Cheney Bros. v. Doris Silk Corp imitation of it.

The United States Constitution (Constitution) confers only

Congress the power to create this right, not the court.
Rule of Law. In absence of some recognized right at common law, or
under a statute, a mans property right is limited to the actual chattels
that embody his invention.

Brief

The Plaintiff, Cheney Brothers (Plaintiff), sought to enjoin the Defendant,

Doris Silk Corporation (Defendant), from copying its dress designs during
the season.

Facts

Cheney Brothers (plaintiff) manufactured seasonal silks in various

patterns, some of which succeeded commercially and some of which did
not. Even commercially successful patterns did not last more than 8 or 9
months on the market. Copyright and patent laws made it impractical
for Cheney Brothers to register and protect each print it produced every
year. Doris Silk Corp. (defendant) copied one of Cheney Brotherss
successful prints and made it available for less than Cheney Brotherss
price. Cheney Brothers sought to enjoin Doris Silk Corp. from using its
designs and undercutting its sales. The trial court denied the injunction,
and Cheney Brothers appealed.

Issue

Whether Plaintiff, absent a common law right or statute, have a property

right sufficient to prevent another from copying its chattel. (No)

Ratio

Plaintiff could not secure a copyright or a patent on its patterns, the

Plaintiff could not recover as a result of the Defendants copying. Since
no statutory authority promulgated pursuant to the patent or copyright
law existed to protect the Plaintiffs pattern, the Plaintiffs property is
limited to the tangible objects embodying his invention. Thus, although
the Defendant copied the Plaintiffs patterns the imitation is not
actionable.

Since there is no common law copyright law, the Plaintiffs property right
is limited to chattels that embody the invention, not the design pattern
that has a short life. The Plaintiff has no property right to prevent any
 competition, from appropriating news taken from bulletins issued by
Complainant or any of its members, or from newspapers published by
International News Service v. Associated Press them, for the purpose of selling it to Defendants clients.
248 U.S. 215
Held

There is a quasi property interest in news collected by an agency against Affirmed. In the present case there is unfair competition by the
other news collection agencies. It is unfair business competition for a Defendants, as two competing parties are endeavoring to make money
news collection agency to distribute the news collected by another news and Defendants are misappropriating Complainants quasi property
collection agency. interest in the news it collected and misrepresenting it as their own.

Brief Ratio

This case involves a question of unfair competition between two news Power to rule on issues
collecting companies when one company reproduced the others news as In 1918, the federal courts and in particular the Supreme Court had the
their own. power to declare and create binding law in commercial matters, such as
bills and notes and torts such as negligence and business interference.
Synopsis of Rule of Law. There is a quasi property interest in news This was under the doctrine of Swift v. Tyson, 41 U.S. 1 (1842), which
collected by an agency against other news collection agencies. It is had held that the federal courts, when deciding matters not specifically
unfair business competition for a news collection agency to distribute addressed by the state legislature, had the authority to develop a
the news collected by another news collection agency. federal common law. In 1938, in Erie Railroad Co. v. Tompkins, 304 U.S.
64 (1938), the Supreme Court overruled Swift v. Tyson. As Justice
Brandeis wrote:
Two competing United States news services (INS and AP) were in the
business of reporting in the US on World War I. Their businesses hinged Congress has no power to declare substantive rules of common law
on getting fast and accurate reports published. Following reporting that applicable in a state whether they be local in their nature or "general,"
the Allied Powers (England and France) perceived to be unduly favorable be they commercial law or a part of the law of torts. And no clause in the
to the Central Powers (Germany and Austria) by William Randolph Constitution purports to confer such a power upon the federal courts.
Hearst's INS, the Allies barred INS from using Allied telegraph lines to
report news; that effectively shut down INS's war reporting. But because the INS case was decided in 1918, the Supreme Court could
declare or create applicable tort law to govern the controversy between
To continue publishing news about the war, INS gained access to AP INS and AP.
news through by examination of AP news bulletin boards and early
editions of newspapers affiliated with AP. INS members would rewrite the Previous state of unfair competition law
news and publish it as their own, without attribution to AP. Although INS Before the INS case, unfair competition was generally considered to be
newspapers had to wait for AP to post news before going to press, INS limited to cases of "palming off"where the defendant deceived
newspapers in the west had no such disadvantage relative to their AP customers by causing them erroneously to believe that the defendant's
counterparts. The AP brought an action seeking to enjoin INS from product emanated from the plaintiff, and as a result diverted trade from
copying AP-gathered news. the plaintiff to the defendant.

Issue Majority opinion

Whether the Defendant can be lawfully restrained under theories of The Court held in favor of the AP, with Justice Pitney writing for the
interference with Complainants property rights in the news and unfair majority. Justices Holmes and Brandeis wrote dissents.
 The underlying principle is much the same as that which lies at the base
of the equitable theory of consideration in the law of truststhat he who
Justice Pitney has fairly paid the price should have the beneficial use of the property. It
The majority opinion by Justice Pitney recognized that the information is no answer to say that AP spends its money for that which is too
found in the AP news was not copyrightable as "the information fugitive or evanescent to be the subject of property. That might, and for
respecting current events contained in the literary production is not the the purposes of the discussion we are assuming that it would furnish an
creation of a writer but is a report of matters that ordinarily are publici answer in a common-law controversy. But in a court of equity, where the
juris; it is the history of the day."] Instead, Pitney approached the issue question is one of unfair competition, if that which AP has acquired fairly
from the perspective of unfair competition. He found that there was a at substantial cost may be sold fairly at substantial profit, a competitor
quasi-property right in the news as it is "stock in trade to be gathered at who is misappropriating it for the purpose of disposing of it to his own
the cost of enterprise, organization, skill, labor and money, and to be profit and to the disadvantage of AP cannot be heard to say that it is too
distributed and sold to those who will pay money for it."Given the fugitive or evanescent to be regarded as property. It has all the
"economic value" of the news, a company can "therefore" have a limited attributes of property necessary for determining that a misappropriation
property interest in it against a competitor (but not the general public) of it by a competitor is unfair competition because contrary to good
who would attempt to take advantage of the information. conscience.

The Court characterized INS's behavior as misappropriation. Due to the Intellectual Property
tenuous value of "hot" news, Pitney narrowed the period for which the
proprietary right would apply: this doctrine "postpones participation by FEIST PUBLICATIONS, INC.
complainant's competitor in the processes of distribution and v.
reproduction of news that it has not gathered, and only to the extent RURAL TELEPHONE SERVICE CO., INCERNESTO M. FULLERO,
necessary to prevent that competitor from reaping the fruits of petitioner,
complainant's efforts and expenditure." vs.
PEOPLE OF THE PHILIPPINES, respondent.
The Court justified its creation of a "quasi-property right" in these terms:
499 U.S. 340 (1991)
[INS] is taking material that has been acquired by AP as the result of Argued January 9, 1991.
organization and the expenditure of labor, skill, and money, and which is Decided March 27, 1991.
salable by AP for money, and that INS in appropriating it and selling it as
its own is endeavoring to reap where it has not sown, and by disposing
of it to newspapers that are competitors of AP's members is Nature of Case:
appropriating to itself the harvest of those who have sown.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE TENTH
Stripped of all disguises, the process amounts to an unauthorized CIRCUIT
interference with the normal operation of AP's legitimate business
precisely at the point where the profit is to be reaped, in order to divert
a material portion of the profit from those who have earned it to those BRIEF
who have not; with special advantage to INS in the competition because
of the fact that it is not burdened with any part of the expense of This case requires us to clarify the extent of copyright protection
gathering the news. The transaction speaks for itself and a court of available to telephone directory white pages.
equity ought not to hesitate long in characterizing it as unfair
competition in business. Synopsis of Rule of Law. To qualify for copyright protection, a
work must be original to the author, which means that the work was
independently created by the author, and it possesses at least
some minimal degree of creativity. A work may be original even be original even though it closely resembles other works so long as the
though it closely resembles other works so long as the similarity is similarity is fortuitous, not the result of copying.
fortuitous, not the result of copying.
Facts are not original. The first person to find and report a particular fact
has not created the fact; he has merely discovered its existence. Facts
may not be copyrighted and are part of the public domain available to
FACTS every person.

Rural Telephone Service Company, Inc. (Plaintiff) provides telephone A compilation is not copyrightable per se, but is copyrightable only if its
service to several communities. Due to a state regulation, it must issue facts have been "selected, coordinated, or arranged in such a way that
an annual telephone directory, so it published a directory consisting of the resulting work as a whole constitutes an original work of
white and yellow pages. The yellow pages have advertisements that authorship."(emphasis added). Thus, the statute envisions that some
generate revenue. Feist Publications, Inc. (Defendant) is a publishing ways of selecting, coordinating, and arranging data are not sufficiently
company whose directory covers a larger range than a typical directory. original to trigger copyright protection. Even a compilation that is
Defendant distributes their telephone books free of charge, and they copyrightable receives only limited protection, for the copyright does not
also generate revenue through the advertising in the yellow pages. extend to facts contained in the compilation.
Plaintiff refused to give a license to Defendant for the phone numbers in
the area, so Defendant used them without Plaintiffs consent. Rural sued Factual compilations may possess the requisite originality. The author
for copyright infringement. chooses what facts to include, in what order to place them, and how to
arrange the collected date so they may be effectively used by readers.
ISSUE/S of the CASE Thus, even a directory that contains no written expression that could be
Whether Rural's white pages are not entitled to copyright. protected, only facts, meets the constitutional minimum for copyright
protection if it features an original selection or arrangement. But, even
though the format is original, the facts themselves do not become
ACTIONS of the COURT original through association. The copyright on a factual compilation is
limited to formatting. The copyright does not extend to the facts
The District Court granted summary judgment to Rural in its copyright themselves.
infringement suit, holding that telephone directories are copyrightable.
To establish copyright infringement, two elements must be proven:
The Court of Appeals affirmed. ownership of a valid copyright and copying of constituent elements of
the work that are original. The first element is met in this case because
SC: Rural's white pages are not entitled to copyright, and therefore the directory contains some forward text. As to the second element, the
Feist's use of them does not constitute infringement. information contains facts, which cannot be copyrighted. They existed
before being reported and would have continued to exist if a telephone
directory had never been published. There is no originality in the
COURT RATIONALE ON THE ABOVE FACTS formatting, so there is no copyrightable expression. Thus, there is no
copyright infringement.
Facts cannot be copyrighted, however compilations of facts can
generally be copyrighted.

To qualify for copyright protection, a work must be original to the author,

which means that the work was independently created by the author,
and it possesses at least some minimal degree of creativity. A work may
 defendant, the judge had been entitled to conclude that although
material had been copied, it amounted to generalised propositions, at
too high a level of abstraction to qualify for copyright protection, and
that the 'central theme' put forward by the claimants had not been a
theme of their work at all but a selection of features of their work
collated for forensic purposes rather than emerging from a fair reading
of the work as a whole.
_________________________________________________________________________

Summary
Copyright Literary Works Non-Textual Copying Infringement

Facts
The Claimants were 2 of the 3 authors of a work of historical conjecture
titled The Holy Blood and The Holy Grail (HBHG). The Defendant was the
publisher of The Da Vinci Code (DVC), a work of fiction by Dan Brown.
Dan Brown admitted that he had referred to HBHG in the course of
research but the defendants denied copyright infringement. A
considerable amount of the underlying research had been carried out by
Blythe Brown, the authors wife who did not give evidence. It was
alleged that DVC infringed the copyright in HBHG by the copying of the
Central Theme of the original work. The Central Theme relied on was
an itemized list of 15 characteristics of the work. No literal textual
copying was relied on by the Claimants.
Baigent & Another v The Random House Group Ltd
Reference [2006] EWHC 719 (Ch); [2006] FSR 44; [2006] EMLR Issue
409; (2006) 29(5) IPD 29039 (1) Was the Central Theme of HBHG copied by Dan Brown in DVC?
Court High Court, Chancery Division (2) Was the Central Theme a substantial part of HBHG?

Judge Peter Smith J Held

Dismissing the claim:
Date of Judgment 7 Apr 2006 (1) copyright did not protect ideas at a high level of abstraction. HBHG
did not have a Central Theme as contended for by C. The Central Theme
Catchwords was created by working backwards from DVC; (2) in any event the
Copyright - Infringement - Defence - Work intended as factual account of themes did not form a substantial part of HBHG; (3) the reasons given
historical events - Repetition of facts by another author in novel - for not calling the authors wife as a witness were not credible. Following
Claimants arguing that central theme of their work copied by novelist - Lewis v Eliades [2005] EWCA 1627, the court was entitled to draw
Whether non-textual infringement of claimants' literary work - Whether adverse inferences from the absence of crucial witnesses who were
substantial part copied by novelist. apparently available to give evidence. However, Blythe Browns
evidence was not crucial to the question of copyright infringement.
Brief:
Copyright Infringement. Where the claimants brought copyright Comment
infringement proceedings against the defendant, claiming that the An interesting judgment in a high profile case that essentially turned on
central theme of their work had been copied in a novel published by the its facts. The judgment does contain an analysis of relevant case law
including Sawkins v Hyperion Records; Designers Guild v Russell plus 70 years. For works authored by joint authors, the copyright term
Williams; IPC Media v Highbury Publishing and Ravenscroft v Herbert. was extended to the life of the last surviving author plus 70 years. In the
However, rather disappointingly, it adds little to the existing law case of works-for-hire, anonymous or pseudonymous works, the term
concerning non-textual copying. Of particular interest is the courts was set at 95 years from the date of first publication, or 120 years from
willingness in principle to draw adverse inferences from the failure of a creation.
party to call a crucial witness without proper explanation for her
absence. The practical result of this was to prevent a number of works from
entering the public domain in 1998 and following years, as would have
occurred under the Copyright Law of 1976. Materials which the plaintiffs
had worked with and were ready to republish were now unavailable due
to copyright restrictions.

The lead petitioner, Eric Eldred, is an Internet publisher. Eldred was

joined by a group of commercial and non-commercial interests who
relied on the public domain for their work. These included Dover
Publications, a commercial publisher of paperback books; Luck's Music
Library, Inc., and Edwin F. Kalmus & Co., Inc., publishers of orchestral
sheet music; and a large number of amici including the Free Software
Foundation, the American Association of Law Libraries, the Bureau of
National Affairs, and the College Art Association.

Supporting the law were the U.S. government, represented by the

Attorney General in an ex officio capacity (originally Janet Reno, later
replaced by John Ashcroft), along with a set of amici including the Motion
Picture Association of America, the Recording Industry Association of
America, ASCAP and Broadcast Music Incorporated.

The issue at stake was the power of the federal government to

Eldred v. Ashcroft, 537 U.S. 186 (2003) extend the copyright on creative material such as songs, books
and movies. A copyright is the ownership rights of the person or
This was a decision by the Supreme Court of the United States upholding organization who creates something.
the constitutionality of the 1998 Sonny Bono Copyright Term Extension
Act (CTEA). Ruling of the courts:

Facts and issue: District court

The Sonny Bono Copyright Term Extension Act (or CTEA) extended The original complaint was filed in the United States District Court for
existing copyright terms by an additional 20 years from the terms set by the District of Columbia on January 11, 1999. The plaintiffs' argument
the Copyright Act of 1976. The law affected both new and existing works was threefold:
(making it both a prospective extension as well as a retroactive one).
Specifically, for works published before January 1, 1978 and still in That by retroactively extending copyright terms, Congress had violated
copyright on October 27, 1998, the term was extended to 95 years. For the requirements of the Constitution's Copyright Clause, which gives
works authored by individuals on or after January 1, 1978 (including new Congress the following power:
works), the copyright term was extended to equal the life of the author
"To promote the Progress of Science and useful Arts, by securing for those made in the district court, except for those regarding the public
limited Times to Authors and Inventors the exclusive Right to their trust doctrine, which were not included in the appeal.
respective Writings and Discoveries"
Instead, the plaintiffs extended their argument on the copyright clause
Plaintiffs argued that by reading this formulation so as to allow for any to note that the clause requires Congress to "promote the Progress of
number of retroactive extensions, Congress could in practice guarantee Science and useful Arts," and argued that retroactive extensions do not
an unlimited period of copyright protection, thus thwarting the intent of directly serve this purpose in the standard quid pro quo previously
the clause. required by the courts.

That any copyright law must be subject to scrutiny under the First The case was decided on February 16, 2001. The appeals court upheld
Amendment, thereby ensuring a balance between freedom of speech the decision of the district court in a 2-1 opinion. In his dissent, Judge
and the interests of copyright. David Sentelle agreed with the plaintiffs that CTEA was indeed
unconstitutional based on the "limited Times" requirement. Supreme
That the doctrine of public trust requires the government to show a Court precedent, he argued, held that one must be able to discern an
public benefit to any transfer of public property into private hands, and "outer limit" to a limited power; in the case of retrospective copyright
that the CTEA violates this doctrine by withdrawing material from the extensions, Congress could continue to extend copyright terms
public domain. indefinitely through a set of limited extensions, thus rendering the
"limited times" requirement meaningless.
In response, the government argued that Congress does indeed have
the latitude to retroactively extend terms, so long as the individual Following this ruling, plaintiffs petitioned for a rehearing en banc (in
extensions are also for "limited times," as required by the Constitution. front of the full panel of nine judges). This petition was rejected, 72,
As an argument for this position, they referred to the Copyright Act of with Judges Sentelle and David Tatel dissenting.
1790, the first Federal copyright legislation, which applied Federal
protection to existing works. Furthermore, they argued, neither the First Supreme Court
Amendment nor the doctrine of public trust is applicable to copyright
cases. On October 11, 2001, the plaintiffs filed a petition for certiorari to the
Supreme Court of the United States. On February 19, 2002, the Court
On October 28, 1999, Judge June Green issued a brief opinion rejecting granted certiorari, agreeing to hear the case.
all three of the petitioners' arguments. On the first count, she wrote that
Congress had the power to extend terms as it wished, as long as the Oral arguments were presented on October 9, 2002. Lead counsel for
terms themselves were of limited duration. On the second count, she the plaintiff was Lawrence Lessig; the government's case was argued by
rejected the notion of First Amendment scrutiny in copyright cases, Solicitor General Theodore Olson.
based on her interpretation of Harper and Row Publishers, Inc., v. Nation
Enterprises, an earlier Supreme Court decision. On the third count, she Lessig focused the Plaintiffs' brief to emphasize the Copyright clause
rejected the notion that public trust doctrine was applicable to copyright restriction, as well as the First Amendment argument from the Appeals
law. case. The decision to emphasize the Copyright clause argument was
based on both the minority opinion of Judge Sentelle in the appeals
Court of Appeals court, and on several recent Supreme Court decisions authored by Chief
Justice William Rehnquist: United States v. Lopez (1996) and United
The plaintiffs appealed the decision of the district court to the United States v. Morrison (2000).
States Court of Appeals for the District of Columbia Circuit, filing their
initial brief on May 22, 2000, and arguing the case on October 5 of the In both of those decisions, Rehnquist, along with four of the Court's more
same year in front of a three-judge panel. Arguments were similar to conservative justices, held Congressional legislation unconstitutional,
because that legislation exceeded the limits of the Constitution's
Commerce clause. This profound reversal of precedent, Lessig argued, grandchildren will receive royalties. With regard to retroactive copyright
could not be limited to only one of the enumerated powers. If the court extension, he viewed it foolish to apply the government's argument that
felt that it had the power to review legislation under the Commerce income received from royalties allows artists to produce more work
clause, Lessig argued, then the Copyright clause deserved similar saying, "How will extension help todays Noah Webster create new works
treatment, or at very least a "principled reason" must be stated for 50 years after his death?".
according such treatment to only one of the enumerated powers.
In a separate dissenting opinion, Justice Stevens also challenged the
On January 15, 2003, the Court held the CTEA constitutional by a 72 virtue of an individual reward, analyzing it from the perspective of
decision. The majority opinion, written by Justice Ginsburg, relied heavily patent law. He argued that the focus on compensation results only in
on the Copyright Acts of 1790, 1831, 1909, and 1976 as precedent for frustrating the legitimate members of the public who want to make use
retroactive extensions. One of the arguments supporting the act was the of it (a completed invention) in a free market. Further, the compelling
life expectancy has significantly increased among the human population need to encourage creation is proportionally diminished once a work is
since the 18th century, and therefore copyright law needed extending as already created. Yet while a formula pairing commercial viability to
well. However, the major argument for the act that carried over into the duration of protection may be said to produce more economically
case was that the Constitution specified that Congress only needed to efficient results in respect of high technology inventions with shorter
set time limits for copyright, the length of which was left to their shelf-lives, the same perhaps cannot be said for certain forms of
discretion. Thus, as long as the limit is not "forever," any limit set by copyrighted works, for which the present value of expenditures relating
Congress can be deemed constitutional. to creation depend less on scientific equipment and research and
development programs and more on unquantifiable creativity.
A key factor in the CTEAs passage was a 1993 European Union (EU)
directive instructing EU members to establish a baseline copyright term Lessig expressed surprise that no decision was authored by Chief Justice
of life plus 70 years and to deny this longer term to the works of any Rehnquist or by any of the other four justices who supported the Lopez
non-EU country whose laws did not secure the same extended term. By or Morrison decisions. Lessig later expressed regret that he based his
extending the baseline United States copyright term, Congress sought to argument on precedent rather than attempting to demonstrate that the
ensure that American authors would receive the same copyright weakening of the public domain would cause harm to the economic
protection in Europe as their European counterparts. health of the country.

The Supreme Court declined to address Lessig's contention that Lopez

and Morrison offered precedent for enforcing the Copyright clause, and
instead reiterated the lower court's reasoning that a retroactive term
extension can satisfy the "limited times" provision in the copyright
clause, as long as the extension itself is limited instead of perpetual.
Furthermore, the Court refused to apply the proportionality standards of
the Fourteenth Amendment or the free-speech standards in the First
Amendment to limit Congress's ability to confer copyrights for limited
terms.

Justice Breyer dissented, arguing that the CTEA amounted to a grant of

perpetual copyright that undermined public interests. While the
constitution grants Congress power to extend copyright terms in order to
"promote the progress of science and useful arts," CTEA granted
precedent to continually renew copyright terms making them virtually
perpetual. Justice Breyer argued in his dissent that it is highly unlikely
any artist will be more inclined to produce work knowing their great-
 Held:
No. Publication of parts of a work soon to be published does not qualify
as fair use. The idea behind the fair use doctrine as it was framed in the
common law was that one using a copyrighted work should not have to
get a copyright holders permission to use the copyrighted work in a
case where a reasonable copyright holder would in fact grant
permission. Section 107 of the Copyright Act, which codified the
doctrine, expressly noted in its legislative history that it was not meant
to change the common law. As for reasonableness, it is not reasonable
to expect a copyright holder to let another person scoop it by
Doctrine: Publication of parts of a work soon to be published publishing his material ahead of time. Regarding the language of 107,
does not qualify as fair use. the section lists four points to consider in applying the doctrine. The two
factors most relevant here are purpose of the use and effect on the
HARPER VS. NATION ENTERPRISES market. Usually, a fair use will not be one of economic competition with
471 US 539 the copyright holder, which is exactly what prior publication of a
May 20, 1985 copyrighted work is. In addition, the effect on the market of such a use
OConnor, J. is shown by what happened here: it greatly decreases the market value
of the copyrighted work. Therefore, the conclusion in this case, and in
Nature of case: almost all cases, is that prior publication of a work pending publication
Certiorari to the United States Court of Appeals for the Second Circuit will not be a fair use. Reversed.

Brief of case: The common law doctrine of fair use is well established. The Supreme
Nation Enterprises (Defendant) argued that its use of quotes from a yet- Court recognized the doctrine as early as 1841. In Folsom v. Marsh, 9 F.
unpublished set of memoirs constituted fair use. Cas. 342 (1841), Justice Story allowed use of quotes by a reviewer as a
fair use. A major application of the doctrine remains to be the use of
Facts: quotes in criticism of a work.
Harper & Row Publishers, Inc. (Harper) (Plaintiff) obtained the rights to
publish President Fords memoirs, A Time to Heal. Time magazine
contracted for the rights to preview the work immediately before
publication. Before the publication of the article by Time magazine,
Nation Enterprises (Defendant), publisher of The Nation magazine, got a
copy of the Ford manuscript. The Nation published an article that
quoted the manuscript about the Nixon pardon. Time then choose not to
use the article as planned and canceled its contract with Harper
(Plaintiff). Plaintiff sued Defendant for copyright infringement. The
district court awarded damages for infringement. The Second Circuit
reversed, holding Nation Enterprises (Defendant) use to be a fair use
under 17 U.S.C.107. The United States Supreme Court granted
certiorari.

Issue:
Does publication of parts of a work soon to be published qualify as fair
use?
 Ruling:
No. Inference of access giving rise to copyright infringement may not be
based on mere conjecture, speculation or a bare possibility of access.
The judges conclusions that there was no more than a bare possibility
that Gibbs could have had access to Selles song and that this was an
insufficient basis from which the jury could have reasonably inferred the
existence of access seem correct. Although proof of striking similarity
may permit an inference of access, Selle must still meet some minimum
threshold of proof which demonstrates that the inference of access is
reasonable. In this case, the availability of Selles song was virtually de
minimis. In order to bolster the experts conclusion that independent
creation was not possible, there should be some testimony or other
evidence of the relative complexity or uniqueness of the two
compositions. The evidence of striking similarity was not sufficiently
Doctrine: To establish a claim of copyright infringement of a musical compelling to make the case when the proof of access must otherwise
composition, the plaintiff must prove ownership of a copyright, depend largely upon speculation and conjecture.
originality of the work, copying of the work by the defendant, and a
substantial degree of similarity between the two works. If the plaintiff
presents evidence of striking similarity sufficient to raise an inference of
access, then copying is presumably proved simultaneously. 3. METRO-GOLDWYN-MAYER V. AMERICAN HONDA MOTOR CO.

SELLE VS. GIBB Facts:

741 F.2d 896 In 1992, Honda's advertising agency Rubin Postaer came up with a new
concept to sell the Honda del Sol convertible with its detachable rooftop.
Facts: For what was to become the commercial at issue, Rubin Postaer vice-
Selle composed a song in 1975 and obtained a copyright for it later that president Gary Yoshida claims that he was initially inspired by the climax
year. He played his song with his small band two or three times in scene in "Aliens," wherein the alien is ejected from a spaceship still
Chicago and sent a tape of the music to eleven music recording and clinging onto the spacecraft's door. From there, Yoshida and coworker
publishing companies. Eight of the companies returned the materials Robert Coburn began working on the storyboards for the "Escape"
and three did not respond. When Selle heard the Bee Gees song How commercial. As the concept evolved into the helicopter chase scene, it
Deep is Your Love in 1978, he thought he recognized the music as his acquired various project names, one of which was "James Bob," which
own, although the lyrics were different. When Selle sued for Yoshida understood to be a play on words for James Bond. Yoshida Depo.
infringement, Gibb and the Bee Gees presented testimony that they had at 45. In addition, David Spyra, Honda's National Advertising Manager,
independently composed their song. Although Selle presented evidence testified the same way, gingerly agreeing that he understood "James
that the two songs were substantially similar, there was no direct Bob to be a pun on the name James Bond."
evidence of access. The jury returned a verdict in Selles favor on the
issue of liability in a bifurcated trial. The district court judge granted While the commercial was initially approved by Honda in May 1992, it
Gibbs motion for judgment notwithstanding the verdict and in the was put on hold because of financing difficulties. Actual production for
alternative for a new trial. Selle appealed. the commercial did not begin until after July 8, 1994, when Honda
reapproved the concept. Defendants claim that, after the initial May
Issue: 1992 approval, they abandoned the "James Bob" concept, whiting out
Whether inference of access giving rise to copyright infringement be "James" from the title on the commercial's storyboards because of the
based on mere conjecture, speculation or bare possibility of access. implied reference to "James Bond." However, MGMs dispute this
assertion, pointing to the fact that when casting began on the project in Yes
the summer of 1994, the casting director specifically sent requests to Yes
talent agencies for "James Bond"-type actors and actresses to star in
what conceptually could be "the [*1292] next James Bond film." Ratio:
The required showing of likelihood of success on the merits is examined
With the assistance of the same special effects team that worked on in the context of injuries to the parties and the public, and is not
Arnold Schwarzenegger's "True Lies," Defendants proceeded to create a reducible to a mathematical formula. To satisfy the "merits" prong of the
sixty- and thirty-second version of the Honda del Sol commercial at preliminary injunction standard, MGM must show a "reasonable
issue: a fast-paced helicopter chase scene featuring a suave hero and an probability," at one end of the spectrum, or "fair chance," on the other,
attractive heroine, as well as a menacing and grotesque villain. of success on the merits. Of course, a lesser showing of probability of
success requires a greater showing of harm, and vice-versa.
THE ESCAPE COMMERCIALpremiered last October 1994; Escape
commercial features a young, well-dressed couple in a Honda del Sol A claim for copyright infringement requires that the MGM prove (1) its
being chased by a high-tech helicopter; a grotesque villain with metal- ownership of the copyright in a particular work, and (2) the defendant's
encased arms jumps out of the helicopter onto the car's roof, copying of a substantial, legally protectable portion of such work. "An
threatening harm; with a flirtatious turn to his companion, the male author can claim to 'own' only an original manner of expressing ideas or
driver deftly releases the Honda's detachable roof (which Defendants an original arrangement of facts." The MGM need only show that the
claim is the main feature allegedly highlighted by the commercial), defendant copied the protectable portion of its work to establish a prima
sending the villain into space and effecting the couple's speedy get- facie case of infringement.
away)
Infringement
The commercial was aired in 1994 but was still not cleared for major After identifying the scope of Plaintiffs' copyrightable work, the Court
network. When MGM viewed the film, they demanded that Honda pull must focus on whether Defendants copied Plaintiffs' work. Since direct
the commercial off the air but the latter refused. Thus, MGM filed this evidence of actual copying is typically unavailable, the plaintiff may
action. demonstrate copying circumstantially by showing: (1) that the
On January 15, 1995, in an effort to accommodate MGMs demands defendant had access to the plaintiff's work, and (2) that the
without purportedly conceding liability, Defendants changed their defendant's work is substantially similar to the plaintiff's.
commercial by: (1) altering the protagonists' accents from British to
American; and (2) by changing the music to make it less like the horn-
driven James Bond theme. This version of the commercial was shown There is Access
during the Superbowl, allegedly the most widely viewed TV event of the To demonstrate access, the plaintiff must show that the defendant had
year. "an opportunity to view or to copy plaintiff's work." Access may not be
inferred through mere "speculation or conjecture." There must be a
Issue/s: reasonable possibility to view plaintiff's work, not just a bare possibility.
1. Whether American Honda Motor Co. and advertising agency Rubin
Postaer & Assoc. violated MGMs copyrights to 16 James Bond films and The Court notes that: (1) Yoshida's admission that he has at least viewed
the exclusive intellectual property rights to James Bond character and portions of the James Bond films on television; (2) the "Honda man's"
films through defendants recent commercial for its Honda del Sol having been referred to as "James Bob"; and (3) the casting director's
automobile (infringement) desire to cast "James Bond"-type actors and actresses, are factors
2. Whether film scenes are copyrightable sufficient to establish Defendants' access to Plaintiffs' work. Moreover,
3. Whether James Bond is copyrightable the sheer worldwide popularity and distribution of the Bond films allows
the Court to indulge a presumption of access.
Held:
Yes There is Substantial Similarity
The Ninth Circuit has established a two-part process for determining think of James Bond when viewing the Honda commercial, even with the
"substantial similarity" by applying both the "extrinsic" and "intrinsic" subtle changes in accent and music.
tests. "THE [KROFFT] TEST permits a finding of infringement only if a
plaintiff proves both substantial similarity of general ideas under the Independent Creation
'extrinsic test' and substantial similarity of the protectable expression of After the plaintiff has satisfied both the "access" and "substantial
those ideas under the 'intrinsic test.'" This "idea-expression" dichotomy similarity" prongs of the test, the burden then shifts to the defendant to
is particularly elusive to courts and the substantial similarity test show that the defendant's work was not a copy but rather was
necessarily involves decisions made on a case-by-case basis. independently created.

The "extrinsic" test compares specific, objective criteria of two works on Fair Use Doctrine
the basis of an analytic dissection of the following elements of each Finally, as a separate defense to copyright infringement, Defendants
work -- plot, theme, dialogue, mood, setting, pace, characters, and claim that their use of Plaintiffs' work is protected under the fair use
sequence of events. doctrine, which protects parodies, for example. Under the Supreme
Court's recent decision in Campbell v. Acuff-Rose Music, Inc, 114 S. Ct.
Viewing Plaintiffs' and Defendants' videotapes and examining the 1164 (1994), a subsequent work may not infringe on an original upon
experts' statements, Plaintiffs will likely prevail on this issue because examining the following four-prong statutory factors: (1) the purpose
there is substantial similarity between the specific protected elements of and character of the use, including whether such use is of a commercial
the James Bond films and the Honda commercial: (1) the theme, plot, nature or is for nonprofit educational [*1300] purposes; (2) the nature of
and sequence both involve the idea of a handsome hero who, along with the copyrighted work; (3) the amount and substantiality of the portion
a beautiful woman, lead a grotesque villain on a high-speed chase, the used in relation to the copyrighted work as a whole; and (4) the effect of
male appears calm and unruffled, there are hints of romance between the use on the potential for, or value of, the copyrighted work. The Court
the male and female, and the protagonists escape with the aid of shall analyze each factor in turn below.
intelligence and gadgetry; (2) the settings both involve the idea of a
high-speed chase with the villain in hot pursuit; (3) the mood and pace MGM's Ownership Of The Copyrights [MGM satisfied the ownership
of both works are fast-paced and involve hi-tech effects, with loud, prong of the test]
exciting horn music in the background; (4) both the James Bond and MGM claim that the Honda commercial: (1) "infringes MGMs' copyrights
Honda commercial dialogues are laced with dry wit and subtle humor; in the James Bond films by intentionally copying numerous specific
(5) the characters of Bond and the Honda man are very similar in the scenes from the films;" and (2) "independently infringes MGMs'
way they look and act -- both heroes are young, tuxedo-clad, British- copyright in the James Bond character as expressed and delineated in
looking men with beautiful women in tow and grotesque villains close at those films."
hand; moreover, both men exude uncanny calm under pressure, exhibit
a dry sense of humor and wit, and are attracted to, and are attractive to, Neither side disputes that MGMs own registered copyrights to each of
their female companions. the sixteen films which MGMs claim "define and delineate the James
The "intrinsic" test asks whether the "total concept and feel" of the two Bond character." However, Defendants argue that because MGMs have
works is also substantially similar. This is a subjective test that requires not shown that they own the copyright to the James Bond character in
a determination of whether the ordinary reasonable audience could particular, MGMs cannot prevail. Specifically, Defendants claim that
recognize the Defendants' commercial as a picturization of Plaintiffs' James Bond has appeared in two films in which MGMs hold no copyright
copyrighted work. -- "Casino Royale" and "Never Say Never Again" and therefore, MGMs
cannot have exclusive rights to the James Bond character.
Because this is a subjective determination, the comparison during the
intrinsic test is left for the trier of fact. This would involve showing the It appears that Honda misconstrue MGM's claim. First, MGM do not
Honda commercial to the members of the jury so that they may allege that Honda have violated MGMs copyright in the James Bond
compare the same with the sixteen Bond films at issue. Viewing the character itself, but rather in the James Bond character as expressed
evidence, it appears likely that the average viewer would immediately and delineated in MGMs' sixteen films. To the extent that copyright law
only protects original expression, not ideas, MGMs' argument is that the
James Bond character as developed in the sixteen films is the Balance of Relative Harms
copyrighted work at issue, not the James Bond character generally. It is well-settled in this circuit that once a copyrightholder has shown a
Second, there is sufficient authority for the proposition that a MGM who likelihood of success on the merits based on access and substantial
holds copyrights in a film series acquires copyright protection as well for similarity, irreparable injury is presumed, warranting a preliminary
the expression of any significant characters portrayed therein. And third, injunction. Irreparable injury is presumed because the copyright owner's
the Sam Spade case, 216 F.2d at 949-50, on which Honda rely, is right to exploit its work is unique.
distinguishable on its facts because Sam Spade dealt specifically with
the transfer of rights from author to film producer rather than the As discussed above, Plaintiffs have established a likelihood of success on
copyrightability of a character as developed and expressed in a series of the merits and therefore, the Court presumes irreparable injury.
films. Moreover, the Court notes that Plaintiffs have shown they have been
specifically harmed by the continued airing of Defendants' commercial in
What Elements Of MGMs' Work Are Protectable Under Copyright Law two ways:
(1) prolonged lost licensing revenue (purportedly in the millions of
Whether film scenes are copyrightable dollars); and
Based on MGMs' experts' greater familiarity with the James Bond films, (2) dilution of the copyrights' long-term value. The latter is especially
as well as a review of MGMs' James Bond montage and defense expert true given Plaintiffs' own deal with BMW for a special movie tie-in in
Needham's video montage of the "action/spy" genre films, it is clear that conjunction with Plaintiffs' release of the first James Bond movie in six
James Bond films are unique in their expression of the spy thriller idea. A years, "Goldeneye" -- a fact undisputed by Defendants.
filmmaker could produce a helicopter chase scene in practically an
indefinite number of ways, but only James Bond films bring the various Indeed, the Court can very well imagine that a majority of the public,
elements Casper describes together in a unique and original way. upon viewing the Honda commercial and a future BMW ad, would come
to the conclusion that James Bond was endorsing two automobile
Whether James Bond character is copyrightable companies. Such a scenario would drastically decrease the long-term
Reviewing the evidence and arguments, the Court believes that James value of Plaintiffs' James Bond franchise.
Bond is more like Rocky than Sam Spade -- in essence, that James Bond
is a copyrightable character under either the Sam Spade "story being
told test" or the Second Circuit's "character delineation" test. Like Rocky,
Sherlock Holmes, Tarzan, and Superman, James Bond has certain
character traits that have been developed over time through the sixteen
films in which he appears. Contrary to Defendants' assertions, because
many actors can play Bond is a testament to the fact that Bond is a
unique character whose specific qualities remain constant despite the
change in actors. Indeed, audiences do not watch Tarzan, Superman,
Sherlock Holmes, or James Bond for the story, they watch these films to
see their heroes at work. A James Bond film without James Bond is not a
James Bond film. Moreover, as discussed more specifically below, the
Honda Man's character, from his appearance to his grace under
pressure, is substantially similar to Plaintiffs' Bond.

Accordingly, the Court concludes that Plaintiffs will probably succeed on

their claim that James Bond is a copyrightable character [*1297] under
either the "story being told" or the "character delineation" test.
 Chief Justice Warren E. Burger wrote the decision, and was joined by
Potter Stewart, Harry Blackmun, William Rehnquist and John Paul
Stevens.
DIAMOND VS CHAKRABARTY
Burger wrote that the question before the court was a narrow one the
Nature of the Case: interpretation of 35 U.S.C. 101, which says:

Chakrabarty (applicant) filed a patent application that claimed, among Whoever invents or discovers any new and useful process,
other things, a living microorganism (a bacteria that eats oil) which was machine, manufacture, or composition of matter, or any new and useful
rejected by the patent examiner as being outside of the scope of improvement thereof, may obtain a patent therefore, subject to the
patentable subject matter under 35 U.S.C. 101. Diamond (petitioner), conditions and requirements of this title. He wrote that: We have
the Commissioner of Patents, sought a writ of certiorari to the United cautioned that courts should not read into the patent laws limitations
States Supreme Court, which was granted. and conditions which the legislature has not expressed. Regarding the
Facts scope of the original legislation, he wrote: In choosing such expansive
terms as manufacture and composition of matter modified by the
Genetic engineer Ananda Mohan Chakrabarty, working for General comprehensive any, Congress plainly contemplated that the patent
Electric, had developed a bacterium capable of breaking down crude oil, laws would be given wide scope. Finding that Congress had intended
which he proposed to use in treating oil spills. He requested a patent for patentable subject matter to include anything under the sun that is
the bacterium in the United States but was turned down by a patent made by man, he concluded that: Judged in this light, respondents
examiner, because the law dictated that living things were not micro-organism plainly qualifies as patentable subject matter. His claim
patentable. isto a nonnaturally occurring manufacture or composition of matter a
product of human ingenuity.
The Board of Patent Appeals and Interferences agreed with the original
decision; however, the United States Court of Customs and Patent
Appeals overturned the case in Chakrabartys favor, writing that the
fact the micro-organisms are alive is without legal significance for
purposes of the patent law. Sidney A. Diamond, Commissioner of
Patents and Trademarks, appealed to the Supreme Court.

The Supreme Court case was argued on March 17, 1980 and decided on
June 16, 1980.

Decision

In a 5-4 ruling, the court ruled in favor of Chakrabarty, and upheld the
patent, holding that:

A live, human-made micro-organism is patentable subject matter

under 35 U.S.C. 101. Respondents micro-organism constitutes a
manufacture or composition of matter within that statute.

Ruling
 patent is invalid (Count II), and that the assignment of the 129 patent
from Esposito is invalid (Count III). Laramis amended complaint also
includes claims under section 43(a) of the Lanham Act, (a), and common
law for damages arising from defendants alleged false accusations of
patent and trademark infringement (Counts IVVII). TTMP
counterclaimed for infringement of the 129 patent.

Issue:
TOPIC: INTELLECTUAL PROPERTY Whether or not SUPER SOAKER infringes the 129 patent

LARAMI CORPORATION, Plaintiff, v. Alan AMRON and Talk to Me Products, Held:

Inc., Defendants A patent holder can seek to establish patent infringement in either of
two ways: by demonstrating that every element of a claim (1) is literally
Facts: infringed or (2) is infringed under the doctrine of equivalents. To put it a
This is a patent case concerning toy water guns manufactured by different way, because every element of a claim is essential and
plaintiff Larami Corporation (Larami) who filed a motion for partial material to that claim, a patent owner must, to meet the burden of
summary judgment of noninfringement of United States Patent No. establishing infringement, show the presence of every element or its
4,239,129 (the 129 patent). substantial equivalent in the accused device. If even one element of a
patents claim is missing from the accused product, then there can be
Larami manufactures a line of toy water guns called SUPER SOAKERS. no infringement as a matter of law
This line includes five models: SUPER SOAKER 20, SUPER SOAKER 30,
SUPER SOAKER 50, SUPER SOAKER 100, and SUPER SOAKER 200. All use 1. Literal Infringement of Claim 1
a hand-operated air pump to pressurize water and a pinch trigger
valve mechanism for controlling the ejection of the pressurized water Because the absence of even one element of a patents claim from the
and feature detachable water reservoirs prominently situated outside accused product means there can be no finding of literal infringement, I
and above the barrel of the gun. The United States Patent and find that SUPER SOAKER 20 does not infringe claim 1 of the 129 patent
Trademark Office has issued patents covering four of these models. as a matter of law. It is also important to note that TTMP expressly
Larami does not claim to have a patent which covers SUPER SOAKER 20. admitted in its answers to Laramis requests for admissions that claim 1
[of the 129 patent] is not literally infringed by any of the SUPER
Defendants Alan Amron and Talk To Me Products, Inc. (hereinafter SOAKER water guns. Laramis Reply in Support of its Motion for Partial
referred to collectively as TTMP) claim that the SUPER SOAKER guns Summary Judgment. Even in the absence of this admission, however,
infringe on the 129 patent which TTMP obtained by assignment from Larami would be entitled to summary judgment of noninfringement with
Gary Esposito (Esposito), the inventor. The 129 patent covers a water respect to claim 1.
gun which, like the SUPER SOAKERS, operates by pressurizing water
housed in a tank with an air pump and the pressure enables the water to 2. Infringement by Equivalents of Claim 10
travel out of the tank through a trigger-operated valve into an outlet
tube and to squirt through a nozzle. Unlike the SUPER SOAKERS, the To show infringement under the doctrine of equivalents, the patent
129 patent also contains various electrical features to illuminate the owner bears the burden of proving that the accused product has the
water stream and create noises. Also, the water tank in the 129 patent substantial equivalent of every limitation or element of a patent claim.
is not detachable, but is contained within a housing in the body of the Put another way, the patent owner must show that the accused product
water gun. performs substantially the same overall function or work, in
substantially the same way, to obtain substantially the same overall
Larami brought this action seeking a declaration that the SUPER result as the claimed invention. The doctrine of equivalents is used to
SOAKER does not infringe the 129 patent (Count I), that the 129 hinder the unscrupulous copyist who could otherwise imitate a
patented invention as long as [s/he] was careful not to copy every
inconsequential detail of the claimed inventions, or to make some
unimportant and insubstantial change to the claimed invention. The
doctrine is reserved for the exceptional case. As the U.S. Court of
Appeals for the Federal Circuit, recently stated: If the public comes to
believe (or fear) that the language of patent claims can never be relied
on, and that the doctrine of equivalents is simply the second prong of
every infringement charge, regularly available to extend protection
beyond the scope of the claims, then claims will cease to serve their
intended purpose. Competitors will never know whether their actions
infringe a granted patent. Thus, failure to produce evidence on any one
of a claims elements can result in a grant of summary judgment against
the patent owner on the infringement claim. For these reasons, the
Court ruled that there remains no genuine issue of material fact as to
whether SUPER SOAKERS 20, 30, 50, 100 and 200 infringe claim 10 of
the 129 patent under the doctrine of equivalents. In patent cases,
summary judgment is appropriate where the accused product does not
literally infringe the patent and where the patent owner does not muster
evidence that is sufficient to satisfy the legal standard for infringement TOPIC: INTELLECTUAL PROPERTY
under the doctrine of equivalents. Thus, and for the foregoing reasons,
Laramis motion for partial summary judgment of noninfringement of the Qualitex Co. v. Jacobson Products Co. (93-1577), 514 U.S. 159
129 patent will be granted. (1995)

Facts:
The case grows out of petitioner Qualitex Company's use (since the
1950's) of a special shade of green gold color on the pads that it makes
and sells to dry cleaning firms for use on dry cleaning presses. In 1989
respondent Jacobson Products (a Qualitex rival) began to sell its own
press pads to dry cleaning firms; and it colored those pads a similar
green gold. In 1991 Qualitex registered the special green gold color on
press pads with the Patent and Trademark Office as a trademark.
Registration No. 1,633,711 (Feb. 5, 1991). Qualitex subsequently added
a trademark infringement count, to an unfair competition claim, in a
lawsuit it had already filed challenging Jacobson's use of the green gold
color.

Qualitex won the lawsuit in the District Court. But, the Court of Appeals
for the Ninth Circuit set aside the judgment in Qualitex's favor on the
trademark infringement claim because, in that Circuit's view, the
Lanham Act does not permit Qualitex, or anyone else, to register "color
alone" as a trademark.

Issue:
Whether or not the law recognizes the use of color alone as a trademark.
Held:
The court hold that there is no rule absolutely barring the use of color
alone, and thus, the judgment of the Ninth Circuit is reversed.

The Lanham Act gives a seller or producer the exclusive right to

"register" a trademark, and to prevent his or her competitors from using
that trademark. Both the language of the Act and the basic underlying
principles of trademark law would seem to include color within the
universe of things that can qualify as a trademark. It says that
trademarks "include any word, name, symbol, or device, or any
combination thereof."

A color is also capable of satisfying the requirement that a person use or

intend to use the mark to identify and distinguish the goods. Over time,
customers may come to treat a particular color as signifying a brand to
the extent that it develops a secondary meaning. There is no objection
to the use of color alone as a trademark, when that color has attained a
secondary meaning and therefore identifies and distinguishes a
particular brand. It is the source-distinguishing ability of a mark, and not
its status as a color, that permits it to provide a financial gain to a
producer and to provide a distinguishing feature for customers.

There is no objection to the use of color as a mark under the Mattel, Inc. MCA Records 296 F.3d 894 (9th Cir. 2002)
functionality doctrine of trademark law which prevents trademark law
from inhibiting legitimate competition by allowing a producer to control Brief Fact Summary. The music group Aqua recorded a song called
a useful product feature. A patent may be given for a limited time over Barbie Girl, on an MCA Records-produced (Defendant) album. The
new designs or functions, but after it expires, competitors are free to use manufacturer of the Barbie doll, Mattel, Inc. (Plaintiff), sued for
the innovation. A product feature is functional if exclusive use of the trademark infringement.
feature would put competitors at a significant non-reputation-related
disadvantage. Sometimes color does not play an essential role in the Synopsis of Rule of Law. The parody of a well-known product, where
products use or purpose and does not affect cost or quality, so the the product has assumed a role in society outside the protections
doctrine of functionality does not create an absolute bar to the use of offered under trademark law, is allowed as protected noncommercial
color alone as a mark. free speech under the First Amendment.

So, color can sometimes meet the basic requirements for use as a Facts. The Danish band Aqua, signed to the record label MCA Records,
trademark. It can be a symbol that distinguishes a companys goods and Inc. (MCA) (Defendant), produced a song on their Aquarium album
identifies their source, without serving any other significant function. entitled Barbie Girl. The song made it onto some Top 40 music charts.
The song consists of one band member impersonating the doll Barbie in
a high-pitched voice, while another band member pretends to be Ken,
who asks Barbie to go party. The doll, Barbie, has been a best-seller in
the United States for some time and has become an American cultural
icon. Mattel, Inc. (Plaintiff), the maker of the doll Barbie, brought suit for
trademark infringement. The lower court found for MCA (Defendant),
and Plaintiff now appeals that rulingthat Barbie Girl is a parody of because in no way does it suggest that it was produced by Mattel
Barbie and, therefore, is a nominative fair use of the product. The lower (Plaintiff). It is, therefore, outside the bounds protected by Plaintiffs
court also ruled that Defendants use of the term Barbie is not likely to trademark. Plaintiff further argues that, under the Federal Trademark
confuse consumers as to Plaintiffs affiliation with Barbie Girl or dilute Dilution Act (FTDA), Barbie Girl dilutes Barbie in two ways: (1) it
the Barbie trademark. tarnishes the dolls image because of the songs inappropriateness for
young girls, and (2) it diminishes Plaintiffs ability to identify and
Issue. Is the parody of a well-known product, where the product has distinguish its product. The FTDA is designed to protect the
assumed a role in society outside the protections offered under distinctiveness of a trademark. Under the FTDA, dilution is prevented if
trademark law, allowed as protected noncommercial free speech under the use of a famous product somehow dilutes the distinctive qualify of
the First Amendment? that famous trademark. Such use, however, is allowable if it falls under
one of three exceptionscomparative ads, news reports and
Held. (Kozniski, J.) Yes. The parody of a well-known product, where the commentary, or noncommercial use. It is undisputed by MCA
product has assumed a role in society outside the protections offered (Defendant) that Barbie Girl brings to mind Barbie the doll and that
under trademark law, is allowed as protected noncommercial free consumers may think of both the song and the doll when they hear the
speech under the First Amendment. Trademarks identify a manufacturer term Barbie or perhaps even only of the song. Clearly, the only viable
or sponsor of a good or service. For example, some trademarks, such as exception that Barbie Girl may fall under is the non-commercial use
Rolls Royce or Band-Aid, become so well known that they transcend their exception. The Courts test for noncommercial use is if the speech has a
original identifying purpose and become a part of societys collective purpose beyond a commercial transaction. In this case, Barbie Girl is
vocabulary (for instance, asking for a Band-Aid when one has a cut). At not purely commercial speech. While MCA (Defendant) does use
that point, where the product has transcended its original purpose, the Barbie the doll to sell the song, the song also parodies Barbie and
trademark assumes a role outside the bounds of trademark law. A humorously comments on the values that Aqua sees Barbie as
likelihood-of-confusion test must then be applied, balancing the representing. Barbie Girl has a meaning and function beyond a strictly
trademark owners rights with the publics expressive value interests. commercial use only and is, therefore, protected noncommercial speech
This test ensures that trademark rights do not encroach upon free under the FTDA. Affirmed.
speech rights protected by the First Amendment. There is no doubt that
the lyrics of Barbie Girl refer to Plaintiffs Barbie and Ken dolls, making
fun of the values that the band believes the Barbie doll represents.
Significantly, the song does not use Barbie, the doll, to make fun of
another subject matter, but makes fun of Barbie herself. The title,
Barbie Girl, does not explicitly mislead consumers as to its source