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Intellectual Property
St. Johns University School of Law
Sheff, Jeremy N.

Intro to IP – Sheff – Spring – 2013
IP Class Outline
Philosophical Foundations; Overview of Intellectual Property
What is “Property?”
• A system of rights and duties among people with respect to physical things.
• How might the legal concept of “property” apply outside the realm of physical things?
What is “Intellectual Property?”
• What non-physical “things” might be the subject of a legal system of “intellectual property?”
• Why might we want to apply property-like rules to such “things?”
• Moral Rights Arguments (“Natural Law”)
• “Personhood” Arguments
• Utilitarian/Economic Efficiency Arguments
Moral Rights Arguments for Intellectual Property
• John Locke, Two Treatises on Government
• “[E]very man has a ‘property’ in his own ‘person’…. The ‘labour’ of his body and the ‘work’ of his hands, we may say, are properly his.”
• “[T]his ‘labour’ being the unquestionable property of the labourer, no man but he can have a right to what that is once joined to, at least where there is enough, and as good left in common for others.”
“Personhood” Arguments for Intellectual
• Peggy Radin, Property and Personhood
• “[T]o achieve proper self-development—to be a person—an individual needs some control over resources in the external environment…. The person becomes a real self only by engaging in a property relationship with something external. Such a relationship is the goal of the person.”
• “One may gauge the strength or significance of someone’s relationship with an object by the kind of pain that would be occasioned by its loss…. [N]ot all object-loss is equally important. Some objects may approach the fungible end of the continuum so that the justification for protecting them as specially related to persons disappears…. [A] few objects may be so close to the personal end of the continuum that no compensation could be ‘just.’”
Utilitarian/Economic Efficiency
Arguments for Intellectual Property
• Thomas Jefferson to Isaac McPherson:
• “If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it….”
• “Inventions then cannot, in nature, be a subject of property. Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody.… [O]ther nations have thought that these monopolies produce more embarrassment than advantage to society….”
Utilitarian/Economic Efficiency
Arguments for Intellectual Property
• The Trade-Mark Cases:
• “The ordinary trade-mark has no necessary relation to invention or discovery.… It is often the result of accident rather than design… [b]ut in neither case does it depend upon novelty, invention, discovery, or any work of the brain. It requires no fancy or imagination, no genius, no laborious thought. It is simply founded on priority of appropriation.”
• George A. Akerlof, The Market for Lemons:
• “The purchaser's problem, of course, is to identify quality. The presence of people in the market who are willing to offer inferior goods tends to drive the market out of existence…. Brand names not only indicate quality but also give the consumer a means of retaliation if the quality does not meet expectations…. This ensures the prospective consumer of the quality of the product.”
Utilitarian/Economic Efficiency
Arguments for Intellectual Property
• U.S. Constitution, Article I, Section 8:
• “The Congress shall have Power…
• To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes; [and] • 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….”
Competing Philosophies
“A man writes…because it comes pouring out from his soul.”
– Anton Chekhov, The Seagull, Act IV
“No man but a blockhead ever wrote, except for money.”
-Dr. Samuel Johnson, quoted in James Boswell’s Life of Samuel Johnson
Alternatives to Property Rights?
• How else might we ensure

•In a Patent Application
•By selling an Embodiment of the Secret from which the secret may be readily determined
•By Others who have Independently Developed the Information
•By Accident
•By Order of Government
By “Improper Means”:
E.I. du Pont de Nemours v. Christopher:
“[O]ur devotion to free-wheeling industrial competition must not force us into accepting the law of the jungle as the standard of morality expected in our commercial relations.
Our tolerance of the espionage game must cease when the protections required to prevent another’s spying cost so much that the spirit of inventiveness is dampened.”
In Breach of a “Confidential Relationship”: Smith v. Dravo
Restatement (Third) of Unfair Competition § 41:
“A person to whom a trade secret has been disclosed owes a duty of confidence to the owner of the trade secret …if:
(a) the person made an express promise of confidentiality prior to the disclosure of the trade secret; or
(b) the trade secret was disclosed to the person under circumstances in which the relationship between the parties to the disclosure or the other facts surrounding the disclosure justify the conclusions that, at the time of the disclosure,
(1) the person knew or had reason to know that the disclosure was intended to be in confidence, and
(2) the other party to the disclosure was reasonable in inferring that the person consented to an obligation of confidentiality.”
Misappropriation: Defenses
“Proper Means”:
•UTSA § 1, cmt.:
• Independent Development
• Reverse Engineering
• Discovery under a license from the owner
• Observation of the item on public display
• Derivation from Public Literature
•Restatement (Third) of Unfair Competition § 43:
•Independent discovery
•Analysis of publicly available products or Information