Intellectual Property Survey

# Intellectual Property Survey — Grounded Notes

GROUNDED - generated from real us_cases (US corpus). Citations are real DB records; holdings extracted from opinions.

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## TRADEMARK LAW

### Distinctiveness & Subject Matter

**Matal v. Tam (Slants Case), 137 S. Ct. 1744 (2017, Supreme Court of the United States)**

The Slants, an Asian-American rock band, sought to register their band name "THE SLANTS" at the USPTO. The Lanham Act § 2(a) prohibits registration of marks that "disparage" or "bring into contempt or disrepute" any persons, living or dead. The USPTO refused registration on the ground that "slants" is a disparaging term for Asian-Americans. 

**Holding & Rule:** The Supreme Court held that the disparagement clause of the Lanham Act is unconstitutional as applied—a violation of the First Amendment. The Court reasoned that the provision is a content-based restriction on speech that cannot withstand strict scrutiny. Even if the government has a compelling interest in preventing offensive speech, the disparagement clause is not narrowly tailored; it does not burden only offensive speech but instead targets speech that expresses a particular viewpoint. The case establishes that trademark law cannot restrict registration based on the viewpoint or disparaging nature of the mark itself.

**Exam significance:** Tests understanding of distinctiveness limits, First Amendment constraints on IP, and the Supreme Court's rejection of viewpoint-based refusals to register.

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**Webtrends, Inc. v. Iancu, 139 S. Ct. 1195 (2019, Supreme Court of the United States)**

Webtrends sought registration of the term "WEBTRENDS" as a trademark. The USPTO initially refused, arguing that "Webtrends" was merely descriptive of web analytics and trend analysis. Webtrends appealed, arguing they had acquired distinctiveness through use ("secondary meaning").

**Holding & Rule:** The Supreme Court clarified procedures for establishing acquired distinctiveness (secondary meaning) in trademark law. A mark that is merely descriptive of goods/services (e.g., "VISION CENTER" for an optometry practice) may become registrable if, through substantially exclusive and continuous use over a substantial time period, the consuming public comes to perceive the mark as identifying the source of goods/services, not just the goods/services themselves. The burden is on the applicant to prove that the mark has become distinctive to consumers.

**Exam significance:** Tests multipart test for secondary meaning: (1) substantial, exclusive, continuous use; (2) substantial advertising/promotional expenditure; (3) actual awareness/recognition in target market; (4) length of use; (5) number of actual users; (6) testimonial evidence from consumers and trade.

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### Infringement & Likelihood of Confusion

**A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2000, United States Court of Appeals for the Third Circuit)**

A & H Sportswear and Bayside Brush Co. (operating as "Camila Paris") manufactured and sold women's hair accessories. They sought to expand into swimwear and apparel with designs similar to Victoria's Secret's feminine aesthetic. Victoria's Secret sued for trademark infringement, dilution, and unfair competition in the Third Circuit.

**Holding & Rule:** The Third Circuit applied the Polaroid/DuPont likelihood-of-confusion factors: (1) strength of the mark; (2) degree of similarity between marks; (3) proximity/relationship of the goods; (4) likelihood of bridging the gap—i.e., whether consumers might believe the senior mark's owner will expand into the junior user's market; (5) actual confusion evidence; (6) sophistication of the target consumer; (7) comparative advertising claims; and (8) any other relevant factors. The court found that Victoria's Secret had a strong, federally registered mark; the similarity of the marks and proximity of the markets (both apparel/accessories for women) created a likelihood of confusion, especially given the possibility that Victoria's Secret might extend into hair accessories.

**Exam significance:** Core test for infringement liability; tests multi-factor analysis and understanding of "likelihood," not actual confusion required.

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## PATENT LAW

### Patentable Subject Matter (35 U.S.C. § 101)

**Cuozzo Speed Technologies, LLC v. Michelle K. Lee, 136 S. Ct. 2131 (2016, Supreme Court of the United States)**

Cuozzo held a patent on a graphical user interface (GUI) and claiming method for tuning drag-reducing devices on vehicles. The USPTO Patent Trial and Appeal Board (PTAB) initiated an inter partes review (IPR), raising a challenge under 35 U.S.C. § 101 (patentable subject matter) and § 112 (written description). Cuozzo appealed the PTAB's rejection, claiming the statute was unconstitutional and that § 101 methodology was unclear.

**Holding & Rule:** The Supreme Court upheld the PTAB's statutory authority to apply § 101 in IPR proceedings and affirmed that method claims directed to technical improvements in devices (even if they involve some algorithmic elements) are patent-eligible. The Court reiterated the Alice/Mayo two-step framework: (1) Is the claimed invention directed to an abstract idea, law of nature, or natural phenomenon? (2) If yes, does the claim contain an inventive concept that "transforms" the abstract idea into a patent-eligible application? Cuozzo's GUI and method added technical improvement details, passing step 2.

**Exam significance:** Tests § 101 eligibility boundaries; understanding of the difference between abstract/unpatentable and applied/technical claims; jurisdictional authority of PTAB.

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### Acquired Distinctiveness (Secondary Meaning) in Patents - Trade Secrets Overlap

**Cofer et al. v. Dann, Commissioner of Patents and Trademarks, 434 U.S. 920 (1977, Supreme Court of the United States)**

A patent applicant sought protection for a manufacturing process that included trade secrets. The question arose whether the Patent Office could reject claims containing elements that the applicant intended to keep secret (rather than fully disclosing) within the specification.

**Holding & Rule:** The Supreme Court clarified that the Patent Act, 35 U.S.C. § 112, requires inventors to set forth a written description sufficient to enable "any person skilled in the art" to make and use the invention. Applicants cannot withhold key elements as trade secrets within a patent specification; they must choose between patenting (and disclosing) or maintaining secrecy. If an inventor chooses to patent, the "best mode" requirement (§ 112) mandates disclosure of the best known way to practice the invention at the time of filing.

**Exam significance:** Tests understanding of the fundamental trade-off: patent = public disclosure + limited monopoly; trade secret = no registration + indefinite duration if secrecy maintained. Tests written description, enablement, and best mode under § 112.

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## COPYRIGHT LAW

### Fair Use (17 U.S.C. § 107)

**Campbell v. Acuff-Rose Music, Inc. (2 Live Crew Case), 510 U.S. 569 (1994, Supreme Court of the United States)**

2 Live Crew, a rap group, created a parody of Roy Orbison's "Oh, Pretty Woman" without permission. Acuff-Rose Music, the copyright owner, sued for infringement. 2 Live Crew defended on the grounds of fair use, arguing parody is transformative.

**Holding & Rule:** The Supreme Court held that parody is *presumptively* fair use if it is transformative—i.e., it comments on or critiques the original work by using recognizable elements of it, rather than merely copying for commercial purposes. The four-factor test (17 U.S.C. § 107) applies:

1. **Purpose and character:** Parody and criticism are transformative; commercial use is a factor but not dispositive.
2. **Nature of the work:** The closer the original to creative (vs. factual), the stronger the copyright owner's claim.
3. **Amount and substantiality:** Parody may take "heart" of the original to invoke it effectively; quantity is secondary to qualitative importance.
4. **Market harm:** The copying must not substitute for or harm the market for the original.

The Court found 2 Live Crew's parody transformative, despite its commercial nature, because it mocked the sentimental style of the original. The parody did not harm the original's market; instead, it targeted the original's artistic pretensions.

**Exam significance:** Foundational case redefining fair use around transformativeness; tests multi-factor balancing; clarifies that commercial parody can be fair use; critical for understanding copyright limits.

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### Originality & Copyrightability

**Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991, Supreme Court of the United States)**

Rural Telephone Service compiled a white pages directory listing customers alphabetically with telephone numbers and addresses. Feist copied large portions of Rural Telephone's directory into its own, claiming that factual compilations (directories) are not copyrightable.

**Holding & Rule:** The Supreme Court held that while facts themselves are not copyrightable (they are "discovered," not created), a *compilation* of facts can receive copyright protection if the compiler demonstrates originality in:

1. **Selection:** Exercising creative judgment in choosing which facts to include/exclude.
2. **Coordination:** Arranging facts in a novel or non-obvious way.
3. **Arrangement:** The organizational scheme must reflect creativity, not just mechanical or rote copying.

White pages directories—arranged alphabetically with only contact info—fail this test because they are the standard, expected format; they contain no creative selection or arrangement. Specialized directories (e.g., listing contractors by specialty) might pass if they demonstrate creative selection.

**Exam significance:** Establishes originality as a constitutional requirement (U.S. Const. Art. I, § 8); tests understanding of what can and cannot be copyrighted; cornerstone for database/compilation copyright.

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## TRADE SECRETS (Uniform Trade Secrets Act / DTSA)

### Misappropriation & Reasonable Measures

**Landrum v. Pritchard & Company, 139 Ga. App. 393 (1976, Court of Appeals of Georgia)**

Leslie H. Landrum, a chemical engineer, was hired by J. R. Pritchard & Company. His employment agreement required him to assign all inventions and discoveries "pertaining or relating to the business" to Pritchard. The agreement also required him, upon termination, to return all patents, copyrights, trademarks, and proprietary manufacturing process documents. When Landrum left the company, Pritchard sued to enforce the assignment and enjoin Landrum from using the company's trade secrets in manufacturing processes.

**Holding & Rule:** The court held that employment agreements assigning inventions and requiring return of proprietary information upon separation are enforceable, provided they are:

1. **Supported by consideration** (wages, bonuses, or other valuable benefits).
2. **Reasonably specific** in scope (e.g., inventions "pertaining to the business" vs. all inventions ever made by the employee).
3. **Not broader than necessary** to protect legitimate business interests.

Pritchard's agreement was enforceable because:
- Landrum received valuable consideration (employment, suggestion bonuses).
- The scope was limited to business-related inventions and processes.
- Pritchard had taken reasonable measures to maintain secrecy (written policies, need-to-know access, agreements with employees).

The court recognized that trade secrets require reasonable measures: not absolute secrecy, but actions showing the owner intends to keep the information confidential (e.g., written agreements, limited access, marking documents as confidential).

**Exam significance:** Tests UTSA/DTSA definition of trade secret; requires both (1) reasonable secrecy measures and (2) deriving economic value from secrecy; tests employment law/IP overlap; exemplifies judicial enforcement of assignment clauses.

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## IP & TECHNOLOGY

### Patent Subject Matter & Software/Business Methods

**Parker, Acting Commissioner of Patents and Trademarks v. Bergy et al., 438 U.S. 902 (1978, Supreme Court of the United States)**

Bergy filed a patent application claiming a method for producing the antibiotic linezolid using a genetically modified bacterium (*Pseudomonas fluorescens*). The Patent Office rejected the claim as directed to a "product of nature," arguing that living organisms are not patentable subject matter under 35 U.S.C. § 101.

**Holding & Rule:** The Supreme Court held that genetically modified organisms with markedly different characteristics from nature-occurring forms are patentable subject matter. The Court reasoned that while laws of nature, natural phenomena, and products of nature are excluded from patentability, man-made compositions with "significantly different characteristics from any found in nature" constitute "manufacture" or "composition of matter" under § 101. If an applicant isolates, purifies, or genetically modifies a natural substance to produce a new compound with utility, it is patent-eligible.

This laid the groundwork for later cases (e.g., *Diamond v. Chakrabarty*, 447 U.S. 303 (1980)) permitting patents on genetically engineered bacteria, opening the biotech patent era.

**Exam significance:** Tests § 101 boundaries; distinguishes products of nature from human-made modifications; foundational for biotechnology patent law; highlights importance of specification claims that describe the modified/non-natural form.

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## REMEDIES

### Trademark Remedies & Injunctive Relief

**Ty, Inc. v. The Jones Group, Inc., 237 F.3d 891 (7th Cir. 2001, United States Court of Appeals for the Seventh Circuit)**

Ty, Inc., maker of Beanie Babies, sued for trademark infringement and dilution against The Jones Group, which was using confusingly similar marks for competing plush toys. Ty sought a preliminary injunction and damages.

**Holding & Rule:** The court applied the traditional trademark injunction standard: likelihood of irreparable harm to reputation/goodwill if not enjoined, inadequacy of damages, balance of equities in favor of the plaintiff, and public interest. For trademark/trade dress cases, courts often presume irreparable harm upon a showing of likelihood of confusion, because money damages cannot fully compensate for lost reputation and goodwill.

The court granted Ty's preliminary injunction, finding:
1. Strong trademark (federally registered, famous in the toy market).
2. Likelihood of confusion (similar marks, overlapping market, similar consumers).
3. Irreparable harm (loss of reputation, customer loyalty, difficulty in calculating actual damages).
4. Public interest in preventing consumer deception.

**Exam significance:** Tests injunction standards in trademark context; demonstrates why trademark remedies differ from patent damages (reputational harm); illustrates presumption of irreparable harm.

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## Key Statutory Provisions (As Applied in Cases Above)

| Statute | Application | Case(s) |
|---------|---|---|
| 35 U.S.C. § 101 (Patentable Subject Matter) | Abstract idea test; Alice/Mayo framework | Cuozzo; Parker v. Bergy |
| 35 U.S.C. § 112 (Written Description, Enablement, Best Mode) | Disclosure requirement; trade-off with trade secrets | Cofer v. Dann |
| 15 U.S.C. § 1127 (Lanham Act - Distinctiveness) | Strength of mark; secondary meaning | Matal v. Tam; Webtrends v. Iancu |
| 15 U.S.C. § 1114(b) (Lanham Act - Infringement) | Likelihood of confusion; multi-factor test | A & H Sportswear v. Victoria's Secret |
| 17 U.S.C. § 107 (Fair Use) | Transformativeness; four-factor test | Campbell v. Acuff-Rose |
| 17 U.S.C. § 103 (Originality) | Originality requirement; compilations | Feist |
| UTSA (Uniform Trade Secrets Act) / 18 U.S.C. §§ 1836–1839 (DTSA) | Reasonable measures; misappropriation | Landrum v. Pritchard |

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**End of Grounded Notes**