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manner. This document may not be copied, scanned, duplicated, forwarded, distributed, or posted on a website, in whole or part.
specific. Bouchat (a text case discussed later) is a very good example. So is Perfect 10, a
former text case that is now Problem #10. Discussion notes on Perfect 10 are included
later. Campbell v. Acuff-Rose Music, Inc. (a former text case that is discussed and applied
in Bouchat and Perfect 10) remains a leading case and serves as an excellent discussion
students a copy of the decision.
Campbell v. Acuff-Rose Music, Inc.: The U.S. Supreme Court holds that parody of a
Points for Discussion: Note that each side advanced an extreme position, neither of which
commercial character of a defendant’s use automatically prevents the defendant from being
able to rely on the fair use defense. The alleged infringer, 2 Live Crew, sought a ruling
that parody is fair use in all instances. Rejecting both of these extreme positions, the
After application of the factors, the parody at issue may—or may not—be classified as fair
use. The inquiry is highly–fact-specific.
This case illustrates that whether a use amounts to fair use does not depend upon
grant 2 Live Crew permission to record its parodic version of “Oh, Pretty Woman.” 2
Live Crew recorded the parody anyway. Even though the group proceeded against the
defense.
Note the Court’s discussion of the importance, to the fair use analysis, of
“transformative” uses (see the early portions of the decision). Ask the students how 2 Live
Crew’s version of “Oh, Pretty Woman” might be regarded as transformative in nature.
drudgery in working up something fresh.” Although the Court considered the call a close
one, it concluded that 2 Live Crew’s parodic version of “Oh, Pretty Woman” did contain
comment on the original version’s substance or style.
still be examined. Depending on the relevant facts, a commercial use may still obtain the
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protection of the fair use doctrine.
Note, also, the Court‘s comments that the significance of the commercial character of
the defendant’s use will vary from case to case, and that the use of a parody to help sell
another product might not be viewed as favorably in the fair use analysis as the sale of the
parody itself (the situation in Campbell). Although the Court did not explain these
with the objectives underlying the fair use defense.
In that event, factor #2 tends to cut rather strongly against fair use. Where, as here, the
readers, viewers, or listeners. If the parody‘s audience cannot identify what is being
parodied, the humor and point of the parody are likely to be lost. The Court’s approach to
factor #3 means that the parodist is likely to be able to get away with more borrowing that
the market for the original, because the parody will not be viewed by the public as a
substitute for the original. To take an example from an actual case, one who wants to
Live Crew‘s parodic version of “Oh, Pretty Woman,” done in the group’s rap style, would
the lower courts had not considered this question, the Supreme Court remanded the case.
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visible. (The Baltimore Ravens for a time had used the logo.) The Fourth Circuit also
holds that the fair use doctrine protects the Ravens against infringement liability for
against the NFL.
Points for Discussion: Ask a student to summarize the general history of Bouchat’s
ongoing disputes with the Ravens, as well as the basic facts. Note that as with many
fair use. Note the nature of the fair use defense and the fact that there isn’t a magic list of
cases therefore become highly fact-specific.
Separate out the two uses at issue in this case (the use in the NFL videos and the use
in the historical exhibits at the stadium.) Identify the four fair use factors and work
through each one in regard to each of the uses. Ask students what the court concluded
with regard to each factor. What were the major reasons why the court determined that the
the case? Do you suppose the court has become a bit frustrated with Bouchat and his
repeated lawsuits over uses of the logo? Might that have been an unstated factor here?
Perfect 10, Inc, v. Amazon.com, Inc. (formerly a text case; now Problem #10): The 9th
prima facie showing of a violation of Perfect 10’s display right.
Points for Discussion: The court characterizes Google’s use of the thumbnails as
“transformative” because the thumbnails on Google’s service serve a different “purpose”
than the ones on Perfect 10’s website—namely, to aid users in their Internet searches. The
phenomenon. Was the court concerned about the implications for the public interest if
search engines such as Google were held liable in cases such as this one.
Further fair use examples: Problems #2, #3, and #13.
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D. Trademarks
1. Discuss the reasons why the law protects trademarks. After noting the various kinds of
trademarks and service marks.
a. Also note that the chapter focuses on protection of marks under the federal
for trademarks.
2. Discuss the requirement that to merit protection, a mark must be distinctive. Discuss the
hierarchy of types of marks in terms of distinctiveness (or nondistinctiveness). Also
describe his products without risking liability? In this connection, be sure to discuss the
concept of secondary meaning and why it affords protection to descriptive marks,
3. Discuss the requirements for registration of a mark on the federal Principal Register. Note
that those requirements relate closely to the categories of distinctiveness just discussed.
registration on the Principal Register.
a. Emphasize that registration is not required in order for one to use a trademark.
Neither is registration required in order for some legal rights over the trademark to be
Problem #4.
4. Emphasize how and why the transfer of trademark rights is relatively difficult. Contrast
5. The registration duration rule mentioned in the text (10 years, plus successive 10-year
6. Discuss the various ways that trademark protection may be lost before the duration of the
registration expires. Emphasize, in particular, the problem of a mark‘s becoming generic.
Gold Card.
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a. Ask your students for examples of current trademarks that could be in danger of a
ruling that they have become generic (if a proper proceeding were initiated in the PTO
or a court). Possible examples include Kleenex, Jell-O, Band-Aid, and Xerox.
Neither a court nor the PTO has been presented with a cancellation request regarding
Kleenex, Jell-O, Band-Aid, or Xerox, however.
Note what this cancellation means and does not mean. See pp. 294–95.
7. When discussing trademark infringement, note that there are two required elements of
infringement: (1) sameness or substantial similarity; and (2) likelihood of confusion in one
whether there was likelihood of confusion, see Louis Vuitton (a former text case) and
Starbucks (a text case). Both cases present trademark infringement issues and trademark
below). In addition, see Problem #5.
8. Trademark dilution is both a relatively new and an old doctrine in trademark law. It is
relatively new as a matter of federal law, by virtue of the Federal Trademark Dilution Act
of 1996 (FTDA) and the Trademark Dilution Revision Act of 2006 (TDRA), a set of
amendments to the FTDA. (The TDRA receives extensive discussion at pp. 295-96 of the
Congress had resisted trademark owners‘ pleas for federal recognition of the dilution
doctrine.
a. A dilution claim is attractive to trademark owners because it does not require proof of
likelihood of confusion. Note the alternative ways in which dilution may be
sentence.
1. A good example of the “blurring” or “whittling away” type of dilution may be
found in a case that involved Polaroid and arose under the Illinois dilution statute.
Polaroid name for its business, consumers who had been exposed to uses of
Polaroid and Polaroid would then think, whenever they saw the Polaroid mark,
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manner. This document may not be copied, scanned, duplicated, forwarded, distributed, or posted on a website, in whole or part.
confused), there would be dilution of the distinctive quality of Polaroid’s
The court therefore enjoined the heating and air conditioning firm’s use of
Polaroid.
2. Dilution of the mark‘s distinctive quality should not be an automatic conclusion
database, lost a dilution claim against Toyota, which had chosen the name
3. In explaining the alternative dilution theory of tarnishment, stress the
unwholesome context requirement courts generally impose. Absent illicit sexual
or drug-use connotations, an unwholesome context normally does not exist. In
b. As the text suggests, the FTDA and the TDRA amendments contain various
provisions whose meanings are less than clear. This has led to a considerable amount
c. Louis Vuitton Malletier, SA v. Haute Diggity Dog, LLC (formerly a text case; now
Problem #8): Haute Diggity Dog manufactured dog chew toys designed to look
of summary judgment for the defendant.
Points for Discussion: Note that the basis for the parody “defense”—namely, that
Haute Diggity literally throws Vuitton’s mark to the dogs—is exactly what inspires
Vuitton’s lawsuit. In other words, what made Vuitton mad enough to sue serves as a
big reason why Vuitton loses the case. Given the obvious parody, consumers simply
gives Haute Diggity’s parody the same degree of indulgence contemplated by the
supposedly inapplicable TDRA language.
d. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc. (p. 297): The Second Circuit affirms
the trial court’s decision in favor of the defendant (referred to here as Black Bear) on
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Circuit therefore remands for reconsideration of the dilution by blurring claim.
Points for Discussion: This case provides a nice vehicle for examining the factors
against Starbucks on the dilution by blurring claim. (The trial court concluded that
substantial similarity was required for such a claim, but the Second Circuit said that
similarity—regardless of whether it was substantial in nature—was enough under the
Trademark Dilution Revision Act. That error by the trial court may have affected its
neither tarnishment nor likelihood thereof?
10. Note the 1999 enactment of the Anticybersquatting Consumer Protection Act
(ACPA), in which Congress sought to pay special attention to a problem that simply
did not exist two decades ago. Stress the importance of the “bad faith intent to profit”
element discussed in the text. Some cases of cybersquatting may also raise
E. Trade Secrets
1. Emphasize what a trade secret is and discuss the purposes of trade secrets law.
2. Be sure to mention that trade secrets law sometimes provides an alternative to the other
inventions.
3. Note from the section’s introduction that the main justification for providing a remedy for
harm to competition and the inability of others to further develop the secret—resulting
from secrecy.
Coleman case (discussed below) and Problem #6.
6. Cover the basics regarding noncompetition agreements (see p. 303), though it should be
agreement is enforceable or, instead, too broad to be enforceable.
7. Coleman v. Retina Consultants, P.C. (p. 303): The Georgia Supreme Court holds that a