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Intellectual Property and Technology
Southern Illinois University School of Law
Schultz, Mark F.

Intellectual Property Outline:
(Spring 2009)
Office M-W 1-2PM
Overview Of Intellectual Property:
Principal Modes Of Legal Protection For Intellectual Work
Underlying Theory
Trade Secret
Freedom of contract; protection against unfair means of competition
Limited monopoly to encourage production of utilitarian works in exchange for immediate disclosure and ultimate enrichment of the public domain
Limited (although relatively long-lived) monopoly to encourage the authorship of expressive works; developed initially as a means of promoting publishing
Perpetual protection for distinctive nonfunctional names and dress in order to improve the quality of information in the marketplace
Source Of Law
State statute; common law
Patent Act (federal)
Copyright Act (federal); common law (limited)
Lanham Act (federal); common law (unfair competition)
Subject Matter
Formula, pattern, compilation, program, method, technique, process
Process, machine, manufacture, or composition of matter; plants; designs – excluding: laws of nature, natural substances, business methods, printed matter (forms), mental steps
Literary, musical, choreographic, dramatic, and artistic works limited by idea/expression dichotomy (no protection for ideas, systems, methods, procedures); no protection for facts or research
Trademarks; service marks; certification marks; collective marks; trade dress (§ 43(a)); no protection for functional features, descriptive terms, geographic names; misleading aspects; or generic names
Standard For Protection
Information not generally known or available; reasonable efforts to maintain secrecy; commercial value
Novelty; nonobviousness; and utility
Originality; authorship; fixation in a tangible medium
Distinctiveness; secondary meaning (for descriptive and geographic marks); use in commerce (minimal); famous marks (for dilution cases)
Scope Of Protection
Protection against misappropriation – acquisition by improper means or unauthorized disclosure
Exclusive rights to make, use, sell innovation as limited by contribution to art; extends to equivalents
Rights of performance, display, reproduction, derivative works
Exclusive rights in U.S.; likelihood of confusion; false designation of origin (§ 43(a)); dilution (for famous marks)
Period Of Protection
Until becomes public knowledge
20 years from filing (utility); extensions up to five years for drugs, medical devices, and additives; 14 years (design)
Life of author + 70 years; “works for hire”: minimum of 95 years after publication or 120 years of creation
Perpetual, subject to abandonment
Loss of protection (unless subrosa)
Right to patent lost if inventor delays too long after publishing before filing application; full disclosure is required as part of application; notice of patent required for damages
Copyright notice and publication no longer required, but confer certain benefits
Registration notice optional; establishes prima facie evidence of validity; constructive knowledge of registration, confers federal jurisdiction, becomes incontestable after five years of continuous use, authorizes treble damages and attorney fees, and right to bar imports bearing infringing mark
Rights Of Others
Independent discovery; reverse engineering
Only if licensed; can request examination by Patent and Trademark Office
Fair use; compulsory licensing for musical compositions, cable TV, et al; independent creation
Truthful reflection of source of product; fair and collateral use (i.e., comment)
Costs Of Protection
Security expenses; personnel dissatisfaction; litigation costs
Filing, issue, and maintenance fees; litigation costs
None (protection attaches at fixation); publication requires notice; suit requires registration; litigation costs
Registration search; marking product (optional – see above); litigation costs
Licensing And Assignment
Discouraged by inherent nature of bargaining (seller wants guarantee before disclosure) buyer wants to know what is offered)
Encouraged by completeness of property rights, subject to antitrust constraints
Assignor has termination right between 36th and 41st years following transfer
No naked licenses (owner must monitor licensee); no sales of trademark “in gross”
Civil suit for misappropriation; conversion, unjust enrichment, breach of contract; damages (potentially treble) and injunctive relief; criminal prosecution for theft
Injunctive relief and damages (potentially treble); attorney fees (in exceptional cases)
Injunction against further infringement; destruction of infringing articles; damages (actual or profits); statutory damages (within court’s discretion); criminal prosecution
Injunction; accounting for profits; damages (potentially treble); attorney fees (in exceptional cases); seizure and destruction of infringing goods; criminal prosecution (counterfeit goods)
Ø       Definitionà words, symbols, attributes, etc. that distinguish a product as coming from a single source.
Ø       Purposeà prevents consumer confusion.
Ø       Rightsà stop others from confusing consumers.
Ø       Nuancesà use trademark for logos.
Trademarks have started to evolve away from consumer products only.
Trade Secretsà secrets related to a product à valuable, useful secrets used to make things à build walls around them (contract laws, real laws, etc.). Has value from not being generally known or (not) readily ascertainable
Trade secret law does two things:
Ø       Protects against breaking down a wall.
Ø       Stops third parties from exploiting secrets gained through unlawful or improper means.
Trade secrets: held secret by reasonable precautions.
Ø       Only work for things that can be kept secret.  Commercial value.
Ø       Once the secret becomes public, it is no longer a trade secret and has no protection.
Ø       Can get around by reverse engineering and independent creation.
Ø       Misappropriation – taken by…improper means including various bad acts, breach or inducement of a breach of duty, espionage.
Ø       Rule: To obtain knowledge of a process without spending the time and the money to discover it independently is improper unless the holder voluntarily discloses it or fails to take reasonable precautions to ensure its secrecy.
Ø       Ra

s reward to the owner a secondary consideration.
Ø       Public good à May be consumed by many people, and it is difficult to identify those who will not pay and prevent them from using the information.
Ø       Lighthouse example.
Ø       Also national defense, broadcast TV signals, beautiful gardens on a public street.
Ø       Protection is necessary to encourage inventors, artists, and authors to invest in the process of creation, so we give exclusive rights for a while (economic incentives).
Problems with applying utilitarian/economic theory to IP:
Ø       Costs of limiting diffusion.
Ø       People can charge more.
Ø       Less diffusion of ideas.
Ø       Benefits one more than others (monopoly).
Lessigà Control And Creativity:
Ø       Two possible futures à one where creators have more control and one where creators have less control.
Ø       He advocates less control à less costs, more access would equal more creativity.
Ø       Free speech v. free beer à beer is a controlled resource, while speech is a free resource.
Ø       IP can never be depleted or exhausted à idea of commons free for all to use and draw from à critics fear fencing off the commons à Lessig sees it like putting up a toll booth around the commons where the creators get the tolls.
Ø       He is worried about increasing terms and new technology à perhaps technology is outpacing the law.
Ø       Lessig thinks stronger laws is a break from the past à used to try to balance the interests.
Ø       Minority view à but hard to find a legal academic that feels the opposite way.
WagneràTypes of information in IP:
Ø       Type I à the thing itself à protectable.
Ø       Type II à direct derivatives à protectable.
Ø       Type III à indirectly related information à not protectable à spillovers and stimulative.
Ø       Wagner believes with each new innovation, the commons grows because it spurs new ideas and innovations.
Ø       He believes you cannot create an absolute control over all of the information that will be leaked through similar works and stimulating more creative works.
Ø       Practical reasons à enforcement costs, norms (academia), intellectual property is not a monopoly (new expressions of underlying ideas), economics (give away software to get people to spend more money), technological and geographic limitations (cannot catch everyone singing your song).
Ø       Wagner has a hard time seeing where control folks would allow control since they admit IP is valuable.
Ø       Example à Survivor spins off more reality shows; Gone With The Wind spurred an interest in the Civil War and the South.