#11073 - Intellectual Property - Property

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

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 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

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

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)

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

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.”

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)

What is NOT protected by copyright?

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

Titles, names, short phrases, slogans

Familiar symbols or designs

Mere variations of typographic ornamentation, lettering, coloring

Mere listings of ingredients or contents

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

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

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

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

To reproduce the copyrighted work

To prepare derivative works based upon copyrighted work

To distribute copies of copyrighted work to public by sale or other transfer of ownership

To perform the copyrighted work publicly

To display copyrighted work publicly

“Compulsory licenses” for music (copyright holder can’t refuse to grant license, but is compensated)

Duration of the rights: Right to exclude copies for life of author plus 70 years; or if made for hire, for 95 years from publication or 120 years from creation, whichever is less. Extended by Sonny Bono Copyright Term Extension Act (1998)

Controversial when extended – applied retroactively to producers who passed away (not providing incentive to produce any more – they are dead)

Infringement of copyright: the copyright owner must prove:

He owns the copyright

D copied the work

1. Copying can be proved by showing that:

   1. The defendant had access to the work, and

   2. The defendant’s work is similar enough to the original work

The copying was an improper appropriation

Devices for copying

VCRs: Sony v. Universal City Studios, 464 U.S. 417 (1984) (“Betamax”): OK because substantial non-infringing uses (“time-shifting,” personal use, uncopyrighted material)

Defense to infringement: Fair Use

17 U.S.C §107: The Fair use of a copyrighted work, including such use by reproduction . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

“such as” indicates that this is a non-exhaustive list

In determining fair use the 4 factors to be considered:

Purpose and character of use, including whether such use is of a commercial nature or is for nonprofit educational purposes.

Nature of the copyrighted work.

Amount and substantiality of the portion used in relation to the copyrighted work as a whole.

The effect of the use upon the potential market for or value of the copyrighted work.

Parody

Campbell v. Acuff-Rose Music: commercial parody can be fair use.

Value in comment and criticism

When criticism is negative, original owner unlikely to grant permission

Fair use allows parodist to use work without being blocked.

Parody’s humor necessarily springs from recognizable allusion to its object through distorted imitation.

Parody must be able to “conjure up” at least enough of original to make object of its critical wit recognizable

Remedy

1. Injunction

2. Impoundment and destruction of all infringing copies

3. damages

INS v. AP: Utilitarian - (if INS won, no incentive to do gathering of news and reporting to newspapers).

MLK

Formalistic – what acts constitute general publication? Mere performance of speech does not make it general publication (loose-fish).

Utilitarian

If speech has utility – want wide access

Incentive argument – incentive to produce speech in first place – otherwise no speech

However, MLK has other incentives to produce the speech, there is no need to use copyright as an incentive

Personhood

Being able to use speech in way he wants

Copyright protection could enable MLK and estate to control use of message to keep it true to civil rights philosophy.

Smith v. Chanel: perfume

Perfume is the scent of Coco Chanel: personhood theory

tie it closer to the dignity of the individual

Publicity/ Personna

Vanna white v. Samsung: Kozinski, dissenting - Overprotection of IP stifles the very creative forces it’s supposed to nurture.

Celebrity images in video games: athletes, performers: they want to control the use of their image

Public...