps of:
(a) forming a generally ﬂat dough base;
(b) placing a plurality of separated individual food portions
on the dough base such that, when the dough base is cut
into substantially equally sized portions, each individual
food portion is located upon a portion of each pie;
(c) covering each food portion with an unbaked dough section
of suﬃcient dimensions to cover said food portion thereby
forming a separate closed pocket about each food portion;
(d) covering the portions of the dough base which are not cov-
ered by said closed pockets with a layer of tomato sauce
and cheese to form an unbaked pizza product; and
(e) baking the unbaked product to obtain a pizza.
In early 1988 Anthony Mongiello sent defendant a copy of the ’361
patent, oﬀering a license under it. Defendant responded by le er
dated May 17, 1988 that it was ”not a new concept for Pizza Hut”
and rejected the oﬀer.
In March of 1995 defendant launched a cheese ”Stuﬀed Crust
202 CHAPTER 3. PATENT

Pizza.” The manager’s guide dated February 1995 describes defen-
dant’s method as follows:
• Place thumbs on edge of dough.
• Press dough ridge up the sides of pan.
– Dough must extend just above rim of pan (¼”)
• Evenly space ﬁve pieces of thawed mozzarella string cheese ap-
proximately a thumb’s width apart along the outside edge of
the dough
– Place close to bo om of pan where edge meets.
• Use thumb and index ﬁngers to stretch and fold edge of the
dough over string cheese and press ﬁrmly to seal.
– Dough overlap should be visible on both sides of thumb.
– Keep stuﬀed edge at score line etched in pan to keep dough
in round shape.
• Use thumbs to press and seal overlapped dough to bo om edge.
• Use thumbs to push stuﬀed edge out to edge of pan....
• [after applying sauce, toppings, and baking] [a]ll Stuﬀed Crust
Pizzas are cut into 8 slices. If cheese is leaking through small
hole in crust, begin cu ing pizza at that spot.
An objective of the method was to create ”cheese pull,” which means
that the cheese within the crust joins together during baking so that
the consumer receives ”cheese in every bite.”
Defendant launched a pepperoni and cheese Stuﬀed Crust Pizza
in September of 1995, which contained a continuous layer of pepper-
oni slices beneath the ﬁve pieces of cheese within the outer edge of
the pizza. Plaintiﬀ concedes that the pepperoni and cheese version
does not infringe the ’361 patent.
Shortly after learning of the 1995 launch of defendant’s Stuﬀed
Crust Pizza, Anthony Mongiello and his brother Lawrence cut open
Stuﬀed Crust Pizzas purchased from defendant’s restaurants. They
say that when they cut into the crusts, they observed ”pockets” of
mozzarella cheese and spots where ”a dough wall separated adjacent
mozzarella strings.”
Based on their observations of randomly occurring dough walls
dividing cheese within the crust of defendant’s baked product, the
Mongiellos believed that the method defendant used to make Stuﬀed
Crust Pizzas infringed on their claimed method.
Defendant argues that its method of making Stuﬀed Crust Pizza
does not infringe the ’361 patent, either literally or through substan-
tial equivalence, because it does not perform what it says are three
required elements of the claimed method [including]:
(1) The ”cu ing step” of claim 1: ”when the dough base is cut into
D. INFRINGEMENT: SIMILARITY 203

substantially equally sized pieces, each individual food portion
is located upon a portion of each piece.”
(2) The ”forming step” of claim 1: ”forming a separate closed
pocket about each food portion.”
Defendant says that the phrase ”such that, when the dough base is cut
into substantially equally sized portions, each individual food por-
tion is located upon a portion of each piece” is an essential limitation
of the claim requiring that the pizza be cut in a speciﬁc manner. Plain-
tiﬀ contends that the phrase should be construed as an optional step
that merely explains where the food portions should be placed, and
says that the phrase really means: ”if the dough base were cut into
equal slices, a food portion would be on each slice.” Plaintiﬀ argues
that cu ing the pizza such that there is an individual ﬁlled pocket on
each piece is not required, but that ”it is enough that it is possible to
do so.”
But the plain language of the claim says ”when,” not ”if.” If the
patent applicants had wanted the language to be hypothetical, they
would have drafted it in that manner. Two pages of further claim construc-
tion discussion omitted. Focus on what
In order to ﬁnd literal infringement, the defendant must practice
the court does once it has construed
each and every element of the claimed method the claim language.
Defendant’s method, as described in the February 1995 manager’s
guide and the aﬃdavit of Patricia Scheibmeir, a manager in defen-
dant’s research and development department, does not practice the
”cu ing” limitation as construed by the court. Although the Stuﬀed
Crust Pizzas in question used ﬁve separate pieces of cheese, sepa-
rated by a thumb’s width, the instructions direct that the pizza be
cut into eight slices using a ”rocker blade,” which cuts pizzas into an
even number of slices. It is thus impossible for individual portions of
cheese to be located on each portion of defendant’s pizza. This is the court's complete discussion
Since defendant does not practice one of the essential limitations of literal infringement. This is not atyp-
ical. Once claim construction is com-
of the ’361 patent, the court need not consider the other limitations
plete, applying the claim language is
before making a ﬁnding of no literal infringement. often (though not always) trivial. Why
might that be?
3 Doctrine of Equivalents

Freedman Seating Co. v. American Seating Co.
420 F.3d 1350 (Fed. Cir. 2005)
Freedman Seating Company (“Freedman”) sued American Seating
Company and Hi-Tech Seating Products (doing business as Kustom
Fit) (collectively, “American Seating”) for infringement of U.S. Patent
No. 5,492,389 (issued Feb. 20, 1996) (“the ‘389 patent”). Because
we conclude that the judgment of infringement under the doctrine
of equivalents has the eﬀect of vitiating a limitation of the claims of
the ‘389 patent, we reverse the judgment and remand the case to the
204 CHAPTER 3. PATENT

district court with instructions to enter judgment of non-infringement
in favor of American Seating.
BACKGROUND
Freedman manufactures seats used in public transportation vehicles.
Its product line includes stowable seats, which are seats that have
the ability to fold away in order to create more interior space in a
vehicle. They are particularly useful for accommodating passengers
with wheelchairs, but may be used whenever more interior space is
needed.
Freedman also owns the ‘389 patent, titled “Stowable Seat.” The
ﬁgures shown below are representative of the stowable seat claimed
in the ‘389 patent.
Figure 1 shows the stowable seat (10) in the horizontal (or de-
ployed) position, while ﬁgure 2 shows the stowable seat in the ver-
tical (or stowed) position. Moving the seat from its horizontal to ver-
tical position involves “folding the seatback (16) ﬂat against the seat-
base (14), unlocking the seatbase from its horizontally deployed po-
sition and raising the seatbase to its vertically stowed position where
it is locked in place.”
As shown by ﬁgure 1, the invention of the ‘389 patent does not
use an aisle leg to support the seat when in the horizontal position.
Rather, the invention is based on a cantilever design, which uses a di-
agonal truss (18), also referred to as a support member, to support the
aisle-end of the seat when in the horizontal position. This design, ac-
cording to the ‘389 patent, avoids diﬃculties a endant with stowing
and deploying seats that have a separate aisle leg.
In addition to providing aisle support, the diagonal truss allows
for translational movement of the seatbase between the horizontal
and vertical positions. This is due to the truss having a ﬁxed end that
is a ached to the seat’s frame (12) at a pivot point (54), and a mov-
able end (56) that is “slidably mounted” in a runner track (58). When
stowing the seat, the movable end of the diagonal truss slides on the
runner track toward the middle of the seatbase, while the ﬁxed end of
the diagonal truss rotates upward until the seat is in the vertical posi-
tion. Similarly, when the seat is deployed again, the movable end of
the diagonal truss slides toward the aisle end of the seatbase, while
the ﬁxed end rotates downward until the seat is in the horizontal posi-
tion. This folding mechanism created by the slidably mounted move-
able end is known in the ﬁeld of mechanical engineering as a “slider
crank,” which is a particular type of “four bar mechanism.”
Claim 1 is representative of the claims asserted against American
Seating; it reads:
A stowable seat for mounting to support member of a vehicle
wherein a space may be selectively provided for positioning an
D. INFRINGEMENT: SIMILARITY 205

US. Patent Feb. 20, 1996 Sheet 1 0f 3 5,492,389

j“;wé ‘

U.S. Patent No. 5,492,389, Stowable seat
206 CHAPTER 3. PATENT

article adjacent to the stowable seat, when stowed the seat com-
prising:
a frame a ached to a support member;
a cantilevered seatbase having a free end, a pivotable end
including a pivot mounted thereto for rotatably associat-
ing said pivotable end with said frame and for providing
said seatbase with a range of motion extending from a
horizontally deployed position to a vertically stowed po-
sition, a support member for supporting said seatbase in
said deployed position including a moveable end slidably
emphasis added mounted to said seatbase and a ﬁxed end journalled with
said frame, and a ﬁrst lock near said free end for releasably
locking said movable end to maintain said seatbase in said
deployed position; and
a seatback having a pivot for rotatably associating said
seatback with said seatbase and for providing said seat-
back with a range of motion extending from an unfolded
position to a folded position, said range of motion of
said seatback being perpendicular to said range of motion
of said seatbase, said seatback in said unfolded position
adapted to be a predetermined angle with respect to said
seatbase in said deployed position to provide seating and
said seatback in said folded position adapted to be adja-
cent said seatbase for stowing to provide the space for the
article.
American Seating Company and Kustom Fit also manufacture and
market seating products for the transportation industry. One partic-
ular seat is the Horizon EZ Fold (“EZ Fold”), which is a stowable seat.
The EZ Fold is in many respects similar, if not identical, to the inven-
tion claimed in the ‘389 patent. Most notably, neither device has an
aisle leg. However, and important to this case, the two products use
diﬀerent types of support structures in lieu of the aisle leg. The in-
vention claimed in the ‘389 patent, of course, uses the slider crank,
which is described in part by the “slidably mounted” limitation. The
EZ Fold, on the other hand, uses what is known as a “fourth link.”
Like the slider crank, the fourth link is also a speciﬁc type of four
bar mechanism. However, the two mechanisms diﬀer in that, where
the moveable end of the ‘389 patent’s support member is slidably
mounted to the seatbase, the moveable end of the EZ Fold’s support
member is rotatably mounted to the seatbase. Therefore, the move-
able end of the EZ Fold’s support member does not slide or otherwise
move along the seatbase. Rather, its only range of motion consists of
rotation throughout its revolute joints. That said, the EZ Fold’s fourth
link mechanism still provides the seatbase with ﬂuid translational
D. INFRINGEMENT: SIMILARITY 207

motion, and thereby allows the seat to fold between the deployed
and stowed positions. It does this through an extra set of revolute
joints located in the midsection of its support member (“mid-joints”).
These mid-joints are shown below in two representative illustrations
of the EZ Fold product.
The illustration on the left shows the seat in the fully deployed po-
sition, and the illustration on the right shows the device in transition
between the deployed and stowed positions.

In due course, both parties ﬁled motions for summary judgment
on the issue of infringement. The parties generally agreed that the
EZ Fold literally meets all of the limitations of claim 1 except for the
limitation requiring that the movable end of the support member be
“slidably mounted” to the seatbase. The accused product does not
literally meet this limitation because the EZ Fold’s support member
is rotatably mounted, not slidably mounted, to the seatbase.
American Seating argued that its support member and moveable
end were not equivalent to the corresponding structure claimed by
the ‘389 patent because its system used a fourth link, which cre-
ated a substantially diﬀerent support structure than the slider crank
of the ‘389 patent. In particular, American Seating argued that the
support structures of the two devices created substantially diﬀerent
distribution forces. The district court disagreed. As an initial mat-
ter, the court stated that force distributions were not claimed in the
‘389 patent and were therefore of minimal relevance. In addition,
the court found that any diﬀerence in force distributions was insub-
stantial, and that Freedman’s “slider-crank and [American Seating’s]
fourth link perform substantially the same function in substantially
the same manner to achieve substantially the same result.” The court
therefore granted Freedman summary judgment of infringement by
equivalence.
DISCUSSION
Patent infringement is a two step inquiry. First, the court must con-
strue the asserted claim. Second, the court must determine whether
the accused product or process contains each limitation of the prop-
208 CHAPTER 3. PATENT

erly construed claims, either literally or by a substantial equivalent.
Under the doctrine of equivalents, a product or process that does
not literally infringe upon the express terms of a patent claim may
nonetheless be found to infringe if there is ‘equivalence’ between the
elements of the accused product or process and the claimed elements
Warner-Jenkinson: 520 U.S. 17 (1997) of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem.
Co.. The doctrine evolved in recognition of the fact that
The language in the patent claims may not capture every
nuance of the invention or describe with complete preci-
sion the range of its novelty. If patents were always inter-
preted by their literal terms, their value would be greatly
diminished. Unimportant and insubstantial substitutes
for certain elements could defeat the patent, and its value
to inventors could be destroyed by simple acts of copying.
Festo. At the same time, the doctrine of equivalents necessarily adds
uncertainty to the scope of patent claims, and thereby detracts from
the public-notice function of patent claims and risks deterring non-
infringing and potentially innovative endeavors. See Festo (“If the
range of equivalents is unclear, competitors may be unable to de-
termine what is a permi ed alternative to a patented invention and
what is an infringing equivalent.”); Warner-Jenkinson (“There can be
no denying that the doctrine of equivalents, when applied broadly,
conﬂicts with the deﬁnitional and public-notice functions of the statu-
tory claiming requirements.”). In recognition of this risk, and in an
eﬀort to strike the proper balance between protecting patentees while
also providing suﬃcient notice to the public, various rules of law
have emerged to constrain when and how the doctrine of equivalents
is to be applied.
Of relevance to this case is the “all limitations” rule. The rule
holds that an accused product or process is not infringing unless it
contains each limitation of the claim, either literally or by an equiva-
lent. This principle has two primary implications for the doctrine of
equivalents. First, the all limitations rule requires that equivalence
be assessed on a limitation-by-limitation basis, as opposed to from
the perspective of the invention as a whole. Second, an element of an
accused product or process is not, as a ma er of law, equivalent to
a limitation of the claimed invention if such a ﬁnding would entirely
vitiate the limitation.
There is no set formula for determining whether a ﬁnding of
equivalence would vitiate a claim limitation, and thereby violate the
all limitations rule. Rather, courts must consider the totality of the
circumstances of each case and determine whether the alleged equiv-
alent can be fairly characterized as an insubstantial change from the
claimed subject ma er without rendering the pertinent limitation
D. INFRINGEMENT: SIMILARITY 209

meaningless.
In Sage Products, Inc. v. Devon Industries, Inc. we aﬃrmed the Sage Products: 126 F.3d 1420 (Fed. Cir.
district court’s grant of summary judgment of non-infringement un- 1997)
der the doctrine of equivalents. One of the asserted patents de-
scribed a container for discarding syringes and other like materials
and claimed, among other things, “an elongated slot at the top of the
container body” and a barrier means comprised of “a ﬁrst constric-
tion extending over said slot.” We agreed that the district court prop-
erly interpreted “top of the container body” to mean “highest point,
level, or part of.” The accused product diﬀered from the claimed in-
vention in that the slot was located in the interior of the container
rather than at the top of the container.
We concluded that ﬁnding infringement under these circum-
stances would vitiate the “slot at the top of the container body” and
“extending over said slot” limitations. We reached our conclusion
based on several considerations, including the simplicity of the struc-
ture, the speciﬁcity and narrowness of the claim, and the foreseeabil-
ity of variations at the time of ﬁling the claim with the PTO:
The claim at issue deﬁnes a relatively simple structural
device. A skilled patent drafter would foresee the limit-
ing potential of the “over said slot” limitation. No sub-
tlety of language or complexity of the technology, nor any
subsequent change in the state of the art, such as later-
developed technology, obfuscated the signiﬁcance of this
limitation at the time of its incorporation into the claim. If
[the patentee] desired broad patent protection for any con-
tainer that performed a function similar to its claimed con-
tainer, it could have sought claims with fewer structural
encumbrances. . . . Instead, [the patentee] left the PTO
with manifestly limited claims that it now seeks to expand
through the doctrine of 1361*1361 equivalents. However,
as between the patentee who had a clear opportunity to
negotiate broader claims but did not do so, and the pub-
lic at large, it is the patentee who must bear the cost of its
failure to seek protection for this foreseeable alteration of
its claimed structure.
Compare Hughes Aircraft Co. v. United States, 140 F.3d 1470, 1475
(Fed. Cir. 1998) (“This is a case in which a ‘subsequent change in the
state of the art, such as later-developed technology, obfuscated the
signiﬁcance of [the] limitation at the time of its incorporation into the
claim.’”).
In Tronzo v. Biomet, Inc., we similarly concluded that a ﬁnding of Tronzo: 156 F.3d 1154 (Fed. Cir. 1998)
equivalence would vitiate the claimed limitation. The asserted claims
related to an artiﬁcial hip socket and included a limitation requiring
210 CHAPTER 3. PATENT

that the prosthesis’s body have “a generally conical outer surface.”
In ﬁnding infringement, the jury concluded that the hemispherical
shape of the accused product’s hemispherical cup was equivalent to
the “generally conical outer surface” limitation. We reversed, ﬁnd-
ing no infringement as a ma er of law. We were particularly trou-
bled by expert testimony submi ed by the plaintiﬀ, Tronzo, stating
that “when either a hemispherical cup or trapezoidal cup or any other
shape cup is successfully implanted into the body, it functions almost
exactly the same way.” We stated that, according to this theory of
infringement, “any shape would be equivalent to the conical limita-
tion.” “Such a result,” we concluded, “is impermissible under the all-
elements rule of Warner-Jenkinson because it would write the ‘gener-
Asyst Techs.: 402 F.3d 1188 (Fed. Cir. ally conical outer surface’ limitation out of the claims.” See also Asyst
2005) Techs., Inc. v. Emtrak, Inc. (holding that, under the “speciﬁc exclu-
sion” principle, “the term ‘mounted’ can fairly be said to speciﬁcally
Moore: 229 F.3d 1091 (Fed. Cir. 2000) exclude objects that are ‘unmounted’”); Moore U.S.A. v Standard Regis-
ter Co. (“[T]o allow what is undisputedly a minority (i.e., 47.8%) to be
equivalent to a majority would vitiate the requirement that the ‘ﬁrst
and second longitudinal strips of adhesive … extend the majority of
the lengths of said longitudinal marginal portions.’”).
In the instant case, we think the district court’s ﬁnding of infringe-
ment under the doctrine of equivalents had the eﬀect of entirely vi-
tiating the “slidably mounted” limitation. The parties agree that all
of the claims require a support member having “a moveable end slid-
ably mounted to” the seatbase. It is also not disputed that the move-
able end of the EZ Fold’s support member is rotatably mounted, not
slidably mounted, to the seatbase. Therefore, while the moveable end
of the EZ Fold’s support member has the ability to rotate, it cannot
slide or otherwise move along the seatbase. It is conﬁned to a ﬁxed
location. We think that this structural diﬀerence in the mounting of
the moveable end to the seatbase is not a subtle diﬀerence in degree,
but rather, a clear, substantial diﬀerence or diﬀerence in kind.
Freedman argues that the slider crank claimed in the ‘389 patent
and the fourth link mechanism used in the EZ Fold function in the
same way to produce identical results. Freedman asserts that this
is because “both the infringing seat and the claimed structure of the
‘389 patent provide the moveable end of the support member with
both translational and rotational motion relative to the seatbase.” The
problem, however, is that taken to its logical conclusion, Freedman’s
argument would mean that any support member capable of allowing
translational and rotational motion would be equivalent to a support
member “slidably mounted to said seatbase,” which reads “slidably
mounted” completely out of the claims. This is the precise type of
overextension of the doctrine of equivalents that the claim vitiation
D. INFRINGEMENT: SIMILARITY 211

doctrine is intended to prevent.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
535 U.S. 722 (2002)
Petitioner Festo Corporation owns two patents [4,354,125 (Stoll) and
3,779,401 (Carroll)] for an improved magnetic rodless cylinder, a
piston-driven device that relies on magnets to move objects in a con-
veying system. The device has many industrial uses and has been em-
ployed in machinery as diverse as sewing equipment and the Thun-
der Mountain ride at Disney World. Petitioner’s patent applications,
as often occurs, were amended during the prosecution proceedings.
Both amended patents added a new limitation—that the inventions
contain a pair of sealing rings, each having a lip on one side, which
would prevent impurities from ge ing on the piston assembly. The
amended Stoll Patent added the further limitation that the outer shell
of the device, the sleeve, be made of a magnetizable material.
Prosecution history estoppel requires that the claims of a patent
be interpreted in light of the proceedings in the PTO during the ap-
plication process. Estoppel is a rule of patent construction that en-
sures that claims are interpreted by reference to those that have been
cancelled or rejected. The doctrine of equivalents allows the paten-
tee to claim those insubstantial alterations that were not captured in
drafting the original patent claim but which could be created through
trivial changes. When, however, the patentee originally claimed the
subject ma er alleged to infringe but then narrowed the claim in re-
sponse to a rejection, he may not argue that the surrendered territory
comprised unforeseen subject ma er that should be deemed equiva-
lent to the literal claims of the issued patent. On the contrary, by the
amendment the patentee recognized and emphasized the diﬀerence
between the two phrases and the diﬀerence which the patentee thus
disclaimed must be regarded as material.
A rejection indicates that the patent examiner does not believe the
original claim could be patented. While the patentee has the right
to appeal, his decision to forgo an appeal and submit an amended
claim is taken as a concession that the invention as patented does
not reach as far as the original claim. Were it otherwise, the inventor
might avoid the PTO’s gatekeeping role and seek to recapture in an
infringement action the very subject ma er surrendered as a condi-
tion of receiving the patent.
Prosecution history estoppel ensures that the doctrine of equiv-
alents remains tied to its underlying purpose. Where the original
application once embraced the purported equivalent but the paten-
tee narrowed his claims to obtain the patent or to protect its validity,
the patentee cannot assert that he lacked the words to describe the
subject ma er in question. The doctrine of equivalents is premised
on language’s inability to capture the essence of innovation, but a
212 CHAPTER 3. PATENT

prior application describing the precise element at issue undercuts
that premise. In that instance the prosecution history has established
that the inventor turned his a ention to the subject ma er in ques-
tion, knew the words for both the broader and narrower claim, and
aﬃrmatively chose the la er.
We agree with the Court of Appeals that a narrowing amendment
made to satisfy any requirement of the Patent Act may give rise to an
estoppel. Estoppel arises when an amendment is made to secure the
patent and the amendment narrows the patent’s scope. A patentee
who narrows a claim as a condition for obtaining a patent disavows
his claim to the broader subject ma er, whether the amendment was
made to avoid the prior art or to comply with § 112. We must regard
the patentee as having conceded an inability to claim the broader sub-
ject ma er or at least as having abandoned his right to appeal a rejec-
tion. In either case estoppel may apply.
On the record before us, we cannot say petitioner has rebu ed the
presumptions that estoppel applies and that the equivalents at issue
have been surrendered. Petitioner concedes that the limitations at is-
sue – the sealing rings and the composition of the sleeve – were made
in response to a rejection for reasons under § 112, if not also because of
the prior art references. As the amendments were made for a reason
relating to patentability, the question is not whether estoppel applies
but what territory the amendments surrendered.

285 F.3d 1046 (Fed. Cir. 2000) (en
Johnson & Johnston Associates v. R.E. Service Co.
banc) Johnson and Johnston Associates (Johnston) asserted United States
Patent No. 5,153,050 (the ’050 patent) against R.E. Service Co. and
Mark Frater (collectively RES). [The patent concerned a method for
making printed circuit boards by adhering them to a stiﬀ substrate
sheet during processing.]
When a patent drafter discloses but declines to claim subject mat-
ter, as in this case, this action dedicates that unclaimed subject ma er
to the public. Application of the doctrine of equivalents to recapture
subject ma er deliberately left unclaimed would conﬂict with the pri-
macy of the claims in deﬁning the scope of the patentee’s exclusive
right.
Moreover, a patentee cannot narrowly claim an invention to avoid
prosecution scrutiny by the PTO, and then, after patent issuance, use
the doctrine of equivalents to establish infringement because the spec-
iﬁcation discloses equivalents. Such a result would merely encourage
a patent applicant to present a broad disclosure in the speciﬁcation
of the application and ﬁle narrow claims, avoiding examination of
broader claims that the applicant could have ﬁled consistent with the
speciﬁcation. By enforcing this rule, the courts avoid the problem of
extending the coverage of an exclusive right to encompass more than
D. INFRINGEMENT: SIMILARITY 213

that properly examined by the PTO.
In this case, Johnston’s ’050 patent speciﬁcally limited the claims
to ”a sheet of aluminum” and ”the aluminum sheet.” The speciﬁca-
tion of the ’050 patent, however, reads: ”While aluminum is currently
the preferred material for the substrate, other metals, such as stainless
steel or nickel alloys may be used.” Having disclosed without claim-
ing the steel substrates, Johnston cannot now invoke the doctrine
of equivalents to extend its aluminum limitation to encompass steel.
Thus, Johnston cannot assert the doctrine of equivalents to cover the
disclosed but unclaimed steel substrate.
A patentee who inadvertently fails to claim disclosed subject mat-
ter, however, is not left without remedy. Within two years from the
grant of the original patent, a patentee may ﬁle a reissue application
and a empt to enlarge the scope of the original claims to include the
disclosed but previously unclaimed subject ma er.. In addition, a Reissue: 35 U.S.C. § 251 (2000)
patentee can ﬁle a separate application claiming the disclosed subject
ma er.. Notably, Johnston took advantage of the la er of the two op- Separate application: 35 U.S.C. § 120
tions by ﬁling two continuation applications that literally claim the (2000) (allowing filing as a continuation
application if filed before all applica-
relevant subject ma er
tions in the chain issue)

4 A Hybrid: Means-Plus-Function Claims

Kemco Sales, Inc. v. Control Papers Co., Inc.
208 F.3d 1352 (2000)
In order for an accused structure to literally meet a section 112, para-
graph 6 means-plus-function limitation, the accused structure must
either be the same as the disclosed structure or be a section 112, para-
graph 6 ”equivalent,” i.e., (1) perform the identical function and (2) be
otherwise insubstantially diﬀerent with respect to structure. Under a
modiﬁed version of the function-way-result methodology, two struc-
tures may be ”equivalent” for purposes of section 112, paragraph 6
if they perform the identical function, in substantially the same way,
with substantially the same result.
If an accused structure is not a section 112, paragraph 6 equiva-
lent of the disclosed structure because it does not perform the iden-
tical function of that disclosed structure and hence does not literally
infringe, it may nevertheless still be an ”equivalent” under the doc-
trine of equivalents. Thus, if one applies the traditional function-
way-result test, the accused structure must perform substantially the
same function, in substantially the same way, to achieve substantially
the same result, as the disclosed structure. A key feature that distin-
guishes ”equivalents” under section 112, paragraph 6 and ”equiva-
lents” under the doctrine of equivalents is that section 112, paragraph
6 equivalents must perform the identical function of the disclosed
structure, while equivalents under the doctrine of equivalents need
214 CHAPTER 3. PATENT

only perform a substantially similar function.
Because the ”way” and ”result” prongs are the same under both
the section 112, paragraph 6 and doctrine of equivalents tests, a struc-
ture failing the section 112, paragraph 6 test under either or both
prongs must fail the doctrine of equivalents test for the same rea-
son(s).

In the present case, we agree with the district court that no reason-
able jury could have found that the TripLok infringes, either literally
or under the doctrine of equivalents. Turning ﬁrst to literal infringe-
ment, it is clear that the foldover ﬂap structure disclosed in the ’197
patent speciﬁcation is not identical to the dual-lip structure in the ac-
cused device, so we must then ask whether the dual-lip structure is
an ”equivalent” structure under section 112, paragraph 6. In deter-
mining this under a modiﬁed function-way-result test, we note that
both the accused and disclosed structures perform the identical func-
tion, which is to close the envelope. However, unlike the disclosed
ﬂap, which closes by folding over the envelope, the dual-lip structure
closes the accused envelope in a diﬀerent way by meeting together
and binding via the internal adhesive. The accused structure’s diﬀer-
ent way of closing also yields a substantially diﬀerent result. The ﬁrst
D. INFRINGEMENT: SIMILARITY 215

and second sealing means in the disclosed structure are ultimately
a ached to the outside of the envelope. In contrast, the ﬁrst sealing
means in the TripLok envelope is internally a ached to the two lips
of the dual-lip structure, thereby sealing the envelope.
Based on this analysis, it is also clear that Control Papers does not
infringe under the doctrine of equivalents. When a court determines
that the ”way” and/or ”result” is/are substantially diﬀerent under a
section 112, paragraph 6 equivalents analysis, a patentee cannot pre-
vail under the doctrine of equivalents for the same reason(s). In this
case, the dual-lip structure is not a section 112, paragraph 6 equiva-
lent of a fold-over ﬂap because the ”way” and ”result” are substan-
tially diﬀerent; accordingly, the dual-lip structure also cannot be an
equivalent under the doctrine of equivalents.

Super Soaker Problem
Based on Larami Corp. v. Amron, No.
This is claim 1 from U.S. Patent No. 4,239,129:
CIV. A. 91-6145, 1993 WL 69581 (E.D. Pa.
A toy comprising an elongated housing [case] having a Mar. 11, 1993)
chamber therein for a liquid [tank], a pump including a
piston having an exposed rod [piston rod] and extending
rearwardly of said toy facilitating manual operation for
building up an appreciable amount of pressure in said
chamber for ejecting a stream of liquid therefrom an ap-
preciable distance substantially forwardly of said toy, and
means for controlling the ejection.
Does the Super Soaker 50 infringe this claim? Note that to use a
Super Soaker, one ﬁlls it with water through the orange cap at the
back top. Sliding the yellow handle back and forth along the white
barrel pumps air into the green part, along with water. Pulling
the trigger opens a valve that causes the air to press water for-
ward, resulting in the Super Soaker’s famed superior soaking abil-
ity. (Conventional water pistols didn’t store up compressed air; they
drove water out the barrel using the force of the trigger pull itself.)
216 CHAPTER 3. PATENT

E Infringement: Prohibited Conduct

Herman v. Youngstown Car Mfg. Co.
191 F. 579 (6th Cir. 1911)
A patent is not the grant of a right to make or use or sell. It does not,
directly or indirectly, imply any such right. It grants only the right to
exclude others. The supposition that a right to make is created by the
patent grant is obviously inconsistent with the well-known fact that a
very considerable portion of the patents granted are in a ﬁeld covered
by a former relatively generic or basic patent, are tributary to such
earlier patent, and cannot be practiced unless by license thereunder.

1 Direct Infringement
It is typically said that patent infringement is ”strict liability.” That
is, ”It is, of course, elementary, that an infringement may be entirely
inadvertent and unintentional and without knowledge of the patent.”
Blair v. Westinghouse Elec. Corp., 291 F. ”Similarly, evidence of copying is of no import on the question of
Supp. 664 (D.D.C. 1968) whether the claims of an issued patent are infringed, either literally
Depuy Spine, Inc. v. Medtronic Sofamor or by equivalents.”
Danek, Inc., 567 F.3d 1314 (Fed Cir.
2009)
Patent Act

35 U.S.C. § 271
(a) Except as otherwise provided in this title, whoever without au-
Infringement of patent thority makes, uses, oﬀers to sell, or sells any patented inven-
tion, within the United States or imports into the United States
any patented invention during the term of the patent therefor,
infringes the patent.

Akamai Technologies, Inc. v. Limelight Networks, Inc.
797 F. 3d 1020 (Fed. Cir. 2015) (en
banc) In 2006, Akamai Technologies, Inc. (”Akamai”) ﬁled a patent in-
fringement action against Limelight alleging infringement of U.S.
Patent No. 6,108,703 which claims methods for delivering content
over the Internet. The case proceeded to trial, at which the parties
agreed that Limelight’s customers – not Limelight – perform the ”tag-
ging” and ”serving” steps in the claimed methods. For example, as
for claim 34 of the ’703 patent, Limelight performs every step save
the ”tagging” step, in which Limelight’s customers tag the content to
be hosted and delivered by Limelight’s content delivery network.
Direct infringement under § 271(a) occurs where all steps of a
claimed method are performed by or a ributable to a single entity.
Where more than one actor is involved in practicing the steps, a court
must determine whether the acts of one are a ributable to the other
such that a single entity is responsible for the infringement. We will
hold an entity responsible for others’ performance of method steps
E. INFRINGEMENT: PROHIBITED CONDUCT 217

in two sets of circumstances: (1) where that entity directs or controls
others’ performance, and (2) where the actors form a joint enterprise.
The jury heard substantial evidence from which it could ﬁnd
that Limelight directs or controls its customers’ performance of each
remaining method step, such that all steps of the method are at-
tributable to Limelight. Speciﬁcally, Akamai presented substantial
evidence demonstrating that Limelight conditions its customers’ use
of its content delivery network upon its customers’ performance of
the tagging and serving steps, and that Limelight establishes the man-
ner or timing of its customers’ performance. Therefore, Limelight is
liable for direct infringement.

2 Indirect Infringement

Patent Act

(b) Whoever actively induces infringement of a patent shall be li- 35 U.S.C. § 271
able as an infringer. Infringement of patent
(c) Whoever oﬀers to sell or sells within the United States or im-
ports into the United States a component of a patented machine,
manufacture, combination or composition, or a material or ap-
paratus for use in practicing a patented process, constituting a
material part of the invention, knowing the same to be espe-
cially 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.

Limelight Networks, Inc. v. Akamai Technologies, Inc.
134 S. Ct. 2111 (2014)
Neither the Federal Circuit nor respondents dispute the proposition
that liability for inducement must be predicated on direct infringe-
ment. This is for good reason, as our case law leaves no doubt that
inducement liability may arise if, but only if, there is direct infringe-
ment. Watch the dates! This is from an earlier
stage of the case. In this 2014 opinion,
One might think that this simple truth is enough to dispose of
the Supreme Court reverses a 2012 Fed-
this appeal. But the Federal Circuit reasoned that a defendant can eral Circuit opinion. Does seeing this
be liable for inducing infringement under § 271(b) even if no one has history change your view of the Federal
commi ed direct infringement within the terms of § 271(a) (or any Circuit's 2015 opinion on remand?
other provision of the patent laws), because direct infringement can
exist independently of a violation of these statutory provisions.
The Federal Circuit’s analysis fundamentally misunderstands
what it means to infringe a method patent. A method patent claims
a number of steps; under this Court’s case law, the patent is not in-
fringed unless all the steps are carried out. This principle follows
218 CHAPTER 3. PATENT

ineluctably from what a patent is: the conferral of rights in a particu-
lar claimed set of elements. Each element contained in a patent claim
is deemed material to deﬁning the scope of the patented invention,
and a patentee’s rights extend only to the claimed combination of el-
ements, and no further.
The Federal Circuit seems to have adopted the view that Limelight
induced infringement on the theory that the steps that Limelight and
its customers perform would infringe the ‘703 patent if all the steps
were performed by the same person. But we have already rejected
the notion that conduct which would be infringing in altered circum-
stances can form the basis for contributory infringement, and we see
Deepsouth: 406 U.S. 518 (1972) no reason to apply a diﬀerent rule for inducement. In Deepsouth Pack-
ing Co. v. Laitram Corp., a manufacturer produced components of a
patented machine and then exported those components overseas to
be assembled by its foreign customers. (The assembly by the foreign
customers did not violate U.S. patent laws.) In both Deepsouth and
this case, the conduct that the defendant induced or contributed to
would have been infringing if commi ed in altered circumstances: in
Deepsouth if the machines had been assembled in the United States,
and in this case if performance of all of the claimed steps had been
a ributable to the same person. In Deepsouth, we rejected the pos-
sibility of contributory infringement because the machines had not
been assembled in the United States, and direct infringement had con-
sequently never occurred. Similarly, in this case, performance of all
the claimed steps cannot be a ributed to a single person, so direct
infringement never occurred. Limelight cannot be liable for inducing
infringement that never came to pass.

Global-Tech Appliances, Inc. v. SEB S.A.
131 S. Ct. 2060 (2011)
[SEB held a U.S. patent on a deep fryer whose exterior surface re-
mained cool to the touch. Pentalpha cloned an SEB fryer it purchased
in Hong Kong (which did not bear U.S. patent markings). It sold
infringing fryers to Sunbeam, Fingerhut, and Montgomery Ward,
which resold them in the United States. Pentalpha argued that it did
not “induce” these sales under § 271(b) because it did not know about
the patent.]
[W]e now hold that induced infringement under § 271(b) requires
knowledge that the induced acts constitute patent infringement. We
nevertheless aﬃrm the judgment of the Court of Appeals because the
evidence was plainly suﬃcient to support a ﬁnding of Pentalpha’s
knowledge under the doctrine of willful blindeness, [under which]
(1) the defendant must subjectively believe that there is a high prob-
ability that a fact exists and (2) the defendant must take deliberate
actions to avoid learning of that fact. Pentalpha’s belief that SEB’s
fryer embodied advanced technology that would be valuable in the
E. INFRINGEMENT: PROHIBITED CONDUCT 219

U.S. market is evidenced by its decision to copy all but the cosmetic
features of SEB’s fryer. Even more telling is [a Pentalpha executive’s]
decision not to inform the a orney from whom Pentalpha sought a
right-to-use opinion that the product to be evaluated was simply a
knock-oﬀ of SEB’s deep fryer.

Commil USA, LLC v. Cisco Systems Inc.
135 S. Ct. 1920 (2015)
The question the Court confronts today concerns whether a defen-
dant’s belief regarding patent validity is a defense to a claim of in-
duced infringement. It is not.
Invalidity is an aﬃrmative defense that can preclude enforcement
of a patent against otherwise infringing conduct. An accused in-
fringer can, of course, a empt to prove that the patent in suit is in-
valid; if the patent is indeed invalid, and shown to be so under proper
procedures, there is no liability. That is because invalidity is not a de-
fense to infringement, it is a defense to liability. And because of that
fact, a belief as to invalidity cannot negate the scienter required for
induced infringement.

Lucent Technologies, Inc. v. Gateway, Inc.
In December 1986, three computer engineers at [Lucent’s predeces- 580 F.3d 1301 (Fed. Cir. 2009)
sor] AT&T ﬁled a patent application, which eventually issued as the
Day patent. The patent is generally directed to a method of enter-
ing information into ﬁelds on a computer screen without using a key-
board. A user ﬁlls in the displayed ﬁelds by choosing concurrently
displayed, predeﬁned tools adapted to facilitate the inpu ing of the
information in a particular ﬁeld, wherein the predeﬁned tools include
an on-screen graphical keyboard, a menu, and a calculator.
Lucent asserts that certain features of Outlook, Money, and Win-
dows Mobile, when used, practice the methods of claims 19 and 21.
For instance, Outlook includes a calendar tool that allows the user
to enter dates in a form when preparing a record of an appointment.
The tool displays a monthly calendar as a grid of numbered dates,
along with graphical controls that allow the user to scroll to adja-
cent months or skip directly to a diﬀerent month and year. Once the
user deﬁnes a date with the tool, the software enters the numerical
day, month, and year into the corresponding ﬁeld in the appointment
form. Similar to the number pad tool illustrated in the Day patent,
Outlook’s calendar date-picker tool enables the user to select a series
of numbers, corresponding to the day, month, and year, using graph-
ical controls. This date-picker calendar tool is incorporated in a few
of Outlook’s features. Microsoft Money and Windows Mobile have
similar functionalities.
According to Microsoft, Lucent did not prove contributory in-
fringement [under § 271(c)] because the products have substantial
220 CHAPTER 3. PATENT

noninfringing uses. Lucent counters that the date-picker tool does
not have any noninfringing uses. Thus, as framed by the parties, the
main issue reduces to whether the “material or apparatus” is the en-
tire software package or just the particular tool (e.g., the calendar
date-picker) that performs the claimed method. If the former, then
Microsoft prevails because the entire software package has substan-
tial noninfringing uses. If the material or apparatus is the speciﬁc
date-picker tool, then Lucent wins because that tool was “especially
made or especially adapted for” practicing the claimed method.
One example illustrates the problem with Microsoft’s approach.
Consider a software program comprising ﬁve – and only ﬁve – fea-
tures. Each of the ﬁve features is separately and distinctly patented
using a method claim. That is, the ﬁrst feature infringes a method
claim in a ﬁrst patent, the second feature infringes a method claim
in a second patent, and so forth. Assume also that the company sell-
ing the software doesn’t provide speciﬁc instructions on how to use
the ﬁve features, thus taking potential liability outside the realm of
§ 271(b). In this scenario, under Microsoft’s position, the software
seller can never be liable for contributory infringement of any one of
the method patents because the entire software program is capable of
substantial noninfringing use. This seems both untenable as a prac-
tical outcome and inconsistent with both the statute and governing
precedent.
Similarly, if, instead of selling Outlook with the date-picker, Mi-
crosoft had oﬀered the date-picker for sale as a separate download
to be used with Outlook, there would be li le dispute that Microsoft
was contributing to infringement of the Day patent.
Hodosh: 833 F.2d 1575 (Fed. Cir. 1987) In Hodosh v. Block Drug Co., the patent at issue claimed “a method
for desensitizing teeth with a composition containing an alkali metal
nitrate.” The accused infringer sold toothpaste, e.g., “Sensodyne-F,”
containing potassium nitrate, an alkali metal nitrate. The accused
infringer argued that the sale of the toothpaste, which itself was not
patented, could not constitute contributory infringement because the
toothpaste contained a staple article, i.e., potassium nitrate. The court
rejected this argument. While potassium nitrate, when sold in bulk
form, was “a staple article or commodity of commerce suitable for
substantial noninfringing use,” it was suitable only for the infringing
use when sold as an ingredient in the toothpaste specially made to
perform the patented method of desensitizing teeth.
Here, the infringing feature for completing the forms, i.e., the
date-picker tool, is suitable only for an infringing use. Inclusion of
the date-picker feature within a larger program does not change the
date-picker’s ability to infringe. Because Microsoft included the date-
picker tool in Outlook, the jury could reasonably conclude, based on
the evidence presented, that Microsoft intended computer users to
F. DEFENSES 221

use the tool—perhaps not frequently—and the only intended use of
the tool infringed the Day patent.

Questions
1. Suppose that the Plano Bait Shop is selling empty open-topped
rectangular aluminum boxes, with a length slightly less than the
width of a bait box, lips at each end that are the right shape to at-
tach to the top edges of a bait box, and a detachable plastic cover.
Some buyers take the boxes, ﬁll them with sharp-grained sand,
and use it to immobilize earthworms. Others take the boxes
and ﬁll them with ﬁsh hooks, washcloths, or other items. Who,
if anyone, is infringing on the Lukehart patent? Does it ma er
if Plano includes instructions with the boxes explaining how to
ﬁll them with sand to immobilize earthworms?

F Defenses
1 Invalidity

Microsoft Corp. v. i4i Ltd. Partnership
131 S. Ct. 2238 (2011)
Under § 282 of the Patent Act of 1952, ”[a] patent shall be presumed
valid” and ”[t]he burden of establishing invalidity of a patent or any
claim thereof shall rest on the party asserting such invalidity.” We
consider whether § 282 requires an invalidity defense to be proved
by clear and convincing evidence. We hold that it does.

2 Exhaustion

Aktiebolag v. E.J. Co.
121 F.3d 669 (Fed. Cir. 1997)
The facts in this case are not in dispute. The patents in suit [4,222,690
and 4,381,162] are directed to a drill with a shank portion and a
unique carbide tip geometry that has specially conﬁgured cu ing
edges resulting in a drill suitable for high-feed machining with im-
proved cu ing ability especially at its center portion. The drill tip is
not separately patented.
222 CHAPTER 3. PATENT

As illustrated in the above drawings from the ’690 patent, the drill
has a tip (1), shank portion (2), twisted grooves (3), projections (4)
(these projections bend and break the chips to render them smoothly
removable) and a conical end having a center point (11) at the apex of
the cone and a pair of cu ing edges (10). The drill shank (2) is made
of medium carbon steel. The drill tip (1) is made of a more durable
carbide and is brazed to the steel shank (2). Brazing is like soldering
but with a much higher melting point. It requires a temperature of
1300 degrees Fahrenheit to join the carbide tip to the steel shank.
Sandvik manufactures a commercial embodiment of the patented
drill. Although made of durable carbide, over time and use, the drill
tip dulls and may require resharpening. Resharpening, also known
as regrinding, involves pu ing a new edge on the drill tip. Normally,
the drill can cut through about one thousand inches of material before
needing resharpening, depending, of course, upon the hardness of
the material being cut. Sandvik expects the drill tip to be resharpened
and, in fact, issues guidelines explaining how to resharpen the tip so
as to maintain the specially conﬁgured cu ing edges. Sandvik does
not contend that resharpening constitutes infringement.
E.J. oﬀers a drill repair service which includes resharpening and
retipping Sandvik drills. E.J. retips, at the request of its customers,
when the tip cannot be sharpened because it chips, cracks or simply
wears down after being resharpened several times. According to E.J’s
vice-president, Mr. Robert Hayes, some of E.J.’s customers elect not
to have the drill retipped when it cannot be resharpened any longer.
E.J. returns the drill to the customer or disposes of it at the customer’s
request. The parties agree that when the tip is damaged (i.e. chipped,
cracked or suﬃciently worn down so that it cannot be resharpened),
the drill has reached the end of its useful life unless it is retipped.
E.J.’s retipping process includes removing the worn or damaged
F. DEFENSES 223

tip by heating the tip to 1300 degrees Fahrenheit using an acetylene
torch. E.J. then brazes in a rectangular piece of new carbide onto
the drill shank. After the piece of carbide has cooled, E.J. recreates
the patented geometry of the cu ing edges by machining the carbide.
This process includes: (1) grinding the carbide to the proper outside
diameter; (2) grinding the carbide to a point; (3) grinding the rake
surfaces of the new point; (4) grinding the center of the new point;
and (5) honing the edges. In the ﬁnal steps of the machining process,
E.J. creates the cu ing edges by following Sandvik’s instructions for
tip resharpening.
Sandvik claims that E.J.’s retipping service constitutes an infring-
ing reconstruction of its patented drills. Sandvik does not manufac-
ture or sell replacement drill tips. It contends that it never intended
for the drills to be retipped. E.J. contends that its retipping service is
a lawful repair of the patented drills.
Direct infringement includes the making of a patented article
without authority. 35 U.S.C. § 271(a) (1994). Sandvik contends that
E.J. is reconstructing its patented drill and therefore infringing its ’690
and ’162 patents under § 271(a). However, when Sandvik sold its
patented drills to its customers, it granted them an implied license
to use the drill for its useful life, see Aro Mfg. Co. v. Convertible Top Aro II: 377 U.S. 476 (1964)
Replacement Co. (”Aro II”), and the implied license to use includes the
right to repair the patented drill.
The Supreme Court has taken an expansive view of what consti-
tutes a permissible repair. In Aro Mfg. Co. v. Convertible Top Re- Aro I: 365 U.S. 336 (1961)
placement Co. (”Aro I”), the Court held that the replacement of the
fabric portion of a convertible car top was a permissible repair, not
an infringing reconstruction. The Court held: ”No element, not itself
separately patented, that constitutes one of the elements of a combina-
tion patent is entitled to patent monopoly, however essential it may
be to the patented combination and no ma er how costly or diﬃcult
replacement may be.” Therefore, even if E.J.’s retipping service cost
almost as much as the drill or if the replacement of the tip is diﬃcult
and time consuming, as in this case, these factors are not dispositive
of reconstruction.
The Court also rejected the ”heart of the invention test.” See id.
(holding that replacement of the distinguishing part of the patented
combination does not amount to a reconstruction because a patent
covers the totality of the elements in a combination); see also Daw- Dawson Chem.: 448 U.S. 176 (1980)
son Chemical Co. v. Rohm & Haas Co. (This Court has ”eschewed the
suggestion that the legal distinction between ‘reconstruction’ and ‘re-
pair’ should be aﬀected by whether the element of the combination
that has been replaced is an ‘essential’ or ‘distinguishing’ part of the
invention.”); Sage Products (”The size or relative importance of the
replacement part to the patented combination is not relevant when
224 CHAPTER 3. PATENT

determining whether conduct constitutes repair or replacement.”).
Therefore, the fact that E.J. may be replacing the novel features of
the ’690 patented invention is also not dispositive of reconstruction.
In Aro I, the Supreme Court further explained the test for what
constitutes a reconstruction: ”The decisions of this Court require the
conclusion that reconstruction of a patented entity, comprised of un-
patented elements, is limited to such a true reconstruction of the en-
tity as to ‘in fact make a new article,’ after the entity, viewed as a
whole, has become spent.” Although we question the district court’s
ﬁnding that the tip is, in fact, a separate part of the device, we need
not reach this issue because the court nevertheless failed to analyze
whether the replacement of this ”part” constituted reconstruction
consistent with Aro I.
There are a number of factors to consider in determining whether
a defendant has made a new article, after the device has become spent,
including the nature of the actions by the defendant, the nature of the
device and how it is designed (namely, whether one of the compo-
nents of the patented combination has a shorter useful life than the
whole), whether a market has developed to manufacture or service
the part at issue and objective evidence of the intent of the patentee.
Under the totality of the circumstances, we hold in this case that E.J.’s
actions are a reconstruction.
By E.J.’s own admission, the drill is ”spent” when the tip can no
longer be resharpened unless it is retipped. In fact, the record reveals
that E.J.’s customers may elect not to retip and inform E.J. to discard
the drill instead.
Moreover, the nature of the work done by E.J. shows that retip-
ping is more like reconstruction than repair. E.J. does not just a ach
a new part for a worn part, but rather must go though several steps
to replace, conﬁgure and integrate the tip onto the shank. It has to
break the worn or damaged tip from the shank by heating it to 1300
degrees Fahrenheit. It brazes to the shank a new rectangular block of
carbide and grinds and machines it to the proper diameter and cre-
ates the point. Thereafter, the tip is honed and sharpened, grinding
the rake surfaces and the center of the point and honing the edges.
These actions are eﬀectively a re-creation of the patented invention
after it is spent.
This is not a case where it is clear that the patented device has
a useful life much longer than that of certain parts which wear out
Wilson: 50 U.S. 109 (1850) quickly. For example, in Wilson v. Simpson, in determining that a re-
pair had occurred, the Supreme Court focused speciﬁcally on the fact
that the machine was designed so that the knives had to be replaced
long before the other components:
The proof in the case, is, that one of [the patentee’s] ma-
F. DEFENSES 225

chines, properly made, will last in use for several years,
but that its cu ing-knives will wear out and must be re-
placed at least every sixty or ninety days. [If such a] part
of the combination is meant to be only temporary in the
use of the whole, and to be frequently replaced, because it
will not last as long as the other parts of the combination,
its inventor cannot complain.
See also Aro I (noting that the fabric had a much shorter expected life
(about three years) than the convertible car top); Porter v. Farmer Sup- Porter: 790 F.2d 882 (Fed. Cir. 1986)
ply Serv., Inc. (”The useful life of a disk is measured in weeks, that of a
harvester is ﬁve or six years. The district court found, and it is undis-
puted, that a purchaser can expect to wear out many disks during the
useful life of the header.”).
The drill tip in this case is not a part like the detachable knives in
the Wilson that have to be replaced periodically over the useful life
of the planing machine. The drill tip was not manufactured to be a
replaceable part, although it could be resharpened a number of times
to extend its life. It was not intended or expected to have a life of
temporary duration in comparison to the drill shank. And ﬁnally, the
tip was not a ached to the shank in a manner to be easily detachable.
In Aro I, the Supreme Court also noted that ”the consequent de-
mand for replacement fabrics has given rise to a substantial indus-
try.” Evidence of development in the industry could also be a factor
tending to prove that there is a reasonable expectation that the part
of the patented combination wears out quickly and requires frequent
replacement. In this case, there is no evidence of a substantial mar-
ket for drill retipping of the sort required for the Sandvik drill. There
is no evidence of large numbers of customers retipping these drills
or of companies (other than E.J.) oﬀering to retip these drills. No
one manufactures replacement tips for Sandvik’s drill and although
some customers opt to retip the drill only a small percentage of all
drills manufactured are retipped.
Finally, there was no intent evidenced by the patentee that would
support E.J.’s argument that replacement of the tips is a repair. See
Sage Products (evidence that patentee intended the inner containers
to be replaced, that it manufactures replacement parts and instructs
customers to replace supports holding such replacement a permis-
sible repair); Porter (considering that the patentee sold replacement
cu ing disks for its tomato harvester). The evidence shows that Sand-
vik never intended for its drills to be retipped. It did not manufacture
or sell replacement drill tips. It did not publish instructions on how
to retip its patented drills or suggest that the drills could or should be
retipped. Sandvik was aware that the drill tip would need occasional
resharpening and instructed its customer on how to resharpen the
226 CHAPTER 3. PATENT

tip. There is, therefore, no objective evidence that Sandvik’s drill tip
was intended to be a replaceable part. Although the repair or recon-
struction issue does not turn on the intention of the patentee alone,
the fact that no replacement drill tips have ever been made or sold by
the patentee is consistent with the conclusion that replacement of the
carbide tip is not a permissible repair.
Although there is no bright-line test for determining whether re-
construction or repair has occurred, we conclude based on all of the
facts in this case that E.J. is reconstructing an otherwise spent device
when it retips Sandvik’s drills. Accordingly, we hold that E.J.’s drill
tip replacements infringe the ’690 and ’162 patents.

Quanta Computer, Inc. v. LG Electronics, Inc.
553 U.S. 617 (2008)
I
Respondent LG Electronics, Inc. (LGE), purchased a portfolio of com-
puter technology patents in 1999 [relating to the storage of data in
computer memory.]
LGE licensed a patent portfolio, including the LGE Patents, to
Intel Corporation (Intel). The cross-licensing agreement (License
Agreement) permits Intel to manufacture and sell microprocessors
and chipsets that use the LGE Patents (the Intel Products). The Li-
cense Agreement authorizes Intel to ”‘make, use, sell (directly or indi-
rectly), oﬀer to sell, import or otherwise dispose of’” its own products
practicing the LGE Patents. Notwithstanding this broad language,
the License Agreement contains some limitations. Relevant here, it
stipulates that no license
is granted by either party hereto . . . to any third party for
the combination by a third party of Licensed Products of
either party with items, components, or the like acquired
. . . from sources other than a party hereto, or for the use,
import, oﬀer for sale or sale of such combination.
The License Agreement purports not to alter the usual rules of patent
exhaustion, however, providing that, ”[n]otwithstanding anything to
the contrary contained in this Agreement, the parties agree that noth-
ing herein shall in any way limit or alter the eﬀect of patent exhaus-
tion that would otherwise apply when a party hereto sells any of its
Licensed Products.”
In a separate agreement (Master Agreement), Intel agreed to give
wri en notice to its own customers informing them that, while it had
obtained a broad license ”ensuring that any Intel product that you
purchase is licensed by LGE and thus does not infringe any patent
held by LGE,” the license ”does not extend, expressly or by implica-
tion, to any product that you make by combining an Intel product
F. DEFENSES 227

with any non-Intel product.” The Master Agreement also provides
that ”a breach of this Agreement shall have no eﬀect on and shall not
be grounds for termination of the Patent License.”
Petitioners, including Quanta Computer (collectively Quanta),
are a group of computer manufacturers. Quanta purchased micro-
processors and chipsets from Intel and received the notice required
by the Master Agreement. Nonetheless, Quanta manufactured com-
puters using Intel parts in combination with non-Intel memory and
buses in ways that practice the LGE Patents. Quanta does not modify
the Intel components and follows Intel’s speciﬁcations to incorporate
the parts into its own systems.
II
The longstanding doctrine of patent exhaustion provides that the ini-
tial authorized sale of a patented item terminates all patent rights to
that item. In Adams v. Burke, the Court aﬃrmed the dismissal of Adams: 17 Wall. 453 (1873)
a patent holder’s suit alleging that a licensee had violated postsale
restrictions on where patented coﬃn-lids could be used. ”Where a
person has purchased a patented machine of the patentee or his as-
signee,” the Court held, ”this purchase carries with it the right to the
use of that machine so long as it is capable of use.”
Although the Court permi ed postsale restrictions on the use of
a patented article in Henry v. A.B. Dick Co.,2 that decision was short A.B. Dick: 224 U.S. 1 (1912)
lived. In 1913, the Court refused to apply A.B. Dick to uphold price-
ﬁxing provisions in a patent license. See Bauer & Cie v. O’Donnell. Bauer: 229 U.S. 1 (1913)
Shortly thereafter, in Motion Picture Patents Co. v. Universal Film Mfg. Motion Picture Patents: 243 U.S. 502
Co., the Court explicitly overruled A.B. Dick. In that case, a patent (1917)
holder a empted to limit purchasers’ use of its ﬁlm projectors to
show only ﬁlm made under a patent held by the same company. The
Court noted the ”increasing frequency” with which patent holders
were using A.B. Dick-style licenses to limit the use of their products
and thereby using the patents to secure market control of related, un-
patented items. Observing that ”the primary purpose of our patent
laws is not the creation of private fortunes for the owners of patents
but is to promote the progress of science and useful arts,” the Court
held that ”the scope of the grant which may be made to an inventor in
a patent, pursuant to the patent statute, must be limited to the inven-
2
The A.B. Dick Company sold mimeograph machines with an a ached license
stipulating that the machine could be used only with ink, paper, and other supplies
made by the A.B. Dick Company. The Court rejected the notion that a patent holder
”can only keep the article within the control of the patent by retaining the title,” and
held that ”any reasonable stipulation, not inherently violative of some substantive
law” was ”valid and enforceable.” The only requirement, the Court held, was that
”the purchaser must have notice that he buys with only a qualiﬁed right of use,”
so that a sale made without conditions resulted in ”an unconditional title to the
machine, with no limitations upon the use.”
228 CHAPTER 3. PATENT

tion described in the claims of his patent.” Accordingly, it reiterated
the rule that ”the right to vend is exhausted by a single, unconditional
sale, the article sold being thereby carried outside the monopoly of
the patent law and rendered free of every restriction which the ven-
dor may a empt to put upon it.”
Univis: 316 U.S. 241 (1942) This Court most recently discussed patent exhaustion in United
States v. Univis Lens Co.. Univis Lens Company, the holder of patents
on eyeglass lenses, licensed a purchaser to manufacture lens blanks3
by fusing together diﬀerent lens segments to create bi- and tri-focal
lenses and to sell them to other Univis licensees at agreed-upon rates.
Wholesalers were licensed to grind the blanks into the patented ﬁn-
ished lenses, which they would then sell to Univis-licensed prescrip-
tion retailers for resale at a ﬁxed rate. Finishing retailers, after grind-
ing the blanks into patented lenses, would sell the ﬁnished lenses to
consumers at the same ﬁxed rate. The United States sued Univis un-
15 U.S.C. §§ 1, 3, 15 der the Sherman Act, alleging unlawful restraints on trade. Univis
asserted its patent monopoly rights as a defense to the antitrust suit.
The Court granted certiorari to determine whether Univis’ patent
monopoly survived the sale of the lens blanks by the licensed manu-
facturer and therefore shielded Univis’ pricing scheme from the Sher-
man Act.
The Court assumed that the Univis patents containing claims for
ﬁnished lenses were practiced in part by the wholesalers and ﬁnish-
ing retailers who ground the blanks into lenses, and held that the sale
of the lens blanks exhausted the patents on the ﬁnished lenses. The
Court explained that the lens blanks ”embodi[ed] essential features
of the patented device and [were] without utility until . . . ground
and polished as the ﬁnished lens of the patent.” The Court noted that:
”where one has sold an uncompleted article which, be-
cause it embodies essential features of his patented inven-
tion, is within the protection of his patent, and has des-
tined the article to be ﬁnished by the purchaser in confor-
mity to the patent, he has sold his invention so far as it is
or may be embodied in that particular article.”
In sum, the Court concluded that the traditional bar on patent re-
strictions following the sale of an item applies when the item suﬃ-
ciently embodies the patent – even if it does not completely practice
the patent – such that its only and intended use is to be ﬁnished under
the terms of the patent.
III
3
Lens blanks are rough opaque pieces of glass of suitable size, design and com-
position for use, when ground and polished, as multi-focal lenses in eyeglasses.
F. DEFENSES 229

A
LGE argues that the exhaustion doctrine is inapplicable here because
it does not apply to method claims, which are contained in each of the
LGE Patents. LGE reasons that, because method patents are linked
not to a tangible article but to a process, they can never be exhausted
through a sale. Rather, practicing the patent – which occurs upon
each use of an article embodying a method patent–is permissible
only to the extent rights are transferred in an assignment contract.
Quanta, in turn, argues that there is no reason to preclude exhaus-
tion of method claims, and points out that both this Court and the
Federal Circuit have applied exhaustion to method claims. It argues
that any other rule would allow patent holders to avoid exhaustion
entirely by inserting method claims in their patent speciﬁcations.
Quanta has the be er of this argument. Nothing in this Court’s ap-
proach to patent exhaustion supports LGE’s argument that method
patents cannot be exhausted. It is true that a patented method may
not be sold in the same way as an article or device, but methods
nonetheless may be ”embodied” in a product, the sale of which ex-
hausts patent rights. Our precedents do not diﬀerentiate transactions
involving embodiments of patented methods or processes from those
involving patented apparatuses or materials. To the contrary, this
Court has repeatedly held that method patents were exhausted by
the sale of an item that embodied the method. In Ethyl Gasoline Corp. Ethyl Gasoline: 309 U.S. 436 (1940)
v. United States, for example, the Court held that the sale of a mo-
tor fuel produced under one patent also exhausted the patent for a
method of using the fuel in combustion motors.4 Similarly, as previ-
ously described, Univis held that the sale of optical lens blanks that
partially practiced a patent exhausted the method patents that were
not completely practiced until the blanks were ground into lenses.
These cases rest on solid footing. Eliminating exhaustion for
method patents would seriously undermine the exhaustion doctrine.
Patentees seeking to avoid patent exhaustion could simply draft their
patent claims to describe a method rather than an apparatus. Appa-
ratus and method claims may approach each other so nearly that it
will be diﬃcult to distinguish the process from the function of the
apparatus. By characterizing their claims as method instead of appa-
ratus claims, or including a method claim for the machine’s patented
method of performing its task, a patent drafter could shield practi-
4
The patentee held patents for (1) a ﬂuid additive increasing gasoline eﬃciency,
(2) motor fuel produced by mixing gasoline with the patented ﬂuid, and (3) a
method of using fuel containing the patented ﬂuid in combustion motors. The
patentee sold only the ﬂuid, but a empted to control sales of the treated fuel. The
Court held that the sale of the ﬂuid to reﬁners relinquished the patentee’s exclusive
rights to sell the treated fuel.
230 CHAPTER 3. PATENT

cally any patented item from exhaustion.
This case illustrates the danger of allowing such an end-run
around exhaustion. On LGE’s theory, although Intel is authorized
to sell a completed computer system that practices the LGE Patents,
any downstream purchasers of the system could nonetheless be liable
for patent infringement. Such a result would violate the longstand-
ing principle that, when a patented item is once lawfully made and
sold, there is no restriction on its use to be implied for the beneﬁt of
the patentee.
B
We next consider the extent to which a product must embody a patent
in order to trigger exhaustion. Quanta argues that, although sales of
an incomplete article do not necessarily exhaust the patent in that ar-
ticle, the sale of the microprocessors and chipsets exhausted LGE’s
patents in the same way the sale of the lens blanks exhausted the
patents in Univis. Just as the lens blanks in Univis did not fully prac-
tice the patents at issue because they had not been ground into ﬁn-
ished lenses, Quanta observes, the Intel Products cannot practice the
LGE Patents – or indeed, function at all – until they are combined
with memory and buses in a computer system. If, as in Univis, patent
rights are exhausted by the sale of the incomplete item, then LGE has
no postsale right to require that the patents be practiced using only In-
tel parts. Quanta also argues that exhaustion doctrine will be a dead
le er unless it is triggered by the sale of components that essentially,
even if not completely, embody an invention. Otherwise, patent hold-
ers could authorize the sale of computers that are complete with the
exception of one minor step – say, inserting the microprocessor into a
socket – and extend their rights through each downstream purchaser
all the way to the end user.
We agree with Quanta that Univis governs this case. As the Court
there explained, exhaustion was triggered by the sale of the lens
blanks because their only reasonable and intended use was to prac-
tice the patent and because they ”embodie[d] essential features of
[the] patented invention.” Each of those a ributes is shared by the
microprocessors and chipsets Intel sold to Quanta under the License
Agreement.
C
Having concluded that the Intel Products embodied the patents, we
next consider whether their sale to Quanta exhausted LGE’s patent
rights. Exhaustion is triggered only by a sale authorized by the patent
holder.
LGE argues that there was no authorized sale here because the Li-
cense Agreement does not permit Intel to sell its products for use in
F. DEFENSES 231

combination with non-Intel products to practice the LGE Patents. It
cites General Talking Pictures Corp. v. Western Elec. Co. I, and General General Talking Pictures I: 304 U.S. 175
Talking Pictures Corp. v. Western Elec. Co. II, in which the manufac- (1938)
turer sold patented ampliﬁers for commercial use, thereby breaching General Talking Pictures II: 305 U.S. 124
(1938)
a license that limited the buyer to selling the ampliﬁers for private and
home use. The Court held that exhaustion did not apply because the
manufacturer had no authority to sell the ampliﬁers for commercial
use, and the manufacturer ”could not convey to petitioner what both
knew it was not authorized to sell.” LGE argues that the same princi-
ple applies here: Intel could not convey to Quanta what both knew it
was not authorized to sell, i.e., the right to practice the patents with
non-Intel parts.
LGE overlooks important aspects of the structure of the Intel-LGE
transaction. Nothing in the License Agreement restricts Intel’s right
to sell its microprocessors and chipsets to purchasers who intend
to combine them with non-Intel parts. It broadly permits Intel to
”‘make, use, [or] sell’” products free of LGE’s patent claims. To be
sure, LGE did require Intel to give notice to its customers, includ-
ing Quanta, that LGE had not licensed those customers to practice
its patents. But neither party contends that Intel breached the agree-
ment in that respect. In any event, the provision requiring notice to
Quanta appeared only in the Master Agreement, and LGE does not
suggest that a breach of that agreement would constitute a breach of
the License Agreement. Hence, Intel’s authority to sell its products
embodying the LGE Patents was not conditioned on the notice or on
Quanta’s decision to abide by LGE’s directions in that notice.
LGE points out that the License Agreement speciﬁcally dis-
claimed any license to third parties to practice the patents by com-
bining licensed products with other components. But the question
whether third parties received implied licenses is irrelevant because
Quanta asserts its right to practice the patents based not on implied
license but on exhaustion. And exhaustion turns only on Intel’s own
license to sell products practicing the LGE Patents.
Alternatively, LGE invokes the principle that patent exhaustion
does not apply to postsale restrictions on ”making” an article. But
this is simply a rephrasing of its argument that combining the Intel
Products with other components adds more than standard ﬁnishing
to complete a patented article. As explained above, making a product
that substantially embodies a patent is, for exhaustion purposes, no
diﬀerent from making the patented article itself. In other words, no
further ”making” results from the addition of standard parts–here,
the buses and memory – to a product that already substantially em-
bodies the patent.
The License Agreement authorized Intel to sell products that prac-
ticed the LGE Patents. No conditions limited Intel’s authority to sell
232 CHAPTER 3. PATENT

products substantially embodying the patents. Because Intel was au-
thorized to sell its products to Quanta, the doctrine of patent exhaus-
tion prevents LGE from further asserting its patent rights with respect
to the patents substantially embodied by those products.7

Lexmark Intern., Inc. v. Impression Products, Inc.
816 F. 3d 721 (Fed Cir. 2016) (en banc)
Lexmark International, Inc. makes and sells printers as well as toner
cartridges for its printers. Lexmark owns a number of patents that
cover its cartridges and their use.
Lexmark oﬀers buyers a choice. A buyer may purchase a ”Regular
Cartridge” at full price, in which case the buyer is not subject to any
sale terms restricting reuse or resale of the cartridge. Alternatively, a
buyer may purchase a ”Return Program Cartridge” at a discount of
roughly 20 percent, subject to a single-use/no-resale restriction: the
buyer may not reuse the cartridge after the toner runs out and may
not transfer it to anyone but Lexmark once it is used, i.e., the buyer
must ”return” the cartridge ”only” to Lexmark.
The distinctness of the options for buyers, which produce diﬀer-
ent revenues for Lexmark, is not just a ma er of diﬀerent terms of
sale. It also is reﬂected in a microchip in the cartridges that, among
other things, communicates with the printer. For a Return Program
cartridge, the chip and printer, by monitoring toner levels, prevent
use of a reﬁlled cartridge. For a Regular cartridge, the toner can
be replenished and the cartridge reused. To circumvent this tech-
nological measure, however, third parties have ”hacked” Lexmark’s
microchips and created their own ”unauthorized replacement” mi-
crochips” that, when installed in a Return Program cartridge, fool
the printer into allowing reuse of that cartridge. It is undisputed that
various companies gather spent cartridges, replace the microchips,
reﬁll and ”remanufacture” the cartridges, and sell them to resellers
like Impression for marketing to consumers for use with Lexmark
printers.
Lexmark sells its cartridges in two channels of distribution. It
sells directly to end users, and it sells to ”re-sellers” (including whole-
salers, dealers, and distributors). There is no dispute about the ade-
quacy of notice to resellers as well as end users or the binding nature
of the Lexmark-reseller agreements.
Mallinckrodt: 976 F.2d 700 (Fed. Cir. We adhere to the holding of Mallinckrodt, Inc. v. Medipart, Inc., that
1992) a patentee, when selling a patented article subject to a single-use/no-
resale restriction that is lawful and clearly communicated to the pur-
chaser, does not by that sale give the buyer, or downstream buyers,
7
We note that the authorized nature of the sale to Quanta does not necessarily
limit LGE’s other contract rights. LGE’s complaint does not include a breach-of-
contract claim, and we express no opinion on whether contract damages might be
available even though exhaustion operates to eliminate patent damages.
F. DEFENSES 233

the resale/reuse authority that has been expressly denied. Such resale
or reuse, when contrary to the known, lawful limits on the authority
conferred at the time of the original sale, remains unauthorized and
therefore remains infringing conduct under the terms of § 271.
Mallinckrodt involved a patentee’s sale of its medical device to hos-
pitals, subject to a ”single use only” restriction. But some hospital
purchasers instead sent used devices to Medipart for reconditioning
and for replacement of certain components.
As the Mallinckrodt court observed, in General Talking Pictures II
”the patentee had authorized the licensee to make and sell ampliﬁers
embodying the patented invention for a speciﬁed use (home radios),”
and ”the defendant had purchased the patented ampliﬁer from the
manufacturing licensee, with knowledge of the patentee’s restriction
on use,” but used it contrary to the restriction. The Supreme Court
held that the defendant was liable for infringement; it ”observed that
a restrictive license to a particular use was permissible, and treated
the purchaser’s unauthorized use as infringement of the patent.” This
court noted that the Supreme Court in General Talking Pictures II ”did
not decide the situation where the patentee was the manufacturer”
and seller. This court then held that to distinguish the patentee sale
(at issue in Mallinckrodt) from the licensee sale General Talking Pictures
II would be to make ”formalistic distinctions of no economic conse-
quence.”
The court in Mallinckrodt concluded that ”unless the condition vi-
olates some other law or policy, private parties retain the freedom to
contract concerning conditions of sale.” Thus, unless a sale restriction
is improper under some other body of law, whether within the Patent
Act or outside it, a patentee’s own sale of its patented article subject
to a clearly communicated restriction does not confer authority to sell
or use the article in violation of that restriction, i.e., does not exhaust
the patentee’s § 271 rights against such conduct involving that article.
The district court concluded in this case that Quanta overturned
the Mallinckrodt rule as to a patentee’s sale of a patented article subject
to a clearly communicated single-use/no-resale restriction. But no is-
sue as to such a sale was presented for decision or decided in Quanta.
And the Supreme Court in Quanta did not address the distinction be-
tween patentee sales and licensee sales on which the argument for
overturning Mallinckrodt rests.
Dyk, Circuit Judge, dissenting, with whom Circuit Judge Hughes
joins.
I respectfully dissent from the majority’s holding that Mallinckrodt
remains good law. I agree with the government that Mallinckrodt was
wrong when decided, and in any event cannot be reconciled with
the Supreme Court’s recent decision in Quanta. We exceed our role
234 CHAPTER 3. PATENT

as a subordinate court by declining to follow the explicit domestic
exhaustion rule announced by the Supreme Court.

3 Miscellaneous

Patent Act

§ 273(a)
A person shall be entitled to a defense under section 282(b) with
Defense to infringement based on prior respect to subject ma er consisting of a process, or consisting of a
commercial use machine, manufacture, or composition of ma er used in a manufac-
turing or other commercial process, that would otherwise infringe a
claimed invention being asserted against the person if –
Even though thousands of patent cases (1) such person, acting in good faith, commercially used the sub-
are filed every year, the prior use de- ject ma er in the United States, either in connection with an
fense is only rarely asserted. Why might
internal commercial use or an actual arm’s length sale or other
that be?
arm’s length commercial transfer of a useful end result of such
commercial use; and
(2) such commercial use occurred at least 1 year before the earlier
of either—
(A) the eﬀective ﬁling date of the claimed invention; or
(B) the date on which the claimed invention was disclosed to
the public in a manner that qualiﬁed for the exception from
prior art under section 102(b).

Madey v. Duke University
307 F.3d 1351 (Fed Cir. (2002)
[Madey owned a patent on certain laser technology. Duke practiced
the patent as part of a research project under a federally funded
grant.]
Madey argues, and we agree, that the district court had an overly
broad conception of the very narrow and strictly limited experimen-
tal use defense. The district court stated that the experimental use
defense inoculated uses that ”were solely for research, academic, or
experimental purposes,” and that the defense covered use that ”is
made for experimental, non-proﬁt purposes only.” Both formulations
are too broad and stand in sharp contrast to our admonitions in Em-
brex and Roche that the experimental use defense is very narrow and
Embrex: 216 F. 3d 1343 strictly limited. In Embrex, Inc. v. Service Engineering Corp, we held
that the defense was very narrow and limited to actions performed
”for amusement, to satisfy idle curiosity, or for strictly philosophical
inquiry.” Further, use does not qualify for the experimental use de-
fense when it is undertaken in the ”guise of scientiﬁc inquiry” but has
”deﬁnite, cognizable, and not insubstantial commercial purposes.”
F. DEFENSES 235

Our precedent clearly does not immunize use that is in any way
commercial in nature. Similarly, our precedent does not immunize
any conduct that is in keeping with the alleged infringer’s legitimate
business, regardless of commercial implications. For example, major
research universities, such as Duke, often sanction and fund research
projects with arguably no commercial application whatsoever. How-
ever, these projects unmistakably further the institution’s legitimate
business objectives, including educating and enlightening students
and faculty participating in these projects. These projects also serve,
for example, to increase the status of the institution and lure lucrative
research grants, students and faculty.
In the present case, the district court a ached too great a weight to
the nonproﬁt, educational status of Duke, eﬀectively suppressing the
fact that Duke’s acts appear to be in accordance with any reasonable
interpretation of Duke’s legitimate business objectives. The correct
focus should not be on the non-proﬁt status of Duke but on the legit-
imate business Duke is involved in and whether or not the use was
solely for amusement, to satisfy idle curiosity, or for strictly philo-
sophical inquiry.
236 CHAPTER 3. PATENT
4

Copyright protects creative expression. In some respects it is struc- The standard copyright treatises are
turally analogous to patent law: both reward someone who creates Melville B. Nimmer & David Nimmer,
Nimmer on Copyright (Matthew Bender,
valuable information with exclusive rights over it. But in many other
on Lexis), William F. Patry, Patry on
respects – including subject ma er, novelty, registration, term, and Copyright (Thomson Reuters, on West-
similarity – copyright is almost completely the opposite of patent. law), and Paul Goldstein, Goldstein on
The standard justiﬁcation for copyright law is a familiar and util- Copyright (Wolters Kluwer).
itarian: to maximize public access to the fruits of human creativity.
Thus, copyright law provides an economic incentive to create new
expressive works, and provides protections to encourage the distri-
bution of those works. Another rationale, with more of a natural-law
ﬂavor, is to protect authors’ non-economic rights by giving them cre-
ative control. One sometimes also sees arguments that link copyright
and freedom of speech in a shared goal of creating a diverse society
with a healthy culture and healthy democracy.

A Subject Matter

Copyright protection subsists, in accordance with this title, in origi- 17 U.S.C. § 102(a)
nal works of authorship ﬁxed in any tangible medium of expression, Subject matter of copyright: In general
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. Works of authorship include the follow-
ing categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
238 CHAPTER 4. COPYRIGHT

(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.

Feist Publications, Inc. v. Rural Telephone Service Co.
499 U.S. 340 (1991)
The sine qua non of copyright is originality. To qualify for copyright
protection, a work must be original to the author. Original, as the
term is used in copyright, means only that the work was indepen-
dently created by the author (as opposed to copied from other works),
and that it possesses at least some minimal degree of creativity. To
be sure, the requisite level of creativity is extremely low; even a slight
amount will suﬃce. The vast majority of works make the grade quite
easily, as they possess some creative spark, no ma er how crude,
humble or obvious it might be. Originality does not signify novelty;
a work may be original even though it closely resembles other works
so long as the similarity is fortuitous, not the result of copying. To il-
lustrate, assume that two poets, each ignorant of the other, compose
identical poems. Neither work is novel, yet both are original and,
hence, copyrightable.

Elsewhere, Feist helpfully expresses the elements of originality as ”in-
dependent creation plus a modicum of creativity.” The second prong
We will return to independent creation is the subject (pun intended) of this section. First, we look at it as
in the Ownership section. a threshold test: when are works uncopyrightable because they are
uncreative? Then, we ask whether it expresses any exclusions from
copyrightability. In one sense, no: courts are not to inquire into a
work’s quality or morality. In another sense, yes: ”ideas” are re-
garded as uncopyrightable, even if they are original.

1 Creativity: How Much Is a Modicum?

Code of Federal Regulations

37 C.F.R. § 202.1
The following are examples of works not subject to copyright and
Material not subject to copyright applications for registration of such works cannot be entertained:
"The chief similarity between the two (a) Words and short phrases such as names, titles, and slogans; fa-
works is identity of title [We Who Are miliar symbols or designs; mere variations of typographic orna-
Young], but it is well settled that the mentation, le ering or coloring; mere listing of ingredients or
copyright of a book or play does not
give the copyright owner the exclusive
contents;
right to the use of the title." Becker v. (d) Works consisting entirely of information that is common prop-
Loew's, Inc., 133 F.2d 889 (7th Cir. 1943) erty containing no original authorship, such as, for example:
A. SUBJECT MATTER 239

Standard calendars, height and weight charts, tape measures
and rulers, schedules of sporting events, and lists or tables taken
from public documents or other common sources.

Feist Publications, Inc. v. Rural Telephone Service Co.
499 U.S. 340 (1991)
This case requires us to clarify the extent of copyright protection avail-
able to telephone directory white pages.
I
Rural Telephone Service Company, Inc., is a certiﬁed public utility
that provides telephone service to several communities in northwest
Kansas. It is subject to a state regulation that requires all telephone
companies operating in Kansas to issue annually an updated tele-
phone directory. Accordingly, as a condition of its monopoly fran-
chise, Rural publishes a typical telephone directory, consisting of
white pages and yellow pages. The white pages list in alphabeti-
cal order the names of Rural’s subscribers, together with their towns
and telephone numbers. The yellow pages list Rural’s business sub-
scribers alphabetically by category and feature classiﬁed advertise-
ments of various sizes. Rural distributes its directory free of charge
to its subscribers, but earns revenue by selling yellow pages adver-
tisements.
[Feist published a telephone directory, containing both white and
yellow pages, covering a much larger geographic area. It contained
46,878 white-pages listings. Feist requested a license to Rural’s list-
ings; Rural refused.]
Unable to license Rural’s white pages listings, Feist used them
without Rural’s consent. Feist began by removing several thousand
listings that fell outside the geographic range of its area-wide di-
rectory, then hired personnel to investigate the 4,935 that remained.
These employees veriﬁed the data reported by Rural and sought to
obtain additional information. As a result, a typical Feist listing in-
cludes the individual’s street address; most of Rural’s listings do not.
Notwithstanding these additions, however, 1,309 of the 46,878 list-
ings in Feist’s 1983 directory were identical to listings in Rural’s 1982-
1983 white pages. Four of these were ﬁctitious listings that Rural had
inserted into its directory to detect copying.
Rural sued for copyright infringement in the District Court for the
District of Kansas taking the position that Feist, in compiling its own
directory, could not use the information contained in Rural’s white
pages. Rural asserted that Feist’s employees were obliged to travel
door-to-door or conduct a telephone survey to discover the same in-
formation for themselves. Feist responded that such eﬀorts were eco-
nomically impractical and, in any event, unnecessary because the in-
formation copied was beyond the scope of copyright protection. The
240 CHAPTER 4. COPYRIGHT

District Court granted summary judgment to Rural.
II
A
This case concerns the interaction of two well-established proposi-
tions. The ﬁrst is that facts are not copyrightable; the other, that com-
pilations of facts generally are. Each of these propositions possesses
an impeccable pedigree.
The key to resolving the tension lies in understanding why facts
are not copyrightable. No one may claim originality as to facts. This
is because facts do not owe their origin to an act of authorship. The
distinction is one between creation and discovery: The ﬁrst person to
ﬁnd and report a particular fact has not created the fact; he or she has
merely discovered its existence.
Factual compilations, on the other hand, may possess the requi-
site originality. The compilation author typically chooses which facts
to include, in what order to place them, and how to arrange the col-
lected data so that they may be used eﬀectively by readers. These
choices as to selection and arrangement, so long as they are made
independently by the compiler and entail a minimal degree of cre-
ativity, are suﬃciently original that Congress may protect such com-
pilations through the copyright laws.
This inevitably means that the copyright in a factual compilation
is thin. Notwithstanding a valid copyright, 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.
B
As we have explained, originality is a constitutionally mandated pre-
requisite for copyright protection. The Court’s decisions announcing
this rule predate the Copyright Act of 1909, but ambiguous language
in the 1909 Act caused some lower courts temporarily to lose sight of
this requirement.
Making ma ers worse, these courts developed a new theory to
justify the protection of factual compilations. Known alternatively
as “sweat of the brow” or “industrious collection,” the underlying
notion was that copyright was a reward for the hard work that went
into compiling facts. The classic formulation of the doctrine appeared
Jeweler's Circular: 281 F. 83 (2d Cir. in Jeweler’s Circular Publishing Co.:
1922)
The right to copyright a book upon which one has ex-
pended labor in its preparation does not depend upon
whether the materials which he has collected consist or
A. SUBJECT MATTER 241

not of ma ers which are publici juris, or whether such ma-
terials show literary skill or originality, either in thought
or in language, or anything more than industrious collec-
tion. The man who goes through the streets of a town and
puts down the names of each of the inhabitants, with their
occupations and their street number, acquires material of
which he is the author.
Without a doubt, the “sweat of the brow” doctrine ﬂouted basic copy-
right principles. Throughout history, copyright law has recognized
a greater need to disseminate factual works than works of ﬁction or
fantasy. But “sweat of the brow” courts took a contrary view; they
handed out proprietary interests in facts and declared that authors
are absolutely precluded from saving time and eﬀort by relying upon
the facts contained in prior works.
C
The deﬁnition of “compilation” is found in § 101 of the 1976 Act. It
deﬁnes a “compilation” in the copyright sense as “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.”
As discussed earlier, however, the originality requirement is not
particularly stringent. A compiler may se le upon a selection or ar-
rangement that others have used; novelty is not required. Originality
requires only that the author make the selection or arrangement inde-
pendently (i. e., without copying that selection or arrangement from
another work), and that it display some minimal level of creativity.
Presumably, the vast majority of compilations will pass this test, but
not all will. There remains a narrow category of works in which the
creative spark is u erly lacking or so trivial as to be virtually nonex-
istent. Such works are incapable of sustaining a valid copyright.
In summary, the 1976 revisions to the Copyright Act leave no
doubt that originality, not “sweat of the brow,” is the touchstone of
copyright protection in directories and other fact-based works. Nor is
there any doubt that the same was true under the 1909 Act. The 1976
revisions were a direct response to the Copyright Oﬃce’s concern
that many lower courts had misconstrued this basic principle, and
Congress emphasized repeatedly that the purpose of the revisions
was to clarify, not change, existing law. The revisions explain with
painstaking clarity that copyright requires originality, § 102(a); that
facts are never original, § 102(b); that the copyright in a compilation
does not extend to the facts it contains, § 103(b); and that a compi-
lation is copyrightable only to the extent that it features an original
selection, coordination, or arrangement, § 101.
242 CHAPTER 4. COPYRIGHT

III
The selection, coordination, and arrangement of Rural’s white pages
do not satisfy the minimum constitutional standards for copyright
protection. As mentioned at the outset, Rural’s white pages are en-
tirely typical. Persons desiring telephone service in Rural’s service
area ﬁll out an application and Rural issues them a telephone num-
ber. In preparing its white pages, Rural simply takes the data pro-
vided by its subscribers and lists it alphabetically by surname. The
end product is a garden-variety white pages directory, devoid of even
the slightest trace of creativity.
Rural’s selection of listings could not be more obvious: It pub-
lishes the most basic information – name, town, and telephone num-
ber – about each person who applies to it for telephone service. This
is “selection” of a sort, but it lacks the modicum of creativity neces-
sary to transform mere selection into copyrightable expression. Rural
expended suﬃcient eﬀort to make the white pages directory useful,
but insuﬃcient creativity to make it original.
We note in passing that the selection featured in Rural’s white
pages may also fail the originality requirement for another reason.
Feist points out that Rural did not truly “select” to publish the names
and telephone numbers of its subscribers; rather, it was required to
do so by the Kansas Corporation Commission as part of its monopoly
franchise. Accordingly, one could plausibly conclude that this selec-
tion was dictated by state law, not by Rural.
Nor can Rural claim originality in its coordination and arrange-
ment of facts. The white pages do nothing more than list Rural’s
subscribers in alphabetical order. This arrangement may, technically
speaking, owe its origin to Rural; no one disputes that Rural under-
took the task of alphabetizing the names itself. But there is nothing
remotely creative about arranging names alphabetically in a white
pages directory. It is an age-old practice, ﬁrmly rooted in tradition
and so commonplace that it has come to be expected as a ma er
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.
Because Rural’s white pages lack the requisite originality, Feist’s
use of the listings cannot constitute infringement. This decision
should not be construed as demeaning Rural’s eﬀorts in compiling
its directory, but rather as making clear that copyright rewards origi-
nality, not eﬀort. As this Court noted more than a century ago, “great
praise may be due to the plaintiﬀs for their industry and enterprise
in publishing this paper, yet the law does not contemplate their being
rewarded in this way.” Baker

Arrows Problem
A. SUBJECT MATTER 243

Is this logo (for a professional sports team) suﬃciently creative to be
copyrightable?

Baseball Card Price Report Problem
The Baseball Card Price Report is a comprehensive printed list of col-
lectible baseball cards sold between 1909 and 2011. It lists 32,000 base-
ball cards and a market price for each of them. The market price is
Arrows logo
determined by obtaining transaction lists from several dozen large
dealers and averaging the sales prices for the card over the past year. Based on Eckes v. Card Prices Update,
736 F.2d 859 (2d Cir. 1984), and similar
The Report is organized by year: it has a section for 1909, a section
cases
for 1910, and so on. Each section is subdivided into a list of manufac-
turers (Topps, Upper Deck, and so on). Each manufacturer’s list is
then divided by teams, and players are listed alphabetically by last
name within a team section. For each card, the Report gives prices
for mint, excellent, very good, good, and fair condition cards. In addi-
tion, about 9,000 of the cards are noted with a star to indicate that they
are “premium” cards. These cards are considered especially valuable
beacuse the player is in the Hall of Fame, played for a famous team, or
some other reason that makes the card especially scarce or especially
prized by collectors.
An entrepreneur calling himself Tyrone Tyrannosaurus has
started a website called the “Collector’s Cheat Sheet.” The front of
the site consists of three drop-down menus: year, team, and player
name. Once a user selects all three, he is taken to a page that lists all
of the companies that made cards of that player in that year. If a card
is considered “premium” by the Report, the Cheat Sheet lists the card
in bold.
You represent Mr. Tyrannosaurus, who has received a cease-and-
desist le er from the publisher of the Report claiming that the Cheat
Sheet is infringing on a copyright in the Report. What is your advice
to your client?

2 Aesthetic Nondiscrimination

Bleistein v. Donaldson Lithographing Co.
188 U.S. 239 (1903)
[The plaintiﬀs produced three large color posters (”chro-
molithographs”) to be used as advertisements for Wallace’s
circus. Later, the defendant reproduced the posters in smaller
black-and-white versions, as advertisements for the same circus.
When sued, the defendants argued that the chromolithographs were
not copyrightable.]
We shall do no more than mention the suggestion that painting
and engraving unless for a mechanical end are not among the use-
Wallace circus poster
ful arts, the progress of which Congress is empowered by the Con-
(Holmes, J.)
244 CHAPTER 4. COPYRIGHT

stitution to promote. The Constitution does not limit the useful to
that which satisﬁes immediate bodily needs. It is obvious also that
the plaintiﬀs’ case is not aﬀected by the fact, if it be one, that the
pictures represent actual groups – visible things. They seem from
the testimony to have been composed from hints or description, not
from sight of a performance. But even if they had been drawn from
the life, that fact would not deprive them of protection. The opposite
proposition would mean that a portrait by Velasquez or Whistler was
common property because others might try their hand on the same
face. Others are free to copy the original. They are not free to copy
the copy. The copy is the personal reaction of an individual upon
nature. Personality always contains something unique. It expresses
its singularity even in handwriting, and a very modest grade of art
has in it something irreducible, which is one man’s alone. That some-
thing he may copyright unless there is a restriction in the words of
the act.
If there is a restriction it is not to be found in the limited preten-
sions of these particular works. The least pretentious picture has
more originality in it than directories and the like, which may be copy-
righted.
[The copyright act in force at the time protected only deﬁned cat-
egories of works, one of which was ”pictorial illustrations or works
connected with the ﬁne arts.”] These chromolithographs are ”picto-
rial illustrations.” The word ”illustrations” does not mean that they
must illustrate the text of a book, and that the etchings of Rembrandt
or Steinla’s engraving of the Madonna di San Sisto could not be pro-
tected to-day if any man were able to produce them. Again, the act
however construed, does not mean that ordinary posters are not good
enough to be considered within its scope. The antithesis to ”illustra-
tions or works connected with the ﬁne arts” is not works of ti le merit
or of humble degree, or illustrations addressed to the less educated
classes; it is ”prints or labels designed to be used for any other articles
of manufacture.” Certainly works are not the less connected with the
ﬁne arts because their pictorial quality a racts the crowd and there-
fore gives them a real use – if use means to increase trade and to help
to make money. A picture is none the less a picture and none the
less a subject of copyright that it is used for an advertisement. And
if pictures may be used to advertise soap, or the theatre, or monthly
magazines, as they are, they may be used to advertise a circus. Of
course, the ballet is as legitimate a subject for illustration as any other.
A rule cannot be laid down that would excommunicate the paintings
of Degas.
It would be a dangerous undertaking for persons trained only to
the law to constitute themselves ﬁnal judges of the worth of pictorial
illustrations, outside of the narrowest and most obvious limits. At the
A. SUBJECT MATTER 245

one extreme some works of genius would be sure to miss apprecia-
tion. Their very novelty would make them repulsive until the public
had learned the new language in which their author spoke. It may be
more than doubted, for instance, whether the etchings of Goya or the
paintings of Manet would have been sure of protection when seen
for the ﬁrst time. At the other end, copyright would be denied to pic-
tures which appealed to a public less educated than the judge. Yet
if they command the interest of any public, they have a commercial
value – it would be bold to say that they have not an aesthetic and
educational value – and the taste of any public is not to be treated
with contempt. It is an ultimate fact for the moment, whatever may
be our hopes for a change. That these pictures had their worth and Compare: "The ultimate good desired
their success is suﬃciently shown by the desire to reproduce them is better reached by free trade in ideas.
The best test of truth is the power of
without regard to the plaintiﬀs’ rights. We are of opinion that there
the thought to get itself accepted in
was evidence that the plaintiﬀs have rights entitled to the protection the competition of the market." Abrams
of the law. v. United States, 250 U.S. 616 (1919)
(Holmes, J., dissenting).
Compendium of U.S. Copyright Office Practices (3d ed. 2014)

As a general rule, the Copyright Oﬃce will not consider factors that
§ 310
have no bearing on whether the originality requirement has been met.
Factors That Will Not Be Considered in
The fact that a work may be novel, distinctive, innovative, or even the Examination of Originality
unique is irrelevant to this analysis. The Copyright Oﬃce does not
consider the aesthetic value, artistic merit, or intrinsic quality of a
work. For example, the Oﬃce will not look for any particular style of
creative expression. Likewise, the Oﬃce will not consider whether a
work is visually appealling or wri en in elegant prose. For the same
reasons, the Oﬃce will not consider the truth or falsity of the facts
set forth in a work of authorship. Nor will the Oﬃce consider the
soundness of the views expressed in the work.
The Oﬃce will focus only on the actual appearance or sound of
the work that has been submi ed for registration, but will not con-
sider any meaning or signiﬁcance that the work may evoke. The Of-
ﬁce will not consider the author’s inspiration for the work, creative
intent, or intended meaning. The U.S. Copyright Oﬃce will not con-
sider the author’s creative skill and experience, because the author’s
personal or professional history is irrelevant to the determination of
copyrightability.
The Oﬃce will not consider the amount of time, eﬀort, or expense
required to create the work. As a general rule, the Oﬃce will not con-
sider possible design alternatives that the author may have consid-
ered when he or she created the work. Likewise, the Oﬃce will not
consider potential variations in the use of the work, such as the fact
that the work could be presented in a diﬀerent color, in a diﬀerent
size, or with a diﬀerent orientation. As a general rule, the materials
246 CHAPTER 4. COPYRIGHT

used to create a work have no bearing on the originality analysis. For
example, the U.S. Copyright Oﬃce will not consider the fact that a
jewelry design was constructed with precious metals or gemstones,
or the fact that a silk screen was printed on a particular paper stock.
The U.S. Copyright Oﬃce will not consider the marketability or com-
mercial success of the work, because these issues are irrelevant to the
originality analysis.

Mitchell Bros. Film Group v. Cinema Adult Theater
604 F.2d 852 (5th Cir. 1979)
Plaintiﬀs-appellants owned a properly registered copyright on a mo-
tion picture titled ”Behind the Green Door.” Two groups of defen-
dants, each group consisting of a theater and several individuals,
obtained copies of the movie without plaintiﬀs’ permission and in-
fringed the copyright by exhibiting the ﬁlm at the theaters. We hold
that the district court erred in permi ing the assertion of obscenity as
an aﬃrmative defense to the claim of infringement, and, accordingly,
reverse without reaching the question whether the ﬁlm is obscene.
The district court did not base its decision on standards found
within the [1909 Copyright] Act, which it described as ”silent as to
works which are subject to registration and copyright.” The Act is
not ”silent.” Rather, the statutory language ”all the writings of an au-
thor” is facially all-inclusive, within itself admi ing of no exceptions.
There is not even a hint in the language of § 4 that the obscene nature
"Copyright law is even more
pornography-friendly than the First of a work renders it any less a copyrightable ”writing.”
Amendment. The First Amendment Society’s view of what is moral and immoral continually changes.
will only protect pornography if it To give one example, in Martine i v. Maguire, the play ”The Black
is not obscene or illegal for other Crook,” because it featured women clad in ﬂesh-colored tights, was
reasons; for example, if it contains
depictions of children. Copyright law
held to be ”grossly indecent, and calculated to corrupt the morals
offers protections to pornography no of the people” and hence uncopyrightable. By the early part of this
matter what material it contains. The century, it had become clear that this judgment reﬂected the moral
First Amendment merely prevents the standards of a bygone era.
government from interfering in the cre- Denying copyright protection to works adjudged obscene by the
ation, distribution and consumption
of pornography that is not obscene
standards of one era would frequently result in lack of copyright pro-
or otherwise illegal. With the current tection (and thus lack of ﬁnancial incentive to create) for works that
practice of indiscriminately according later generations might consider to be not only non-obscene but even
pornographic works copyright pro- of great literary merit. Many works that are today held in high re-
tection, the government encourages
gard have been adjudged obscene in previous eras. English courts of
and incentivizes the production of
pornography that is non-progressive
the nineteenth century found the works of Byron, Southey and Shel-
and non-useful and therefore beyond ley to be immoral. American courts have found these books, among
the scope of the Intellectual Property others, obscene: Edmund Wilson, M H C ;
Clause of the U.S. Constitution. This Henry Miller, T C and T C ; Erskine
must cease." Ann Bartow, Copyright
Caldwell, G ’ L A ; Lillian Smith, S F ; D. H.
Law and Pornography, 91 Or. L. Rev. 1
(2012). Lawrence, L C ’ L ; Theodore Dreiser, A A -
Martinetti: 16 Fed. Cas. 920 (C.C.Cal. T .
1867)
A. SUBJECT MATTER 247

Belcher v. Tarbox 486 F.2d 1087 (9th Cir. 1973)
Defendant’s primary contention is that the works were not entitled
to copyright protection since they, and the advertising material asso-
ciated with them, fraudulently represented to the public that users of
the system described could beat the horses.
There is nothing in the Copyright Act to suggest that the courts are
to pass upon the truth or falsity, the soundness or unsoundness, of the
views embodied in a copyrighted work. The gravity and immensity
of the problems, theological, philosophical, economic and scientiﬁc,
that would confront a court if this view were adopted are staggering
to contemplate. It is surely not a task lightly to be assumed, and we
decline the invitation to assume it.

3 Idea and Expression

In no case does copyright protection for an original work of author-
17 U.S.C. § 102
ship extend to any idea, procedure, process, system, method of opera- Subject matter of copyright: In general
tion, concept, principle, or discovery, regardless of the form in which
it is described, explained, illustrated, or embodied in such work.

It is hornbook law that ideas are not copyrightable, only an author’s
individual expression of those ideas. But what qualiﬁes as an ”idea”
can only be learned by seeing what courts treat as one. Sometimes
”idea” refers to the general creative concept for a work, as distinguished
from its more speciﬁc details. Sometimes ”idea” is used as a synec-
doche for other § 102(b) exclusions – ”procedure, process, system,
method of operation” – that describe functional ma er in a work. In
addition, two closely related doctrines – merger and scènes à faire –
help implement these exclusions.

Blehm v. Jacobs
702 F. 3d 1193 (10th Cir. 2012)
Appellant Gary Blehm brought this copyright infringement action
against brothers Albert and John Jacobs and the Life is Good Com-
pany (collectively ”Life is Good”). Mr. Blehm is the creator of copy-
righted posters featuring cartoon characters called ”Penmen.” He
contends that numerous Life is Good depictions of a cartoon char-
acter called ”Jake” infringe on his copyrighted works. The district
court granted Life is Good’s motion for summary judgment, holding
that no infringement occurred because the copyrighted and accused
works are not substantially similar.
248 CHAPTER 4. COPYRIGHT

I. B
Mr. Blehm is a commercial artist who lives in Colorado Springs, Col-
orado. In the late 1980s, he developed characters called ”Penmen.”
According to Mr. Blehm, each Penman is ”a deceptively-simple look-
ing ﬁgure” that ”engages in a variety of activities pulled directly from
his colorful life experiences.” The Penmen have ”round heads, dispro-
portionately large half-moon smiles, four ﬁngers, large feet, dispro-
portionately long legs, and a message of unbridled optimism.”
The Penmen are a product of Mr. Blehm’s commercial art training.
Through his training, Mr. Blehm learned how to ”add a slight bend
to a ﬁgure’s limb to show weight bearing into it” and how, as he puts
it, to apply negative space. Eventually, Mr. Blehm developed rules
and guidelines for drawing each Penman. These rules and guidelines
include a speciﬁc shape for each Penman’s head, speciﬁc length and
height requirements for each character, rules on ﬂuidity and perspec-
tive, and the ”Penmen parallel curve,” which Mr. Blehm employs to
”create eye-pleasing shapes within the negative space.”
In 1990, Mr. Blehm began selling his posters to distributors. From
1990 to 2004, Prints Plus sold his posters nationally.
Starting in 1989, the Jacobs brothers designed and sold t-shirts
”infused with a positive undertone as a reﬂection of their beliefs.”
The brothers sold t-shirts in areas around Boston, including Harvard
Square, not far from the Harvard Coop. During the 1993 holiday sea-
son, the Jacobses sold t-shirts from carts in the Cambridgeside Galle-
ria and the Emerald Square Mall, both of which had Prints Plus stores
that sold Mr. Blehm’s posters.
According to the Jacobses, around April 1994 John Jacobs drew a
sketch of a ﬁgure with a red face, wide smile, sunglasses, and a beret.
The ﬁgure was enclosed in two circles. John hung the sketch on the
wall of the brothers’ apartment.
The Jacobses recall hosting a party in August 1994 at their apart-
ment and soliciting feedback on the sketch from their friends. After a
friend stated that the ﬁgure in the sketch ”really has life ﬁgured out,”
John Jacobs wrote ”Life is good” under the image. They named the
image ”Jake,” a spinoﬀ of their last name.
The Jacobses soon made and sold t-shirts featuring Jake at street
fairs and to retailers. As demand for the shirts increased, John Jacobs
added a torso, arms, and feet to the Jake head. Jake was portrayed en-
gaging in simple activities, such as biking, hiking, golﬁng, and play-
ing soccer.
The Jacobses incorporated Life is Good in 1997 with the ”overar-
ching themes of optimism, simplicity, humor, and humility.”
II. D
A. SUBJECT MATTER 249

A. Substantial Similarity

1. Legal Framework
In order to prove copying of legally protectable material, a plain-
tiﬀ must typically show substantial similarity between legally [pro-
tectable] elements of the original work and the allegedly infringing
work. This commonly stated rule raises two questions: First, what
elements of a copyrighted work are legally protectable? Second,
how do courts determine whether a copyrighted work’s legally pro-
tectable elements are ”substantially similar” to an accused work?
Section 102(a) of the Copyright Act states that a copyright protects
the ”original works of authorship ﬁxed in any tangible medium of ex-
pression,” including pictorial and graphic works. 17 U.S.C. S 102(a).
To gain protection, the work must demonstrate at least some minimal
degree of creativity, but even a slight amount will suﬃce. The vast
majority of works make the grade quite easily, as they possess some
creative spark, no ma er how crude, humble or obvious it might be.
But legal protection does not extend to all aspects of a copyrighted
work. Section 102(b) provides, ”In no case does copyright protection
... extend to any idea ... [or] concept ... regardless of the form in which
it is described, explained, illustrated, or embodied in such work.” 17
U.S.C. S 102(b). This provision enshrines the fundamental tenet that
copyright protection extends only to the author’s original expression
and not to the ideas embodied in that expression.
Thus, courts comparing works must ﬁrst distill the protectable el-
ements of the copyrighted work – i.e., determine what aspects consti-
tute protectable expression. But this process, although sound in the-
ory, is diﬃcult to apply in practice. More than 50 years ago, Judge
Learned Hand recognized that ”[t]he test for infringement of a copy-
right is of necessity vague.” Peter Pan Fabrics, Inc. v. Martin Weiner Peter Pan Fabrics: 274 F.2d 487 (2nd Cir.
Corp.. Because ”no principle can be stated as to when an imitator has 1960)
gone beyond copying the ’idea,’ and has borrowed its ’expression[,]’
[d]ecisions must therefore inevitably be ad hoc.” Id.We follow this
case-by-case approach, and are mindful that copyright law seeks to
achieve a proper balance between competition based on public ideas
and incentive to produce original work.
Because the idea/expression distinction is the most complex part
of the substantial similarity inquiry, we discuss a few examples
where courts have separated the two. In Country Kids ’N City Slicks, Country Kids: 77 F.3d 1280 (10th Cir.
Inc. v. Sheen, this court held that copyright protection did not ”ex- 1996)
tend to the size, shape and medium” of wooden dolls. We explained
that the Copyright Act is concerned with artistic innovation and ex-
cludes protection for a work’s ”utilitarian qualities.” The idea of a
wooden doll is not copyrightable, nor are ”any basic and utilitarian
250 CHAPTER 4. COPYRIGHT

aspects of the dolls, such as the shape of a human body and standard
doll poses which are both friendly and inviting and also utilitarian in
their ease of manufacture and adaptability to the a achment of vari-
ous wardrobes.”
Similarly, a copyright owner has no monopoly over the idea of
fashion dolls with a bra y look or a itude, or dolls sporting trendy
clothing. Nor does copyright protection extend to the idea of creating
a doll with an upturned nose, bow lips, and widely spaced eyes, even
if the allegedly infringing work has explicitly taken this idea from the
copyrighted work.
Copyright instead protects the particularized expression of the
idea of a doll with such features. For example, although a copyright
owner has no monopoly over the idea of a muscular doll in a stan-
dard pose, the owner may have a valid infringement claim for copy-
ing of the particularized expression of that idea, such as the decision
to accentuate certain muscle groups relative to others. A copyright
owner’s original stylistic choices qualify as protectable expression if
Aliotti: 831 F.2d 898 (9th Cir. 1987) the choices are not dictated by the underlying idea. See Alio i v. R.
Dakin & Co. (stuﬀed dinosaur toys cannot be substantially similar be-
cause of shared physiognomy, but a distinctive ”eye style and stitch-
ing” could qualify as protectable expression if they are ”not dictated
by the idea of stuﬀed dinosaur dolls”).
In architecture, there is no copyright protection for the idea of
Sturdza: 281 F.3d 1287 (D.C. Cir. 2002) using domes, wind-towers, parapets and arches.” Sturdza v. United
Arab Emirates. ”To hold otherwise would render basic architectural
elements unavailable to architects generally, thus running afoul of
the very purpose of the idea/expression distinction: promoting incen-
tives for authors to produce original work while protecting society’s
interest in the free ﬂow of ideas.” On the other hand, the combina-
tion of common architectural elements and use of speciﬁc designs
may constitute original expression that is protected. An architectural
design may infringe if its use of public-domain elements gives oﬀ
a similar unique eﬀect in decoration and design as the copyrighted
work.
Thus, a sweater designer can have copyright protection over an
original way of using squirrels as a design element in conjunction
with fall colors, stripes, and panels, even though those elements indi-
Lollytogs: 71 F.3d 996, 1004 (2d vidually constitute ideas in the public domain. See Knitwaves, Inc. v.
Cir.1995) Lollytogs Ltd.. A plaintiﬀ’s ”selective and particularized” alterations
of a public-domain carpet pa ern also can constitute protectable ex-
Tufenkian: 338 F.3d 127 (2nd Cir. 2003) pression. Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc..
2. Comparing the Penmen and Jake Images
The district court was correct that Mr. Blehm has no copyright over
the idea of a cartoon ﬁgure holding a birthday cake, catching a Fris-
A. SUBJECT MATTER 251

bee, skateboarding, or engaging in various other everyday activities.
Nor can the Jake images infringe on the Penmen because the ﬁgures
share the idea of using common anatomical features such as arms,
legs, faces, and ﬁngers, which are not protectable elements. See Baby Baby Buddies: 611 F.3d 1308 (11th Cir.
Buddies, Inc. v. Toys ”R” Us, Inc.. (no copyright protection over com- 2010)
mon anatomical features of teddy bear). Mr. Blehm’s copyright also
does not protect Penmen poses that are a ributable to an associated
activity, such as reclining while taking a bath or lounging in an inner
tube. These everyday activities, common anatomical features, and
natural poses are ideas that belong to the public domain; Mr. Blehm
does not own these elements.
Although we do not consider these unprotected elements in our
substantial similarity analysis, we acknowledge that Mr. Blehm’s
works do contain some protectable expression. The Penmen at ﬁrst
glance might be considered simple stick ﬁgures, but they are more
nuanced than a child’s rudimentary doodling. For example, the pro-
totypical Penman has a rounded, half-moon smile that takes up a sub-
stantial portion of the face. Mr. Blehm has chosen to omit any other
facial features on the Penmen. Each ﬁgure is ﬁlled in black, except for
the white half-moon smile, and each Penman’s head is detached, hov-
ering above the body. Many of the Penmen stand facing the viewer,
ﬂashing the half-moon smile.
Mr. Blehm also drew the Penmen according to his own rules and
guidelines. The ﬁgure’s head might be perceived as slightly dispro-
portional to the body. Its arms and legs are thin, long, and dispropor-
tionate to the torso, which is relatively short. Mr. Blehm also chose to
give the Penmen four ﬁngers – each about as thick as their arms and
legs – on each hand, as well as feet that are disproportionately long
and thick compared with the rest of the body.
Having identiﬁed protectable expression in Mr. Blehm’s draw-
ings, we must determine whether that expression is substantially sim-
ilar to the allegedly infringing Life is Good images. Life is Good is not
entitled to summary judgment unless its Jake ﬁgures are so dissimilar
from the protectable elements of the Penmen that no reasonable jury
could ﬁnd for Mr. Blehm on the question of substantial similarity.
To show substantial similarity, Mr. Blehm provided the district
court with an exhibit juxtaposing 67 individual Penmen with a corre-
sponding, allegedly infringing Jake image. We have reviewed these
images and agree with the district court’s grant of summary judg-
ment in favor of Life is Good. We now address two of Mr. Blehm’s
proposed comparisons, which he highlights in his appellate brief,
and explain why the Life is Good images are so dissimilar from the
protectable elements of Mr. Blehm’s images that no reasonable jury
could ﬁnd in his favor.
252 CHAPTER 4. COPYRIGHT

a. The Peace Sign Images
The ﬁrst example in Mr. Blehm’s exhibit juxtaposes a Penman and
Jake image standing and displaying the peace sign. Because we must
separate unprotected ideas from expression, our analysis does not
consider that both drawings share the idea of a cartoon ﬁgure making
a common hand gesture. But we do consider whether the Jake image
is substantially similar to Mr. Blehm’s expression of this idea.
Mr. Blehm urges us to ﬁnd certain similarities between the im-
ages. He notes that both have round heads. But Mr. Blehm has no
Peace sign images
copyright protection in general human features. Further, the ﬁgures’
heads are not similarly round. Jake’s head is more oval and some-
what misshapen, whereas the Penman’s head is circular and uniform.
Mr. Blehm suggests that the ﬁgures have similar proportions,
such as the size of the ﬁgures’ heads, arms, legs, and feet compared
with their bodies. A close review of the ﬁgures, however, yields the
opposite conclusion. Jake’s head is very large compared with the
body, while the Penman’s head is relatively proportional. The Pen-
man’s arms and legs are long and disproportionate to its truncated
torso. Jake, on the other hand, has more proportional limbs com-
pared with his torso. The ﬁgures’ feet are distinctly diﬀerent: the
Penman’s are thick, long, and roll-shaped, but Jake’s are shorter and
triangular.
Nevertheless, there are some similarities between the Penman and
Jake. Both have black-line bodies, four ﬁngers, and large half-moon
smiles, and their feet are pointed outward. But even these similarities
have important diﬀerences, or are not protectable expression. For
example, Jake’s ﬁngers appear stubbier. The choice to display the
ﬁgures’ feet outward also naturally ﬂows from the common idea of
drawing a two-dimensional stick ﬁgure and is thus unprotected.
The ﬁgures’ smiles thus seem to be the crux of this litigation. The
Penman and Jake both face the viewer with disproportionately large
half-moon smiles. A smile can be drawn in various ways. Here, they
share a crescent shape, but the idea of a crescent-shaped smile is un-
protected. Rather, the expression of the smiles must be substantially
similar and important to the overall work.
The Penman’s smile is all white, as is Jake’s. The smiles on both
ﬁgures take up a large portion of the head. But the Penman’s smile
is rounded on the tips, whereas the tips of Jake’s smile are sharper
angled. Jake’s smile, by virtue of the size of his head, is much larger
compared with his body than is the Penman’s. And although both
smiles are white, the Penman’s is set on an all-black head, making it
appear diﬀerent from Jake’s, which is the outline of a smile on a white
head with black sunglasses.
Indeed, Mr. Blehm’s decision to omit eyes and other facial fea-
A. SUBJECT MATTER 253

tures on the Penman makes the ﬁgure susceptible to an interpretation
that the Penman is not smiling at all. One interpretation is that the
white space on the head is not a smile, but is the Penman’s face with
no features. The black above the half-moon shape can be perceived
as hair swooping down over the Penman’s forehead. Thus, the Pen-
man’s lack of facial features make it susceptible to diﬀerent interpre-
tations. The Jake ﬁgure is not susceptible to similar confusion.
Any similarity between smiles also is insubstantial in light of other
diﬀerences between the ﬁgures. Jake’s head is a ached to the body,
and his head is white and has black sunglasses. The Penman’s head is
detached and is black with no eyes. Jake sports a beret, and his whole
ﬁgure is displayed on a color background, whereas the Penman has
no headwear and is portrayed against a plain white background.
The Jake image’s arms are positioned diﬀerently from the Pen-
man, with Jake’s left arm curved, rather than sharp and angular. Mr.
Blehm also chose a unique feature for the Penman’s peace-sign ex-
pression – white space in the ﬁgure’s hand – that the Jake image does
not share.
We conclude that no reasonable juror could determine that the
Jake ﬁgure is substantially similar to the protected, expressive choices
Mr. Blehm used for the Penman ﬁgure.
b. The Frisbee Images
In another example, a Penman and Jake a empt to catch Frisbees be-
tween their legs. The two ﬁgures’ poses are similar – suspended in
the air with legs outstretched and a hand descending to catch the disc
– but we do not consider the pose in our analysis. Such a pose is com-
mon to this activity and is not protected expression. Again, the ﬁg- Frisbee images
ures have large, half-moon smiles. And unlike the ”peace sign” Jake,
this Jake image has legs that are disproportionate to a truncated torso.
The Penman’s legs also are long with respect to the torso, but not as
disproportionate as Jake’s.
Jake’s legs are curved, but the Penman’s are straightened. The
Jake image’s head diﬀers in the same important ways as in the ”peace
sign” images. Jake’s arms appear to extend from his head, but the
Penman’s arms a ach to the top of the torso. Jake’s torso is much
thinner (and disproportionately shorter) than the Penman’s; Jake has
three ﬁngers on each hand (not four); and the Jake image, unlike the
Penman image, incorporates color on the canvas and disc. Jake’s feet
are deﬁned – toes and arches are visible – but the Penman’s are not.
Although the images share a similar idea of catching a Frisbee be-
tween the legs, the protectable expression in the Penman is not sub-
stantially similar to the Jake image.
c. Other Images
Selected other images
254 CHAPTER 4. COPYRIGHT

Mr. Blehm highlights 65 other Penmen as having been copied. At-
tached to this opinion is the ”Penmen-Jake Chart” Mr. Blehm submit-
ted to the district court in an eﬀort to demonstrate substantial simi-
larity.
We have reviewed these images, and an analysis similar to the
discussion above applies.
Copying alone is not infringement. The infringement determina-
tion depends on what is copied. Assuming Life is Good copied Pen-
men images when it produced Jake images, our substantial similarity
analysis shows it copied ideas rather than expression, which would
784 F.2d 44 (2d Cir. 1986) make Life is Good a copier but not an infringer under copyright law.
Based on Reece v. Island Treasures Art
Gallery, Inc., 468 F. Supp. 2d 1197 (D. Walker v. Time Life Films, Inc.
Haw. 2006)
In the district court, appellant proﬀered lists of speciﬁc alleged simi-
larities in an a empt to prove fragmented literal similarity between
the book and the ﬁlm. None of these claims alters our conclusion that
the district court properly held that as a ma er of law no substantial
similarity exists between the protectible elements of the works. For
example, appellant notes that both the book and the ﬁlm depict cock-
ﬁghts, drunks, stripped cars, prostitutes and rats; both feature as cen-
tral characters third- or fourth-generation Irish policemen who live in
Queens and frequently drink; both show disgruntled, demoralized
police oﬃcers and unsuccessful foot chases of ﬂeeing criminals.
These similarities, however, relate to uncopyrightable material.
Elements such as drunks, prostitutes, vermin and derelict cars would
appear in any realistic work about the work of policemen in the South
Bronx. These similarities therefore are unprotectible as “scènes à
Kim Taylor Reece, Makanani faire,” that is, scenes that necessarily result from the choice of a se ing
or situation. Neither does copyright protection extend to copyright or
“stock” themes commonly linked to a particular genre. Foot chases
and the morale problems of policemen, not to mention the familiar
ﬁgure of the Irish cop, are venerable and often-recurring themes of
police ﬁction. As such, they are not copyrightable except to the ex-
tent they are given unique – and therefore protectible – expression in
an original creation.

Hula Problem
Consider this photograph and stained glass image of hula dancers.
The dancers’ pose (kneeling, with right arm extended, etc.) is tradi-
tional. So is their dress (including the lei, etc.). Does the stained glass
infringe on the photograph? Are there further facts it would be help-
ful to know?
Marylee Colucci, Nohe
Baker v. Selden
101 U.S. 99 (1880)
A. SUBJECT MATTER 255

Charles Selden, the testator of the complainant in this case, in the year
1859 took the requisite steps for obtaining the copyright of a book, en-
titled ”Selden’s Condensed Ledger, or Book-keeping Simpliﬁed,” the
object of which was to exhibit and explain a peculiar system of book-
keeping. In 1860 and 1861, he took the copyright of several other
books, containing additions to and improvements upon the said sys-
tem. The bill of complaint was ﬁled against the defendant, Baker, for
an alleged infringement of these copyrights.
The book or series of books of which the complainant claims the
copyright consists of an introductory essay explaining the system
of book-keeping referred to, to which are annexed certain forms or
blanks, consisting of ruled lines, and headings, illustrating the sys-
tem and showing how it is to be used and carried out in practice.
This system eﬀects the same results as book-keeping by double entry;
but, by a peculiar arrangement of columns and headings, presents
the entire operation, of a day, a week, or a month, on a single page,
or on two pages facing each other, in an account-book. The defen- Selden's Condensed Ledger
dant uses a similar plan so far as results are concerned; but makes
a diﬀerent arrangement of the columns, and uses diﬀerent headings.
If the complainant’s testator had the exclusive right to the use of the
system explained in his book, it would be diﬃcult to contend that the
defendant does not infringe it, notwithstanding the diﬀerence in his
form of arrangement; but if it be assumed that the system is open to
public use, it seems to be equally diﬃcult to contend that the books
made and sold by the defendant are a violation of the copyright of
the complainant’s book considered merely as a book explanatory of
the system. Where the truths of a science or the methods of an art are
the common property of the whole world, any author has the right
to express the one, or explain and use the other, in his own way. As
an author, Selden explained the system in a particular way. It may
be conceded that Baker makes and uses account-books arranged on
substantially the same system; but the proof fails to show that he has
violated the copyright of Selden’s book, regarding the la er merely
as an explanatory work; or that he has infringed Selden’s right in any
way, unless the la er became entitled to an exclusive right in the sys-
tem.
It is contended that he has secured such exclusive right, because
no one can use the system without using substantially the same ruled
lines and headings which he has appended to his books in illustration
of it. In other words, it is contended that the ruled lines and head-
ings, given to illustrate the system, are a part of the book, and, as
such, are secured by the copyright; and that no one can make or use
similar ruled lines and headings, or ruled lines and headings made
and arranged on substantially the same system, without violating the
copyright.
256 CHAPTER 4. COPYRIGHT

There is no doubt that a work on the subject of book-keeping,
though only explanatory of well-known systems, may be the subject
of a copyright; but, then, it is claimed only as a book. Such a book
may be explanatory either of old systems, or of an entirely new sys-
tem; and, considered as a book, as the work of an author, conveying
information on the subject of book-keeping, and containing detailed
explanations of the art, it may be a very valuable acquisition to the
practical knowledge of the community. But there is a clear distinc-
tion between the book, as such, and the art which it is intended to
illustrate. The mere statement of the proposition is so evident, that
it requires hardly any argument to support it. The same distinction
may be predicated of every other art as well as that of book-keeping.
A treatise on the composition and use of medicines, be they old or
new; on the construction and use of ploughs, or watches, or churns;
or on the mixture and application of colors for painting or dyeing;
or on the mode of drawing lines to produce the eﬀect of perspective,
– would be the subject of copyright; but no one would contend that
the copyright of the treatise would give the exclusive right to the art
or manufacture described therein. The copyright of the book, if not
pirated from other works, would be valid without regard to the nov-
elty, or want of novelty, of its subject-ma er. The novelty of the art
or thing described or explained has nothing to do with the validity of
the copyright. 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 le ers-patent, not of copyright. The
claim to an invention or discovery of an art or manufacture must be
subjected to the examination of the Patent Oﬃce before an exclusive
right therein can be obtained; and it can only be secured by a patent
from the government.
The copyright of a work on mathematical science cannot give to
the author an exclusive right to the methods of operation which he
propounds, or to the diagrams which he employs to explain them,
so as to prevent an engineer from using them whenever occasion re-
quires. 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. But this object would be frustrated if the knowledge could
not be used without incurring the guilt of piracy of the book. And
where the art it teaches cannot be used without employing the meth-
ods and diagrams used to illustrate the book, or such as are similar to
them, such methods and diagrams are to be considered as necessary
incidents to the art, and given therewith to the public; not given for
the purpose of publication in other works explanatory of the art, but
for the purpose of practical application.
Of course, these observations are not intended to apply to orna-
A. SUBJECT MATTER 257

mental designs, or pictorial illustrations addressed to the taste. Of
these it may be said, that their form is their essence, and their object,
the production of pleasure in their contemplation. This is their ﬁnal
end. They are as much the product of genius and the result of com-
position, as are the lines of the poet or the historian’s periods. On
the other hand, the teachings of science and the rules and methods
of useful art have their ﬁnal end in application and use; and this ap-
plication and use are what the public derive from the publication of
a book which teaches them. But as embodied and taught in a literary
composition or book, their essence consists only in their statement.
This alone is what is secured by the copyright. The use by another
of the same methods of statement, whether in words or illustrations,
in a book published for teaching the art, would undoubtedly be an
infringement of the copyright.
Recurring to the case before us, we observe that Charles Selden,
by his books, explained and described a peculiar system of book-
keeping, and illustrated his method by means of ruled lines and blank
columns, with proper headings on a page, or on successive pages.
Now, whilst no one has a right to print or publish his book, or any
material part thereof, as a book intended to convey instruction in the
art, any person may practise and use the art itself which he has de-
scribed and illustrated therein. The use of the art is a totally diﬀerent
thing from a publication of the book explaining it. The copyright of a
book on book-keeping cannot secure the exclusive right to make, sell,
and use account-books prepared upon the plan set forth in such book.
Whether the art might or might not have been patented, is a question
which is not before us. It was not patented, and is open and free to
the use of the public. And, of course, in using the art, the ruled lines
and headings of accounts must necessarily be used as incident to it.
The conclusion to which we have come is, 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 by him and
described and illustrated in said book.

Bikram's Yoga College of India v. Evolation Yoga
803 F.3d 1032 (9th Cir. 2015)
We must decide whether a sequence of twenty-six yoga poses and
two breathing exercises developed by Bikram Choudhury and de-
scribed in his 1979 book, B ’ B Y C , is entitled
to copyright protection.
In 1971, Bikram Choudhury, the self-proclaimed ”Yogi to the
stars,” arrived in Beverly Hills, California. He soon became a central
ﬁgure in the growing popularity of yoga in the United States. Choud-
hury developed a sequence of twenty-six asanas and two breath-
ing exercises, arranged in a particular order, which he calls the ”Se-
258 CHAPTER 4. COPYRIGHT

quence.” Choudhury opened his own studio, where he began oﬀer-
ing ”Bikram Yoga” classes. In a Bikram Yoga class, the Sequence is
practiced over the course of ninety minutes, to a series of instructions
(the ”Dialogue”), in a room heated to 105 degrees Fahrenheit to sim-
ulate Choudhury’s native Indian climate.
Evolation Yoga oﬀers several types and styles of yoga, includ-
ing ”hot yoga,” which is similar to ”Bikram’s Basic Yoga System.”
Evolation acknowledges that hot yoga ”includes 26 postures and two
breathing exercises and is done for 90 minutes, accompanied by a se-
ries of oral instructions, in a room heated to approximately 105 de-
grees Fahrenheit.” [Choudhury sued.]
Though Choudhury emphasizes the aesthetic a ributes of the Se-
quence’s ”graceful ﬂow,” at bo om, the Sequence is an idea, process,
or system designed to improve health. Copyright protects only the
expression of this idea – the words and pictures used to describe the
Sequence – and not the idea of the Sequence itself.
A. The Sequence Is an Unprotectable Idea.
Following Baker, and recognizing this vital distinction between ideas
and expression, courts have routinely held that the copyright for a
work describing how to perform a process does not extend to the pro-
Palmer: 287 F.3d 1325 (11th Cir. 2002) cess itself. In Palmer v. Braun, for example, the Eleventh Circuit held
that meditation exercises described in a copyrighted manual on ex-
ploring the consciousness were ”a process” unentitled to copyright
protection. The court explained that the ”exercises, while undoubt-
edly the product of much time and eﬀort, are, at bo om, simply a
process for achieving increased consciousness. Such processes, even
if original, cannot be protected by copyright.”
As Choudhury describes it, the Sequence is a ”system” or a
”method” designed to ”systematically work every part of the body,
to give all internal organs, all the veins, all the ligaments, and all the
muscles everything they need to maintain optimum health and max-
imum function. An essential element of this ”system” is the order in
which the yoga poses and breathing exercises are arranged. B ’
B Y C instructs readers, ”Do the poses in the strict
order given in this book. Nothing about Bikram’s Beginning Yoga
Class is haphazard. It is designed to scientiﬁcally warm and stretch
muscles, ligaments, and tendons in the order in which they should
be stretched.” For instance, Choudhury explains, ”Camel Pose (Us-
trasana) stretches the abdomen and compresses the spine; so for the
next posture, I chose the Rabbit Pose (Sasangasana), which does the
converse: stretches the back and compresses the abdomen.”
Choudhury contends that the Sequence’s arrangement of pos-
tures is ”particularly beautiful and graceful.” But beauty is not a basis
for copyright protection. The performance of many ideas, systems,
A. SUBJECT MATTER 259

or processes may be beautiful: a surgeon’s intricate movements, a
book-keeper’s careful notations, or a baker’s kneading might each
possess a certain grace for at least some viewers. Indeed, from Ver-
meer’s milkmaid to Lewis Hine’s power house mechanic, the individ-
ual engrossed in a process has long a racted artistic a ention. But
the beauty of the process does not permit one who describes it to
gain, through copyright, the monopolistic power to exclude all others
from practicing it. This is true even where, as here, the process was
conceived with at least some aesthetic considerations in mind. Just
as some steps in a recipe may reﬂect no more than the author’s belief
that a particular ingredient is beautiful or that a particular cooking
technique is impressive to watch and empowering to practice, some
elements in Choudhury’s Sequence may reﬂect his aesthetic prefer-
ences. Yet just like the recipe, the Sequence remains unprotectable as
a process the design of which primarily reﬂects function, not expres-
sion. Johannes Vermeer, The Milkmaid

B. The Sequence Is Not a Copyrightable Compilation.
By claiming copyright protection for the Sequence as a compilation,
Choudhury misconstrues the scope of copyright protection for com-
pilations. As we have explained, the Sequence is an idea, process, or
system; therefore, it is not eligible for copyright protection. That the
Sequence may possess many constituent parts does not transform it
into a proper subject of copyright protection. Virtually any process
or system could be dissected in a similar fashion. Baker’s examples
of ”how-to” treatises are instructive: ”A treatise on the construction
and use of ploughs, or watches, or churns, or on the mode of drawing
lines to produce the eﬀect of perspective” would likely list the steps
necessary to perform the process it describes. The watchmaking trea-
tise’s author could not claim a copyright in the process of making a
watch, however, by breaking down the process into multiple steps
and labeling it a ”compilation.” Likewise, Choudhury cannot obtain Lewis Hine, Power house mechanic
copyright protection for the Sequence as a compilation by separately working on steam pump
identifying the poses and breathing exercises it contains.
Moreover, according to Choudhury himself, the medical and func-
tional considerations at the heart of the Sequence compel the very se-
lection and arrangement of poses and breathing exercises for which
he claims copyright protection. According to Bikram’s Beginning
Yoga Class, the ”strict order” of the poses ”is designed to scientiﬁ-
cally warm and stretch muscles, ligaments, and tendons in the order
in which they should be stretched.” Read in the light most favorable
to Choudhury, the record demonstrates that the overarching reason
for the organization of the poses and breathing exercises in the Se-
quence is to further the basic goals of the method: to a ain ”[p]roper
weight, muscle tone, glowing complexion, boundless energy, vibrant
260 CHAPTER 4. COPYRIGHT

good health, and a sense of well-being.” The Sequence’s composition
renders it more eﬀective as a process or system, but not any more
suitable for copyright protection as an original work of authorship.
It makes no diﬀerence that similar results could be achieved
through a diﬀerent organization of yoga poses and breathing exer-
cises. Choudhury argues that he could have chosen from ”hundreds
of postures” and ”countless arrangements of these postures” in de-
veloping the Sequence. But the possibility of a aining a particular
end through multiple diﬀerent methods does not render the uncopy-
Whatever It Takes: 402 F.3d 700, 711-12 rightable a proper subject of copyright. See ATC Distribution Group,
(6th Cir. 2005) Inc. v. Whatever It Takes Transmissions & Parts, Inc. (”To be sure, the
publisher of a catalog describing a transmission parts numbering sys-
tem could have arranged the parts information in other ways that
were potentially less clear or useful, but this fact alone is insuﬃcient
to demonstrate the creativity necessary for copyright protection.”).
Though it may be one of many possible yoga sequences capable of
a aining similar results, the Sequence is nevertheless a process and
is therefore ineligible for copyright protection.
C. The Sequence Is Not a Copyrightable Choreographic Work.
The Sequence is not copyrightable as a choreographic work for the
same reason that it is not copyrightable as a compilation: it is an idea,
process, or system to which copyright protection may ”in no case”
extend. We recognize that the Sequence may involve ”static and ki-
netic successions of bodily movement in certain rhythmic and spa-
Compendium II, S 450.01 tial relationships.”. So too would a method to churn bu er or drill
for oil. That is no accident: ”successions of bodily movement” of-
ten serve basic functional purposes. Such movements do not become
copyrightable as ”choreographic works” when they are part and par-
cel of a process. Even if the Sequence could ﬁt within some colloquial
deﬁnitions of dance or choreography, it remains a process ineligible
for copyright protection.
Our day-to-day lives consist of many routinized physical move-
ments, from brushing one’s teeth to pushing a lawnmower to shaking
a Polaroid picture, that could be (and, in two of the preceding exam-
"Shake it, shake it like a Polaroid ples, have been) characterized as forms of dance. Without a proper
picture." understanding of the idea/expression dichotomy, one might obtain
—OutKast, Hey Ya (LaFace Records
monopoly rights over these functional physical sequences by describ-
2003)
ing them in a tangible medium of expression and labeling them chore-
ographic works.
IV. C
Although there is no cause to dispute the many health, ﬁtness, spir-
itual, and aesthetic beneﬁts of yoga, and Bikram Yoga in particular,
they do not bring the Sequence into the realm of copyright protection.
B. OWNERSHIP 261

Concrete Machinery Co. v. Classic Lawn Ornaments
843 F.2d 600 (1st Cir. 1988)
Some ideas admit of only a limited number of expressions. When
there is essentially only one way to express an idea, the idea and its
expression are inseparable and copyright is no bar to copying that
expression. See, e.g., Herbert Rosenthal Jewelry Corp. v. Kalpakian Herbert Rosenthal: 446 F.2d 738 (9th
(idea and expression of copyrighted “jeweled bee pin” inseparable Cir.1971)
and thus copying not prohibited); Morrissey v. Proctor & Gamble Morrissey: 379 F.2d 675 (1st Cir. 1967)
Co. (since few ways to express rules for “sweepstakes,” no infringe-
ment although defendant’s rules only slightly diﬀerent from plain-
tiﬀ’s rules).7 When the idea and its expression are not completely
inseparable, there may still be only a limited number of ways of ex- Based on Lapine v. Seinfeld, No. 08-
pressing the idea. In such a case, the burden of proof is heavy on the cv-128, 2009 WL 2902584 (S.D.N.Y Sept.
plaintiﬀ who may have to show “near identity” between the works 10, 2009)
at issue. This showing is necessary because, as idea and expression
merge, fewer and fewer aspects of a work embody a unique and cre-
ative expression of the idea; a copyright holder must then prove sub-
stantial similarity to those few aspects of the work that are expression
not required by the idea. …

Cooking for Kids Problem
Missy Lapine is the author of T S C : S S -
H H F K ’F M (published
2007), which “presents over 75 recipes that ingeniously disguise the
most important superfoods inside kids’ favorite meals.” Jessica Sein-
feld is the author of D D : S S G
Y K E G F (published 2008), which “is ﬁlled with
traditional recipes that kids love, except they’re stealthily packed
The Sneaky Chef
with veggies hidden in them so kids don’t even know!” Infringe-
ment? Are there further facts it would be helpful to know?

B Ownership

Sheldon v. Metro-Goldwyn Pictures Corp.
Borrowed the work must indeed not be, for a plagiarist is not himself
pro tanto an “author”; but if by some magic a man who had never
known it were to compose anew Keats’s Ode on a Grecian Urn, he
7
The rationale for this rule, as Judge Aldrich stated, is that “to permit copy-
righting [in that case] would mean that a party or parties, by copyrighting a mere
handful of forms [of expression], could exhaust all possibilities of future use of the Deceptively Delicious
substance ... [and thus] the subject ma er would be appropriated by permi ing the
copyrighting of its expression. We cannot recognize copyright as a game of chess
81 F.2d 49 (2d Cir. 1936)
in which the public can be checkmated.”
(Hand, J.)
262 CHAPTER 4. COPYRIGHT

would be an “author,” and, if he copyrighted it, others might not copy
Compare: "Pierre Menard did not want that poem, though they might of course copy Keats’s.
to compose another Quixote, which
surely is easy enough -- he wanted to
compose the Quixote. Nor, surely, need
one have to say that his goal was never
a mechanical transcription of the orig-
Because of this rule permi ing multiple independent creation, copy-
inal; he had no intention of copying it. right (like trade secret) does not need complicated priority doctrines,
His admirable ambition was to produce as patent and trademark do. The price paid for simplicity here,
a number of pages which coincided -- though, is that copyright (like trade secret) must include proof of
word for word and line for line -- with
copying from the plaintiﬀ as part of its infringement analysis.
those of Miguel de Cervantes." Jorge
Luis Borges, Pierre Menard, Author of the Two kinds of issues about initial copyright ownership do arise
Quixote (1941) (Andrew Hurley trans.). with some regularity. First, there is the problem of whether certain
kinds of allegedly ”creative” processes should be regarded as result-
ing in copyrightable authorship at all. Second, there is the prob-
lem of dividing up ownership among multiple parties who do con-
tribute authorship. Copyright slices this problem up along two di-
mensions: contemporaneous collaborations are addressed as joint
works or works made for hire, whereas sequential creation is ana-
lyzed in terms of derivative works.

1 Authorship

111 U.S. 53 (1884)
Burrow-Giles Lithographic Co. v. Sarony
The suit was commenced by an action at law in which Sarony was
plaintiﬀ and the lithographic company was defendant, the plaintiﬀ
charging the defendant with violating his copyright in regard to a
photograph, the title of which is “Oscar Wilde No. 18.” A jury being
waived, the court made a ﬁnding of facts on which a judgment in
favor of the plaintiﬀ was rendered for the sum of $600 for the plates
and 85,000 copies sold and exposed to sale, and $10 for copies found
in his possession.
The constitutional question is not free from diﬃculty.
The eighth section of the ﬁrst article of the Constitution is the great
repository of the powers of Congress, and by the eighth clause of that
section Congress is authorized:
To promote the progress of science and useful arts, by se-
curing, for limited times to authors and inventors, the ex-
clusive right to their respective writings and discoveries.
It is insisted in argument, that a photograph being a reproduction on
Oscar Wilde No. 18 paper of the exact features of some natural object or of some person,
Napoleon Sarony, 1821–96, was a
is not a writing of which the producer is the author.
celebrity photographer: i.e., both a [The Court reviewed early copyright statutes conferring copy-
photographer of celebrities and a right protection on maps, charts, designs, engravings, etchings, cuts,
celebrity in his own right. and other prints.]
B. OWNERSHIP 263

These statutes certainly answer the objection that books only, or
writing in the limited sense of a book and its author, are within the
constitutional provision. Both these words are susceptible of a more
enlarged deﬁnition than this. An author in that sense is “he to whom
anything owes its origin; originator; maker; one who completes a
work of science or literature.” W . So, also, no one would Joseph Emerson Worcester, 1784–
now claim that the word writing in this clause of the Constitution, 1865, was the number-two lexi-
cographer of his day, after Noah
though the only word used as to subjects in regard to which authors Webster.
are to be secured, is limited to the actual script of the author, and ex-
cludes books and all other printed ma er. By writings in that clause
is meant the literary productions of those authors, and Congress very
properly has declared these to include all forms of writing, printing,
engraving, etching, &c., by which the ideas in the mind of the author
are given visible expression. The only reason why photographs were
not included in the extended list in the act of 1802 is probably that
they did not exist, as photography as an art was then unknown, and
the scientiﬁc principle on which it rests, and the chemicals and ma-
chinery by which it is operated, have all been discovered long since
that statute was enacted.
But it is said that an engraving, a painting, a print, does embody
the intellectual conception of its author, in which there is novelty, in-
vention, originality, and therefore comes within the purpose of the
Constitution in securing its exclusive use or sale to its author, while
the photograph is the mere mechanical reproduction of the physical
features or outlines of some object animate or inanimate, and involves
no originality of thought or any novelty in the intellectual operation
connected with its visible reproduction in shape of a picture.
The third ﬁnding of facts says, in regard to the photograph in Does this passage adequately explain
question, that it is a “useful, new, harmonious, characteristic, and why Napoleon Sarony rather than Os-
car Wile owned the copyright? What
graceful picture, and that plaintiﬀ made the same ... entirely from
about Sarony's camera operator, Ben-
his own original mental conception, to which he gave visible form by jamin Richardson?
posing the said Oscar Wilde in front of the camera, selecting and ar-
ranging the costume, draperies, and other various accessories in said
photograph, arranging the subject so as to present graceful outlines,
arranging and disposing the light and shade, suggesting and evoking
the desired expression, and from such disposition, arrangement, or
representation, made entirely by plaintiﬀ, he produced the picture in
suit.”
These ﬁndings, we think, show this photograph to be an original
work of art, the product of plaintiﬀ’s intellectual invention, of which
plaintiﬀ is the author, and of a class of inventions for which the Con-
stitution intended that Congress should secure to him the exclusive
right to use, publish and sell, as it has done by section 4952 of the
Revised Statutes.
264 CHAPTER 4. COPYRIGHT

Monkey Selfie Problem
Based on Naruto v. Slater, No. 15-cv-
Nature photographer David Slater was traveling in Indonesia when
04324, 2016 WL 362231 (N.D. Cal. Jan.
28, 2016) a monkey picked up his camera and pushed the shu er bu on, re-
sulting in this photograph. Is it copyrightable? If so, who owns the
copyright?
Does it ma er whether Slater had chosen his camera’s se ings
(e.g., shu er speed, aperture, autofocus) for taking close-up daytime
outdoor wildlife photographs? If he was speciﬁcally trying to get
monkeys to pick up the camera and take selﬁes? If he took the pho-
tograph himself and then falsely passed it oﬀ as a monkey selﬁe?

Copyright protection under this title is not available for any work of
the United States Government, but the United States Government is
not precluded from receiving and holding copyrights transferred to
it by assignment, bequest, or otherwise.
Monkey selfie
2 Collaborations

17 U.S.C. § 105 Copyright Act
Subject matter of copyright: United
States Government works
Compare: "There has always been a (a) Initial Ownership. – Copyright in a work protected under this
judicial consensus that no copyright title vests initially in the author or authors of the work. The
could be secured in the products of the authors of a joint work are coowners of copyright in the work.
labor done by judicial officers in the
discharge of their judicial duties. The
(b) Works made for hire. – In the case of a work made for hire, the
whole work done by the judges consti- employer or other person for whom the work was prepared is
tutes the authentic exposition and in- considered the author for purposes of this title, and, unless the
terpretation of the law, which, binding parties have expressly agreed otherwise in a wri en instrument
every citizen, is free for publication to
signed by them, owns all of the rights comprised in the copy-
all." Banks v. Manchester, 128 U.S. 244
(1888). right.

A “joint work” is a work prepared by two or more authors with the
17 U.S.C. § 201 intention that their contributions be merged into inseparable or inter-
Ownership of copyright
dependent parts of a unitary whole.
A “work made for hire” is
17 U.S.C. § 101 (1) a work prepared by an employee within the scope of his or her
Definitions employment; or
(2) a work specially ordered or commissioned for use as a contribu-
tion to a collective work, as a part of a motion picture or other
audiovisual work, as a translation, as a supplementary work,
as a compilation, as an instructional text, as a test, as answer
material for a test, or as an atlas, if the parties expressly agree
B. OWNERSHIP 265

in a wri en instrument signed by them that the work shall be
considered a work made for hire.

Ownership of a copyright, or of any of the exclusive rights under a 17 U.S.C. § 202
copyright, is distinct from ownership of any material object in which Ownership of copyright as distinct from
the work is embodied. Transfer of ownership of any material object, ownership of material object
including the copy or phonorecord in which the work is ﬁrst ﬁxed,
does not of itself convey any rights in the copyrighted work embod-
ied in the object; nor, in the absence of an agreement, does transfer of
ownership of a copyright or of any exclusive rights under a copyright
convey property rights in any material object.

Thomson v. Larson 147 F.3d 195 (2d Cir. 1998)
Plaintiﬀ-appellant Lynn Thomson claims that, along with principal
playwright Jonathan Larson, she co-authored a “new version” of the
critically acclaimed Broadway musical Rent.
B
Rent, the Puli er Prize and Tony Award-winning Broadway modern
musical based on Puccini’s opera La Bohème, began in 1989 as the joint
project of Billy Aronson and composer Jonathan Larson. Aronson
and Larson collaborated on the work until their amicable separation
in 1991. At that time, Larson obtained Aronson’s permission to de-
velop the play on his own.
In the summer of 1992, Larson’s Rent script was favorably re-
ceived by James Nicola, Artistic Director of the New York Theatre
Workshop (“NYTW”), a non-proﬁt theater company in the East Vil-
lage. Larson continued to develop and revise the “workshop version”
of his Rent script. In the spring of 1993, Nicola urged Larson to allow
the NYTW to hire a playwright or a bookwriter to help revamp the
storyline and narrative structure of the play.
In May 1995, in preparation for Rent’s oﬀ-Broadway opening
scheduled for early 1996, Larson agreed to the NYTW’s hiring of
Lynn Thomson, a professor of advanced playwrighting at New York
University, as a dramaturg5 to assist him in clarifying the storyline of
the musical. Thomson signed a contract with the NYTW, in which she
agreed to provide her services with the workshop production from
May 1, 1995, through the press opening, scheduled for early Febru-
ary of 1996. The agreement stated that Thomson’s “responsibilities
shall include, but not be limited to: Providing dramaturgical assis-
5
Dramaturgs provide a range of services to playwrights and directors in connec-
tion with the production and development of theater pieces. According to Thom-
son’s testimony, the role of the dramaturg “can include any number of the elements
that go into the crafting of a play,” such as “actual plot elements, dramatic structure,
character details, themes, and even speciﬁc language.”
266 CHAPTER 4. COPYRIGHT

tance and research to the playwright and director.” In exchange, the
NYTW agreed to pay “a fee” of $2000, “[i]n full consideration of the
services to be rendered” and to provide for billing credit for Thom-
son as “Dramaturg.” The Thomson/NYTW agreement was silent as
to any copyright interests or any issue of ownership with respect to
the ﬁnal work.
In the summer and fall of 1995, Thomson and Larson worked ex-
tremely intensively together on the show. For the most part, the two
worked on the script alone in Larson’s apartment. Thomson testiﬁed
that revisions to the text of Rent didn’t begin until early August 1995.
Larson himself entered all changes directly onto his computer, where
he kept the script, and Thomson made no contemporaneous notes of
her speciﬁc contributions of language or other structural or thematic
suggestions. Thomson alludes to the “October Version” of Rent as
the culmination of her collaborative eﬀorts with Larson. That new
version was characterized by experts as “a radical transformation of
the show.”
A “sing-through” of the “October Version” of Rent took place in
early November 1995. And on November 3, 1995, Larson signed a
contract with the NYTW for ongoing revisions to Rent. This agree-
ment identiﬁed Larson as the “Author” of Rent and made no refer-
ence to Thomson. The contract incorporated by reference an earlier
draft author’s agreement that set forth the terms that would apply if
the NYTW opted to produce Rent. The earlier draft author’s agree-
ment gave Larson approval rights over all changes in text, provided
that any changes in text would become his property, and assured him
billing as “sole author.”
The ﬁnal dress rehearsal was held on January 24, 1996. Just hours
after it ended, Larson died suddenly of an aortic aneurysm. Over
the next few weeks, Nicola, Greif, Thomson, and musical director
Tim Weil worked together to ﬁne-tune the script. The play opened
oﬀ-Broadway on February 13, 1996, to rave reviews. On February
23, Rent’s move to Broadway was announced. Since its opening on
Broadway on April 29, 1996, the show has been “an astounding criti-
cal, artistic, and commercial success.”
Before the Broadway opening, Thomson, in view of her contri-
butions to Rent, sought compensation and title page dramaturgical
credit from the Broadway producers. And on April 2, 1996, she
signed a contract in which the producers agreed to pay her $10,000
plus a nominal $50/ week for her dramaturgical services. Around
the same time, upon the producers’ advice, Thomson approached Al-
lan S. Larson, Nane e Larson, and Julie Larson McCollum (“Larson
Heirs”), the surviving members of Jonathan Larson’s family, to re-
quest a percentage of the royalties derived from the play. In a le er
to the Larson family, dated April 8, 1996, Thomson stated that she
B. OWNERSHIP 267

believed Larson, had he lived, would have oﬀered her a “small per-
centage of his royalties to acknowledge the contribution I made.” In
reply, the Larson Heirs oﬀered Thomson a gift of 1% of the author’s
royalties. Negotiations between Thomson and the Larson Heirs, how-
ever, broke down.
After the parties failed to reach a se lement, Thomson brought
suit against the Larson Heirs, claiming that she was a co-author of
Rent and that she had never assigned, licensed, or otherwise trans-
ferred her rights. Thomson sought declaratory relief and a retroac-
tive and on-going accounting under the Copyright Act. Speciﬁcally,
she asked that the court declare her a “co-author” of Rent and grant
her 16% of the author’s share of the royalties.11
T ’ C -A C
The Copyright Act deﬁnes a “joint work” as “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 (1994). The touchstone of the statutory deﬁnition is the
intention at the time the writing is done that the parts be absorbed or
combined into an integrated unit.
Joint authorship entitles the co-authors to equal undivided inter-
ests in the whole work – in other words, each joint author has the
right to use or to license the work as he or she wishes, subject only to
the obligation to account to the other joint owner for any proﬁts that
are made.
In Childress v. Taylor, our court interpreted this section of the Act Childress: 945 F.2d 500 (1991)
and set forth “standards for determining when a contributor to a
copyrighted work is entitled to be regarded as a joint author” where
the parties have failed to sign any wri en agreement dealing with
coauthorship. While the Copyright Act states only that co-authors
must intend that their contributions “be merged into ... a unitary
whole,” Judge Newman explained why a more stringent inquiry than
the statutory language would seem to suggest is required:
An inquiry so limited would extend joint author status
to many persons who are not likely to have been within
the contemplation of Congress. For example, a writer fre-
11
Thomson claims that she seeks 16% of the proceeds “because of her respect for
Larson’s role as the principal creator of the work.” Thomson derives the 16% ﬁgure
in the following way: she alleges that 48% of the Rent script is new in relation to the
1994 Workshop version (prior to her involvement); as co-author, she is, therefore,
entitled to 50% of this part (or 24% of the total revenues); but since there are three
components to Rent (book, lyrics, and music) and she did not contribute to one
(music), she is entitled to 2/3, or 16% of the total revenues. Thomson also sought
the right to quote freely from various versions of Rent in a book that she planned
to write.
268 CHAPTER 4. COPYRIGHT

quently works with an editor who makes numerous use-
ful revisions to the ﬁrst draft, some of which will consist of
additions of copyrightable expression. Both intend their
contributions to be merged into inseparable parts of a uni-
tary whole, yet very few editors and even fewer writers
would expect the editor to be accorded the status of joint
author, enjoying an undivided half interest in the copy-
right in the published work.
The potential danger of allowing anyone who makes even a min-
imal contribution to the writing of a work to be deemed a statutory
co-author – as long as the two parties intended the contributions to
merge — motivated the court to set forth a two-pronged test. A co-
authorship claimant bears the burden of establishing that each of the
putative co-authors (1) made independently copyrightable contribu-
tions to the work; and (2) fully intended to be co-authors.
1. Independently Copyrightable Contributions
Childress held that collaboration alone is not suﬃcient to establish
joint authorship. Rather, the contribution of each joint author must
be independently copyrightable.
Without making speciﬁc ﬁndings as to any of Thomson’s claims
regarding lyrics or other contributions, the district court concluded
that Thomson “made at least some non-de minimis copyrightable
contribution,” and that Thomson’s contributions to the Rent libre o
were “certainly not zero.” Once having said that, the court de-
cided the case on the second Childress prong – mutual intent of co-
authorship. It hence did not reach the issue of the individual copy-
rightability of Thomson’s varied alleged contributions (plot develop-
ments, thematic elements, character details, and structural compo-
nents).
2. Intent of the Parties
Childress mandates that the parties “entertain in their minds the con-
cept of joint authorship.” This requirement of mutual intent recog-
nizes that, since coauthors are aﬀorded equal rights in the coauthored
work, the “equal sharing of rights should be reserved for relation-
ships in which all participants fully intend to be joint authors.”
Childress and its progeny, however, do not explicitly deﬁne the
nature of the necessary intent to be co-authors. The court stated that
“[i]n many instances, a useful test will be whether, in the absence of
contractual arrangements concerning listed authorship, each partic-
ipant intended that all would be identiﬁed as co-authors.” But it is
also clear that the intention standard is not strictly subjective.
i. Decisionmaking Authority
B. OWNERSHIP 269

An important indicator of authorship is a contributor’s decisionmak-
ing authority over what changes are made and what is included in a
work. See, e.g., Erickson v. Trinity Theatre, Inc. (an actor’s suggestion of Erickson: 13 F.3d 1061 (7th Cir. 1994)
text does not support a claim of co-authorship where the sole author
determined whether and where such contributions were included in
the work); Maruel v. Smith (claimant had a contractual right to control Maurel: 271 F. 211 (2d Cir. 1921)
the contents of the opera).
The district court determined that Larson “retained and intended
to retain at all times sole decision-making authority as to what went
into Rent.” In support of its conclusion, the court relied upon Thom-
son’s statement that she was “ﬂa ered that [Larson] was asking [her]
to contribute actual language to the text” and found that this state-
ment demonstrated that even Thomson understood “that the ques-
tion whether any contribution she might make would go into the
script was within Mr. Larson’s sole and complete discretion.” More-
over, as the court recognized, the November agreement between Lar-
son and the NYTW expressly stated that Larson had ﬁnal approval
over all changes to Rent and that all such changes would become Lar-
son’s property.
ii. Billing
In discerning how parties viewed themselves in relation to a work,
Childress also deemed the way in which the parties bill or credit them-
selves to be signiﬁcant. As the district court noted, “billing or credit
is ... a window on the mind of the party who is responsible for
giving the billing or the credit.” And a writer’s a ribution of the
work to herself alone is “persuasive proof ... that she intended this
particular piece to represent her own individual authorship” and is
“prima facie proof that [the] work was not intended to be joint.” Weiss- Weissmann: 868 F.2d 1313 (2d Cir.
mann v. Freeman Thomson claims that Larson’s decision to credit her 1989)
as “dramaturg” on the ﬁnal page of Rent scripts reﬂected some co-
authorship intent. Thomson concedes that she never sought equal
billing with Larson, but argues that she did not need to do so in or-
der to be deemed a statutory co-author.
The district court found, instead, that the billing was unequivocal:
Every script brought to [the court’s] a ention says “Rent, by Jonathan
Larson.” In addition, Larson “described himself in the biography he
submi ed for the playbill in January 1996, nine days before he died,
as the author/composer, and listed Ms. Thomson on the same doc-
ument as dramaturg.” And while, as Ms. Thomson argues, it may
indeed have been highly unusual for an author/composer to credit
his dramaturg with a byline, we fail to see how Larson’s decision to
style her as “dramaturg” on the ﬁnal page in Rent scripts reﬂects a
co-authorship intent on the part of Larson. The district court prop-
erly concluded that “the manner in which [Larson] listed credits on
270 CHAPTER 4. COPYRIGHT

the scripts strongly supports the view that he regarded himself as the
sole author.”
iii. Wri en Agreements with Third Parties
Just as the parties’ wri en agreements with each other can consti-
tute evidence of whether the parties considered themselves to be co-
authors, so the parties’ agreements with outsiders also can provide
insight into co-authorship intent, albeit to a somewhat more a enu-
ated degree.
The district court found that Larson “listed himself or treated him-
self as the author in the November 1995 revisions contract that he
entered into with the NYTW, which in turn incorporated the earlier
draft author’s agreement that had not been signed.” That agreement
identiﬁes Larson as Rent’s “Author” and does not mention Thomson.
It also incorporates the terms of a September 1995 draft agreement
(termed “Author’s Agreement”) that states that Larson “shall receive
billing as sole author.” The district court commented, moreover, that
“[t]he fact that [Larson] felt free to enter into the November 1995 con-
tract on his own, without the consent of and without any reference to
Ms. Thomson quite apart from whatever the terms of the agreements
are, indicates that his intention was to be the sole author.”
C
Based on all of the evidence, the district court concluded that “Mr.
Larson never regarded himself as a joint author with Ms. Thomson.”
We believe that the district court correctly applied the Childress stan-
dards to the evidence before it and hold that its ﬁnding that Larson
never intended co-authorship was not clearly erroneous.

794 F.3d 133 (1st Cir. 2015)
Greene v. Ablon
Authors who create a joint work co-own the copyright in that work.
Joint authors share equal undivided interests in the whole work – in
other words, each joint author has the right to use or to license the
work as he or she wishes, subject only to the obligation to account to
the other joint author for any proﬁts that are made. Even if it is clear
that one co-author has contributed more to the work than another
co-author, they are nevertheless equal owners of the copyright in the
absence of an agreement to the contrary.
A co-owner must account to other co-owners for any proﬁts he
earns from licensing or use of the copyright. The duty to account
comes from equitable doctrines relating to unjust enrichment and
general principles of law governing the rights of co-owners. We ac-
knowledge the theoretical appeal of the notion that if one owner per-
mits free use of the copyright, that owner incurs a debt to his co-
owner because the use, paid-for or not, partially depletes the value of
B. OWNERSHIP 271

the copyright. However, the duty to account is for proﬁts, not value.

Community for Creative Non-Violence v. Reid
490 U.S. 730 (1989)
I
In the fall of 1985, CCNV decided to participate in the annual Christ-
mastime Pageant of Peace in Washington, D. C., by sponsoring a dis-
play to dramatize the plight of the homeless. As the District Court
recounted:
”Snyder and fellow CCNV members conceived the idea
for the nature of the display: a sculpture of a modern Na-
tivity scene in which, in lieu of the traditional Holy Family,
the two adult ﬁgures and the infant would appear as con-
temporary homeless people huddled on a streetside steam
grate. The family was to be black (most of the homeless in
Washington being black); the ﬁgures were to be life-sized,
and the steam grate would be positioned atop a platform
‘pedestal,’ or base, within which special-eﬀects equipment
would be enclosed to emit simulated ‘steam’ through the
grid to swirl about the ﬁgures. They also se led upon a
title for the work – ‘Third World America’ – and a legend
for the pedestal: ‘and still there is no room at the inn.’ “
Snyder made inquiries to locate an artist to produce the sculpture.
He was referred to respondent James Earl Reid, a Baltimore, Mary-
land, sculptor. In the course of two telephone calls, Reid agreed to
sculpt the three human ﬁgures. CCNV agreed to make the steam
James Earl Reid, Third World America
grate and pedestal for the statue. Reid proposed that the work be
cast in bronze, at a total cost of approximately $100,000 and taking
six to eight months to complete. Snyder rejected that proposal be-
cause CCNV did not have suﬃcient funds, and because the statue
had to be completed by December 12 to be included in the pageant.
Reid then suggested, and Snyder agreed, that the sculpture would
be made of a material known as “Design Cast 62,” a synthetic sub-
stance that could meet CCNV’s monetary and time constraints, could
be tinted to resemble bronze, and could withstand the elements. The
parties agreed that the project would cost no more than $15,000, not
including Reid’s services, which he oﬀered to donate. The parties did
not sign a wri en agreement. Neither party mentioned copyright.
After Reid received an advance of $3,000, he made several
sketches of ﬁgures in various poses. At Snyder’s request, Reid sent
CCNV a sketch of a proposed sculpture showing the family in a
crechelike se ing: the mother seated, cradling a baby in her lap; the
father standing behind her, bending over her shoulder to touch the
baby’s foot. Reid testiﬁed that Snyder asked for the sketch to use
272 CHAPTER 4. COPYRIGHT

in raising funds for the sculpture. Snyder testiﬁed that it was also
for his approval. Reid sought a black family to serve as a model for
the sculpture. Upon Snyder’s suggestion, Reid visited a family liv-
ing at CCNV’s Washington shelter but decided that only their newly
born child was a suitable model. While Reid was in Washington, Sny-
der took him to see homeless people living on the streets. Snyder
pointed out that they tended to recline on steam grates, rather than
sit or stand, in order to warm their bodies. From that time on, Reid’s
sketches contained only reclining ﬁgures.
Throughout November and the ﬁrst two weeks of December 1985,
Reid worked exclusively on the statue, assisted at various times by a
dozen diﬀerent people who were paid with funds provided in install-
ments by CCNV. On a number of occasions, CCNV members visited
Reid to check on his progress and to coordinate CCNV’s construc-
tion of the base. CCNV rejected Reid’s proposal to use suitcases or
shopping bags to hold the family’s personal belongings, insisting in-
stead on a shopping cart. Reid and CCNV members did not discuss
copyright ownership on any of these visits.
On December 24, 1985, 12 days after the agreed-upon date, Reid
delivered the completed statue to Washington. There it was joined
to the steam grate and pedestal prepared by CCNV and placed on
display near the site of the pageant. Snyder paid Reid the ﬁnal in-
stallment of the $15,000. The statue remained on display for a month.
In late January 1986, CCNV members returned it to Reid’s studio in
Baltimore for minor repairs. Several weeks later, Snyder began mak-
ing plans to take the statue on a tour of several cities to raise money
for the homeless. Reid objected, contending that the Design Cast 62
material was not strong enough to withstand the ambitious itinerary.
He urged CCNV to cast the statue in bronze at a cost of $35,000, or
to create a master mold at a cost of $5,000. Snyder declined to spend
more of CCNV’s money on the project.
In March 1986, Snyder asked Reid to return the sculpture. Reid re-
fused. He then ﬁled a certiﬁcate of copyright registration for “Third
World America” in his name and announced plans to take the sculp-
ture on a more modest tour than the one CCNV had proposed. Sny-
der, acting in his capacity as CCNV’s trustee, immediately ﬁled a com-
peting certiﬁcate of copyright registration.
Snyder and CCNV then commenced this action against Reid.
II
A
The Copyright Act of 1976 provides that copyright ownership “vests
initially in the author or authors of the work.” 17 U. S. C. § 201(a). As
a general rule, the author is the party who actually creates the work,
B. OWNERSHIP 273

that is, the person who translates an idea into a ﬁxed, tangible expres-
sion entitled to copyright protection. § 102. The Act carves out an im-
portant exception, however, for “works made for hire.” If the work
is for hire, “the employer or other person for whom the work was
prepared is considered the author” and owns the copyright, unless
there is a wri en agreement to the contrary. § 201(b). Classifying a
work as “made for hire” determines not only the initial ownership of
its copyright, but also the copyright’s duration, § 302(c), and the own-
ers’ renewal rights, § 304(a), termination rights, § 203(a), and right to
import certain goods bearing the copyright, § 601(b)(1). The contours
of the work for hire doctrine therefore carry profound signiﬁcance for
freelance creators – including artists, writers, photographers, design-
ers, composers, and computer programmers – and for the publish-
ing, advertising, music, and other industries which commission their
works.
The dispositive inquiry in this case therefore is whether “Third
World America” is “a work prepared by an employee within the
scope of his or her employment” under § 101(1). The Act does not
deﬁne these terms. In the absence of such guidance, four interpre-
tations have emerged. The ﬁrst holds that a work is prepared by
an employee whenever the hiring party retains the right to control
the product. A second, and closely related, view is that a work is
prepared by an employee under § 101(1) when the hiring party has
actually wielded control with respect to the creation of a particular
work. A third view is that the term “employee” within § 101(1) car-
ries its common-law agency law meaning. Finally, respondent and
numerous amici curiae contend that the term “employee” only refers
to “formal, salaried” employees.
Nothing in the text of the work for hire provisions indicates that
Congress used the words “employee” and “employment” to describe
anything other than the conventional relation of employer and em-
ploye. On the contrary, Congress’ intent to incorporate the agency
law deﬁnition is suggested by § 101(1)’s use of the term, “scope of
employment,” a widely used term of art in agency law.
We therefore conclude that the language and structure of § 101
of the Act do not support either the right to control the product or
the actual control approaches.8 The structure of § 101 indicates that a
8
We also reject the suggestion of respondent and amici that the term “em-
ployee” refers only to formal, salaried employees. The Act does not say “formal”
or “salaried” employee, but simply “employee.” Moreover, respondent and those
amici who endorse a formal, salaried employee test do not agree upon the content
of this test. Compare, e. g., Brief for Respondent 37 (hired party who is on payroll
is an employee) with Tr. of Oral Arg. 31 (hired party who receives a salary or com-
missions regularly is an employee); and Brief for Volunteer Lawyers for the Arts,
Inc., et al. as Amici Curiae 4 (hired party who receives a salary and is treated as an
274 CHAPTER 4. COPYRIGHT

work for hire can arise through one of two mutually exclusive means,
one for employees and one for independent contractors, and ordinary
canons of statutory interpretation indicate that the classiﬁcation of a
particular hired party should be made with reference to agency law.
In sum, we must reject petitioners’ argument. Transforming a
commissioned work into a work by an employee on the basis of the
hiring party’s right to control, or actual control of, the work is in-
consistent with the language, structure, and legislative history of the
work for hire provisions. To determine whether a work is for hire
under the Act, a court ﬁrst should ascertain, using principles of gen-
eral common law of agency, whether the work was prepared by an
employee or an independent contractor. After making this determi-
nation, the court can apply the appropriate subsection of § 101.
B
We turn, ﬁnally, to an application of § 101 to Reid’s production of
“Third World America.” In determining whether a hired party is an
employee under the general common law of agency, we consider the
hiring party’s right to control the manner and means by which the
product is accomplished. Among the other factors relevant to this
inquiry are the skill required; the source of the instrumentalities and
tools; the location of the work; the duration of the relationship be-
tween the parties; whether the hiring party has the right to assign
additional projects to the hired party; the extent of the hired party’s
discretion over when and how long to work; the method of payment;
the hired party’s role in hiring and paying assistants; whether the
work is part of the regular business of the hiring party; whether the
hiring party is in business; the provision of employee beneﬁts; and
the tax treatment of the hired party. No one of these factors is deter-
minative.
Examining the circumstances of this case in light of these factors,
we agree with the Court of Appeals that Reid was not an employee
of CCNV but an independent contractor. True, CCNV members di-
rected enough of Reid’s work to ensure that he produced a sculp-
ture that met their speciﬁcations. But the extent of control the hiring
party exercises over the details of the product is not dispositive. In-
deed, all the other circumstances weigh heavily against ﬁnding an
employment relationship. Reid is a sculptor, a skilled occupation.
Reid supplied his own tools. He worked in his own studio in Bal-
timore, making daily supervision of his activities from Washington
practicably impossible. Reid was retained for less than two months,
a relatively short period of time. During and after this time, CCNV
had no right to assign additional projects to Reid. Apart from the
employee for Social Security and tax purposes is an employee).
B. OWNERSHIP 275

deadline for completing the sculpture, Reid had absolute freedom to
decide when and how long to work. CCNV paid Reid $15,000, a sum
dependent on completion of a speciﬁc job, a method by which inde-
pendent contractors are often compensated. Reid had total discretion
in hiring and paying assistants. Creating sculptures was hardly regu-
lar business for CCNV. Indeed, CCNV is not a business at all. Finally,
CCNV did not pay payroll or Social Security taxes, provide any em-
ployee beneﬁts, or contribute to unemployment insurance or workers’
compensation funds.
Because Reid was an independent contractor, whether “Third
World America” is a work for hire depends on whether it satisﬁes
the terms of § 101(2). This petitioners concede it cannot do. Thus, Is CCNV a joint author?
CCNV is not the author of “Third World America” by virtue of the
work for hire provisions of the Act.

Garcia v. Google, Inc.
786 F. 3d 733 (9th Cir. 2015) (en banc)
In July 2011, Cindy Lee Garcia responded to a casting call for a ﬁlm
titled Desert Warrior, an action-adventure thriller set in ancient Ara-
bia. Garcia was cast in a cameo role, for which she earned $500. She
received and reviewed a few pages of script. Acting under a profes-
sional director hired to oversee production, Garcia spoke two sen-
tences: ”Is George crazy? Our daughter is but a child?” Her role was
to deliver those lines and to ”seem[] concerned.”
Garcia later discovered that writer-director Mark Basseley
Youssef (a.k.a. Nakoula Basseley Nakoula or Sam Bacile) had a dif-
ferent ﬁlm in mind: an anti-Islam polemic renamed Innocence of Mus-
lims. The ﬁlm, featuring a crude production, depicts the Prophet Mo-
hammed as, among other things, a murderer, pedophile, and homo-
sexual. Film producers dubbed over Garcia’s lines and replaced them
with a voice asking, ”Is your Mohammed a child molester?” Garcia
appears on screen for only ﬁve seconds.
Almost a year after the casting call, in June 2012, Youssef up-
loaded a 13-minute-and-51-second trailer of Innocence of Muslims
to YouTube, the video-sharing website owned by Google, Inc., which
boasts a global audience of more than one billion visitors per month.
After it was translated into Arabic, the ﬁlm fomented outrage across
the Middle East, and media reports linked it to numerous violent
protests. An Egyptian cleric issued a fatwa against anyone associ-
ated with Innocence of Muslims, calling upon the ”Muslim Youth in
America[] and Europe” to ”kill the director, the producer[,] and the
actors and everyone who helped and promoted this ﬁlm.” Garcia re-
ceived multiple death threats.
Legal wrangling ensued. Garcia asked Google to remove the ﬁlm,
asserting it was hate speech and violated her state law rights to pri-
vacy and to control her likeness. Garcia also sent Google ﬁve take-
276 CHAPTER 4. COPYRIGHT

down notices under the Digital Millenium Copyright Act, 17 U.S.C.
§ 512, claiming that YouTube’s broadcast of Innocence of Muslims
infringed her copyright in her ”audio-visual dramatic performance.”
Google declined to remove the ﬁlm.
[Garcia sued Google and Youssef for copyright infringement.]
The central question is whether the law and facts clearly favor
Garcia’s claim to a copyright in her ﬁve-second acting performance as
it appears in Innocence of Muslims. The answer is no. This conclusion
does not mean that a plaintiﬀ like Garcia is without options or that
she couldn’t have sought an injunction against diﬀerent parties or on
other legal theories, like the right of publicity and defamation.5
Innocence of Muslims is an audiovisual work that is categorized as
a motion picture and is derivative of the script. Garcia is the author of
none of this and makes no copyright claim to the ﬁlm or to the script.
Instead, Garcia claims that her ﬁve-second performance itself merits
copyright protection.
Garcia’s theory of copyright law would result a legal morass –
splintering a movie into many diﬀerent ”works,” even in the ab-
sence of an independent ﬁxation. Simply put, as Google claimed, it
”make[s] Swiss cheese of copyrights.”
Take, for example, ﬁlms with a large cast—the proverbial ”cast of
thousands.” The silent epic Ben-Hur advertised a cast of 125,000 peo-
ple. In the Lord of the Rings trilogy, 20,000 extras tramped around
Middle-Earth alongside Frodo Baggins (played by Elijah Wood).
Treating every acting performance as an independent work would
not only be a logistical and ﬁnancial nightmare, it would turn cast of
thousands into a new mantra: copyright of thousands.
The reality is that contracts and the work-made-for-hire doctrine
govern much of the big-budget Hollywood performance and produc-
tion world. Absent these formalities, courts have looked to implied
licenses. Indeed, the district court found that Garcia granted Youssef
just such an implied license to incorporate her performance into the
ﬁlm. But these legal niceties do not necessarily dictate whether some-
thing is protected by copyright, and licensing has its limitations. As
ﬁlmmakers warn, low-budget ﬁlms rarely use licenses. Even if ﬁlm-
makers diligently obtain licenses for everyone on set, the contracts
are not a panacea. Third-party content distributors, like YouTube
and Netﬂix, won’t have easy access to the licenses; litigants may dis-
pute their terms and scope; and actors and other content contributors
can terminate licenses after thirty ﬁve years. Untangling the complex,
diﬃcult-to-access, and often phantom chain of title to tens, hundreds,
5
Down the road, Garcia also may have a contract claim. She recalls signing
some kind of document, though she cannot ﬁnd a copy. We take no position on
this claim.
B. OWNERSHIP 277

or even thousands of standalone copyrights is a task that could tie the
distribution chain in knots. And ﬁlming group scenes like a public
parade, or the 1963 March on Washington, would pose a huge bur-
den if each of the thousands of marchers could claim an independent
copyright.

3 Derivative Works

(a) The subject ma er of copyright as speciﬁed by section 102 in- 17 U.S.C. § 103
cludes compilations and derivative works, but protection for a Subject matter of copyright: Compila-
work employing preexisting material in which copyright sub- tions and derivative works
sists does not extend to any part of the work in which such ma-
terial has been used unlawfully.
(b) The copyright in a compilation or derivative work extends only
to the material contributed by the author of such work, as dis-
tinguished from the preexisting material employed in the work,
and does not imply any exclusive right in the preexisting mate-
rial. The copyright in such work is independent of, and does not
aﬀect or enlarge the scope, duration, ownership, or subsistence
of, any copyright protection in the preexisting material.

A “compilation” is a work formed by the collection and assembling 17 U.S.C. § 101
of preexisting materials or of data that are selected, coordinated, or Definitions
arranged in such a way that the resulting work as a whole constitutes
an original work of authorship. The term “compilation” includes col-
lective works.
A “collective work” is a work, such as a periodical issue, anthol-
ogy, or encyclopedia, in which a number of contributions, constitut-
ing separate and independent works in themselves, are assembled
into a collective whole.
A “derivative work” is a work based upon one or more preex-
isting works, such as a translation, musical arrangement, dramati-
zation, ﬁctionalization, motion picture version, sound recording, art
reproduction, abridgment, condensation, or any other form in which
a work may be recast, transformed, or adapted. A work consisting
of editorial revisions, annotations, elaborations, or other modiﬁca- 802 F.3d 1012 (2015)
tions, which, as a whole, represent an original work of authorship, Towle manufactured and sold replicas
is a “derivative work”. of the Batmobiles used in the 1996
television series and the 1989 Tim Bur-
DC Comics v. Towle ton movie. Because the series and the
movie were made under licensing ar-
When a copyright owner authorizes a third party to prepare a deriva- rangements, the court discussed the
tive work, the owner of the underlying work retains a copyright in scope of derivative-work copyrights.
278 CHAPTER 4. COPYRIGHT

that derivative work with respect to all of the elements that the deriva-
tive creator drew from the underlying work and employed in the
derivative work. By contrast, the creator of the derivative work has
a copyright only as to those original aspects of the work that the
derivative creator contributed, and only to the extent the derivative
creator’s contributions are more than trivial. Logically, therefore, if
[another] third party copies a derivative work without authorization,
it infringes the original copyright owner’s copyright in the underly-
ing work to the extent the unauthorized copy of the derivative work
also copies the underlying work.

207 F. 3d 402 (7th Cir. 2000)
Pickett v. Prince
The defendant, identiﬁed only as ”Prince” in the caption of the vari-
ous pleadings, is a well-known popular singer whose name at birth
was Prince Rogers Nelson, but who for many years performed un-
der the name Prince (which is what we’ll call him) and since 1992
has referred to himself by an unpronounceable symbol. The sym-
bol (which rather strikingly resembles the Egyptian hieroglyph ankh,
but the parties make nothing of this, so neither shall we) is his trade-
mark but it is also a copyrighted work of visual art that licensees of
Prince have embodied in various forms, including jewelry, clothing,
and musical instruments.
In 1993 the plaintiﬀ made a guitar in the shape of the Prince sym-
bol; he concedes that it is a derivative work within the meaning of 17
U.S.C. § 101. The plaintiﬀ claims (truthfully, we assume for purposes
of the appeal) to have shown the guitar to Prince. Shortly afterwards
Prince appeared in public playing a guitar quite similar to the plain-
tiﬀ’s.
The plaintiﬀ brought this suit for copyright infringement in 1994,
but it languished for years in the district court. In January 1997 Prince
counterclaimed for infringement of the copyright on his symbol.
Picke claims the right to copyright a work derivative from an-
other person’s copyright without that person’s permission and then
to sue that person for infringement by the person’s own derivative
work. Picke ’s guitar was a derivative work of the copyrighted
Prince symbol, and so was Prince’s guitar. Since Prince had (or so
we must assume) access to Picke ’s guitar, and since the two gui-
tars, being derivatives of the same underlying work, are, naturally,
very similar in appearance, Picke has – if he is correct that one can
copyright a derivative work when the original work is copyrighted
by someone else who hasn’t authorized the maker of the derivative
work to copyright it – a prima facie case of infringement. Picke must,
he concedes, show that his derivative work has enough originality to
Ferdinand Pickett, Symbol-shaped gui- entitle him to a copyright, and also that the copyright is limited to the
tar features that the derivative work adds to the original. But he insists
B. OWNERSHIP 279

that with these limitations his copyright is valid.
We need not pursue the issue of originality of derivative works.
The Copyright Act grants the owner of a copyright the exclusive right
to prepare derivative works based upon the copyrighted work. So
Picke could not make a derivative work based on the Prince symbol
without Prince’s authorization even if Picke ’s guitar had a smidgeon
of originality. This is a sensible result. A derivative work is, by def-
inition, bound to be very similar to the original. Concentrating the
right to make derivative works in the owner of the original work pre-
vents what might otherwise be an endless series of infringement suits
posing insoluble diﬃculties of proof. Consider two translations into
English of a book originally published in French. The two transla-
tions are bound to be very similar and it will be diﬃcult to establish
whether they are very similar because one is a copy of the other or be-
cause both are copies of the same foreign-language original. Whether
Prince’s guitar is a copy of his copyrighted symbol or a copy of Pick-
e ’s guitar is likewise not a question that the methods of litigation
can readily answer with conﬁdence. If anyone can make derivative
works based on the Prince symbol, we could have hundreds of Pick-
e s, each charging infringement by the others.
Picke relies for his implausible theory primarily on section 103(a)
of the Copyright Act, which provides that while copyright can be ob-
tained in derivative works, ”protection for a work employing preex-
isting material in which copyright subsists does not extend to any
part of the work in which such material has been used unlawfully.”
Picke reads this as authorizing a person other than the owner of the
original work to make a derivative work, merely forbidding him to
infringe the original. It is very diﬃcult to see how a derivative work
not made by the owner of the original work could fail to infringe it,
given the deﬁnition of derivative works.
Picke relied in the district court on a dictum in Eden Toys, Inc. Eden Toys: 697 F.2d 27 (2d Cir. 1982)
v. Florelee Undergarment Co., that a stranger can make a derivative
work without the permission of the owner of the copyright of the
original work if the original work does not ”pervade” the deriva-
tive work. The suggestion, if taken seriously (which it has not been),
would inject enormous uncertainty into the law of copyright and un-
dermine the exclusive right that section 106(2) gives the owner of
the copyright on the original work. It also rests on a confusion be-
tween the determination of whether a work is derivative and the de-
termination of who has the right to make the derivative work. De-
ﬁned too broadly, ”derivative work” would confer enormous power
on the owners of copyrights on preexisting works. The Bernstein-
Sondheim musical West Side Story, for example, is based loosely on
Shakespeare’s Romeo and Juliet, which in turn is based loosely on
Ovid’s Pyramus and Thisbe, so that if ”derivative work” were de-
280 CHAPTER 4. COPYRIGHT

ﬁned broadly enough (and copyright were perpetual) West Side Story
would infringe Pyramus and Thisbe unless authorized by Ovid’s
heirs. We can thus imagine the notion of pervasiveness being used
to distinguish a work fairly described as derivative from works only
loosely connected with some ancestral work claimed to be their orig-
inal. In that sense Prince’s symbol clearly ”pervades” both guitars. If
it did not, the guitars might not be derivative works, but they would
not be derivative works that anyone was free to make without obtain-
ing Prince’s permission.

Keeling v. Hars
809 F.3d 43 (2d Cir. 2015)
Plaintiﬀ–Appellee Jaime Keeling is the author of Point Break Live!
(“PBL”), a parody stage adaptation of the 1991 Hollywood action
movie Point Break, starring Keanu Reeves and Patrick Swayze. In
the ﬁlm, Reeves plays a rookie FBI agent who goes undercover to
inﬁltrate a gang of bank-robbing surfers led by Swayze’s character.
The Keeling-authored PBL parody parallels the characters and plot
elements from Point Break and relies almost exclusively on selected
dialogue from the screenplay. To this raw material, Keeling added
jokes, props, exaggerated staging, and humorous theatrical devices
to transform the dramatic plot and dialogue of the ﬁlm into an irrever-
ent, interactive theatrical experience. For example, in Keeling’s PBL
parody, Point Break ’s death-defying scene in which Reeves’s charac-
ter must pick up bricks, blindfolded, in a swimming pool takes place,
instead, in a kiddie pool. Massive waves in the ﬁlm are replaced by
squirt guns in the PBL parody. A central conceit of the PBL parody is
that the Keanu Reeves character is selected at random from the audi-
ence and reads his lines from cue cards, thereby lampooning Reeves’s
reputedly stilted performance in the movie. Keeling added to the ef-
fect that the audience was watching the making of the ﬁlm by creat-
ing a set of ﬁlm-production characters in the PBL parody, including
a director, cinematographer, and production assistants. Keeling pos-
sesses no copyright or license with regard to the Point Break motion
picture.
Defendant–Appellant Eve Hars owns production company New
Rock Theater Productions, LLC (“New Rock”). In 2007, Keeling ex-
ecuted a production agreement with Hars, pursuant to which New
Rock would stage a two-month production run of PBL from October
through December 2007. During that time period, Hars conferred
with an entertainment a orney and the holder of the copyright to the
Hollywood screenplay for Point Break, and eventually Hars came to
believe that Keeling did not lawfully own any rights to the PBL par-
ody play. Accordingly, after its initial two-month run, Hars sought
to renegotiate the terms of the contract upon its expiration and, in
eﬀect, continue to produce PBL without further payment to Keeling.
C. PROCEDURES 281

Keeling refused renegotiation, threatened suit, and registered a copy-
right in PBL, without ﬁrst obtaining permission from the copyright
holders of the original Point Break. Keeling’s asserted copyright in
PBL became eﬀective on January 4, 2008. Hars and New Rock contin-
ued to stage performances of PBL for four years thereafter without
payment to or authorization from Keeling.
If a work employs preexisting copyrighted material lawfully – as
in the case of a ”fair use” – nothing in the statute prohibits the ex-
tension of the ”independent” copyright protection promised by Sec-
tion 103.7 A close reading of the statute therefore makes plain that an
unauthorized but lawful fair use employing preexisting copyrighted
material may itself merit copyright protection. It is not the invocation
of fair use that provides the work copyright protection, and perhaps
thinking so has created some confusion on the part of the defendant.
It is the originality of the derivative work that makes it protectable,
and fair use serves only to render lawful the derivative work, such
that it may acquire – as would other lawful derivative works – such
protection.

C Procedures
Copyright, the statute tells us, subsists as soon as a work is created. Any who talks about "copyrighting" a
The author doesn’t need to do anything more to become a copyright work is confused. At best, they are
thinking about "registering" the work,
owner. But it was not always thus. And this is not to say that copy-
which does have several important ad-
right has no procedural wrinkles – only that these procedures are not vantages. At worst, they think that
preconditions on copyright protection. unregistered works are not protected
by copyright and may freely be copied.
1 Formalities Then This is wrong, wrong, totally wrong. Cor-
rect them.

Christopher Sprigman
57 Stan. L. Rev. 485
Reform(aliz)ing Copyright
For most of our history, U.S. copyright law has included a system
of procedural mechanisms, referred to collectively as “copyright for-
malities,” that helped to maintain copyright’s traditional balance be-
tween providing private incentives to authors and preserving a ro-
bust stock of public domain works from which future creators could
draw. From the ﬁrst copyright statute in 1790, Congress required that
authors register their copyrights, give notice (by marking published
copies with an indication of copyright status such as the “©” sym-
bol, as well as other information about copyright ownership), and
(perhaps most importantly) renew their rights after a relatively short
initial term by reregistering their copyright. Failure to comply with
7
To be sure, the independent copyright protection in the new work is limited to
that work’s original content.
282 CHAPTER 4. COPYRIGHT

these requirements either terminated the copyright (in the case of
nonrenewal) or prevented it from arising in the ﬁrst place.

Estate of Martin Luther King v. CBS, Inc.
194 F.3d 1211 (11th Cir. 1999)
The Estate of Martin Luther King, Jr., Inc. brought this copyright in-
fringement action against CBS, Inc. after CBS produced a video doc-
umentary that used, without authorization, portions of civil rights
leader Dr. Martin Luther King’s famous ”I Have a Dream” speech at
the March on Washington on August 28, 1963.
On September 30, 1963, approximately one month after the deliv-
ery of the Speech, Dr. King took steps to secure federal copyright
protection for the Speech under the Copyright Act of 1909, and a
certiﬁcate of registration of his claim to copyright was issued by the
Copyright Oﬃce on October 2, 1963. Almost immediately thereafter,
Dr. King ﬁled suit in the Southern District of New York to enjoin the
unauthorized sale of recordings of the Speech and won a preliminary
injunction on December 13, 1963.
Because of the dates of the critical events, the determinative issues
in this case are properly analyzed under the Copyright Act of 1909
(”1909 Act”), rather than the Copyright Act of 1976 (”1976 Act”) that
is currently in eﬀect. The question is whether Dr. King’s a empt
to obtain statutory copyright protection on September 30, 1963 was
eﬀective, or whether it was a nullity because the Speech had already
been forfeited to the public domain via a general publication.
Under the regime created by the 1909 Act, an author received
state common law protection automatically at the time of creation
of a work. This state common law protection persisted until the mo-
ment of a general publication. When a general publication occurred,
the author either forfeited his work to the public domain, or, if he had
therebefore complied with federal statutory requirements, converted
his common law copyright into a federal statutory copyright.
In order to soften the hardship of the rule that publication de-
stroys common law rights, courts developed a distinction between
a ”general publication” and a ”limited publication.” Only a general
publication divested a common law copyright. A general publication
occurred when a work was made available to members of the public
at large without regard to their identity or what they intended to do
with the work. Conversely, a non-divesting limited publication was
one that communicated the contents of a work to a select group and
for a limited purpose, and without the right of diﬀusion, reproduc-
tion, distribution or sale. The issue before us is whether Dr. King’s
delivery of the Speech was a general publication.
It appears from the case law that a general publication occurs
only in two situations. First, a general publication occurs if tangi-
ble copies of the work are distributed to the general public in such
C. PROCEDURES 283

a manner as allows the public to exercise dominion and control over
the work. Second, a general publication may occur if the work is ex-
hibited or displayed in such a manner as to permit unrestricted copy-
ing by the general public. See Le er Edged in Black Press, Inc. v. Public Letter Edged in Black: 320 F. Supp. 1303
Bldg. Comm’n of Chicago (invoking this exception where ”there were (N.D. Ill. 1970)
no restrictions on copying [of a publicly displayed sculpture] and no
guards preventing copying” and ”every citizen was free to copy the
maque e for his own pleasure and camera permits were available to
members of the public”). However, the case law indicates that re-
strictions on copying may be implied, and that express limitations
in that regard are deemed unnecessary. See American Tobacco Co. v. American Tobacco: 207 U.S. 284 (1907)
Werckmeister (holding that there is no general publication where art-
work is exhibited and ”there are bylaws against copies, or where it
is tacitly understood that no copying shall take place, and the public
are admi ed . . . on the implied understanding that no improper
advantage will be taken of the privilege” (emphasis added)); Burke v. Burke: 598 F.2d 688 (1st Cir. 1979)
National Broadcasting Co. (holding that releasing a ﬁlm to a professor
and host of an educational television program, and authorizing him
to copy and broadcast same on public television was a limited pub-
lication because the grant of permission to use the ﬁlm contained an
implied condition against distributing copies of the ﬁlm to others or
using it for other purposes); Nu v. National Inst. Incorporated for the Nutt: 31 F.2d 236 (2d Cir. 1929)
Improvement of Memory (lectures were not generally published when
delivered because oral delivery is not publication, and ”[e]ven where
the hearers are allowed to make copies of what was said for their per-
sonal use, they cannot later publish for proﬁt that which they had not
retained the right to sell”).
The case law indicates that distribution to the news media, as op-
posed to the general public, for the purpose of enabling the reporting
of a contemporary newsworthy event, is only a limited publication.
This rule comports with common sense; it does not force an author
whose message happens to be newsworthy to choose between ob-
taining news coverage for his work and preserving his common-law
copyright.
With the above principles in mind, in the summary judgment pos-
ture of this case and on the current state of this record, we are unable
to conclude that CBS has demonstrated beyond any genuine issue of
material fact that Dr. King, simply through his oral delivery of the
Speech, engaged in a general publication making the Speech avail-
able to members of the public at large without regard to their iden-
tity or what they intended to do with the work. A performance, no
ma er how broad the audience, is not a publication; to hold other-
wise would be to upset a long line of precedent. This conclusion is
not altered by the fact that the Speech was broadcast live to a broad
radio and television audience and was the subject of extensive con-
284 CHAPTER 4. COPYRIGHT

temporaneous news coverage. We follow the above cited case law
indicating that release to the news media for contemporary coverage
of a newsworthy event is only a limited publication.

Estate of Martin Luther King v. CBS, Inc.
13 F. Supp. 2d 1347 (N.D. Ga. 1998)
An advance text of Dr. King’s speech was available in the press tent;
This is from the District Court opinion
on appeal in the Court of Appeals opin- no copyright notice appeared on the text or was asserted concurrent
ion above. with the giving of the speech. CBS contends that there were no re-
strictions regarding entry into the press tent and that individuals out-
side of the press entered the area and obtained copies of the day’s
speeches. The Estate argues that Dr. King furnished this advance
text for the sole purpose of assisting press coverage of the March and
that he had been assured that it would be available only to the press.
Following the March, the SCLC reprinted the speech in its entirety
in its September 1963 newsle er with no copyright notice or other re-
strictions. The newsle er bore Dr. King’s name and title as President
at the top of its masthead. Generally, the SCLC news-le er had a
large national circulation and was also sent to those who asked for
copies.
However, material facts are in dispute as to whether the use of
Dr. King’s speech in the newsle er was authorized and also as to the
actual availability of the advance text. Accordingly, for the purposes
of summary judgment, this court does not rest its holding upon the
newsle er or the advance text but upon the context of Dr. King’s
speech itself.

42 F. Supp. 412 (S.D.N.Y. 1941)
Wildman v. New York Times Co.
This suit arose by reason of a wri en request sent to defendant’s
newspaper for the words of the verse ”Remember This” by F. Col-
lis Wildman. Several Sundays later in its Queries and Answers page
defendant printed the answer to the said request, giving the title, the
name of the author and the full text of the verse; followed by ”This
request was answered by a number of readers, some of whom sent
the poem”.
Plaintiﬀ claims that this publication in the newspaper without his
consent was in derogation of his rights in the copyrighted verse. He
wrote it on or about October 4, 1911. Plaintiﬀ applied for a copyright
and received the certiﬁcate of registration on or about July 3, 1926.
On June 23, 1926, he did cause his verse to be printed on a card by a
printer in Philadelphia; 3,000 copies of it. At the end of the verse, at
the right is the name ”F. Collis Wildman”. In the lower left corner of
card is printed the word ”Copyright”. Three thousand of these cards,
described as above, were sold to the public by the plaintiﬀ.
The law is well se led that the provisions of the statute as to no-
tice must be complied with and by selling a copyrighted article oth-
C. PROCEDURES 285

erwise there is deication to the public and the copyright protection is
lost. Publication with notice of copyright is the essence of compliance
with the statute, and publication without proper notice amounts to a
dedication to the public suﬃcient to defeat all subsequent eﬀorts at
copyright protection.
With the above principles in mind, I can only come to the con-
clusion that the plaintiﬀ, when he had printed and sold the cards in
June, 1926, dedicated his verse to the public. I can only conclude that
there was no suﬃcient or legal copyright notice a ached. There was
no date a ached. There apparently was no claim of copyright on the
printed card by him personally, although this is somewhat question-
able in view of the fact that his own name was at the end of the verse.
However, he did not comply with the statute; and the alleged notice,
if it was intended as a notice of copyright, is insuﬃcient to secure to
the plaintiﬀ any right under the copyright registration.

2 Formalities Now
Formalities are dramatically less important under contemporary
copyright law. The 1976 Copyright Act moderated their impact in
some signiﬁcant ways, and in 1988, the United States joined the inter-
national Berne Convention for the Protection of Literary and Artis-
tic Works, which requires that copyright ”shall not be subject to any
formality.” Thus, formalities are important mostly for older works –
those published before March 1, 1989, when the Berne Convention
Implementation Act came into force. But for those works, as the cases above
For modern works, the main ”formality” is ﬁxation, which is such show, the formalities can be vitally im-
portant. Copyright due diligence for
a thin prerequisite that it is more like the minimal condition required
older works requires a careful investiga-
for the legal system to be sure it knows what the copyrighted work tion of the formalities.
even is. But traces of the other formalities remain, and competent
copyright practice requires complying with them.
a Fixation

A work of authorship may be deemed copyrightable, provided that § 305
it has been “ﬁxed in any tangible medium of expression, now known The Fixation Requirement
or later developed, from which [it] can be perceived, reproduced, or
otherwise communicated, either directly or indirectly with the aid
of a machine or device.” Speciﬁcally, the work must be ﬁxed in a 17 U.S.C. § 102(a)
copy or phonorecord “by or under the authority of the author” and
the work must be “suﬃciently permanent or stable to permit it to be
perceived, reproduced, or otherwise communicated for a period of
more than transitory duration.” 17 U.S.C. § 101
286 CHAPTER 4. COPYRIGHT

The terms “copy” and “phonorecord” are very broad. They cover
all of the material objects in which copyrightable works are capable
of being ﬁxed.
17 U.S.C. § 101 • Copies are “material objects, other than phonorecords, in which
a work is ﬁxed by any method now known or later developed,
and from which the work can be perceived, reproduced, or oth-
erwise communicated, either directly or with the aid of a ma-
chine or device,” including the material object “in which the
work is ﬁrst ﬁxed.”
17 U.S.C. § 101 • Phonorecords are “material objects in which sounds, other than
those accompanying a motion picture or other audiovisual
work, are ﬁxed by any method now known or later developed,
and from which the sounds can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a
machine or device,” including “the material object in which the
sounds are ﬁrst ﬁxed.”
There are countless ways that a work may be ﬁxed in a copy or
phonorecord and it makes no diﬀerence what the form, manner, or
medium of ﬁxation may be. For example, a work may be expressed in
words, numbers, notes, sounds, pictures, or any other graphic or sym-
bolic indicia and the author’s expression may be ﬁxed in a physical
object in wri en, printed, photographic, sculptural, punched, mag-
netic, or any other stable form.
Most works are ﬁxed by their very nature, such as an article
printed on paper, a song recorded in a digital audio ﬁle, a sculpture
rendered in bronze, a screenplay saved in a data ﬁle, or an audiovi-
sual work captured on ﬁlm. Nevertheless, some works of authorship
may not satisfy the ﬁxation requirement, such as an improvisational
speech, sketch, dance, or other performance that is not recorded in
a tangible medium of expression. Other works may be temporarily
embodied in a tangible form, but may not be suﬃciently permanent
or stable to warrant copyright protection, such as purely evanescent
or transient reproductions such as those projected brieﬂy on a screen,
shown electronically on a television, or captured momentarily in the
memory of a computer.
The Oﬃce rarely encounters works that do not satisfy the ﬁxation
requirement because the Oﬃce requires applicants to submit copies
or phonorecords that contain a visually or aurally perceptible copy of
the work. However, the Oﬃce may communicate with the applicant
or may refuse registration if the work or the medium of expression
only exists for a transitory period of time, if the work or the medium
is constantly changing, or if the medium does not allow the speciﬁc
elements of the work to be perceived, reproduced, or otherwise com-
C. PROCEDURES 287

municated in a consistent and uniform manner.

Stern Electronics, Inc. v. Kaufman
669 F.2d 852 (2nd Cir. 1982)
Video games like “Scramble” can roughly be described as comput-
ers programmed to create on a television screen cartoons in which
some of the action is controlled by the player. In Stern’s “Scramble,”
for example, the video screen displays a spaceship moving horizon-
tally through six diﬀerent scenes in which obstacles are encountered.
With each scene the player faces increasing diﬃculty in traversing the
course and scoring points. The ﬁrst scene depicts mountainous ter-
rain, missile bases, and fuel depots. The player controls the altitude
and speed of the spaceship, decides when to release the ship’s sup-
ply of bombs, and ﬁres lasers that can destroy a acking missiles and
aircraft. He a empts to bomb the missile bases (scoring points for
success), bomb the fuel depots (increasing his own diminishing fuel
supply with each hit), avoid the missiles being ﬁred from the ground,
and avoid crashing his ship into the mountains. And that is only
scene one. In subsequent scenes the hazards include missile-ﬁring
enemy aircraft and tunnel-like airspaces. The scenes are in color, and
the action is accompanied by ba leﬁeld sounds.
The game is built into a cabinet containing a cathode ray tube, a
number of electronic circuit boards, a loudspeaker, and hand controls
for the player. The electronic circuitry includes memory storage de-
vices called PROMs, an acronym for “programmable read only mem-
ory.” The PROM stores the instructions and data from a computer
program in such a way that when electric current passes through the
circuitry, the interaction of the program stored in the PROM with
the other components of the game produces the sights and sounds of
the audiovisual display that the player sees and hears. The memory
devices determine not only the appearance and movement of the im-
ages but also the variations in movement in response to the player’s
operation of the hand controls.
Stern manufactures amusement equipment, including video
games, for distribution worldwide. Even in the fast-paced world
of video games, “Scramble” quickly became a big success. Approx-
imately 10,000 units were sold at about $2,000 each in the ﬁrst two
months for an initial sales volume of about $20 million. …
[Omni was enjoined from distributing its own “Scramble” arcade
games. One of its arguments was that Stern’s Scramble was not ﬁxed.]
Omni contends that Konami is not entitled to secure a copyright
in the sights and sounds of its “Scramble” game because the audio-
visual work is neither “ﬁxed in any tangible medium of expression”
nor “original” within the meaning of § 102(a). Both contentions arise
from the fact that the sequence of some of the images appearing on Scramble
the screen during each play of the game will vary depending upon
288 CHAPTER 4. COPYRIGHT

the actions taken by the player. For example, if he fails to avoid en-
emy ﬁre, his spaceship will be destroyed; if he fails to destroy enough
fuel depots, his own fuel supply will run out, and his spaceship will
crash; if he succeeds in destroying missile sites and enemy planes,
those images will disappear from the screen; and the precise course
travelled by his spaceship will depend upon his adjustment of the
craft’s altitude and velocity.
If the content of the audiovisual display were not aﬀected by the
participation of the player, there would be no doubt that the display
itself, and not merely the wri en computer program, would be eligi-
ble for copyright. The display satisﬁes the statutory deﬁnition of an
"Audiovisual works' are works that con- original “audiovisual work,” and the memory devices of the game
sist of a series of related images which satisfy the statutory requirement of a “copy” in which the work is
are intrinsically intended to be shown
“ﬁxed.” The audiovisual work is permanently embodied in a mate-
by the use of machines or devices such
as projectors, viewers, or electronic rial object, the memory devices, from which it can be perceived with
equipment, together with accompany- the aid of the other components of the game.
ing sounds, if any, regardless of the na- We agree with the District Court that the player’s participation
ture of the material objects, such as does not withdraw the audiovisual work from copyright eligibility.
films or tapes, in which the works are
No doubt the entire sequence of all the sights and sounds of the game
embodied." 17 U.S.C. § 101
are diﬀerent each time the game is played, depending upon the route
and speed the player selects for his spaceship and the timing and ac-
curacy of his release of his craft’s bombs and lasers. Nevertheless,
many aspects of the sights and the sequence of their appearance re-
main constant during each play of the game. These include the ap-
pearance (shape, color, and size) of the player’s spaceship, the enemy
craft, the ground missile bases and fuel depots, and the terrain over
which (and beneath which) the player’s ship ﬂies, as well as the se-
quence in which the missile bases, fuel depots, and terrain appears.
Also constant are the sounds heard whenever the player successfully
destroys an enemy craft or installation or fails to avoid an enemy mis-
sile or laser. It is true, as appellants contend, that some of these sights
and sounds will not be seen and heard during each play of the game
in the event that the player’s spaceship is destroyed before the entire
course is traversed. But the images remain ﬁxed, capable of being
seen and heard each time a player succeeds in keeping his spaceship
aloft long enough to permit the appearances of all the images and
sounds of a complete play of the game. The repetitive sequence of a
substantial portion of the sights and sounds of the game qualiﬁes for
copyright protection as an audiovisual work.

Questions
Which of the following are suﬃciently ﬁxed to be copy-
rightable? In each case where your answer is “yes,” identify
the material object.
C. PROCEDURES 289

• A song sung on the sidewalk?
• A song wri en out as sheet music?
• A song on a CD?
• A diagram on a blackboard?
• A PowerPoint slide?
• A sonnet in your mind?
• A photograph?
• The Fast and the Furious: Tokyo Drift?
• Our class on copyrightable subject ma er?
Latte art. Fixed?
Photoshoot Problem
You represent Shelbyville Stages, a concert promoter. You have
booked the eccentric pop musician Plastica for a twelve-city tour in
the Northeast. The marketing staﬀ at Shelbyville have recently dis-
covered an image online that they think would be perfect for using
on the concert posters. It features Plastica stepping down the landing
ramp of a ﬂying saucer, backlit, carrying a pair of cheerleader’s pom-
poms, with a guitar slung over her back, and wearing her trademark
disinterested scowl.
A similar photograph was the cover of this month’s Them, a
celebrity fashion magazine. An unknown party or party unknown,
however, extensively Photoshopped it to make it look like a faded,
weather-beaten Old West “WANTED” poster. The marketing staﬀ
tell you that this was a stroke of genius; the combination of the an-
tique look with the kitschy futuristic technology gives the whole
thing what they call a “neo-horsepunk ﬂying-car feel” and the out-
law theme plays oﬀ Plastica’s expression. Their research has deter-
mined that the following people were in some way connected with
the image:
• Plastica herself, who has spent years crafting her stage persona,
which might be described as “heroin-ravaged all-American girl
from outer space.”
• Plastica’s hair-stylist, Alicia Abt, who produced the compli-
cated multi-layer updo in which she appears in the photograph,
with a single side ponytail and a Statute-of-Liberty-style ring of
spikes.
• Plastica’s personal trainer, Ben Boardwell, who has spent years
working with her to develop her musculature to combine
strength with a suggestion of wasted potential.
• A celebrity photographer, Charles Carmack, who decided on
the ﬂying-saucer theme, chose the placement of props, and in-
structed Plastica on how to pose.
290 CHAPTER 4. COPYRIGHT

• Carmack’s salaried assistant, Denyse Dozier, who operated the
camera and pushed the bu on that took the photographs.
• A Photoshop expert, Ernest Eames, who digitally smoothed out
the wrinkles in Plastica’s face, extended her neck by two inches,
and made a hundred other similar tweaks.
• Them magazine, where the modiﬁed photograph ran.
• Some unknown person with the username SeePeteyPhotoshop,
who added the Old West theme and uploaded the modiﬁed
photo to the photosharing site AwfulThings.com.
Based on these facts, advise Shelbyville Stages on whether it will be
possible to obtain suﬃcient permissions to use the Old West version
of the photo for the concert posters, and, if so how to go about it.
b Registration

§ 202
Under the current copyright law, a work of authorship is protected
Purposes and Advantages of Registra- by copyright from the moment it is created, provided that the work
tion is original and has been ﬁxed in a tangible medium of expression.
Although registration is not required for a work to be protected by
copyright, it does provide several important beneﬁts:
• A registration creates a public record that includes key facts re-
lating to the authorship and ownership of the claimed work, as
well as information about the work, such as title, year of cre-
ation, date of publication (if any), and the type of authorship
that the work contains (e.g., photographs, text, sound record-
ings).
• Registration (or a refusal to register) is a prerequisite to ﬁling a
lawsuit for copyright infringement involving a U.S. work. Al-
though registration is permissive, both the certiﬁcate and the
original work must be on ﬁle with the Copyright Oﬃce before
a copyright owner can sue for infringement.
• To claim statutory damages or a orney’s fees in a copyright
infringement lawsuit, a work must be registered before the in-
fringement began or within three months after the ﬁrst publica-
tion of the work.
• A registration constitutes prima facie evidence of the validity
of the copyright and the facts stated in the certiﬁcate of regis-
tration, but only if the work is registered before or within ﬁve
years after the work is ﬁrst published.
• A registration provides information to prospective licensees,
such as the name and address for obtaining permission to use
C. PROCEDURES 291

the work.
• A document that has been recorded with the U.S. Copyright Of-
ﬁce may provide constructive notice of the facts stated therein,
but only if the document speciﬁcally identiﬁes a work of author-
ship and only if that work has been registered.
• The deposit copy(ies) submi ed with an application for regis-
tration of a published work may satisfy the mandatory deposit
requirement, provided that the applicant submi ed the best edi-
tion of the work.
• A registration is necessary to secure the full beneﬁts of a prereg-
istration that has been issued by the U.S. Copyright Oﬃce.
• The U.S. Customs and Border Protection Service may seize for-
eign pirated copies of a copyright owner’s work, provided that
the work has been registered with the U.S. Copyright Oﬃce and
the certiﬁcate of registration has been recorded with the U.S.
Customs and Border Protection Service.
• A registration is required to claim royalties under the compul-
sory license for making and distributing phonorecords.

c Deposit

The U.S. Copyright Act provides for two separate sets of deposit re-
quirements: deposits submi ed in connection with registration ap- § 1502
Deposit for Registration Distinguished
plications and those submi ed in accordance with the mandatory de- from Mandatory Deposit
posit provisions (or “legal deposit” provisions) of the law. The U.S.
Copyright Oﬃce administers both sets of provisions.
The Register of Copyrights speciﬁes by regulation the form of de-
posit that must accompany a copyright claim and registration appli-
cation. Said regulations reﬂect and inform the ability of the Oﬃce
to examine the work for copyrightable authorship, to verify the au-
thorship claimed in the application, and to verify the facts stated in
the application. Deposits may also be used for evidentiary purposes
in litigation involving a copyrighted work. Since registration is not
required as a condition for copyright protection, the Register has the
authority to adjust or exempt the deposit requirements as appropri-
ate for certain works or application procedures, weighing the needs
or concerns of applicants and the public. Deposits may also be se-
lected by the Library of Congress.
Mandatory deposit is a statutory requirement for the beneﬁt of
the national collection of the Library of Congress. The owner of copy-
292 CHAPTER 4. COPYRIGHT

right or the owner of the exclusive right of publication in a work pub-
lished in the United States must deposit two copies or phonorecords
of the work within three months after publication.
In most cases, a deposit submi ed for registration may be used to
satisfy the mandatory deposit requirement, provided that the appli-
cant submits two complete copies or two complete phonorecords of
the best edition of the work. In such cases, there is no need to sub-
mit additional copies or phonorecords for the purpose of mandatory
deposit.
For some classes of works, the deposit requirements for registra-
tion and mandatory deposit are not the same. In such cases, a sepa-
rate submission of copies, phonorecords, or identifying material may
be needed to register the work and to satisfy the mandatory deposit
requirements. For example, mandatory deposit for a computer pro-
gram requires two complete copies of the best edition, while regis-
tration may be accomplished with identifying material containing a
selection of the source code for that work. In the digital context, such
nuance and distinction is even more important, and applicable regu-
lations are therefore subject to change.

§ 1511
Submi ing a published work for the use or disposition of the Li-
Mandatory Deposit brary is not a condition of copyright protection. However, if compli-
ance with the mandatory deposit requirement is not accomplished
within three months of publication, the Register of Copyrights may
facilitate, demand, negotiate, or exempt the provision of copies or
phonorecords for the Library of Congress at any time after a work
has been published in the United States. If the Oﬃce issues a writ-
ten demand and if required copies or phonorecords are not received
within three months of receipt of the demand, the copyright owner
or owner of the exclusive right of publication in that work may be
subject to ﬁnes or other monetary liability.
d Notice

§ 2202.2(A)
Although notice is optional for unpublished works, foreign works, or
Advantages to Using Notice on Post- works published on or after March 1, 1989, the U.S. Copyright Oﬃce
Berne Works strongly encourages copyright owners to use a notice for the follow-
ing reasons:
• It puts potential users on notice that copyright is claimed in the
work.
• In the case of a published work, a notice may prevent a defen-
dant in a copyright infringement action from a empting to limit
C. PROCEDURES 293

his or her liability for damages or injunctive relief based on an
innocent infringement defense.
• It identiﬁes the copyright owner at the time the work was ﬁrst
published for parties seeking permission to use the work.
• It identiﬁes the year of ﬁrst publication, which may be used
to determine the term of copyright protection in the case of an
anonymous work, a pseudonymous work, or a work made for
hire.
• It may prevent the work from becoming an orphan work by
identifying the copyright owner and/or specifying the term of
the copyright.

A notice for a work published before March 1, 1989 that has been § 2204.1
ﬁxed in copies should include the following elements: Notice for Works Fixed in Copies
• The symbol © or the word “Copyright” or the abbreviation
“Copr.”;
• The year of ﬁrst publication for the work; and
• The name of the copyright owner, or an abbreviation by which
the name can be recognized, or a generally known alternative
designation of the owner.
The elements of the notice should appear as a single continuous state-
ment containing the copyright symbol or the word “Copyright” or
the abbreviation “Copr.,” followed by the year of ﬁrst publication,
followed by the name of the copyright owner.
Examples:
• © 1978 John Doe
• Copyright 1980 John Doe
• Copr. 1982 John Doe

3 Term
There is no way around it: copyright terms for older works are a mess
and require careful investigation. The details are beyond the scope
of this course, but you have been warned.

(a) In General.— Copyright in a work created on or after January 1,
17 U.S.C. § 302
1978, subsists from its creation and, except as provided by the Duration of copyright: Works created
following subsections, endures for a term consisting of the life on or after January 1, 1978
of the author and 70 years after the author’s death.
(b) Joint Works.— In the case of a joint work prepared by two or
more authors who did not work for hire, the copyright endures
294 CHAPTER 4. COPYRIGHT

for a term consisting of the life of the last surviving author and
70 years after such last surviving author’s death.
(c) Anonymous Works, Pseudonymous Works, and Works Made
for Hire.— In the case of an anonymous work, a pseudonymous
work, or a work made for hire, the copyright endures for a term
of 95 years from the year of its ﬁrst publication, or a term of 120
years from the year of its creation, whichever expires ﬁrst. …

17 U.S.C. § 305
All terms of copyright provided by sections 302 through 304 run to
Duration of copyright: Terminal date the end of the calendar year in which they would otherwise expire.

537 U.S. 186 (2003)
Eldred v. Ashcroft
This case concerns the authority the Constitution assigns to Congress
to prescribe the duration of copyrights. In 1998, in the measure here
under inspection [the Sonny Bono Copyright Term Extension Act
(CTEA)], Congress enlarged the duration of copyrights by 20 years.
Petitioners are individuals and businesses whose products or services
build on copyrighted works that have gone into the public domain.
They seek a determination that the CTEA fails constitutional review
under both the Copyright Clause’s ”limited Times” prescription and
the First Amendment’s free speech guarantee.
Petitioners do not challenge the ”life-plus-70-years” timespan it-
self. ”Whether 50 years is enough, or 70 years too much,” they ac-
knowledge, ”is not a judgment meet for this Court.” Congress went
awry, petitioners maintain, not with respect to newly created works,
but in enlarging the term for published works with existing copy-
rights. The ”limited Tim[e]” in eﬀect when a copyright is secured,
petitioners urge, becomes the constitutional boundary, a clear line
beyond the power of Congress to extend.
The Nation’s ﬁrst copyright statute, enacted in 1790, provided a
federal copyright term of 14 years from the date of publication, renew-
able for an additional 14 years if the author survived the ﬁrst term.
The 1790 Act’s renewable 14-year term applied to existing works (i.
e., works already published and works created but not yet published)
and future works alike. Congress expanded the federal copyright
term to 42 years in 1831 (28 years from publication, renewable for
an additional 14 years), and to 56 years in 1909 (28 years from publi-
cation, renewable for an additional 28 years). Both times, Congress
applied the new copyright term to existing and future works; to qual-
ify for the 1831 extension, an existing work had to be in its initial
copyright term at the time the Act became eﬀective.
In 1976, Congress altered the method for computing federal copy-
right terms. For works created by identiﬁed natural persons, the 1976
C. PROCEDURES 295

Act provided that federal copyright protection would run from the
work’s creation, not – as in the 1790, 1831, and 1909 Acts – its publica-
tion; protection would last until 50 years after the author’s death. In
these respects, the 1976 Act aligned United States copyright terms
with the then-dominant international standard adopted under the
Berne Convention for the Protection of Literary and Artistic Works.
These new copyright terms, the 1976 Act instructed, governed all
works not published by its eﬀective date of January 1, 1978, regard-
less of when the works were created. For published works with exist-
ing copyrights as of that date, the 1976 Act granted a copyright term
of 75 years from the date of publication, a 19-year increase over the
56-year term applicable under the 1909 Act.
The measure at issue here, the CTEA, installed the fourth major
duration extension of federal copyrights. Retaining the general struc-
ture of the 1976 Act, the CTEA enlarges the terms of all existing and
future copyrights by 20 years. For works created by identiﬁed natu-
ral persons, the term now lasts from creation until 70 years after the
author’s death. This standard harmonizes the baseline United States
copyright term with the term adopted by the European Union in 1993.
We address ﬁrst the determination of the courts below that
Congress has authority under the Copyright Clause to extend the
terms of existing copyrights. The CTEA’s baseline term of life plus 70
years, petitioners concede, qualiﬁes as a ”limited Tim[e]” as applied
to future copyrights. Petitioners contend, however, that existing
copyrights extended to endure for that same term are not ”limited.”
Petitioners’ argument essentially reads into the text of the Copyright
Clause the command that a time prescription, once set, becomes for-
ever ”ﬁxed” or ”inalterable.” The word ”limited,” however, does not
convey a meaning so constricted.
Satisﬁed that the CTEA complies with the ”limited Times” pre-
scription, we turn now to whether it is a rational exercise of the leg-
islative authority conferred by the Copyright Clause. On that point,
we defer substantially to Congress. By extending the baseline United
States copyright term to life plus 70 years, Congress sought to ensure
that American authors would receive the same copyright protection
in Europe as their European counterparts. The CTEA may also pro-
vide greater incentive for American and other authors to create and
disseminate their work in the United States. In addition to interna-
tional concerns, Congress passed the CTEA in light of demographic,
economic, and technological changes and rationally credited projec-
tions that longer terms would encourage copyright holders to invest
in the restoration and public distribution of their works.
Petitioners separately argue that the CTEA is a content-neutral
regulation of speech that fails heightened judicial review under the
First Amendment. We reject petitioners’ plea for imposition of un-
296 CHAPTER 4. COPYRIGHT

commonly strict scrutiny on a copyright scheme that incorporates
its own speech-protective purposes and safeguards. In addition to
spurring the creation and publication of new expression, copyright
law contains built-in First Amendment accommodations. First, it dis-
tinguishes between ideas and expression and makes only the la er el-
igible for copyright protection. Second, the ”fair use” defense allows
the public to use not only facts and ideas contained in a copyrighted
work, but also expression itself in certain circumstances. When, as in
this case, Congress has not altered the traditional contours of copy-
right protection, further First Amendment scrutiny is unnecessary.

Klinger v. Conan Doyle Estate
755 F.3d 496 (7th Cir. 2014)
Arthur Conan Doyle published his ﬁrst Sherlock Holmes story in
1887 and his last in 1927. There were 56 stories in all, plus 4 nov-
els. The ﬁnal 10 stories were published between 1923 and 1927. As a
result of statutory extensions of copyright protection culminating in
the 1998 Copyright Term Extension Act, the American copyrights on
those ﬁnal stories (copyrights owned by Doyle’s estate, the appellant)
will not expire until 95 years after the date of original publication –
between 2018 to 2022, depending on the original publication date of
each story. The copyrights on the other 46 stories and the 4 novels,
all being works published before 1923, have expired.
Leslie Klinger, the appellee in this case, co-edited an anthol-
ogy called A S S : S I S
H C (2011). Klinger’s anthology consisted of stories writ-
ten by modern authors but inspired by, and in most instances depict-
ing, the genius detective Sherlock Holmes and his awed sidekick Dr.
Watson. Klinger didn’t think he needed a license from the Doyle es-
tate to publish these stories, since the copyrights on most of the works
in the ”canon” had expired. But the estate told Random House, which
had agreed to publish Klinger’s book, that it would have to pay the
estate $5000 for a copyright license. Random House bowed to the
demand, obtained the license, and published the book.
[Klinger made arrangements to publish a sequel.] Instead of ob-
taining a license, Klinger sued the estate, seeking a declaratory judg-
ment that he is free to use material in the 50 Sherlock Holmes stories
and novels that are no longer under copyright, though he may use
nothing in the 10 stories still under copyright that has suﬃcient orig-
inality to be copyrightable.
The issue is whether copyright protection of a ﬁctional character
can be extended beyond the expiration of the copyright on it because
the author altered the character in a subsequent work. In such a case,
the Doyle estate contends, the original character cannot lawfully be
copied without a license from the writer until the copyright on the
C. PROCEDURES 297

later work, in which that character appears in a diﬀerent form, ex-
pires.
We cannot ﬁnd any basis in statute or case law for extending a
copyright beyond its expiration. When a story falls into the public do-
main, story elements – including characters covered by the expired
copyright – become fair game for follow-on authors, as held in Sil- Silverman: 870 F.2d 40 (2d Cir.1989)
verman v. CBS Inc., a case much like this one. At issue was the right
to copy ﬁctional characters (Amos and Andy) who had appeared in
copyrighted radio scripts. The copyrights covered the characters be-
cause they were original. As in this case the characters also appeared
in subsequent radio scripts that remained under copyright, though
the copyrights on the original scripts in which the characters had ap-
peared had expired. The court ruled that ”a copyright aﬀords protec-
tion only for original works of authorship and, consequently, copy-
rights in derivative works secure protection only for the incremental
additions of originality contributed by the authors of the derivative
works.”
And so it is in our case. The ten Holmes-Watson stories in which
copyright persists are derivative from the earlier stories, so only origi-
nal elements added in the later stories remain protected. The freedom
to make new works based on public domain materials ends where the
resulting derivative work comes into conﬂict with a valid copyright,
as Klinger acknowledges. But there is no such conﬂict in this case.
Lacking any ground known to American law for asserting post-
expiration copyright protection of Holmes and Watson in pre-1923
stories and novels going back to 1887, the estate argues that creativ-
ity will be discouraged if we don’t allow such an extension. It may
take a long time for an author to perfect a character or other expres-
sive element that ﬁrst appeared in his early work. If he loses copy-
right on the original character, his incentive to improve the character
in future work may be diminished because he’ll be competing with
copiers, such as the authors whom Klinger wishes to anthologize. Of
course this point has no application to the present case, Arthur Conan
Doyle having died 84 years ago. More important, extending copy-
right protection is a two-edged sword from the standpoint of induc-
ing creativity, as it would reduce the incentive of subsequent authors
to create derivative works (such as new versions of popular ﬁctional
characters like Holmes and Watson) by shrinking the public domain.
For the longer the copyright term is, the less public-domain material
there will be and so the greater will be the cost of authorship, because
authors will have to obtain licenses from copyright holders for more
material – as illustrated by the estate’s demand in this case for a li-
cense fee from Pegasus.
Most copyrighted works include some, and often a great deal
of, public domain material – words, phrases, data, entire sentences,
298 CHAPTER 4. COPYRIGHT

quoted material, and so forth. The smaller the public domain, the
more work is involved in the creation of a new work. The defendant’s
proposed rule would also encourage authors to continue to write sto-
ries involving old characters in an eﬀort to prolong copyright protec-
tion, rather than encouraging them to create stories with entirely new
characters. The eﬀect would be to discourage creativity.

D Infringement: Similarity
This section starts with passages from three classic copyright cases
that set out the essential issues in assessing similarity. They are fol-
lowed by two more recent cases that work through the details in a
more concrete se ing.

Sheldon v. Metro-Goldwyn Pictures Corp.
81 F.2d 49 (2nd Cir. 1936)
(Learned Hand, J.)
The plaintiﬀs’ originality is necessarily limited to the variants they
introduced. Nevertheless, it is still true that their whole contribution
may not be protected; for the defendants were entitled to use, not only
all that had gone before, but even the plaintiﬀs’ contribution itself, if
they drew from it only the more general pa erns; that is, if they kept
clear of its “expression.”
True, much of the picture owes nothing to the play; some of it
is plainly drawn from the novel; but that is entirely immaterial; it is
enough that substantial parts were lifted; no plagiarist can excuse the
wrong by showing how much of his work he did not pirate.

Nichols v. Universal Pictures Corporation
45 F.2d 119 (2d Cir. 1930)
[The plaintiﬀ’s play, Abie’s Irish Rose, and the defendant’s movie,
The Cohens and the Kellys, both concerned the tension between an
Irish family and a Jewish family when their children fall in love and
marry.]
(Learned Hand, J.) It is of course essential to any protection of literary property,
whether at common-law or under the statute, that the right cannot be
limited literally to the text, else a plagiarist would escape by imma-
terial variations. That has never been the law, but, as soon as literal
appropriation ceases to be the test, the whole ma er is necessarily at
large, so that, as was recently well said by a distinguished judge, the
decisions cannot help much in a new case. When plays are concerned,
the plagiarist may excise a separate scene or he may appropriate part
of the dialogue. Then the question is whether the part so taken is
”substantial.” It is the same question as arises in the case of any other
copyrighted work. But when the plagiarist does not take out a block
in situ, but an abstract of the whole, decision is more troublesome.
Upon any work, and especially upon a play, a great number of pat-
terns of increasing generality will ﬁt equally well, as more and more
D. INFRINGEMENT: SIMILARITY 299

of the incident is left out. The last may perhaps be no more than the
most general statement of what the play is about, and at times might
consist only of its title; but there is a point in this series of abstractions
where they are no longer protected, since otherwise the playwright
could prevent the use of his ”ideas,” to which, apart from their ex-
pression, his property is never extended. Nobody has ever been able
to ﬁx that boundary, and nobody ever can. In some cases the question
has been treated as though it were analogous to lifting a portion out
of the copyrighted work, but the analogy is not a good one, because,
though the skeleton is a part of the body, it pervades and supports the
whole. In such cases we are rather concerned with the line between
expression and what is expressed. As respects plays, the controversy
chieﬂy centers upon the characters and sequence of incident, these
being the substance.
But we do not doubt that two plays may correspond in plot closely
enough for infringement. How far that correspondence must go is
another ma er. Nor need we hold that the same may not be true as
to the characters, quite independently of the ”plot” proper, though,
as far as we know, such a case has never arisen. If Twelfth Night
were copyrighted, it is quite possible that a second comer might so
closely imitate Sir Toby Belch or Malvolio as to infringe, but it would
not be enough that for one of his characters he cast a riotous knight
who kept wassail to the discomfort of the household, or a vain and
foppish steward who became amorous of his mistress. These would
be no more than Shakespeare’s ”ideas” in the play, as li le capable of
monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of
the Origin of Species. 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.
In the two plays at bar we think both as to incident and character,
the defendant took no more – assuming that it took anything at all
– than the law allowed. The stories are quite diﬀerent. One is of a
religious zealot who insists upon his child’s marrying no one outside
his faith; opposed by another who is in this respect just like him, and
is his foil. Their diﬀerence in race is merely an obbligato to the main
theme, religion. They sink their diﬀerences through grandparental
pride and aﬀection. In the other, zealotry is wholly absent; religion
does not even appear. It is true that the parents are hostile to each
other in part because they diﬀer in race; but the marriage of their
son to a Jew does not apparently oﬀend the Irish family at all, and it
exacerbates the existing animosity of the Jew, principally because he
has become rich, when he learns it. They are reconciled through the
honesty of the Jew and the generosity of the Irishman; the grandchild
has nothing whatever to do with it. The only ma er common to the
two is a quarrel between a Jewish and an Irish father, the marriage of
300 CHAPTER 4. COPYRIGHT

their children, the birth of grandchildren and a reconciliation.
If the defendant took so much from the plaintiﬀ, it may well have
been because her amazing success seemed to prove that this was a
subject of enduring popularity. Even so, granting that the plaintiﬀ’s
play was wholly original, and assuming that novelty is not essential
to a copyright, there is no monopoly in such a background. Though
the plaintiﬀ discovered the vein, she could not keep it to herself; so
deﬁned, the theme was too generalized an abstraction from what she
wrote. It was only a part of her ”ideas.”
Nor does she fare be er as to her characters. It is indeed scarcely
credible that she should not have been aware of those stock ﬁgures,
the low comedy Jew and Irishman. The defendant has not taken from
her more than their prototypes have contained for many decades. If
so, obviously so to generalize her copyright, would allow her to cover
what was not original with her. But we need not hold this as ma er
of fact, much as we might be justiﬁed. Even though we take it that
she devised her ﬁgures out of her brain de novo, still the defendant
was within its rights.
We assume that the plaintiﬀ’s play is altogether original, even to
an extent that in fact it is hard to believe. We assume further that, so
far as it has been anticipated by earlier plays of which she knew noth-
ing, that fact is immaterial. Still, as we have already said, her copy-
right did not cover everything that might be drawn from her play;
its content went to some extent into the public domain. We have to
decide how much, and while we are as aware as any one that the line,
whereever it is drawn, will seem arbitrary, that is no excuse for not
drawing it; it is a question such as courts must answer in nearly all
cases. Whatever may be the diﬃculties a priori, we have no question
on which side of the line this case falls. A comedy based upon con-
ﬂicts between Irish and Jews, into which the marriage of their chil-
dren enters, is no more susceptible of copyright than the outline of
Romeo and Juliet.
The plaintiﬀ has prepared an elaborate analysis of the two plays,
showing a ”quadrangle” of the common characters, in which each is
represented by the emotions which he discovers. She presents the
resulting parallelism as proof of infringement, but the adjectives em-
ployed are so general as to be quite useless. Take for example the
a ribute of ”love” ascribed to both Jews. The plaintiﬀ has depicted
her father as deeply a ached to his son, who is his hope and joy; not
so, the defendant, whose father’s conduct is throughout not actuated
by any aﬀection for his daughter, and who is merely once overcome
for the moment by her distress when he has violently dismissed her
lover. ”Anger” covers emotions aroused by quite diﬀerent occasions
in each case; so do ”anxiety,” ”despondency” and ”disgust.” It is un-
necessary to go through the catalogue for emotions are too much col-
D. INFRINGEMENT: SIMILARITY 301

ored by their causes to be a test when used so broadly. This is not the
proper approach to a solution; it must be more ingenuous, more like
that of a spectator, who would rely upon the complex of his impres-
sions of each character.

Arnstein v. Porter 154 F.2d 464 (2d Cir. 1946)
[The plaintiﬀ, Ira B. Arnstein, alleged that Cole Porter copied numer-
ous songs from him. Arnstein was a serial and vexatious litigant;
among his allegations was that Porter “had stooges right along to fol-
low me, watch me, and live in the same apartment with me.”]
Assuming that adequate proof is made of copying, that is not
enough; for there can be “permissible copying,” copying which is
not illicit. Whether (if he copied) defendant unlawfully appropriated
presents, too, an issue of fact. The proper criterion on that issue is
not an analytic or other comparison of the respective musical compo-
sitions as they appear on paper or in the judgment of trained musi-
cians.32 The plaintiﬀ’s legally protected interest is not, as such, his
reputation as a musician but his interest in the potential ﬁnancial re-
turns from his compositions which derive from the lay public’s appro-
bation of his eﬀorts. The question, therefore, is whether defendant
took from plaintiﬀ’s works so much of what is pleasing to the ears of
lay listeners, who comprise the audience for whom such popular mu-
sic is composed, that defendant wrongfully appropriated something
which belongs to the plaintiﬀ.
Surely, then, we have an issue of fact which a jury is peculiarly
ﬁ ed to determine.35
We should not be taken as saying that a plagiarism case can never
arise in which absence of similarities is so patent that a summary
judgment for defendant would be correct. Thus suppose that Ravel’s
“Bolero” or Shostakovitch’s “Fifth Symphony” were alleged to in-
fringe “When Irish Eyes Are Smiling.” But this is not such a case.
For, after listening to the playing of the respective compositions, we
are, at this time, unable to conclude that the likenesses are so triﬂing
that, on the issue of misappropriation, a trial judge could legitimately
direct a verdict for defendant.
At the trial, plaintiﬀ may play, or cause to be played, the pieces
in such manner that they may seem to a jury to be inexcusably alike,
in terms of the way in which lay listeners of such music would be
likely to react. The plaintiﬀ may call witnesses whose testimony may
aid the jury in reaching its conclusion as to the responses of such au-
diences. Expert testimony of musicians may also be received, but it
32
Where plaintiﬀ relies on similarities to prove copying (as distinguished from
improper appropriation) paper comparisons and the opinions of experts may aid
the court.
35
It would, accordingly, be proper to exclude tone-deaf persons from the jury.
302 CHAPTER 4. COPYRIGHT

will in no way be controlling on the issue of illicit copying, and should
be utilized only to assist in determining the reactions of lay auditors.
The impression made on the reﬁned ears of musical experts or their
views as to the musical excellence of plaintiﬀ’s or defendant’s works
are u erly immaterial on the issue of misappropriation; for the views
of such persons are caviar to the general – and plaintiﬀ’s and defen-
dant’s compositions are not caviar.

Children’s Book Problem
You are law clerk to a judge hearing a copyright infringement case.
The plaintiﬀ’s work is a children’s book; the allegedly infringing
work is a G-rated animated movie. The plaintiﬀ has oﬀered an expert
witness who has made a chart of 83 alleged similarities; the defendant
has oﬀered an expert witness who will testify that the book primarily
appeals to “verbally oriented” children aged 9-11, while the movie
primarily apeals to “visually orented” children aged 6-8.
Will you restrict the jury pool to children? To parents? What spe-
cial instructions, if any, will you give the jury regarding its task of
assessing similarity? Will you allow the plaintiﬀ’s expert to testify?
The defendant’s? If you allow either of them to testify, what will you
instruct the jury regarding the relevance of the opinions they oﬀer?
How will you allow the parties to present the works to the jury dur-
ing the trial? Will you allow the jury to have copies of the book and
a DVD of the movie with them during deliberations?

Gottlieb Development LLC v. Paramount Pictures
590 F. Supp. 2d 625 (S.D.N.Y. 2008)
In the motion picture ”What Women Want,” released by defendant
Paramount Pictures Corporation in 2000, Mel Gibson plays an ad-
vertising executive who acquires the ability to ”hear” what women
are thinking. In one scene, Gibson and his co-star Helen Hunt brain-
storm with other employees to develop ideas for marketing certain
consumer products to women. At various points during the scene, a
pinball machine – the ”Silver Slugger” – appears in the background.
The Silver Slugger is distributed by plaintiﬀ Go lieb Development
LLC, and Paramount used the pinball machine in the scene without
Go lieb’s permission.
The Silver Slugger features three original designs (the ”Designs”):
(1) a depiction of a baseball diamond on the backglass, which is the
upright back portion of the pinball machine; (2) another baseball di-
amond on the playﬁeld, which is the playing surface of the machine;
and (3) the layout of the parts of the playﬁeld. The Designs are copy-
righted, and Go lieb has owned the copyrights since 1998.
The legal maxim ”de minimis non curat lex” – ”the law does not
concern itself with triﬂes” – applies in the copyright context. For ex-
Still from What Women Want (2000) ample, if the copying is de minimis and so ”trivial” as to fall below the
D. INFRINGEMENT: SIMILARITY 303

quantitative threshold of substantial similarity, the copying is not ac-
tionable.
There is no plausible claim of copyright infringement here. Al-
though Go lieb has suﬃciently pled unauthorized copying of its De-
signs, the use of the Silver Slugger was de minimis as a ma er of law.
Hence, no reasonable juror could ﬁnd substantial similarity in the le-
gal sense, and thus the copying is not actionable.
The scene in question lasts only three-and-a-half minutes, and the
Silver Slugger appears in the scene sporadically, for no more than
a few seconds at a time. More importantly, the pinball machine is
always in the background; it is never seen in the foreground. It never
appears by itself or in a close-up. It is never mentioned and plays no
role in the plot. It is almost always partially obscured (by Gibson and
pieces of furniture), and is fully visible for only a few seconds during
the entire scene. The Designs (on the backglass and playﬁeld of the
pinball machine) are never fully visible and are either out of focus
or obscured. Indeed, an average observer would not recognize the
Designs as anything other than generic designs in a pinball machine.
Go lieb cites to Ringgold v. Black Entertainment Television, Inc. in Ringgold: 126 F.3d 70 (2d Cir. 1997)
support of its claim, but the facts of that case are inapposite. Ringgold
involved the unauthorized use of a copyrighted poster in an episode
of a HBO television series. The poster was shown, in whole or in part,
nine times during a ﬁve-minute scene at the end of the episode. The
poster (or a portion thereof) was seen for 1.86 to 4.16 seconds at a time,
for a total of 26.75 seconds. In some instances, the poster appeared at
the center of the screen. As the Second Circuit held, the poster was
”plainly observable.”
More importantly, there was a qualitative connection between the
poster and the show. The poster included a painting depicting a Sun-
day School picnic held by the Freedom Baptist Church in Atlanta,
Georgia, in 1909, and was intended to convey ”aspects of the African-
American experience in the early 1900s.” The show was ”ROC,” a tele-
vision ”sitcom” series about a middle-class African-American family
living in Baltimore, and the scene in question was of a gathering in
a church hall with a minister. The Second Circuit noted that HBO’s
production staﬀ ”evidently thought that the poster was well suited
as a set decoration for the African-American church scene of a ROC
episode.” The Second Circuit concluded:
From the standpoint of a quantitative assessment of the
segments, the principal four-to-ﬁve second segment in
which almost all of the poster is clearly visible, albeit in
less than perfect focus, reenforced by the briefer segments
in which smaller portions are visible, all totaling 26 to 27
seconds, are not de minimis copying. The painting compo- Still from ROC (1992)
304 CHAPTER 4. COPYRIGHT

nent of the poster is recognizable as a painting, and with
suﬃcient observable detail for the ”average lay observer”
to discern African-Americans in Ringold’s colorful, vir-
tually two-dimensional style. The de minimis threshold
of actionable copying of protected expression has been
crossed.
In the present case, the ”average lay observer” would not be able to
discern any distinctive elements of Go lieb’s Designs – the baseball
players clad in stylized, futuristic gear. The best that the average lay
observer could make out in the background is a typical home-plate
layout with baseball players arrayed around it. The unique expres-
sive element of the Designs is not discernable in those brief moments
when the backglass is visible. The only other protected element of
the backglass is the ”Silver Slugger” logo in the upper left hand cor-
ner, which is glimpsed ﬂeetingly, and in poor focus, during the scene.
The camera sweeps past the logo without dwelling or focusing on it.
The average lay observer would not discern the stylized aspects of
the logo a ributable to Go lieb based on the way the logo appears in
the background of the scene.
Moreover, while use of a copyrighted work in the background
may still be a basis for an infringement claim, where the use is de min-
imis, the copying will not be actionable, even where the work was cho-
sen to be in the background for some thematic relevance. As the Sec-
ond Circuit explained in Ringgold, ”in some circumstances, a visual
work, though selected by production staﬀ for thematic relevance, or
at least for its decorative value, might ultimately be ﬁlmed at such dis-
tance and so out of focus that a typical program viewer would not dis-
cern any decorative eﬀect that the work of art contributes to the set.”
Here, undoubtedly the Silver Slugger was chosen by the production
staﬀ because it ﬁt in with the ”sporty” theme of the background in the
scene; but the Silver Slugger was one of numerous background items,
and it was ﬁlmed in such a manner and appears so ﬂeetingly that I
conclude there is no plausible claim for copyright infringement here.
Accordingly, Go lieb’s copyright infringement claim is dismissed.

Boisson v. Banian, Ltd.
273 F.3d 262 (2d Cir. 2001)
Plaintiﬀs Judi Boisson and her wholly-owned company, American
Country Quilts and Linens, Inc., d/b/a Judi Boisson American Coun-
try, brought suit alleging that defendants Vijay Rao and his wholly-
owned company Banian Ltd., illegally copied two quilt designs.
B
Judi Boisson has been in the quilt trade for over 20 years, beginning
her career by selling antique American quilts – in particular, Amish
D. INFRINGEMENT: SIMILARITY 305

quilts – she purchased in various states throughout the country. By
the late 1980s, having diﬃculty ﬁnding antique quilts, she decided
to design and manufacture her own and began selling them in 1991
through her company. Boisson published catalogs in 1993 and 1996 to
advertise and sell her quilts. Her works are also sold to linen, gift, an-
tique, and children’s stores and high-end catalog companies. Various
home furnishing magazines have published articles featuring Bois-
son and her quilts.
In 1991 plaintiﬀ designed and produced two alphabet quilts enti-
tled ”School Days I” and ”School Days II.” Although we later describe
the quilts in greater detail, we note each consists of square blocks
containing the capital le ers of the alphabet, displayed in order. The
blocks are set in horizontal rows and vertical columns, with the last
row ﬁlled by blocks containing various pictures or icons. The le ers
and blocks are made up of diﬀerent colors, set oﬀ by a white border
and colored edging.
Defendant Vijay Rao is the president and sole shareholder of de-
fendant Banian Ltd., incorporated in November 1991. Rao is an elec-
trical engineer in the telecommunications industry who became inter-
ested in selling quilts in February 1992. To that end, he imported from
India each of the three alphabet quilts at issue in this case. He sold
them through boutique stores and catalog companies. The ﬁrst quilt
he ordered was ”ABC Green Version I,” which he had been shown by
a third party. Defendants have not sold this pa ern since 1993. ”ABC
Green Version II” was ordered in September 1994, based upon mod-
iﬁcations to ”ABC Green Version I” requested by Rao. Defendants
reordered this quilt once in April 1995, and then stopped selling it in
March 1997. Regarding ”ABC Navy,” Rao testiﬁed that he designed
the quilt himself based upon ”ABC Green Version II” and imported
ﬁnished copies in November 1995. Defendants voluntarily withdrew
their ”ABC Navy” quilts from the market in November 1998 follow-
ing the initiation of this litigation.
IV. S S :O O .M
D O
Generally, an allegedly infringing work is considered substantially
similar to a copyrighted work if ”the ordinary observer, unless he
set out to detect the disparities, would be disposed to overlook them,
and regard their aesthetic appeal as the same.” Folio Impressions Inc. Folio Impressions: 937 F.2d 759 (2d Cir.
v. Byer California. Yet in Folio Impressions, the evidence at trial showed 1991)
the plaintiﬀ designer had copied the background for its fabric from a
public domain document and ”contributed nothing, not even a triv-
ial variation.” Thus, part of the plaintiﬀ’s fabric was not original and
therefore not protectible. We articulated the need for an ordinary ob-
server to be ”more discerning” in such circumstances.
306 CHAPTER 4. COPYRIGHT

The ordinary observer would compare the ﬁnished prod-
uct that the fabric designs were intended to grace
(women’s dresses), and would be inclined to view the
entire dress – consisting of protectible and unprotectible
elements – as one whole. Here, since only some of the
design enjoys copyright protection, the observer’s inspec-
tion must be more discerning.
We reiterated that a ”more reﬁned analysis” is required where a plain-
tiﬀ’s work is not ”wholly original,” but rather incorporates elements
Key Publications: 945 F.2d 509 (2d Cir. from the public domain. Key Publications, Inc. v. Chinatown Today
1991) Publishing Enterprises, Inc.. In these instances, ”what must be shown
is substantial similarity between those elements, and only those ele-
ments, that provide copyrightability to the allegedly infringed com-
pilation.” In contrast, where the plaintiﬀ’s work contains no material
imported from the public domain, the ”more discerning” test is un-
necessary. In the case at hand, because the alphabet was taken from
the public domain, we must apply the ”more discerning” ordinary
observer test.
In applying this test, a court is not to dissect the works at issue into
separate components and compare only the copyrightable elements.
To do so would be to take the ”more discerning” test to an extreme,
which would result in almost nothing being copyrightable because
original works broken down into their composite parts would usu-
ally be li le more than basic unprotectible elements like le ers, colors
and symbols. This outcome – aﬀording no copyright protection to an
original compilation of unprotectible elements – would be contrary
to the Supreme Court’s holding in Feist.
Although the ”more discerning” test has not always been identi-
ﬁed by name in our case law, we have nevertheless always recognized
that the test is guided by comparing the ”total concept and feel” of
Streetwise Maps: 159 F.3d 739 (2d Cir. the contested works. For example, in Streetwise Maps, Inc. v. Van-
1998) Dam, Inc. we found no infringement – not because the plaintiﬀ’s map
consisted of public domain facts such as street locations, landmasses,
bodies of water and landmarks, as well as color – but rather ”because
the total concept and overall feel created by the two works may not
be said to be substantially similar.”
In the present case, while use of the alphabet may not provide
a basis for infringement, we must compare defendants’ quilts and
plaintiﬀs’ quilts on the basis of the arrangement and shapes of the
le ers, the colors chosen to represent the le ers and other parts of
the quilts, the quilting pa erns, the particular icons chosen and their
placement. Our analysis of the ”total concept and feel” of these works
Hamil America: 193 F.3d 92 (2d Cir. should be instructed by common sense. Cf. Hamil America, Inc. v.
1999) GFI (noting that the ordinary observer test involves an examination
D. INFRINGEMENT: SIMILARITY 307

of ”total concept and feel,” which in turn can be guided by ”good
eyes and common sense”).
V. C
A. ”School Days I” v. ”ABC Green” Versions
”School Days I” consists of six horizontal rows, each row containing
ﬁve blocks, with a capital le er or an icon in each block. The group-
ings of blocks in each row are as follows: A-E; F-J; K-O; P-T; U-Y; and
Z with four icons following in the last row. The four icons are a cat,
a house, a single-starred American ﬂag and a basket. ”ABC Green
Version I” displays the capital le ers of the alphabet in the same for-
mation. The four icons in the last row are a cow jumping over the
moon, a sailboat, a bear and a star. ”ABC Green Version II” is iden-
tical to ”ABC Green Version I,” except that the picture of the cow
jumping over the moon is somewhat altered, the bear is replaced by
a teddy bear si ing up and wearing a vest that looks like a single-
starred American ﬂag, and the star in the last block is represented in
a diﬀerent color.
School Days I
All three quilts use a combination of contrasting solid color fabrics
or a combination of solid and polka-do ed fabrics to represent the
blocks and le ers. The following similarities are observed in plain-
tiﬀs’ and defendants’ designs: ”A” is dark blue on a light blue back-
ground; ”B” is red on a white background; ”D” is made of polka-dot
fabric on a light blue background; ”F” on plaintiﬀs’ ”School Days I”
is white on a pink background, while the ”F” on defendants’ ”ABC
Green” versions is pink on a white background; ”G” has a green back-
ground; ”H” and ”L” are each a shade of blue on a white background;
”M” in each quilt is a shade of yellow on a white background. ”N” is
green on a white background; ”O” is blue on a polka-dot background;
”P” is polka-dot fabric on a yellow background; ”Q” is brown on a
light background; ”R” is pink on a gray/purple background. ”S” is
white on a red background; ”T” is blue on a white background; ”U”
is gray on a white background; ”V” is white on a gray background;
”W” is pink on a white background; ”X” is purple in all quilts, albeit
in diﬀerent shades, on a light background; ”Y” is a shade of yellow
on the same light background; and ”Z” is navy blue or black, in all
the quilts.
Boisson also testiﬁed that defendants utilized the same unique
shapes as she had given to the le ers ”J,” ”M,” ”N,” ”P,” ”R” and
”W.” With respect to the quilting pa erns, ”School Days I” and the
”ABC Green” versions feature diamond-shaped quilting within the
blocks and a ”wavy” pa ern in the plain white border that surrounds
the blocks. The quilts are also edged with a 3/8” green binding.
From this enormous amount of sameness, we think defendants’ ABC Green
308 CHAPTER 4. COPYRIGHT

quilts suﬃciently similar to plaintiﬀs’ design as to demonstrate il-
legal copying. In particular, the overwhelming similarities in color
choices lean toward a ﬁnding of infringement. Although the icons
chosen for each quilt are diﬀerent and defendants added a green rect-
angular border around their rows of blocks, these diﬀerences are not
suﬃcient to cause even the ”more discerning” observer to think the
quilts are other than substantially similar insofar as the protectible el-
ements of plaintiﬀs’ quilt are concerned. Moreover, the substitution
in ”ABC Green Version II” of the teddy bear wearing a ﬂag vest as
the third icon causes this version of defendants’ quilt to look even
more like plaintiﬀs’ quilt that uses a single-starred American ﬂag as
its third icon. Consequently, both of defendants’ ”ABC Green” quilts
infringed plaintiﬀs’ copyright on its ”School Days I” quilt.
B. ”School Days I” v. ”ABC Navy”
We agree with the district court, however, that Rao did not infringe
on plaintiﬀs’ design in ”School Days I” when he created ”ABC Navy.”
While both quilts utilize an arrangement of six horizontal rows of ﬁve
blocks each, ”ABC Navy” does not have its four icons in the last row.
Rather, the teddy bear with the ﬂag vest is placed after the ”A” in
the ﬁrst row, the cow jumping over the moon is placed after the ”L”
in the third row, the star is placed after the ”S” in the ﬁfth row, and
the sailboat is placed after the ”Z” in the last row. Further, the colors
chosen to represent the le ers and the blocks in ”ABC Navy” are, for
the most part, entirely diﬀerent from ”School Days I.” Defendants
dropped the use of polka-dot fabric, and plaintiﬀs did not even of-
fer a color comparison in their proposed ﬁndings of fact to the dis-
trict court, as they had with each of the ”ABC Green” versions. The
ABC Navy quilting pa ern in the plain white border is changed to a ”zig-zag”
in ”ABC Navy,” as opposed to plaintiﬀs’ ”wavy” design. Finally, al-
though defendants use a binding around the edge of their quilt, in
this instance it is blue instead of green.
Looking at these quilts side-by-side, we conclude they are not sub-
stantially similar to one another. Just as we rejected defendants’ ear-
lier argument and held that what few diﬀerences existed between
”School Days I” and the ”ABC Green” quilts could not preclude a ﬁnd-
ing of infringement, plaintiﬀs’ emphasis on the similarity in style be-
tween some of the le ers between ”School Days I” and ”ABC Navy”
cannot support a ﬁnding of infringement. Because no observer, let
alone a ”more discerning” observer, would likely ﬁnd the two works
to be substantially similar, no copyright violation could properly be
found.
Based on Steinberg v. Columbia Pictures
Industries, Inc., 663 F. Supp. 706 (S.D.N.Y. New Yorker Problem
1987)
E. INFRINGEMENT: PROHIBITED CONDUCT 309

Below you will ﬁnd a cover from the New Yorker and a poster for
the movie Moscow on the Hudson. The copyright owners of the for-
mer have sued the producers of the la er for copyright infringement.
You are the judge assigned to the case, which you have conducted
as a bench trial by the consent of the parties. Write the portion of
your opinion ﬁnding substantial similarity or the lack thereof. Be as
speciﬁc as you can.

E Infringement: Prohibited Conduct
1 Proof of Copying

Three Boys Music Corp. v. Bolton
212 F.3d 477 (9th Cir. 2000)
In 1994, a jury found that Michael Bolton’s 1991 pop hit, ”Love Is a
Wonderful Thing,” infringed on the copyright of a 1964 Isley Brothers’
song of the same name. The district court denied Bolton’s motion
for a new trial and aﬃrmed the jury’s award of $5.4 million. Bolton,
his co-author, Andrew Goldmark, and their record companies (”Sony
Music”) appeal.
I. B
The Isley Brothers, one of this country’s most well-known rhythm
and blues groups, have been inducted into the Rock and Roll Hall
of Fame. They helped deﬁne the soul sound of the 1960s with songs
such as ”Shout,” ”Twist and Shout,” and ”This Old Heart of Mine,”
and they mastered the funky beats of the 1970s with songs such as
”Who’s That Lady,” ”Fight the Power,” and ”It’s Your Thing.” In 1964,
the Isley Brothers wrote and recorded ”Love is a Wonderful Thing”
310 CHAPTER 4. COPYRIGHT

for United Artists. The Isley Brothers received a copyright for ”Love
is a Wonderful Thing” from the Register of Copyrights on February
6, 1964.
Hoping to beneﬁt from the Isley Brothers’ Motown success,
United Artists released ”Love is a Wonderful Thing” in 1966. The
song was not released on an album, only on a 45-record as a single.
Several industry publications predicted that ”Love is a Wonderful
Thing” would be a hit—”Cash Box” on August 27, 1966, ”Gavin Re-
port” on August 26, 1966, and ”Billboard” on September 10, 1966. On
September 17, 1966, Billboard listed ”Love is a Wonderful Thing” at
number 110 in a chart titled ”Bubbling Under the Hot 100.” The song
was never listed on any other Top 100 charts. In 1991, the Isley Broth-
ers’ ”Love is a Wonderful Thing” was released on compact disc.
Michael Bolton is a singer/songwriter who gained popularity in
"There was nothing wrong with [the the late 1980s and early 1990s by reviving the soul sound of the 1960s.
name 'Michael Bolton'] until I was Bolton has orchestrated this soul-music revival in part by covering
about twelve years old and that no-
old songs such as Percy Sledge’s ”When a Man Love a Woman” and
talent ass clown became famous and
started winning Grammys." Otis Redding’s ”(Si in’ on the) Dock of the Bay.” Bolton also has writ-
—Office Space (1999) ten his own hit songs. In early 1990, Bolton and Goldmark wrote a
song called ”Love Is a Wonderful Thing.” Bolton released it as a sin-
gle in April 1991, and as part of Bolton’s album, ”Time, Love and
Tenderness.” Bolton’s ”Love Is a Wonderful Thing” ﬁnished 1991 at
number 49 on Billboard’s year-end pop chart.
On February 24, 1992, Three Boys Music Corporation ﬁled a copy-
right infringement action.
II. D
Proof of copyright infringement is often highly circumstantial, par-
ticularly in cases involving music. A copyright plaintiﬀ must prove
(1) ownership of the copyright; and (2) infringement—that the defen-
"'Substantial similarity,' while said to dant copied protected elements of the plaintiﬀ’s work. Absent direct
be required for indirect proof of copy- evidence of copying, proof of infringement involves fact-based show-
ing, is actually required only after copy-
ings that the defendant had access to the plaintiﬀ’s work and that the
ing has been established to show that
enough copying has taken place. A sim-
two works are substantially similar. Given the diﬃculty of proving
ilarity, which may or may not be sub- access and substantial similarity, appellate courts have been reluctant
stantial, is probative of copying if, by to reverse jury verdicts in music cases.
definition, it is one that under all the
circumstances justifies an inference of A. Access
copying. In order to emphasize the
function of such similarity and avoid Proof of access requires an opportunity to view or to copy plain-
the confusion of double usage, this Ar- tiﬀ’s work. This is often described as providing a ”reasonable op-
ticle suggests use of the term probative portunity” or ”reasonable possibility” of viewing the plaintiﬀ’s work.
similarity in place of substantial similar-
ity in this context." Alan Latman, "Pro-
We have deﬁned reasonable access as ”more than a bare possibility.”
bative Similarity" as Proof of Copying: To- Nimmer has elaborated on our deﬁnition: ”Of course, reasonable
ward Dispelling Some Myths in Copyright opportunity as here used, does not encompass any bare possibility
Infringement in the sense that anything is possible. Access may not be inferred
E. INFRINGEMENT: PROHIBITED CONDUCT 311

through mere speculation or conjecture. There must be a reasonable
possibility of viewing the plaintiﬀ’s work—not a bare possibility.”
”At times, distinguishing a ‘bare’ possibility from a ‘reasonable’ pos- Nimmer § 13.02[A]
sibility will present a close question.”
Circumstantial evidence of reasonable access is proven in one of
two ways: (1) a particular chain of events is established between
the plaintiﬀ’s work and the defendant’s access to that work (such
as through dealings with a publisher or record company), or (2) the
plaintiﬀ’s work has been widely disseminated. Goldstein remarks
that in music cases the ”typically more successful route to proving
access requires the plaintiﬀ to show that its work was widely dissemi-
nated through sales of sheet music, records, and radio performances.”
. Nimmer, however, cautioned that ”[c]oncrete cases will pose dif- Goldstein § 8.3.1.1
ﬁcult judgments as to where along the access spectrum a given ex-
ploitation falls.” Nimmer§ 13.02[A]
Proof of widespread dissemination is sometimes accompanied by
a theory that copyright infringement of a popular song was subcon-
scious. Subconscious copying has been accepted since Learned Hand
embraced it in a 1924 music infringement case: ”Everything registers
somewhere in our memories, and no one can tell what may evoke
it. Once it appears that another has in fact used the copyright as the
source of this production, he has invaded the author’s rights. It is
no excuse that in so doing his memory has played him a trick.” Fred Fred Fisher: 298 F. 145 (S.D.N.Y. 1924)
Fisher, Inc. v. Dillingham. In Fred Fisher, Judge Hand found that the
similarities between the songs ”amount[ed] to identity” and that the
infringement had occurred ”probably unconsciously, what he had
certainly often heard only a short time before.”
In modern cases, however, the theory of subconscious copying
has been applied to songs that are more remote in time. ABKCO Mu- ABKCO: 722 F.2d 988 (2d Cir. 1983)
sic, Inc. v. Harrisongs Music, Ltd. is the most prominent example.
In ABKCO, the Second Circuit aﬃrmed a jury’s verdict that former
Beatle George Harrison, in writing the song ”My Sweet Lord,” sub-
consciously copied The Chiﬀons’ ”He’s So Fine,” which was released
six years earlier. Harrison admi ed hearing ”He’s So Fine” in 1963,
when it was number one on the Billboard charts in the United States
for ﬁve weeks and one of the top 30 hits in England for seven weeks.
The court found: ”the evidence, standing alone, by no means compels
the conclusion that there was access ... it does not compel the conclu-
sion that there was not.” In ABKCO, however, the court found that
”the similarity was so striking and where access was found, the re-
moteness of that access provides no basis for reversal.” Furthermore,
the mere lapse of a considerable period of time between the moment
of access and the creation of defendant’s work does not preclude a
ﬁnding of copying.
The Isley Brothers’ access argument was based on a theory of
312 CHAPTER 4. COPYRIGHT

widespread dissemination and subconscious copying. They pre-
sented evidence supporting four principal ways that Bolton and
Goldmark could have had access to the Isley Brothers’ ”Love is a
Wonderful Thing”:
(1) Bolton grew up listening to groups such as the Isley Brothers
and singing their songs. In 1966, Bolton and Goldmark were 13 and
15, respectively, growing up in Connecticut. Bolton testiﬁed that he
had been listening to rhythm and blues music by black singers since
he was 10 or 11, ”appreciated a lot of Black singers,” and as a youth
was the lead singer in a band that performed ”covers” of popular
songs by black singers. Bolton also testiﬁed that his brother had a
”pre y good record collection.”
(2) Three disk jockeys testiﬁed that the Isley Brothers’ song was
widely disseminated on radio and television stations where Bolton
and Goldmark grew up. First, Jerry Blavi testiﬁed that the Isley
Brothers’ ”Love is a Wonderful Thing” was played ﬁve or six times
during a 13-week period on the television show, ”The Discophonic
Scene,” which he said aired in Philadelphia, New York, and Hartford-
New Haven. Blavi also testiﬁed that he played the song two to three
times a week as a disk jockey in Philadelphia and that the station is
still playing the song today. Second, Earl Rodney Jones testiﬁed that
he played the song a minimum of four times a day during an eight to
14 to 24 week period on WVON radio in Chicago, and that the station
is still playing the song today. Finally, Jerry Bledsoe testiﬁed that he
played the song on WUFO radio in Buﬀalo, and WWRL radio in New
York was playing the song in New York in 1967 when he went there.
Bledsoe also testiﬁed that he played the song twice on a television
show, ”Soul,” which aired in New York and probably in New Haven,
Connecticut, where Bolton lived.
(3) Bolton confessed to being a huge fan of the Isley Brothers and
a collector of their music. Ronald Isley testiﬁed that when Bolton saw
Isley at the Lou Rawls United Negro College Fund Beneﬁt concert in
1988, Bolton said, ”I know this guy. I go back with him. I have all
his stuﬀ.” Angela Winbush, Isley’s wife, testiﬁed about that meeting
that Bolton said, ”This man needs no introduction. I know everything
he’s done.”
(4) Bolton wondered if he and Goldmark were copying a song by
another famous soul singer. Bolton produced a work tape a empting
to show that he and Goldmark independently created their version of
”Love Is a Wonderful Thing.” On that tape of their recording session,
Bolton asked Goldmark if the song they were composing was Marvin
Gaye’s ”Some Kind of Wonderful.” The district court, in aﬃrming the
jury’s verdict, wrote about Bolton’s Marvin Gaye remark:
This statement suggests that Bolton was contemplating
E. INFRINGEMENT: PROHIBITED CONDUCT 313

the possibility that the work he and Goldmark were cre-
ating, or at least a portion of it, belonged to someone else,
but that Bolton wasn’t sure who it belonged to. A reason-
able jury can infer that Bolton mistakenly a ributed the
work to Marvin Gaye, when in reality Bolton was subcon-
sciously drawing on Plaintiﬀ’s song.
The appellants contend that the Isley Brothers’ theory of access
amounts to a ”twenty-ﬁve-years-after-the-fact-subconscious copying
claim.” Indeed, this is a more a enuated case of reasonable access and
subconscious copying than ABKCO. In this case, the appellants never
admi ed hearing the Isley Brothers’ ”Love is a Wonderful Thing.”
That song never topped the Billboard charts or even made the top
100 for a single week. The song was not released on an album or com-
pact disc until 1991, a year after Bolton and Goldmark wrote their
song. Nor did the Isley Brothers ever claim that Bolton’s and Gold-
mark’s song is so ”strikingly similar” to the Isley Brothers’ that proof
of access is presumed and need not be proven.
Despite the weaknesses of the Isley Brothers’ theory of reasonable
access, the appellants had a full opportunity to present their case to
the jury. Three rhythm and blues experts (including legendary Mo-
town songwriter Lamont Dozier of Holland-Dozier-Holland fame)
testiﬁed that they never heard of the Isley Brothers’ ”Love is a Won-
derful Thing.” Furthermore, Bolton produced copies of ”TV Guide”
from 1966 suggesting that the television shows playing the song
never aired in Connecticut. Bolton also pointed out that 129 songs
called ”Love is a Wonderful Thing” are registered with the Copyright
Oﬃce, 85 of them before 1964.
The Isley Brothers’ reasonable access arguments are not without
merit. Teenagers are generally avid music listeners. It is entirely plau-
sible that two Connecticut teenagers obsessed with rhythm and blues
music could remember an Isley Brothers’ song that was played on
the radio and television for a few weeks, and subconsciously copy
it twenty years later. Furthermore, Ronald Isley testiﬁed that when
they met, Bolton said, ”I have all his stuﬀ.” Finally, as the district
court pointed out, Bolton’s remark about Marvin Gaye and ”Some
Kind of Wonderful” indicates that Bolton believed he may have been
copying someone else’s song.
B. Substantial Similarity
Under our case law, substantial similarity is inextricably linked to the
issue of access. In what is known as the ”inverse ratio rule,” we re-
quire a lower standard of proof of substantial similarity when a high
degree of access is shown. Furthermore, in the absence of any proof
of access, a copyright plaintiﬀ can still make out a case of infringe-
314 CHAPTER 4. COPYRIGHT

ment by showing that the songs were ”strikingly similar.”
1. Evidence of Substantial Similarity
Bolton and Goldmark argue that there was insuﬃcient evidence of
substantial similarity because the Isley Brothers’ expert musicologist,
Dr. Gerald Eskelin, failed to show that there was copying of a com-
bination of unprotectible elements. On the contrary, Eskelin testi-
ﬁed that the two songs shared a combination of ﬁve unprotectible
elements: (1) the title hook phrase (including the lyric, rhythm, and
pitch); (2) the shifted cadence; (3) the instrumental ﬁgures; (4) the
verse/chorus relationship; and (5) the fade ending. Although the ap-
pellants presented testimony from their own expert musicologist, An-
thony Ricigliano, he conceded that there were similarities between
the two songs and that he had not found the combination of unpro-
tectible elements in the Isley Brothers’ song ”anywhere in the prior
art.” The jury heard testimony from both of these experts and ”found
infringement based on a unique compilation of those elements.” We
refuse to interfere with the jury’s credibility determination, nor do
we ﬁnd that the jury’s ﬁnding of substantial similarity was clearly
erroneous.
2. Independent Creation
Bolton and Goldmark also contend that their witnesses rebu ed the
Isley Brothers’ prima facie case of copyright infringement with evi-
dence of independent creation. By establishing reasonable access and
substantial similarity, a copyrig