Intellectual property

Introduction

1. Why protect IP?

   1. Utilitarian-sounding purpose: “to promote the progress of science and useful arts”

      1. Sony v. Universal City Studios, 1984 – “The monopoly privileges . . . are neither unlimited nor primarily designed to provide a special private benefit. Rather, the limited grant is a means by which the important public purpose may be achieved. It is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired.”

      2. United States v. Paramount Pictures – “The sole interest of the U.S. and the primary object in conferring the monopoly lie in the general benefits derived by the public from the labors of authors . . . the reward to the author or artists serves to induce release to the public of the products of his creative genius.”

      3. Dilemma = stimulating producer will benefit public, but monopoly granted is also detrimental to public.

   2. Natural Rights – Lockean Labor: Mixed labor with idea

   3. Personhood: an idea is a part of personal and individual expression.

   4. Distributive Justice (fairness): to preserve the moral rights of owners

2. Types of IP:

   1. Trade Secret

      1. Protect against misappropriation of certain confidential info

      2. Purpose is to prevent “theft” of info by unfair or commercially unreasonable means

      3. Eligible subject matter: business or technical information

      4. Indefinite protection. But owner must take reasonable steps to maintain secrecy: “Fast-fish” – “attached”; Rights lost if “let loose”

      5. Do not protect against independent discovery

      6. Do not prevent competitors from “reverse engineering” legally obtained product

      7. E.g. secret formula for Coca-Cola. Secret recipe for English Muffins

   2. Patent

   3. Trademark

      1. Purpose: to avoid consumer confusion; encourage investment

      2. Registration at PTO is helpful

      3. Like marking function of property law (waif and whales)

      4. Indefinite right (until “let loose”) to exclude confusing uses

   4. Copyright

Patent

1. Patent requirements:

   1. Patentable subject matter

      1. Process: 35 U.S.C. 100(b) further defines “process” as: “process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”

   2. Utility: must provide some type of benefit.

   3. Novelty: must be new

      1. Patents can be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” 35 U.S.C. 101.

      2. Cannot patent “laws of nature, physical phenomena, abstract ideas.” Diamond v. Chakrabarty

   4. Nonobviousness: must not be obvious compared with prior art.

   5. Must file application at PTO. Must disclose the invention.

      1. Invention must be disclosed to:

         1. Helps review whether novel, non-obvious, useful

         2. Facilitates uses building upon this

         3. Facilitates development of competing things

2. DNA

   1. Cannot patent “laws of nature, physical phenomena, abstract ideas.” Can patent life – as a “manufacture or composition of matter” under 35 USC 101 – if it is “markedly different” from what is found in nature and thus a “product of human ingenuity.” Can be “ ‘anything under the sun that is made by man.’ ” Diamond v. Chakrabarty

   2. Ass’n for Molecular Pathology v. US PTO and Myriad Genetics (Fed. Cir., August 2012): DNA can be patented if “isolated” from nature

3. Rights of Patentee: Right to exclude others from practicing the invention, for 20 years from filing. Excludes even those who independently develop.

   1. Purpose: encourage new inventions

      1. Inventors profit from their work by selling/licensing patent rights

      2. Society benefits directly through spur to innovation and disclosure of patented invention (after term of patent, innovation becomes part of public domain – freely available to all)

4. Duration of patent rights: 20 years from the date the patent application is filed.

Copyright

1. Constitutional basis: Article I, Sec. 8. “The Congress shall have Power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

2. Copy right requirements: 17 U.S.C §102: Copyright protection for original works of authorship fixed in any tangible medium of expression.

   1. Originality: the work must be (1) an independent creation of the author and (2) demonstrate at least some minimal creativity

      1. Compilations and derivative works can be copyrighted if they display sufficient creativity

   2. Work of authorship

      1. Literary works

      2. Musical works

      3. Dramatic works

      4. Pantomimes and choreographic works

      5. Pictorial, graphic and sculptural works

      6. Motion pictures and other audiovisual works

      7. Sound recordings

      8. Architectural works

   3. Fixation: any physical rendering of the fruits of creative intellectual or aesthetic labor. (tangible medium)

3. What is NOT protected by copyright?

1. Works that have not been fixed in a tangible form of expression

   1. E.g. choreographic works that have not been notated or recorded, improvisational speeches/performances that have not been written or recorded, stand-up comedy, magic tricks

2. Titles, names, short phrases, slogans

3. Familiar symbols or designs

4. Mere variations of typographic ornamentation, lettering, coloring

5. Mere listings of ingredients or contents

6. Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, devices, as distinguished from a description, explanation, or illustration

7. Works consisting entirely of info that is common property and containing no original authorship

   1. standard calendars, height and weight charts, tape measures and rulers, lists or tables taken from public documents or other common sources

8. Rationale: copyright protects the form in which an idea is expressed, not the idea itself.

4. Rights of copyright owner: 17 U.S.C §106: the owner of copyright has exclusive rights to do and to authorize:

1. To reproduce the copyrighted work

2. To prepare derivative works based upon...

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