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Introduction to Intellectual Property
St. Johns University School of Law
Varadarajan, Deepa

Varadarajan, Intro to IP, Spring 2012


-Utilitarian/economic incentives

· incentives to invent/create

o primary rationale for ip law

o Constitution Article I Section 8

§ “The Congress shall have power…

ú 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…

o Maser v. Stein

§ Focus on public, not to reward for the creators’ labor but to make sure that have proper incentives to engage in the creation/labor


o Recognition/award/prestige

o Altruism/benefit to humanity

o Government funding

§ This requires government selection (ex. identify certain areas that need to be funded and need inventive efforts)

§ A number of inventions where the government couldn’t have recognized a need that would have funded (ex facebook) [biases of government decision makers]

o Getting there first

§ Ex. fashion (there are certain benefits of being first)

§ There may be other business advantages (like the first mover advantage) that can provide sufficient enough incentive to create

o Imitation costs are really high

· reduce consumer search costs (trademark)


· natural rights/reward to labor (Locke)

o “Every man has a “property” in his own “person” The “labour” of his body and the “work” of his hands, wa may say, are properly his” [locke]

· personhood (Radin)

o certain things so wrapped up in our identity that mere economic compensation wouldn’t make up for the loss of it

-Social Costs of IP and potential alternatives

· Less competition, higher prices

· Deter improvement

· Suppression of technology

– The “tort” structure of IP Doctrines

· (1) requirements for the ip rights (in torts = is there a duty?)

· (2) infringement of the ip owner’s rights (in torts = is there a breach of a duty?)

· (3) defense (in torts = is there a justification for what I’ve done)

· (4) remedies


Trade Secret

· creature of state statute

· protects companies from the misappropriation of certain kinds of confidential business information (ex. scientific formulas, customer lists, marketing strategies)

· protects from competitors, departing employees, etc.


· creature of federal statute (but federal courts play important role in the interpretation of the statute and telling us what each of those requirements are all about)

· inventor has to submit a patent application demonstrating that the invention meets certain requirements

· term up to 20 years


· like patent law, largely creature of federal statute

· covers forms of artistic and literary expression (books, movies, songs, computer programs)

· gives the owner the exclusive rights to copy (etc.)

· doesn’t require any formal registration process

· longer period


· largely federal statute

· covers company names, symbols, logos that identify the source of the goods

· don’t have to register their mark (although doing so carries some benefits with it)


Trade Secrets Overview

· Elements of a Trade Secret Claim =

o Protectable Subject Matter

§ Very broad subject matter (includes technical and business info); must have value; must be “secret” (not generally known/readily ascertainable)

o Reasonable Efforts to Maintain Secrecy

§ Context-dependent – eg restricted access, legend, confidential Ks, password protections, other forms of notice to employees

o Misappropriation

§ By “improper means”

§ By breach of confidential relationship

ú Express in contract or implied by circumstances

ú Problem of employee mobility and right to earn a livelihood

§ Defenses

ú Proper means à eg reverse engineering, independent creation

-Definition of Trade Secret

· A trade secret is “information including a formula, pattern, compilation, program, device, method, technique or process that (1) derives actual or potential economic value from the fact that it is not known or readily ascertainable by others; and (2) is subject to reasonable efforts to maintain its secrecy.”

-Theories of Trade Secret Protection

· Incentives to create

· Incentive to disclose/share info

· Commerci

s behind whether info is protectable subject matter:

§ Is the information or idea secret?

§ Does the information or idea have competitive value?

§ These 2 issues are the focus of 6 factor balancing test to determine if info is protectable subject matter [Restatement of Torts § 757]:

ú (1) How widely is the idea/information know outside business?

· It isn’t necessary that no outsiders know the information

· Information must be substantially secret

ú (2) Who within Who within π’s company knows the idea/information?

· Info may be disclosed to select employees and others within company, but should be done on need-to-know basis

ú (3) What measures has π taken to ensure the secrecy of the idea/information?


ú (4) How difficult would it be for others properly to acquire or duplicate the idea or information?

· If the info/idea could be easily learned through reverse engineering, then it’s probably not protectable as a trade secret

· Public disclosure automatically ends the protection for the info:

o Patenting the invention or secret

o Publication in academic/trade journal or on the Internet

o Selling a commercial product that embodies the secret, or if disclosure takes place freely (without requiring confidentiality) during the manufacture or development of the product.

o Public disclosure by someone other than the inventor. For example, if a second inventor comes up with the same invention and publishes it, she defeats not only her right to trade secret protection, but that of the first inventor as well.

o Inadvertent Disclosure, either by accident or carelessness even with reasonable secrecy efforts in place

o Government required disclosure to serve some other social purpose

§ list of food ingredients or pesticide