INTELLECTUAL PROPERTY FOR THE

GENERAL PRACTITIONER

Sponsor: Young Lawyers Division CLE Credit: 1.0

Thursday, June 22, 2017 3:45 p.m. - 4:45 p.m. West Ballroom A-B

Owensboro Convention Center Owensboro, Kentucky

A NOTE CONCERNING THE PROGRAM MATERIALS

The materials included in this Kentucky Bar Association Continuing Legal Education handbook are intended to provide current and accurate information about the subject matter covered. No representation or warranty is made concerning the application of the legal or other principles discussed by the instructors to any specific fact situation, nor is any prediction made concerning how any particular judge or jury will interpret or apply such principles. The proper interpretation or application of the principles discussed is a matter for the considered judgment of the individual legal practitioner. The faculty and staff of this Kentucky Bar Association CLE program disclaim liability therefore. Attorneys using these materials, or information otherwise conveyed during the program, in dealing with a specific legal matter have a duty to research original and current sources of authority.

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TABLE OF CONTENTS The Presenter .................................................................................................................. i I. INTELLECTUAL PROPERTY SUBJECT MATTER ............................................ 1

A. Copyright.................................................................................................. 1 1. Idea/Expression ............................................................................ 2 2. Originality ..................................................................................... 2 3. Historical Facts ............................................................................. 4 4. Effect of Registration .................................................................... 5 5. Ownership Issues ......................................................................... 5 6. Duration of Copyright .................................................................... 6

B. Trademark ................................................................................................ 6 1. Policy Justification for Trademark Protection ................................ 7 2. Significance of Registration .......................................................... 7 3. Marks which are not Registrable ................................................... 8

a. Immoral or Scandalous Matter .......................................... 8 b. Deceptive Matter ............................................................... 9 c. Matter which may Disparage ............................................. 9 d. False Suggestion of Association ..................................... 10 e. Government Insignia ....................................................... 10 f. Personal Indicia .............................................................. 11 g. Confusing Similarity ........................................................ 11 h. Dilutive Marks ................................................................. 11 i. Descriptiveness ............................................................... 12 j. Deceptively Misdescriptive Terms ................................... 14 k. Surnames ....................................................................... 14

4. "Secondary Meaning" ................................................................. 14 5. "Presumption" of Secondary Meaning......................................... 16 6. Duration of Trademark ................................................................ 16

C. Patent .................................................................................................... 16 1. Novelty ....................................................................................... 17 2. Ownership Issues ....................................................................... 17 3. Duration of Patent Rights ............................................................ 18

D. Trade Secrets ........................................................................................ 18

II. INTELLECTUAL PROPERTY OFFENSES ....................................................... 19 A. Copyright Infringement ........................................................................... 19

1. Prima Facie Case ....................................................................... 20 2. Presumption of Copying ............................................................. 21 3. "Fair Use" ................................................................................... 21

B. Trademark Infringement: "Likelihood of Confusion" ................................ 22 1. Strength of Mark ......................................................................... 24 2. Relatedness of Goods or Services .............................................. 26 3. Similarity of Marks ...................................................................... 27 4. Evidence of Actual Confusion ..................................................... 28 5. Marketing Channels Used .......................................................... 29 6. Likely Degree of Purchaser Care ................................................ 29 7. Intent .......................................................................................... 30 8. Likelihood of Expansion of Product Lines ................................... 30

C. Trademark Dilution ................................................................................. 30 D. Patent Infringement ................................................................................ 32

1. Literal Infringement ..................................................................... 32 a. Step One: Interpretation of "Claims" ................................ 32 b. Step Two: Comparing the Claim to Accused Device ....... 34

2. Infringement by Equivalents ........................................................ 34 a. Two-tiered Test ............................................................... 34 b. Function/Way/Result ....................................................... 35 c. "Element-by-Element" Comparison ................................. 36

E. Trade Secret Misappropriation ............................................................... 38 1. The View in Kentucky: Pre-1900 – the "Dictum" ......................... 39 2. The Current Law in Kentucky ...................................................... 40

THE PRESENTER

Jack A. Wheat McBrayer, McGinnis, Leslie & Kirkland, PLLC

9300 Shelbyville Road, Suite 110 Louisville, Kentucky 40222

(502) 327-5400 jwheat@mmlk.com

JACK A. WHEAT is a member of McBrayer, McGinnis, Leslie & Kirkland, PLLC in Louisville and practices in the area of intellectual property law. He received his B.A. from Hanover College and his J.D. from the Louis D. Brandeis School of Law at the University of Louisville. Mr. Wheat is a member of the Louisville, Kentucky and American Bar Associations, International Trademark Association, and Litigation Counsel of America.

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INTELLECTUAL PROPERTY 101: A NON-SPECIALIST'S GUIDE TO THE BASICS OF

INTELLECTUAL PROPERTY LAW Jack A. Wheat

By definition, "intellectual property" involves products of one's intellect which, by law, can constitute "property." To encourage innovation and creativity, a "bundle of rights" are awarded for technological developments and other creative endeavors, including the right for a period of time to exclude others from directly profiting from the ingenuity of the developer of those materials. Much like a forbidden trespass, should a trade pirate seek to misappropriate the fruits of the another's intellectual labors, the law often deems such piracy as unlawful, that is to say, an "infringement" of an intellectual property right. I. INTELLECTUAL PROPERTY SUBJECT MATTER

A. Copyright

Copyright law is the vehicle through which an "Author" can obtain property rights associated with artistic or literary works. More specifically,

(a) Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories. (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying

music; (4) pantomimes and choreographic works; (5) pictorial, graphic and sculptural works; (6) motion pictures and other audiovisual works; and (7) sound recordings; and (8) architectural works (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work.

17 U.S.C. §102. (Emphasis added.) Assuming the work is within the categories of copyrightable material, the most significant requirements are that the work be "original" and that the work consist of something more than a generalized "idea."

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1. Idea/expression.

"The most fundamental axiom of copyright law is that '[n]o author may copyright his ideas.'" Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 344-45, 18 USPQ 2d 1275, 1277 (1991). Rather, the copyrightable subject matter is the specific manner in which the idea is "expressed." For instance, see Warner Bros., Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231, 222 USPQ 101 (2nd Cir. 1983), in which the owners of the "Superman" copyrights prosecuted an action relating to ABC's "The Greatest American Hero" television serial. Therein the Court held that the Superman copyrights did not protect the general idea of a flying, caped superhero, rather the copyright protection was limited to "the total concept and feel" of the copyrighted work. As noted therein:

Superman looks and acts like a brave, proud hero, who has dedicated his life to combating the forces of evil. Hinkley looks and acts like a timid, reluctant hero, who accepts his missions grudgingly and prefers to get on with his normal life. Superman performs his superhuman feats with skill, verve, and dash, clearly the master of his own destiny. Hinkley is perplexed by the superhuman powers his costume confers and uses them in bumbling, comical fashion. In the genre of superheroes, Hinkley follows Superman as, in the genre of detectives, Inspector Clouseau follows Sherlock Holmes.

Id. 222 USPQ at 110, 111.

2. Originality.

To be copyrightable, a work must be created by or for the copyright claimant or its predecessors in interest.

The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. [citation omitted.] Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possess at least 'some minimal degree of creativity.' [citation omitted.] To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, 'no matter how crude, humble or obvious' it might be. [citation omitted.]

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Feist, 499 U.S. at 345, 111 S.Ct. at 1287, 18 USPQ2d at 1278. (Emphasis added.) Although "originality" is required for a work to be copyrightable, "novelty" is not required. That is to say the work does not have to be the "first ever" of such a work. For instance, as also noted by the Supreme Court in the Feist case,

Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous not the result of copying. To illustrate, assume two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence copyrightable.

Id. Similarly, in recognizing the maxim of there being "nothing new under the sun"1 courts routinely hold that a work can be copyrightable even though loosely based upon a pre-existing work so long as the more recent work consists of something more than "trivial variations" of the pre-existing work. Perhaps the earliest and leading appellate case interpreting this requirement under the 1976 Act is Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 215 USPQ 745 (11th Cir. 1982). As noted therein:

The central requirement of copyright protection for a work is that the work must have an element of originality. 17 U.S.C. §102 (copyright protection extends to original works of authorship). Although the originality concept defies exact definition, courts generally agree that 'originality' for copyright purposes is something less than the novelty or uniqueness necessary for patent protection. [Citations omitted]. The test of originality variously has been characterized as 'modest', 'minimal' and 'a low threshold.' Perhaps the most firmly entrenched definition or originality, however, is that first formulated by the Second Circuit and later adopted by the former Fifth: All that is needed. . . is that the 'author' contributed more than a 'merely trivial' variation, something recognizably 'his own.' Originality in this context 'means little more than a prohibition of actual copying.' No matter how poor artistically the 'author's' addition, it is enough if it be his own.

Id. 215 USPQ at 748. However, as emphasized by the Supreme Court in the Feist case,

1 Ecclesiastes 1:9 (New Revised Standard Version).

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The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author.

Id.

3. Historical facts.

As the Supreme Court noted in the Feist case, "[n]o one may claim originality as to facts." Feist, 499 U.S. at 347, 18 USPQ2d at 1278.

The same is true of all facts – scientific, historical, biographical, and news of the day. '[T]hey may not be copyrighted and are part of the public domain available to every person.' [citation omitted.]

Id. at 499 U.S. 348, 18 USPQ2d 1279. However,

[f]actual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws.

Id. The same issue was addressed by the Supreme Court a few years earlier in Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 225 USPQ 1073 (1985), a case in which the Defendant was accused of infringing Gerald Ford's copyrighted memoirs. In addition to arguing that the publication was a lawful "fair use" infra, the Defendant contended that the memoirs constituted merely a reporting of historical factual data and since President Ford did not "create" the factual data, his memoirs were not copyrightable. Notwithstanding, the Supreme Court disposed of that argument fairly summarily noting that the copyright protected the manner in which President Ford "expressed" his recollection of the historical events such as his word choice, analysis of the historical data and marshalling of facts.

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4. Effect of registration.

Copyright protection subsists from the moment of creation of the copyrighted work and consequently, formal registration of the copyright is not a prerequisite to "protection." 17 U.S.C. §408(a). Kleier Advertising, Inc. v. Naegele Outdoor Advertising, Inc., 676 F.Supp. 140, 142, 6 USPQ2d 1051, 1053 (W.D. Ky. 1987). However, formal registration of the copyright is a procedural condition precedent to the institution of infringement litigation. 17 USC §411(a). Once a copyright has been registered, it is afforded a significant presumption of validity. See 17 U.S.C. §410(c), which provides as follows:

In any judicial proceedings the certificate of registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.

(Emphasis added.) Therefore, in most judicial proceedings the burden of proof rests with the alleged infringer to prove that the registration is invalid if such a defense is to be asserted.

5. Ownership issues.

The author of a copyrighted work, or the author's successor is the owner of a copyrighted work unless the work constitutes a "work made for hire." 17 U.S.C. §201.

A 'work made for hire' is – (1) a work prepared by an employee within the

scope of his or her employment [unless there is a written agreement providing otherwise (17 U.S.C. §201(b)]; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a sound recording, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a 'supplementary work' is a work

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prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwards, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an 'instructional text' is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

17 U.S.C. §101. (Emphasis added.) See Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989).

6. Duration of copyright.

In general, a copyright in a work created after January 1, 1978 endures for a period consisting of the life of the author plus seventy (70) years. For joint works, (two or more authors), the duration of the copyright is the life of the last surviving author plus seventy (70) years. 17 U.S.C. §302(b). For anonymous and pseudonymous works, if the author's identity is not registered with the Copyright Office, and "works made for hire" (defined, infra), the copyright duration is ninety-five (95) years from the first publication of the work, or 120 years from the date of creation of the work, whichever is earlier. 17 U.S.C. §302.

B. Trademark

In the United States, trademarks were originally protected by state law, first by common law, and now also by statute. The most recent version of the Model State Trademark Act, a major portion of which has been enacted into law in Kentucky defines a trademark as follows:

'Trademark' means any [1] word, name, symbol or device including, but not limited to, a distinctive package or container of any kind, or any combination of these [2] used by a person [3] to identify and distinguish the goods of that person, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown.

KRS 365.563(1). (Emphasis added.)

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Federal trademark law is set forth in the Lanham Act, 15 U.S.C. §1051 et seq. Somewhat similar to the Model State Trademark Act, the Lanham Act defines a "trademark" as follows:

The term 'trademark' includes any word, name, symbol or device, or any combination thereof — (1) used by a person, or (2) which a person has a bona fide intention to use in

commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

15 U.S.C. §1127. Whereas, trademarks are associated only with tangible "goods," marks utilized in association with "services" are protectable as "service marks." See KRS 365.563(2) and 15 U.S.C. §1127. 1. Policy justification for trademark protection.

In describing the public policy basis for protection of trademarks, Justice Stevens noted as follows:

The purpose underlying any trademark statute is two-fold. One is to protect the public so that it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get. Secondly, where the owner of a trade-mark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats. This is the well-established rule of law protecting both the public and the trade-mark owner.' [Citation omitted.]

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992) (Stevens, J., concurring) at n. 15.

2. Significance of registration.

A trademark need not be registered to be protectable. More specifically, Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a), as well as the common law, protect unregistered marks. See, e.g., Covington Inn Corp. v. White Horse Tavern, Inc., 445 S.W.2d 135, 163 USPQ 438 (Ky. 1969).

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However, the geographical scope of protection of unregistered marks is limited to the geographical market in which the products are sold under the mark or are generally known, plus possibly the trademark owner's "natural zone of expansion." Any broader geographical scope of protection for unregistered marks would only be available if the junior user's adoption of the same mark was in "bad faith." See, e.g., Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916); United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918); and 3 McCarthy on Trademarks and Unfair Competition, 3d Ed., §26.01 et seq. Also, a federal registration provides a presumption that the claimed matter does properly serve as a protectable mark. 15 U.S.C. §§1057(b) and 1115(a). Furthermore, once a federal registration has been in effect for five (5) years, the Registrant can obtain "incontestability" status which would foreclose many of the grounds for claiming that the mark is not protectable. 15 U.S.C. §§1065 and 1115(b).

3. Marks which are not registrable.

Certain marks are not registrable. More specifically, the Lanham Act and parallel provisions of the Model State Trademark Law2 provide that the following are not registrable:

a. Immoral or scandalous matter.

In denying registration for immoral or scandalous matter, 15 U.S.C. §1052(a) prohibits registration of matter which "would be offensive to public or individual sense or propriety or morality" or "lacking in taste, indelicate [or] morally crude." In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971). See also In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) ("Black Tail" as the name of an "adult entertainment" magazine featuring black women denied registration.); and In re Fox, 702 F.3d 633 (Fed. Cir. 2012) (descriptive term for a rooster-shaped chocolate sucker, a term which is also a slang reference for one participating in a sexual act held too offensive to be registered). The focus of this guideline according to the predecessor of the Court of Appeals for the Federal Circuit is as follows:

Whether or not the mark, including innuendo, is scandalous is to be ascertained from the standpoint of not

2 See for instance KRS 365.575.

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necessarily a majority, but a substantial composite of the general public.

In re McGinley, 660 F.2d 481, 211 USPQ 668, 673 (CCPA 1981).

Moreover, what was considered scandalous as a trademark or service mark twenty, thirty or fifty years ago may no longer be considered so, given the changes in societal attitudes. Marks once thought to be scandalous may now be thought merely humorous (or even quaint. . . . The point to be made here is that, in deciding whether a mark is scandalous under Section 2(a) [15 U.S.C. 1052(a)], we must consider that mark in the context of contemporary attitudes. [Citations omitted.]

In re Old Glory Condom Corp., 26 USPQ2d 1216, 1219 (TTAB 1993). That is to say, the test is whether the mark is a "threat to present-day public morals or sense of propriety." In re Thomas Laboratories, Inc., 189 USPQ 50, 52 (TTAB 1975).

b. Deceptive matter.

15 U.S.C. §1052(a) also provides that "deceptive" matter is not registrable. For instance, long ago, the Supreme Court held that one could not register a mark containing the word "patent" where the goods were not patented. Holzapfel's Compositions Co. v. Rahtjen's American Composition Co., 183 U.S. 1 (1901).

c. Matter which may disparage.

For trademark registration purposes, "disparagement" is defined as follows:

Disparagement is essentially violation of one's right of privacy – the right to be 'let alone' from contempt and ridicule. . . . The two elements of such a claim are (1) that the communication reasonably would be understood as referring to the plaintiff; and (2) that the communication is disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities.

Greyhound Corp. v. Both Worlds, Inc., 6 USPQ2d 1635, 1639 (TTAB 1988).

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d. False suggestion of association.

15 U.S.C. §1052(a) also specifies that no mark is registrable which "falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols. . . ." (Emphasis added). The test of whether a mark "falsely" suggests a forbidden association is as follows:

First we must ask if the name . . . is unmistakably associated with the person or institution seeking relief. . . . next we must ask whether the opposer is connected with the goods sold by applicant under the mark. Then we must determine whether a connection with opposer would be presumed by purchasers of applicant's goods when they see the mark used on the goods.

U.S. Navy v. United States Manufacturing Co., 2 USPQ2d 1254, 1259 (TTAB 1987) ("USMC" for "prostheses, fracture braces and orthopedic components"). See also In re National Intelligence Academy, 190 USPQ 570 (TTAB 1976) ("National Intelligence Academy"); In re Cotter & Company, 228 USPQ 202 (TTAB 1985) ("Westpoint" for firearms); University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) ("Notre Dame" for cheeses); and In re Horwitt, Doing Business as U.S. Health Club, 125 USPQ 145 (TTAB 1960) ("U.S. Health Club" for vitamins.)

e. Government insignia.

15 U.S.C. §1052(b) prohibits registration of the following: "[T]he flag or coat of arms or other insignia of the United States, or any state or municipality, or of any foreign nation, or any simulation thereof." Giving a narrow interpretation of the qualifying language "any simulation thereof," the United States Patent and Trademark Office does allow registration of "imagery" of a governmental flag holding as follows:

[W]hat Section 2(b) [15 U.S.C. 1052(b)] in fact prohibits is the registration of any flag design which deliberately imitates the flag of a particular country so closely that a viewer would not be likely to distinguish it from the actual flag.

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In re Waltham Watch Company, 179 USPQ 59 (TTAB 1973). See also In re Old Glory Condom Corp., 26 USPQ2d 1216, 1220 (TTAB 1993) ("this Office [the PTO] has registered many trademarks and service marks that include imagery of the American flag." (Emphasis added.))

f. Personal indicia.

The Lanham Act also prohibits registration of any mark which –

comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

15 U.S.C. §1052(c). (Emphasis added.)

g. Confusing similiarity.

Because marks need to be "distinctive" to be enforceable, a mark is not protectable if it is "likely to be confused" with a preexisting mark of another. More specifically, the Lanham Act provides that a mark is not registrable if it –

[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant to cause confusion, or to cause mistake, or to deceive.

15 U.S.C. §1052(d).

h. Dilutive marks.

An application to register a trademark or service mark may be refused on grounds that it is likely to dilute the distinctive quality of the "famous" mark of another. 15 U.S.C. §1125(c). Refusal on grounds of dilution requires a showing that the senior mark became famous before the later user commenced use of the allegedly dilutive mark. Dilution is available as a ground for refusal regardless of the presence or absence of actual or likely confusion, of

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competition, or of actual economic injury. 15 U.S.C. §1125(c). The level of fame required for likelihood of dilution is higher than for likelihood of confusion. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001). While likelihood of confusion fame "varies along a spectrum from very strong to very weak," dilution fame either exists or it does not exist. Id. See also Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1507 (TTAB 2005). A mark may have acquired sufficient public recognition and renown to be famous for purposes of likelihood of confusion without meeting the more stringent requirement for dilution fame. Toro Co. v. ToroHead Inc., 61 USPQ2d at 1170, citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 USPQ2d 1225, 1239 (1st Cir. 1998). In determining whether a mark or trade name is likely to cause dilution by blurring, the U.S. Patent and Trademark Office may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark.

7-Eleven Inc. v. Lawrence I. Wechsler, 83 USPQ2d 1715 (TTAB 2007).

i. Descriptiveness.

In an opinion written by the late Judge Meredith of the Western District of Kentucky sitting by designation, the Sixth Circuit noted that a mark is "descriptive" –

if it describes: the intended purposes, function or use of the goods [or services];

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the class of users of the goods [or services]; a desirable characteristic of the goods [or services]; or the end effect upon the user. [Citation omitted.] If the mark 'imparts information directly, it is descriptive'.... [Citation omitted.]

Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 594, 10 USPQ2d 1443, 1455 (6th Cir. 1989). The significance of "descriptiveness," as noted by the late Judge Edward Johnstone of the Western District of Kentucky is as follows:

The primary principle of trademark law is to allow the use of marks to distinguish one source of goods or services from another. The use of terms for solely descriptive purposes runs contra to this ultimate goal and serves to make unavailable words useful in describing all such similar goods or services. [Court's emphasis.]

Ashland Oil, Inc. v. Olymco, Inc., 905 F.Supp 409, 412 (W.D. Ky. 1984), aff'd 64 F.3d 662 (6th Cir. 1995) (emphasis added). Consequently, merely descriptive terms are not eligible for registration. See also 15 U.S.C. §1052(e). Similarly, "geographically descriptive" marks are not registrable. 15 U.S.C. §1052(e). For instance, as noted by the Sixth Circuit,

Where it is determined that a mark as perceived by potential purchasers describes the geographic origin of the goods [or services] the mark is primarily geo-graphically descriptive.[Citation omitted.] To further clarify whether the mark is primarily geographically descriptive it is valuable to examine the possibility that the geographic term is 'minor, obscure, remote or un-connected with the goods.' [Citations omitted, Court's emphasis.] Use of a geographic term such as DUTCH to describe paint, WORLD to describe carpets, EUROPEAN to describe health spas, TOURAINE to describe coffee and NANTUCKET to describe men's shirts is entirely arbitrary. The protected mark has

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no relationship to the source of the goods since none of the goods were manufactured in the geographic area described.

Burke-Parsons-Bowlby, 10 USPQ2d at 1445. Notwithstanding these restrictions, a descriptive mark can be protectable if and when the mark attains "secondary meaning through use in commerce," infra.

j. Deceptively misdescriptive terms.

Similarly, deceptively misdescriptive terms, as well as geographically deceptive misdescriptive terms are not protectible absent "secondary meaning." See, e.g., In re Budge Mfg. Co., Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988) (LOVEE LAMB for synthetic automobile seat covers); R. Neumann & Co. v. Bon-Ton Auto Upholstery, Inc., 326 F.2d 799, 140 USPQ 245 (CCPA 1964) (VYNAHYDE for vinyl furniture slipcovers); W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 153 USPQ 749 (CCPA 1967) (TUFIDE for briefcases made of PVC); T.M. Kildow Cigar Co. v. George B. Sprague Cigar Co., 35 App., DC 345 (1910) (HALF SPANISH for cigars which do not contain "half Spanish" tobacco); and In re Richemond, 131 USPQ 441 (TTAB 1961) (MAID IN PARIS for perfumes.)

k. Surnames.

Absent "secondary meaning," a mark which is "primarily merely a surname" is likewise unregistrable. 15 U.S.C. §1052(e)(3).

4. "Secondary meaning."

As noted above, although descriptive marks, deceptively misdescriptive marks and marks which are primarily merely surnames normally lack the requisite distinctiveness to be protectable, it is recognized in trademark law that through substantially exclusive and extensive long term use and advertising, a mark can possibly acquire "distinctiveness." If so, the mark is then protectable and registrable. In a landmark trademark case, the "shredded wheat" case, Supreme Court Justice Brandeis set forth the guideline for determining whether a descriptive word has attained secondary meaning noting as follows:

But to establish a trade name in the term 'shredded wheat' the plaintiff must show more than a

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subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.

Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 39 USPQ 296, 299 (1938). (Emphasis added.) See also Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, 214 USPQ 1, 4 n.11 (1982) and Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 766, 23 USPQ2d 1081, 1082, n.4 (1992). Stated conversely, if the "primary" significance of a term to the consuming public is a description of the nature of the goods or services, rather than indication of a specific source for the goods or services, secondary meaning does not exist. That is to say, the "paramount" commercial significance of a term is the key. For instance, as observed by the Seventh Circuit,

Descriptive terms . . . are ill-suited to serve as designations of origin, for such terms are naturally understood by the consuming public in their ordinary descriptive sense. In order to acquire the exclusive right to use such a term, the user must demonstrate, as a matter of empirical fact, that the paramount commercial significance of the term in the minds of the consuming public is not its ordinary descriptive import, but rather, a declaration that the item so labeled originates at a single, albeit perhaps anonymous source.

Walt-West Enterprises, Inc. v. Gannett Co., Inc., 695 F.2d 1050, 1057-1058, 217 USPQ2d 1206, 1214 (7th Cir. 1982). Furthermore, as noted by the Sixth Circuit,

Secondary meaning is proved when by a preponderance of the evidence it can be determined that the attitude of the consuming public toward the mark denotes 'a single thing coming from a single source.' [Citations omitted.] Direct proof of secondary meaning is difficult to obtain. [Citation omitted.] Absent direct proof, the court must draw reasonable inferences from evidence of long term usage, from considerable effort and expenditure of money toward developing a reputation and good will for that trademark [Citation omitted.] Sales volume, though relevant, is not necessarily sufficient to indicate recognition of the mark by purchasers as an indication of the source. [Citations omitted.] Advertising expense also is relevant but will not standing alone, establish secondary meaning. [Citation omitted.]

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Where advertising expenditures are required to 'merely survive' in the competitive market, advertising expenditures cannot be used to prove secondary meaning [citation omitted.] However, extensive advertising which results in consumer association with a single source can establish secondary meaning.

Burke-Parson-Bowlby, 10 USPQ2d at 1447 (Emphasis added.) See also Ashland Oil, Inc., 905 F.Supp at 412-413; American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 12, 182 USPQ 77, 83 (5th Cir. 1974) ("The test of secondary meaning is the effectiveness of the effort to create it") (emphasis added); and Discount Muffler Shop, Inc. v. Meineke Realty Corp., Inc., 535 F.Supp. 439, 447 (N.D. Ohio 1982) ("Ultimately, however, 'the crucial issue is not the effort which was made to create it but the effectiveness of the effort'" (Emphasis added)).

5. "Presumption" of secondary meaning.

The Lanham Act allows a trademark Examining Attorney in the PTO to "assume" that a mark has acquired "secondary meaning" after a five-year period of exclusive use of the mark by the Applicant. More specifically, as provided in 15 U.S.C. §1052(f),

The Commissioner [of the PTO] may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.

6. Duration of trademark.

Trademark protection continues ad infinitum so long as the owner continues to use the mark in relation to the same line of business. However, a federal registration remains in effect for only ten years but is continually renewable in ten year increments if appropriate filings are made with the PTO. 15 U.S.C. §1059(a). A Kentucky state registration remains in effect for only five years but is continually renewable in five year increments if appropriate filings are made with the Kentucky Secretary of State. KRS 365.581.

C. Patent

"New" and utilitarian items are protectable by patent. More specifically, "Whoever invents or discovers any [1] new and [2] useful [3] process,

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machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor. . . ." 35 U.S.C. §101. 1. Novelty.

The requirement that an invention be "new" is normally referred to as the "novelty" requirement. An invention is not "novel" if –

[T]he claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

35 U.S.C. §102(a). Emphasizing this "novelty" prerequisite, in a banner Supreme Court case, the Court noted as follows:

. . . Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system. . . .

Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 148 USPQ 459, 462 (1966).

2. Ownership issues.

Generally, only the "inventor" of any "new or useful" item may prosecute an application to patent the technology. "An application for patent shall be made, or authorized to be made by the inventor." 35 U.S.C. §111(a). This requirement applies even if the invention was invented by an employee in the course of his employment. That is to say, a patent issued to an employer naming the employer as the inventor, when the item was actually invented by an employee would constitute an invalid, and thus unenforceable, patent. Mayview Corp. v. Rodstein, 620 F.2d 1347, 205 USPQ 302 (9th Cir. 1980). But, an employment agreement requiring the employee to assign any patent rights to the employer is enforceable. See 35 U.S.C. §261. See also Howard v. Howe, 61 F.2d 577, 15 USPQ 93, cert. den. 289 U.S. 731 (1932). (An employer generally retains no ownership interest in a patent absent an express or implied agreement granting to the employer the right to any inventions created by employees of the company.) However, even absent an express agreement, an implied obligation to assign any patent rights is typically found when the

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employee job description specifically involves the design and development of the new technology in issue, for instance "R & D" employees – employees who are "hired to invent." See Shook v. U.S., 238 F.2d 952, 111 USPQ 250, 251 (6th Cir. 1956), in which the Sixth Circuit noted as follows:

When an employee is hired to devote his efforts to a particular problem, to conduct experiments for a specifically assigned purpose, and an invention results from the performance of that work, it belongs to the employer.

3. Duration of patent rights.

Patent rights are only enforceable following the effective date of the patent registration. (Unlike copyright law, a patent infringement claim cannot be asserted in relation to any infringements occurring prior to the effective date of the registration, but can be asserted in relation to any infringement continuing after the issuance of the patent.) Currently, the term of patent will run from the date of issuance of the patent until a date which is twenty years subsequent to the filing date of the patent application.

D. Trade Secrets

According to the Supreme Court, "the widely relied upon definition of a trade secret"3 is that contained in the Restatement of Torts, more specifically the following:

A trade secret may consist of any [1] formula, pattern, device or compilation of information which is [2] used in one's business, and which [3] gives him an opportunity to obtain an advantage over competitors who do not know or use it. It may be a formula for a chemical compound, a process of manufacturing, treating or preserving materials, a pattern for a machine or other device or a list of customers.

Restatement of Torts §757, Comment b (1939). (Emphasis added.) Similarly, long ago Kentucky's highest court noted as follows:

A trade secret [1] is a plan or process, tool, mechanism or compound [2] known only to its owner and those of his employees to whom it is necessary to confide it. [3] It is a property right which equity, in the exercise of its power to prevent a breach of trust, will protect. [4] It differs from a

3 Kewanne Oil Co. v. Bicron Corp., 416 U.S. 470, 474 (1974).

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patent in that as soon as the secret is discovered, either by an examination of the product or in any other honest way, the discoverer has the full right to use it. [5] A process commonly known to the trade is not a trade secret and will not be protected by injunction.

Progress Laundry Co. v. Hamilton, 270 S.W. 834, 835 (Ky. 1925). See also Mid-States Enterprises, Inc. v. House, 403 S.W.2d 48 (Ky. 1966) in which our highest court more recently noted as follows:

A trade secret is a novel and unique plan or process, tool, mechanism or compound, known only to its owner and his employees which has been perfected and appropriated by the exercise of individual ingenuity.

Id. at 50. The Kentucky legislature has now enacted the Uniform Trade Secret Act which defines a trade secret to include the following:

[I]nformation, including a formula, pattern, compilation, program, data, device, method, technique or process, that:

(a) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use, and (b) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

KRS 365.880(4). And although criminal actions for misappropriation of trade secrets in interstate commerce have long been recognized under federal law, that Act has now been amended to include civil claims under the "Defend Trade Secrets Act of 2016." See 18 U.S.C. §1831 et seq.

II. INTELLECTUAL PROPERTY OFFENSES

A. Copyright Infringement

Section 106 of the Copyright Act, provides as follows:

Subject to sections 107 through 120, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: (1) To reproduce the copyrighted work in copies or

phonorecords; (2) To prepare derivative works based upon the

copyrighted work; (3) To distribute copies or phonorecords of the

copyrighted work to the public by sale or other

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transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

17 U.S.C. §106. Violation of any of these exclusive rights constitutes "infringement" of the copyright.

Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 118, or of the author as provided in Section 106A(a), or who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright.

17 U.S.C. §501(a). 1. Prima facie case.

To establish a prima facie case of copyright infringement, the Plaintiff must show (1) ownership of a valid copyright; and (2) "copying" by the Defendant. Wickham v. Knoxville Intern. Energy Exposition, Inc., 739 F.2d 1094, 222 USPQ 778, 780 (6th Cir. 1984). In relation to the "ownership of a valid copyright" prong, note the presumption afforded to the owner of the copyright, 17 U.S.C. §410(c), supra. See also Blumcraft of Pittsburgh v. Newman Bros., Inc., 373 F.2d 905, 153 USPQ 91 (6th Cir. 1967). To establish "copying," the copyright owner must prove that the offending work is based upon the copyrighted work and "substantially similar" to the copyrighted work. The test for determining substantial similarity is whether an ordinary lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 215 USPQ 745 (11th Cir. 1982).

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2. Presumption of copying.

The Courts recognize that rarely will an alleged infringer admit "copying."

Copying by a defendant can rarely be proven by direct evidence. It is proper to consider all of the facts and circumstances in connection with the development of the accused article. Evidence of access and substantial similarity are in themselves sufficient to create an inference of copying and to establish a prima facie case of copying. When a plaintiff has made a strong prima facie case of copying by proving access and similarity, the burden of going forward shifts to the defendant and he must offer evidence to negative the probability of copying.

Blumcraft of Pittsburgh v. Newman Bros., Inc., 373 F.2d 905, 153 USPQ 91, 93 (6th Cir. 1967). See also Wickham, supra. "Access" is shown by proof only that there was a "reasonable possibility" that the alleged infringer may have seen or heard of the copyrighted work or copies thereof. However, when the alleged infringement is so strikingly similar to the copyrighted work as to indicate little possibility that the use was a coincidence, little if any finding of access is needed to find that the work constitutes an infringement since it is almost impossible to conceive of two persons working independently and creating practically identical works. Nimmer on Copyright, §13.02[B]; Benson v. Coca-Cola Co., 230 USPQ 592, 593, n.2 (11th Cir. 1986); and Marling v. Ellison, 218 USPQ 702 (S.D.Flor., 1982). However, see Selle v. Gibb, 567 F.Supp. 1173, 219 USPQ 268 (N.D.Ill., 1983), which held otherwise.

3. "Fair use."

In setting forth the well-recognized, albeit often misunderstood "fair use" defense, 17 U.S.C. §107 provides as follows:

Notwithstanding the provisions of section 106, the fair use of a copyrighted work, including such use by reproduction in copies phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include –

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(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work; (3) the amount and substantiality of the

portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Whether the fair use defense is available to immunize an infringement is decided on an ad hoc basis after consideration of each of the factors enumerated in section 107; however factors (1) and (4) are probably the most important. The Supreme Court has fairly regularly addressed this issue in various well publicized cases. Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 225 USPQ 1073 (1985) relating to Gerald Ford's Memoirs (Author's right to profit from writings vis-à-vis public's right to be informed of historical facts); Sony Corp. of American v. Universal City Studios, Inc., 464 U.S. 417, 220 USPQ 665 (1984) relating to home recording of copyrighted works (copyrighted owner's right to control and profit from reproduction of movies vis-à-vis public's interest to "time shift" viewing of work); and Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 29 USPQ2d 1961 (1994) ("rap" style parody of Roy Orbison's "Oh, Pretty Woman" hit song could constitute "fair use," notwithstanding commercial purposes of parodist). See also Stewart v. Abend, 495 U.S. 207, 14 USPQ2d 1614 (1990).

B. Trademark Infringement

Violation of the exclusive rights of the owner of a mark constitutes "infringement" which is defined by the Lanham Act as follows:

Any person who shall, without the consent of the registrant–

(a) use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, or (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels,

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signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

15 U.S.C. §1114 (Emphasis added.) See also 15 U.S.C. §1125 (parallel claim available for infringement of unregistered marks.) Similarly, as to infringement of state registered marks, see KRS 365.615.

• "Likelihood of confusion" The touchstone issue in any trademark infringement case is to determine whether there is a "likelihood of confusion." That is to say, is there an appreciable likelihood that consumers would be confused in believing that the junior user's products are the products of the senior user of the mark, or confused in believing that the junior user is otherwise affiliated with, sponsored, or endorsed by the senior user.

The ultimate inquiry in most actions for false designation of origin, as with actions for trademark infringement, is whether there exist a likelihood that an appreciable number of ordinarily prudent purchasers [will] be misled, or indeed simply confused, as to the source of the goods in question.

Thompson Medical Co., Inc. v. Pfizer, 753 F.2d 208, 213, 225 USPQ2 124, 128 (2d Cir. 1985) (Emphasis added.) In the Sixth Circuit, factors to be considered to determine whether there exists an appreciable likelihood of confusion are as follows:

1. Strength of plaintiff's mark; 2. Relatedness of goods or services; 3. Similarity of marks; 4. Evidence of actual confusion; 5. Marketing channels used; 6. Likely degree of purchaser care; 7. Defendant's intent in selecting the mark; and 8. Likelihood of expansion of the product lines.

Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 214 USPQ 15, 19-20 (6th Cir. 1982).

These factors are simply a guide to help determine whether confusion would be likely . . . they imply no mathematical precision, and a plaintiff need not show that

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all, or even most of the factors listed are present in any particular case to be successful.

Wynn Oil Co. v. Thomas, 839 F.2d 1183, 5 USPQ2d 1944, 1946 (6th Cir. 1988). As to appellate review of a trial court's analysis and application of each of these factors, the Sixth Circuit notes as follows: "A district court's findings regarding each factor are reviewed for clear error, but the further determination of likelihood of confusion based on those factors is a legal conclusion reviewed de novo." Ferrari S.P.A. v. Roberts, 944 F.2d 1235, 20 USPQ2d 1001, 1007 (6th Cir. 1991). 1. Strength of mark.

Determination of the "strength" of a mark entails classification of the nature of the mark. More specifically, as noted by the Supreme Court,

Marks are often classified in categories of generally increasing distinctiveness; following the classic formulation set out by Judge Friendly, they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 [189 USPQ 759] (2d. Cir. 1976).

Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992). Similarly, as noted by Judge Johnstone of the Western District of Kentucky:

For purposes of legal recognition trademarks fall into four broad categories in ascending order of strength: (a) generic, (b) descriptive, (c) suggestive or (d) arbitrary or fanciful [Citation omitted.] Generic marks refer to a class of goods or services without indicating a particular source or supply. For example, the terms 'fish,' 'bread,' 'drink,' and 'oil change' are generic and receive no legal protection. Descriptive marks identify a characteristic or quality of a good or service and find protection under the Lanham Act if the mark distinctively identifies the registrant's goods or services or, in other words, has acquired secondary meaning. Examples of such descriptive terms include the adjectives 'speedy,' 'friendly,' 'green,' or 'reliable.' Suggestive marks subtly connote something about a product or service which requires imagination and perception to reach a conclusion regarding the nature of the product or service. A common example of a suggestive mark

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is the word 'Penguin' as applied to refrigerators. Fanciful or arbitrary marks bear no relationship to the product or service and thus are inherently distinctive. Kodak and Xerox are examples of fanciful or arbitrary marks. [Court's emphasis; citation omitted.]

Ashland Oil, Inc. v. Olymco, Inc., W.D.Ky. Civil Action No. (91-0310-L(J), October 2, 1991 slip opinion at pps. 3, 4. See also Winchester Fed. Sav. Bank v. Winchester Bank. Inc., 359 F.Supp.2d 561, 565 (E.D. Ky. 2004) ("on the spectrum of distinctiveness, generic is the weakest type of mark followed by descriptive, suggestive, and fanciful/arbitrary"). Accordingly, a product bearing the KODAK mark will very likely be recognized by the consuming public as a product specifically produced by the Kodak Company rather than a competitor. Consequently, such a mark is very strong and distinctive. Conversely, a descriptive mark is very weak because it is more likely to be recognized by the consuming public as a description of a type of product from various merchants rather than a designation of a specific source of the product. As noted by the Sixth Circuit,

A strong mark generally is considered suggestive or one so fanciful that it has come to symbolize the source of origin. [Citations omitted.] Alternatively, weak marks include those which are generic or describe the usual and the not so fanciful qualities of the product. [Citations omitted.] Accordingly, the strong mark enjoys greater protection while the weak mark is afforded little support.

Hindu Incense v. Meadows, 692 F.2d 1048, 1049-50 (6th Cir. 1982). See also Frisch's Restaurant, Inc. v. Shoney's Inc., 759 F.2d 1261, 225 USPQ 1169, 1176 (6th Cir. 1985). Similarly, the late Judge Allen of the Western District of Kentucky once noted as follows:

In an able opinion discussing trademark infringement, District Judge Thomas Lambros found in Jewel Companies, Inc. v. Westhall Co., 413 F.Supp. 994, 198 USPQ 432 (N.D. Ohio 1976) that the word 'jewel' is a common term which many firms have used because of its connotation of high quality or value, and that the defendant's registered trade name 'Jewel Mart' was clearly an example of a descriptive use. The Court went on to hold that such a descriptive mark is what is known as a 'weak' mark, and that any confusion that might result by the use of the words 'Jewel Mart' by a

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company was a risk which the plaintiff took when it adopted 'Jewel' as its mark.

Century 21 Real Estate Corp. v. Top Realty, Inc., 209 USPQ 1099, 1100-01 (W.D. Ky. 1981). (Emphasis added.) Scrutiny of the "strength" of a mark also requires analysis of the uniqueness of the mark. That is to say, "evidence of third party use of similar mark on similar goods is admissible and relevant to show that the mark is relatively weak and entitled to only a narrow scope of protection." 1 McCarthy on Trademarks and Unfair Competition (4th ed.) §11:88. More specifically,

The purpose of a defendant introducing third party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers 'have been educated to distinguish between different marks on the basis of minute distinctions.'

Id. See also Jack Wolfskin Ausrustung Fur Draussen GMBH & Co. KGAA v. New Millenium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015) (widespread registration of marks containing the same word(s) "show that customers have been educated to distinguish between different marks on the basis of minute distinctions," quoting Juice Generation, Inc. v. GS Enterprises, LLC, 794 F.3d 1334, 1338 (Fed. Cir. 2015)).

2. Relatedness of goods or services.

As noted by the Sixth Circuit,

Courts have recognized that there are basically three categories of cases: (1) direct competition of [goods or] services, in which case confusion is likely if the marks are sufficiently similar; (2) [goods or] services are somewhat related but not competitive, so that likelihood of confusion may or may not result depending on other factors; and (3) services are totally unrelated, in which case confusion is unlikely.

Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 18 USPQ2d 1587, 1593 (6th Cir. 1991). See also Wynn Oil Co. v. Thomas, 839 F.2d 1183, 5 USPQ2d 1944, 1947 (6th Cir. 1988); Wynn Oil Co. v. American Way Service Corp., 943 F.2d 595, 19 USPQ2d 1815, 1820 (6th Cir. 1991); and the late Judge Heyburn's decision in Genny's Diner & Pub, Inc. v. Sweet Daddy's Inc., 812 F.Supp 744, 746 (W.D. Ky. 1993) ("Sweet Daddy Restaurant" likely to be confused with the world famous "Sweet Daddy" hamburger at Genny's Diner.)

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3. Similarity of marks.

As the "similarity of marks" factor, "[a] proper analysis of similarity includes examining the pronunciation, appearance, and verbal translation of conflicting marks." Wynn Oil Co. v. Thomas, 839 F.2d 1183, 5 USPQ2d 1944, 1947 (6th Cir. 1988). Furthermore,

In evaluating similarity, '[i]t is axiomatic in trademark law that 'side-by-side' comparison is not the test. [Citation omitted.] Instead, a court must determine, in light of what occurs in the marketplace, whether the mark 'will' be confusing to the public when singly presented.' [Citation omitted.]

Id.; See also Genny's Diner, supra at 747. In analyzing similarity, marks are not to be dissected, because, "It is the overall impression of the mark, not an individual feature, that counts." Homeowners Group, supra at 18 USPQ 1594. See also Little Caesar Enterprises, Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 4 USPQ2d 1942, 1944 (6th Cir. 1987). As otherwise stated,

In determining the similarity of the marks, one must decide on the basis of 'the total effect of the designation, rather than on a comparison of individual features.' WLWC Centers, 563 F.Supp at 725 . . . . The overall impression of the mark is what matters.

Truckstops Corp. of America v. C-Poultry Co. Ltd., 596 F.Supp. 1094, 1099 (M.D. Tenn., 1983). Furthermore, as noted by the Second Circuit,

First, even close similarity between two marks is not dispositive of the issue of likelihood of confusion. 'Similarity in and of itself is not the acid test. Whether the similarity is likely to provoke confusion is the crucial question.' . . . . Second, in assessing the similarity of two marks, it is the effect upon prospective purchasers that is important.

. . . The fact that a trademark is always used in conjunction with a company name may be considered by the trial court as bearing on the likelihood of confusion.

McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1133, 202 USPQ 81, 89 (2d Cir. 1979). Other Circuits, including the Sixth Circuit note that such a prominent use by an alleged infringer of a distinct name lessens any likelihood of confusion.

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It is well settled that under certain circumstances otherwise similar marks are not likely to be confused where used in conjunction with the clearly displayed name and/or logo of the manufacturer.

Astra Pharmaceutical Products, Inc. v. Beckmann Instruments, Inc., 718 F.2d 1201, 1205, 220 USPQ 786, 790 (1st Cir. 1983). See also Henri's Food Products Co., Inc. v. Kraft, Inc., 717 F.2d 352, 355, 220 USPQ 386, 389 (7th Cir. 1983) (use of "a prominent house-mark, may also tend to lessen confusion"); and Frisch's Restaurant, Inc. v. Shoney's Inc., 759 F.2d 1261, 225 USPQ 1169, 1172 (6th Cir. 1985).

4. Evidence of actual confusion.

As noted by the Sixth Circuit,

Evidence of actual confusion is undoubtedly the best evidence of likelihood of confusion. Yet, it does not follow that lack of evidence of actual confusion should be a significant factor. . . . . .as actual confusion is merely one factor to be considered. . . Further, because evidence of actual confusion is difficult to produce and frequently discounted as unclear or insubstantial, 'this factor is weighted heavily only when there is evidence of past confusion, or perhaps, when the particular circumstances indicate such evidence should have been available.'

Wynn Oil v. Thomas, 839 F.2d 1183, 5 USPQ2d 1944, 1948 (6th Cir. 1988). See also Wynn Oil Co. v. American Way Service Corp., 943 F.2d 595, 19 USPQ2d 1815, 1821 (6th Cir. 1991). The absence of any appreciable actual confusion is significant only in the following type of situation:

[T]he existence of only a handful of instances of actual confusion after a significant time or a significant degree of concurrent sales under the respective marks may. . . lead to an inference that no likelihood of confusion exists.

Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 18 USPQ2d 587, 1595 (6th Cir. 1991).

5. Marketing channels used.

The focus of this factor according to the Sixth Circuit is as follows:

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This factor, also termed 'channels of trade' by some courts, consists of considerations of how and to whom the respective goods or services of the parties are sold. . . . Obviously, dissimilarities between the predominant customers of a plaintiff's and defendant's goods or services lessens the possibility of confusion, mistake or deception. Likewise if the services of one party are sold through different marketing media in a different marketing context than those of another seller, the likelihood that either group of buyer's[sic] will be confused by similar service marks [or trademarks] is much lower than if both parties sell their services through the same channels of trade.

Homeowners Group, Inc., supra at 18 USPQ2d 1595.

6. Likely degree of purchaser care.

This factor is well explained by the Sixth Circuit as follows:

Generally, in assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution. However, when a buyer has expertise or is otherwise more sophisticated with respect to the purchase of the [goods or] services at issue, a higher standard is proper. Similarly, when [goods or] services are expensive or unusual, the buyer can be expected to exercise greater care in her purchases. When [goods or] services are sold to such buyers, other things being equal, there is less likelihood of confusion.

Homeowners Group, Inc., supra at 18 USPQ2d 1596. See also Wynn Oil Co. v. Thomas, supra at 5 USPQ2d 1948; Wynn Oil Co. v. American Way Service Corp., supra at 19 USPQ2d 1821; and Judge Simpson's decision in P.T.C. Brands, Inc. v. Conwood Co. L.P., 28 USPQ2d 1895, 1905 (W.D. Ky. 1993). The rationale behind this factor is that a purchaser of an expensive item will, in theory, more closely scrutinize his purchase than the purchaser of a less expensive item. To use an example, the thinking is that a customer desiring to purchase a VOLVO automobile, an expensive item, will scrutinize his or her purchase and not mistakenly purchase a YUGO automobile. Conversely, a purchaser desiring to purchase TRIDENT chewing gum, an inexpensive item, may less casually scrutinize the purchase and buy DENTYNE by mistake.

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7. Intent.

The focus of this factor is to determine whether the junior user of a mark intentionally is trying to create confusion in an effort to divert business from the senior user. That is to say,

[I]f the mark was chosen with the intent of deriving benefit from the reputation of [the senior user], that fact alone 'may be sufficient to justify the inference that there is confusing similarity.' [Citation omitted.]

Wynn Oil Co. v. Thomas, 839 F.2d 1183, 5 USPQ2d 1944, 1948. See also Nalpac, Ltd. v. Corning Glass Works, 784 F.2d 752, 228 USPQ 946, 948 (6th Cir. 1986) (Intentional adoption of mark of senior user "innocent" if adoption not with "intent to obtain a free ride on the reputation of" the senior user.) Conversely, "good faith" intentions are virtually irrelevant.

While in this circuit we do consider intention to be relevant when a plaintiff shows that a defendant knowingly copied the contested trademark, we agree completely with the Second Circuit that absent such a showing, intentions are irrelevant.

Id.; See also Genny's Diner, supra at 746, n.2.

8. Likelihood of expansion of product lines.

The focus of this factor is whether there appears to be any likelihood that either parties' "market will expand so as to increase the likelihood of confusion." Wynn Oil Co. v. Thomas, 839 F.2d 1183, 5 USPQ2d 1944, 1948 (6th Cir. 1988). Included in such an analysis is whether there appears to be any likelihood of expansion of either geographical markets or product mix which would lead to any overlap of the markets of the concurrent users of the mark. Homeowners Group, supra at 18 USPQ2d 1596. "[A] 'strong possibility' that either party may expand [its] business to compete with the other will weigh in favor of finding infringement." Wynn Oil Co. v. American Way Service Corp., 943 F.2d 595, 19 USPQ2d 1815, 1823 (6th Cir. 1991).

C. Trademark Dilution

The Federal Trademark Dilution Act ("FTDA") which became effective on January 16, 1996, sought not only to harmonize existing state laws, but also to set a new national standard of legal protection based on evolving realities of trademark function. 15 U.S.C. §1125(c). The FTDA also aspired to fulfill the promises of international treaties, including TRIPS, that assure member nations protection of well-known marks abroad, and

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to provide additional bargaining strength in international intellectual property negotiations. The Act amended section 43 of the Lanham Act by adding a new subsection (c) that provides the owner of a famous mark protection against another person's commercial use of the mark, "if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." In a separate provision, the Act lists eight, non-exclusive factors for courts to consider in determining whether a mark qualifies as "famous." The FTDA was designed primarily to afford injunctive relief, but permitted an award of damages where a junior user has willfully caused dilution of a famous mark. A successful party may also recover profits, treble damages and reasonable attorneys' fees under the Act upon proper legal showings. In certain instances, the FTDA provides for the court- supervised destruction of items displaying an offending mark. The FTDA includes three statutory defenses: (1) fair use in comparative advertising or promotion to identify competing goods; (2) non-commercial use; and (3) use in news reporting and commentary. In 2007, President Bush signed into law the Trademark Dilution Revision Act of 2006 ("TDRA"). The TDRA provides a definition of dilution as "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake, or deception." The TDRA also codified factors for analyzing dilution by blurring. The six factors germane to a blurring analysis under the TDRA are:

(i) the degree of similarity between the secondary mark and the famous mark; (ii) the degree of inherent or acquired distinctiveness of the famous mark; (iii) the extent to which the famous mark owner has exclusive use of the famous mark; (iv) the degree of famous mark recognition; (v) intent to create an association with the famous mark by the secondary mark; and (vi) actual association between marks.

Kentucky has not adopted a statutory cause of action for "dilution" of famous marks. However, there are grounds for a state law common law cause of action. See Churchill Downs Distilling Co. v. Churchill Downs, Inc., 90 S.W.2d 1041 (Ky. 1936).

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D. Patent Infringement

The Patent Act defines infringement as follows:

[W]hoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United states any patented invention during the term of the patent therefor, infringes the patent.

35 U.S.C. §271(a). 1. Literal infringement.

Analysis of "literal" patent infringement claims involves two basic steps: first, the "claims" of the patent must be properly construed to determine their scope; and second, it must be determined whether those properly interpreted claims encompass, that is to say, "read on" the accused device. Texas Instruments, Inc. v. U.S. Trade Com'n., 988 F.2d 1165, 1171, 26 USPQ2d 1018 (Fed. Cir. 1993); ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1578, 6 USPQ2d 1557 (Fed. Cir. 1988). The first step is a question of law for the court; the second step is a question of fact. Minnesota Min. and Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1570, 24 USPQ2d 1321 (Fed. Cir. 1992). Thus, establishing infringement requires first the interpretation of the "elements" or "limitations" of the particular patent claims and then a comparison of those claims as properly interpreted with the accused products. Key Mfg. Group, Inc. v. Microdot, Inc., 925 F.2d 1444, 1448, 17 USPQ2d 1806 (Fed. Cir. 1991). a. Step one: Interpretation of "claims."

To obtain a patent, an inventor must specifically "claim" what he regards as his invention, that is to say, "claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. §112. Once approved by the United States Patent Office, the "claims" set forth the "metes and bounds" of what is covered by the patent.

The claims of the patent provide the concise formal definition of the invention. They are the numbered paragraphs which 'particularly (point) out and distinctly (claim) the subject matter which the applicant regards as his invention.' 35 U.S.C. §112. It is to these wordings that one must look to determine whether there has been infringement. . . Courts can neither broaden nor narrow the claims to give the patentee something different than what he has set

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forth. . . . No matter how great the temptations of fairness or policy making, Courts do not rework claims. They only interpret them.

E.I. duPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d 1129, 1131 (Fed. Cir. 1988). Pursuant to 35 U.S.C. §112, claims must be "particular" and "distinct" so the public has fair notice of what constitutes the metes and bounds of claimed invention. State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236, 224 USPQ 418 (Fed. Cir. 1985). A court must neither narrow nor broaden the scope of the claim to give the patentee something different than what he has set forth in his patent claims. E.I. duPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ.2d 1129 (Fed. Cir. 1988), cert. denied, 488 U.S. 986 (1988). "No matter how fair or equitable it may seem, a court cannot rewrite the claims." Hughes Aircraft Co. v. U.S., 717 F.2d 1351, 1357, 219 USPQ 473 (Fed. Cir. 1983). The question of claim interpretation is a question of law to be resolved by examining the language of the patent, the surrounding claims, the specification and prosecution history. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 4 USPQ2d 1450 (Fed. Cir. 1987). Because claim interpretation is a question of law, it is readily amenable to summary judgment. Johnston v. IVAC Corp., 885 F.2d 1574, 1579-80, 12 USPQ2d 1382 (Fed. Cir. 1989). Proper claim interpretation is essential since improper claim interpretation can distort the entire infringement analysis. Key Mfg. Group, Inc. v. Microdot, Inc., 925 F.2d 1444, 1448, 17 USPQ2d 1806 (Fed. Cir. 1991). A patent owner's right to exclude others from making, using or selling a patented invention is defined and limited by the language of the patent's claims. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962 (Fed. Cir. 1989). In interpreting a claim, the words of the patent should be given their ordinary or accustomed meaning, unless the patentee clearly intended otherwise. Senmend, Inc. v. Richard-Allan Medical Industries, Inc., 888 F.2d 815, 819 & n.8, 12 USPQ2d 1508 (Fed. Cir. 1989). "In defining the meaning of key terms in a claim, reference may be had to the specification, the prosecution history, prior art, and other claims." Carroll Touch, Inc. v. Electro Mechanical Systems, Inc., 15 F.3d 1573, 27 USPQ2d 1836 (Fed. Cir. 1993), citing 1570, Minnesota Min. & Mfg. Co. v. Johnson

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& Johnson Orthopaedics, Inc., 976 F.2d 1559, 1566, 24 USPQ2d 1321, 1327 (Fed Cir. 1992).

b. Step two: Comparing the claim to accused device.

Every element of a claim is essential and material to that claim. In order to meet its burden of establishing infringement, the patent owner must "show the presence of every element or its substantial equivalent in the accused device." Key Mfg. Group, Inc. v. Microdot, Inc., supra, 925 F.2d at 1447.

2. Infringement by equivalents.

Even if an accused device is not literally within the scope of the patent in issue, the Patentee can sometimes establish infringement under the "Doctrine of Equivalents."

The standard for infringement under the doctrine of equivalents has often been articulated: infringement may be found if an accused device performs substantially the same function in substantially the same way to achieve substantially the same result.

London, 946 F.2d at 1538. Although the doctrine of equivalents allows courts to sometimes loosely interpret specific requirements of a patent claim, courts are directed that the doctrine should only be applied in exceptional situations. "Application of the doctrine of equivalents is the exception, however, not the rule, for if the public comes to believe (or fear) that the language of patent claims can never be relied upon, and that the doctrine of equivalents is simply the second prong of every infringement charge, regularly available to extend prosecution beyond the scope of the claims, then the claims will cease to serve their intended purpose [to define the scope of the patent protection]. Competitors will never know whether their actions infringe a granted patent." Id. a. Two-tiered test.

The Doctrine of Equivalents consists of a two-tiered test, namely (1) determination of whether the accused device performs substantially the same function in substantially the same way to obtain substantially the same result (2) along with a requirement that the scope of the equivalents cannot be so broad as to be within the scope of any other relevant "prior art" (i.e. technology preexisting the patent). More specifically, in emphasizing that this is a two-part test, the Court of Appeals for the Federal Circuit, the Court which handles all patent infringement appeals has noted as follows:

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Determining infringement under the doctrine of equivalents thus requires that there be findings that the accused device performs substantially the same function as the claimed invention, that it does so in substantially the same way and that it obtains the same result. . . . Of course in applying the doctrine of equivalents, a district court should also ensure that the range of equivalents sought by the patentee does not 'ensnare the prior art.'

Conair Group Inc. v. Automatik Apparate-Maschinebau GmbH, 944 F.2d 862, 866, 20 USPQ2d 1067, 1070-71 (Fed. Cir. 1991). Similarly, in an en banc determination, the Federal Circuit noted the familiar function/way/result test along with the second tier of the equivalents test, namely the following:

The doctrine of equivalents is limited in that the doctrine will not extend (1) to cover an accused device in the prior art, and (2) to allow the patentee to recapture through equivalence certain coverage given up during prosecution.

Pennwalt Corp. v. Durand-Wayland Inc., 833 F.2d 931, 4 USPQ2d 1737, n.1 (Fed. Cir. 1987). See also Genentech Inc. v. Wellcome Foundation Ltd., 29 F.3d 1555, 31 USPQ2d 1161, nns. 28 & 40 (Fed. Cir. 1994).

b. Function/way/result.

As the Supreme Court noted that "the essence of the doctrine is that one may not practice a fraud on a patent," that is to say an intentional attempt to "design around" a patent through the utilization of "unimportant and insubstantial changes and substitutions." Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 607-608, 85 USPQ 328, 330 (1950). Notwithstanding however –

Intentional 'designing around' the claims of a patent is not by itself a wrong which must be compensated by invocation of the doctrine of equivalents. Designing around patents is, in fact, one of the ways in which the patent system works to the advantage of the public in promoting progress in the

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useful arts, its constitutional purpose. Inherent in our claim-based patent system is also the principle that the protected invention is what the claims say it is, and thus that infringement can be avoided by avoiding the language of the claims. [citation omitted.] It is only when the changes are so insubstantial as to result in 'a fraud on the patent' that the equitable doctrine of equivalents becomes desirable. [citation omitted.]

Slimfold Mfg. Co., Inc. v. Kinkead Industries Inc., 932 F.2d 1453, 1457, 18 USPQ2d 1842, 1845-46 (Fed. Cir. 1991). Furthermore, as more specifically noted therein,

[T]he first question which must be asked is 'has a substantial change been made?' Only if the answer to that question is 'no' should an accused infringer be liable for improperly trying to appropriate the claimed invention. …[T]he differences between an accused device and a claimed device are considered to be insubstantial only when the accused device performs substantially the same function in substantially the same way to achieve substantially the same result as the claimed device. The determination of whether an accused device meets this strict test is one of fact. [citation omitted.]

Id. (Court's emphasis.)

3. "Element-by-element" comparison.

To find infringement under the doctrine of equivalents, a court is to conduct an "element-by-element" comparison to determine whether the accused device contains structure which performs substantially the same function in substantially the same way as each element claimed in the patent to obtain the same result. See Pennwalt, 833 F.2d at 935, 4 USPQ2d at 1740. More specifically,

A device that does not satisfy [each] limitation at least equivalently does not function in substantially the same way as the claimed invention.

Id. 833 F.2d at 937, 4 USPQ2d at 1741. See also LaBounty Mfg., Inc. v. U.S. Intern. Trade Com'n, 867 F.2d 1572, 1577, 9 USPQ2d 1995, 1999 (Fed. Cir. 1989) ("Substantially the same way is shown if every limitation of

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a claim is satisfied either exactly or by a substantial equivalent in the accused device"); Becton Dickinson and Co. v. C.R. Bard Inc., 922 F.2d 792, 798, 17 USPQ2d 1097, 1101 (Fed. Cir. 1990) (patentee "required to proffer evidence that specific structure in [accused] device met all the disputed limitations at least equivalently"); and Hoganas AB v. Dresser Industries, Inc., 9 F.3d 948, 954, 28 USPQ2d 1936,1941 (Fed. Cir. 1993) (Patentee bears "the burden of showing that each limitation of the claim is met by a literal or equivalent element in the accused product.") Consequently, to find equivalence, the Court must find structure in the accused device performing substantially the same function in substantially the same way to obtain the same result as each and every component specified in the patent claims. More specifically, to find equivalence,

It is. . . well settled that each element of a claim is material and essential and that in order for a court to find infringement, the Plaintiff must show the presence of every element or its substantial equivalent in the accused device.

Lemelson v. U.S., 752 F.2d 1538, 1551, 2211 USPQ 526, 533 (Fed. Cir. 1985). If there is no structure at all in the accused device corresponding with a specific limitation of the patent claim, there is no infringement under the doctrine of equivalents. As noted by the Federal Circuit sitting en banc,

[If] [n]o means with an equivalent function was substituted in the accused devices. . . there can be no infringement under the doctrine of equivalents.

Pennwalt, 833 F.2d at 939, 4 USPQ2d at 1743. See also Spectra Corp. v. Lutz, 839 F.2d 1579, 1582, 5 USPQ2d 1867, 1870 (Fed. Cir. 1988) (summary judgment dismissing equivalents claim affirmed when claim limitation function "entirely absent" in accused device); London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1539, 20 USPQ2d 1456, 1459 (Fed. Cir. 1991) (accused device "lacked necessary limitations of the claims and therefore did not infringe under the doctrine of equivalents" and "there can be no infringement as a matter of law if a claim limitation is totally missing from the accused device.") Simply stated, if a claim limitation is totally missing from the accused device, the accused device does not perform

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"substantially the same way" as the patented device and therefore the doctrine of equivalents function/way/result test is not satisfied. LaBounty, supra at 867 F.2d 1577, 9 USPQ2d 1999 ("substantially the same way is shown if every limitation of a claim is satisfied either exactly or by a substantial equivalent"); Becton Dickinson, supra at 922 F.2d 798, 17 USPQ2d 1101 (same); and Pennwalt, 833 F.2d at 937, 4 USPQ2d at 1741 ("a device that does not satisfy [a] limitation at least equivalently does not function in substantially the same way as the claimed invention").

E. Trade Secret Misappropriation

As noted by the Supreme Court in Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 475-76 (1974),

The protection accorded the trade secret holder is against [1] the disclosure or unauthorized use by the trade secret by those to whom the secret has been confided under the express or implied restriction of nondisclosure or nonuse. [2] The law also protects the holder of a trade secret against disclosure or use when the knowledge is gained, not by the owner's volition, but by some 'improper means,' Restatement of Torts §757(a), which may include theft, wire tapping, or even aerial reconnaissance. [3] A trade secret law, however, does not offer protection against discovery by fair and honest means, by independent invention, accidental disclosure, or by so-called reverse engineering, that is by starting with the known product and working backward to divine the process which aided in its development or manufacture. [4] Novelty in the patent law sense is not required for a trade secret [citation omitted].

Similarly, others have noted as follows:

[I]t is probably is more accurate to state those . . . elements as: (1) the plaintiff is the rightful possessor of rights in a trade secret; (2) the defendant has acquired the plaintiff's trade secret under circumstances which give rise to a duty to refrain from non-consensual disclosure or use of the trade secret; and (3) the defendant has disclosed or used the trade secret without the plaintiff's consent.

2 Business Torts, Trade Secrets §17.02[1] (Matthew Bender). (Emphasis added.)

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1. The view in Kentucky: Pre-1990 – "The dictum."

Trade secret protection was a development of the common law and as long ago as 1925 Kentucky's highest court recognized the doctrine in Progress Laundry Co. v. Hamilton, 270 S.W. 834 (Ky. 1925). Progress involved an action against a former route employee of a laundry company who had left its employ, accepted employment with a competitor and began soliciting business from the customers he had served while in the employment of the Plaintiff. Progress sought to enjoin this competition claiming that the "identity" of its customers was a trade secret. Surveying the Anglo-American common law, the court noted as follows:

That a strictly 'trade secret' will be so protected in the hands of its owner by the remedy of injunction seems to be universally accepted, there appearing to be no court holding to the contrary [citations omitted].

Id. 270 S.W. at 835. Thereupon, in "dictum" our highest court recognized the protectability of anything which "strictly" constitutes a trade secret, but after noting a split of authority held that knowledge of prior customers retained in memory, as opposed to customer lists, would not constitute a trade secret mis-appropriation.

'A person who leaves the employment of another has the right to take with him all the skill he has acquired, all the knowledge that he has obtained, and all the information that he has received, so long as nothing is taken that is the property of the employer. Trade secrets are the property of the employer and cannot be taken or used by the employee for his own benefit, but customers are not trade secrets. [Court's emphasis.] They are not property. The right to trade with them may be property, but that right was not interfered with by the defendant. Written lists of customers may be property, but the defendant did not take any such lists.' [Emphasis added.] * * * 'The cases hold that, in the absence of express contract provision, a former employee may not be enjoined from merely soliciting or accepting business from the customers of his former employer.' [Emphasis added.]

Id. at 836 (Citations omitted.)

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After Progress, it was over forty years until there was another published Kentucky case dealing with trade secrets, namely Mid-States Enterprises, Inc. v. House, 403 S.W.2d 48 (Ky. 1966). In Mid-States, the Plaintiff sought to enjoin its competitor from marketing certain electronic devices for the timing of harness races claiming that the Defendant's product was the result of "confidential" technological information allegedly misappropriated through a former employee of the Plaintiff who was then working for the Defendant. As with the Progress Laundry case, the Court again, in "dictum," recognized the enforceability of trade secrets but held for the Defendant because:

(1) The technology was found not to be a "trade secret" because it "consisted of component parts of a device which almost anyone could examine. . . [and] prints of the timer's design were apparently available to many persons" and constituted "well-known principles in the electronics field."

(2) The former employee was not knowledgeable of the technology and thus had not "appropriated" it from the Plaintiff. (3) Even if the technology was a trade secret, and although the Defendant's device "incorporated similar engineering principles," the "plaintiff's and defendant's timers were not the same thing," that is to say the Defendant's device did not utilize the same technology utilized by the Plaintiff.

Id. at 50.

2. The current law in Kentucky.

In 1990, the Kentucky legislature enacted the Uniform Trade Secrets Act which basically codified the common law prohibition against misappropriation of trade secrets. See KRS 365.880 et seq. The Act defines "misappropriation" to include the following:

(a) Acquisition of a trade secret of another by a person who knows or has reason to know the trade secret was acquired by improper means; or (b) Disclosure or use of a trade secret of another without express or implied consent by a person who:

1. Used improper means to acquire knowledge of the trade secret; or

2. At the time of disclosure or use, knew or had reason to know that his knowledge of a trade secret was:

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a. Derived from or through a person who utilized improper means to acquire it;

b. Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or

c. Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or 3. Before a material change of his position,

knew or had reason to know that it was a trade secret and that knowledge had been acquired by accident or mistake.

KRS 365.880(2). (Emphasis added). In defining "improper means," the Act provides as follows:

'Improper means' includes theft, bribery, mis-representation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.

KRS 365.880(1). And although criminal actions for mis-appropriation of trade secrets in interstate commerce have long been recognized under federal law, that federal act has been amended to include civil claims under the "Defend Trade Secrets Act of 2016." See 18 U.S.C. §1831 et seq.

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