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Intellectual Property
Temple University School of Law
Post, David G.

Intro to Intellectual Property- Post

Misappropriation of ideas claim (submission of ideas)- Nadel
Familiar submission of idea case
a.      Parties enter into a pre-disclosure confidentiality agreement
b.      Idea is subsequently disclosed to prospective buyer
c.       No post-disclosure contract for payment based on use
d.      Plaintiff sues defendant for allegedly using the disclosed idea under either a contract-based or property-based theory
II.                Misappropriation claim (property theory)- a misappropriation claim can only arise from the taking of an idea that is original or novel in absolute terms
a.       unoriginal, known ideas have no value as property and the law does not protect against the use of that which is free and available to all (if so unoriginal, knowledge imputed to the buyer)
i.      “Since non-novel ideas are not protectible as property, they cannot be stolen”
b.      Determining whether an idea is original or novel depends on
i.      The ideas specificity or generality (is it generic concept or one of specific application)
ii.      Commonality (how many people know of this idea)
iii.      Uniqueness (how different is this idea from generally known ideas)
iv.      Commercial availability (how widespread is the idea’s use in the industry)
III.             Contract claims concerning submission of ideas –require only a showing that the disclosed idea was novel to buyer in order to find consideration
a.       To recover for breach of contract, P must demonstrate some causal connection between his disclosure and D’s use of the idea (where there is an independent source for the idea used by the defendant, there may be no breach of contract, and the P has no claim for recovery)
i.      Such claims involve fact specific inquiry focusing on perspective of the particular buyer

Trade secret- Metallurgical
I.                   Definition- trade secret- may consist of any formula, patter, device, or compilation of information which is used in one’s business, and which gives him an opportunity to obtain an advantage over competitors who do not know it
a.      must show secrecy (must show the thing fighting over is a trade secret)
i.      showing a trade secret- necessary elements
1.      no prior public disclosure
a.       exception: “limited disclosures”- to further their economic interests (“in appropriate circumstances”)
2.      Value
a.       has to give you the opportunity to obtain an advantage over competitors
3.      Cost of developing secret or process
4.      Has to be used in one’s business
b.      must show it was misappropriated
i.      must show that it was improperly used or disclosed
1.      Improper- One who discloses or uses another’s trade secrets, without a privilege to do so, is liable to the other if his disclosure or use constitutes a breach of confidence reposed in him by the other in disclosing the secret to him- confidentiality- D reposed a confidence in P in disclosing the secret
II.                3rd party liability- for 3rd party to be liable for misappropriation of trade secret it must benefit- evidence that purchaser put the trade secret into commercial operation, and thus benefited from any misappropriation.

Copyright Infringement Outline
Does X have an infringement claim against Y

I.       To bring a claim for infringement one must have a registered © 
a.       § 408(a): owner of a copyright or any exclusive right in work may obtain a registration of the copyright claim.
b.      § 411 (b) no action of infringement may be brought until the copyright claim has been registered.
c.       § 410 (c) A certificate of © registration will be prima facie evidence of © ownership. Switches the burden of persuasion to the D
d.      § 411- says you must file registration before brining infringement suit
e.       § 412- says that you do not get statutory damages or attorney fees for infringements taking place prior to the registration

[Note: this does not mean that works are not protected by copyright until registration; protection begins at “creation”; but no infringement claims can be filed before registration]
II.    Does © subsist in the work:
a.       Rule: § 102 (a) – Copyright subsists in original works of authorship fixed in a tangible medium of expression. [Leads to 2 new issues] 1.        Whether it is an original work of authorship
Bell v. Catalda- No large measure of novelty is necessary for copyright of book, but word “original” in reference to copyright means that particular work owes its origin to the author.
Feist- Originality, not “sweat of the brow,” is touchstone of copyright protection in directories and other fact-based works; copyright rewards originality, not effort.
Bell v. Catalda- Constitutional provision and statutory provisions relating to copyrights are satisfied if author contributes something more than mere trivial variation in previous work, and work may be copyrighted if there is something recognizably the author’s own and not mere copying of another work.
Bell v. Catalda- author is entitled to copyright if he independently contrived work completely identical with what went before, and conversely, although he has obtained valid copyright author has no right to prevent another from publishing work identical with his, but not copied therefrom.
Bell v. Catalda- All that is needed to satisfy both the Constitution and the statute is that the ‘author’ contributed something more than a ‘merely trivial’ variation, something recognizably ‘his own. Originality in this context ‘means little more than a prohibition of actual copying. No matter how poor artistically the ‘author’s’ addition, it is enough if it be his own.
Feist- In order for a work to meet originality requirement for copyright protection, the level of creativity required is extremely low, and work satisfies that requirement as long as it possesses some creative spark, no matter how crude, humble or obvious it might be; originality does not signify novelty.
Rockford- A photograph may be copyrighted, even though it is the work of an instant and its significance may be accidental.
A.    Subject Matter- Ideas are not copyrightable, only expression
Feist- No matter how original the format of factual compilation, the facts themselves do not become original through association, for purposes of copyright protection.
Feist- Factual compilations may possess required originality to qualify for copyright purposes; choices as to selection and arrangement, if independently made by compiler and entailing minimal degree of creativity, are sufficiently original to be subject to protection under copyright laws.
B.Works building on copyrighted works
Rockford- Copyright covers only the incremental contribution and not the underlying information.
Rockford- Right of second compiler to “check back” his independent work upon the original compilation does not imply a right to start with the copyrighted work; second compiler must assemble material as if there had never been a first compilation, and only then may second compiler use the original compilation as a check on error.
Rockford- Arrangement of information in a derivative work is copyrightable to the extent that it is not in the original work.
C.Limits to Copyrights- Do not protect ideas- not patents
Baker v.Selden- The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell and use account-books prepared upon the plan set forth in such book.
Baker v. Selden- Where the truths of a science or the methods of an art are the common property of the whole world, any author may express the one or explain and use the other, in his own way.
Andrien- Copyright is available only for expression of work of authorship, not for mere idea
2.        Whether it is fixed in

02 – Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.
Columbia pictures- Since exclusive rights granted by Copyright Act are separate and distinct, and are severable from one another, grant of one does not waive any of the other exclusive rights.
IV.Violation of one of my § 106 bundle of sticks
a.       Rule: to prove violation need to show copying and substantial similarity
1.    § 106 rights = [“copying”] A.    reproduce in copies or phonorecords
B.     prepare a derivative work based on copyrighted work
C.     distribute to copies or phonorecords of the copyrighted work to the public by sale or lease or other transfer of ownership
D.    you performed publicly (literary, musical, dramatic, choreographic works, pantomimes, and motion pictures, or other audiovisual works
E.     you displayed publicly (literary, musical, dramatic, choreographic, pantomimes, pictorial, graphic, sculptural [including individual images] See Defenses – § 109(c)
–          109- (final sale doctrine) the owner of a particular copy lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that copy publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.

F.      to perform publicly by means of digital audio transmissions in the case of sound recordings
i.        To Perform or Display work publicly – § 101
(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or
(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.
2.    My Work: Sheldon- Person is not tortfeasor as against earlier author unless he pirates such author’s work- Sheldon- Unconscious plagiarism is as actionable as deliberate plagiarism.
A.    Proof of copying- Arnstein- In action to recover damages for infringement of copyrights to musical compositions, elements essential to plaintiff’s case included that defendant copied from plaintiff’s copyrighted work and that copying, if proved, constituted improper appropriation
Selle v. Gibb-  In establishing claim of copyright infringement of musical composition, plaintiff must prove ownership of the copyright in the complaining work, originality of the work, copying of the work by the defendant, and a substantial degree of similarity between the two