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

Intro to IP, Fall ’10

David Post, Temple University

1) Intro Cases

a) Leuddecke v. Chevrolet

i) P: gives ideas to Chevy to balance car, they implement some of his ideas, he sues for breach of implied warranty

ii) Court upholds Chevy demurrer (even taking P’s facts as true he has no claim)

(1) No consideration, Chevy promised nothing so no contract

(2) Also they asked for design or drawings, these were not furnished

b) Nadel v. Play by Play Toys

i) Nadel shows toy idea to guy at Play by Play and he sues b/c they use it to develop a new toy

ii) Nadel has contract and property claim

(1) Contract claim – implied contract from industry custom, he must show idea was novel to buyer.

(2) Property claim – his idea must have been novel in general. This is a misappropriation claim.

c) These intro cases set up what intellectual property cases are going to try and protect.

2) Copyright

a) Statutes

i) §101: defintions

ii) §102: subject matter of ©

(1) §102b: no copyright in ideas/facts/methods/processes etc

iii) §103: subject matter of © in derivative works,

iv) §106: exclusive rights in ©

v) §107: Fair use defense

vi) §109(c): first sale: defense to §106, if you lawfully own a copy you can display it

vii) §201: who owns the ©

(1) §201a: authors of a joint work are coowners of the © in the work

viii) §501b: to bring an infringement claim the © must be registered.

b) Eldred v. Ashcroft: origin of © law / purpose

i) Eldred is suing saying the CTEA( © Term Extension Act) is unlawful, it extended new and old © 20 years

ii) Court used rational review b/c they said this was not violating 1st amendment and under rational review it passed.

iii) © promotes progress of science by protecting works for a period time before disseminating them to the public

c) Copyright Law Changed in 1976

i) Begins @ moment of creation, and extends for life of author plus 70 years

ii) Definition of © Terms §101

iii) When is a work created?

(1) When it is fixed in a copy or phonorecord for the first time

(2) When is it fixed?

(a) A work is fixed in a tangible medium of expression when its embodiment in a copy or phonorecord by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than the transitory duration.

(b) “Copies” are material object, other than phonorecords, in which a work is fixed by any method now known or later developed and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of machine or device. The term copies includes the material object, other than a phonorecord, in which the work is first fixed.

d) 3 elements of copyright claim

i) the work is protected by ©

ii) I owned the © worked

iii) What the defendant is doing violates my rights

(1) Proving infringement has 3 Steps

(a) Point to the right that D violated – point to the §106 right

(b) Show that the work was the copyrighted work (copied): evidenced by striking similarity and show D had access

(c) Substantial degree of similarity between the 2 works

e) §102: Subject Matter of © in General – Tells what types of works can be protected by copyrights

i) Copyright protection subsists in original works of authorship fixed in a tangible medium of expression

ii) This section also lists works of authorship, this list only provides samples, it is not exhaustive.

iii) Bell v. Catalda: only original works of authorship can be © / §103

(1) Bell sues Catalda for making lithographs of his mezzotints of paintings.

(2) Catalda say’s Bell’s works not original.

(3) Court holds that there is some original work by Bell and Catalda is just straight copying so Bell wins his infringment claim.

(4) The variations between the mezzotint’s and original works are enough for tints to be protected.

(5) Bell’s © only extends only to the elements he contributed to the work

(6) What if Bell made mezzotints of ©-ed works?

(a) Then if this use was illegal he could have no ©,

(b) §103: If your work is a derivative work you have no © on any part of the work that uses the original work unlawfully. Also your © would only extend to what you contributed.

iv) Burrow-Giles Lithographic Company v. Sarony: © extends to photographs

(1) Picture of Oscar Wilde that Sarony took.

(2) Issue: Does © protection extend to photograph?

(3) Court says yes, there are original elements to photos, like lighting and arrangement; it is not just mechanical capture.

(4) HYPO: Security camera protected by ©? No this seems more like just mechanical copying of what is there.

v) Feist Publications v. Rural Telephone Co: Facts are not protected by ©

(1) Facts: Rural has monopoly as telephone provide and then make a phone book, Feist makes a telephone book too and takes listings from Rural’s book, Rural sues.

(2) Feist does not dispute that they copied but the say that book is not protected by ©

(3) Court Agrees: there was nothing original: they selected everyone to be in and arranged by alphabetical order.

(4) Facts are not protected by ©. Factual compilations can be ©-ed but only the selection and organization would be protected and only if they were original

vi) Baker v. Selden: §102b – “In no case does © protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle or discovery / MERGER DOCTRINE

(1) Selden wrote a book about bookkeeping, that has forms for the system in the back of the book and they system is really solid.

(2) The book is protected by © but only the expression of the system is protected not the system itself.

(3) Baker writes a book and takes Selden’s forms, and Selden wants the forms to be protected by ©. Selden argues the forms are like a drawing and therefore should be protected

(4) Court says no, that forms are

r was it not a work for hire so Reid owns the ©?

(3) 2 Ways something is considered a work for hire

(a) work prepared by an employees within the scope of his or her employment

(b) or on the enumerated list

(4) CCNV says this is work for hire b/c Reid was employee

(5) Factors to consider to decide if someone is an employee: skill required, source of instrumentalities/tools, location of work, duration of relationship between parties, whether hiring party has right to assign additional projects to hired party, the extent of the hired party’s discretion over when and how long to work, the method of payment, the hired party’s role in hiring and paying assistants, whether the work is part of the regular business of the hiring party, whether the hiring party is in business, the provision of employee benefits, tax treatment of hired party.

(6) Court holds the Reid is not an employee and that he owns the ©

(7) Who owns the sculpture?

(a) It appears the CCNV probably owns the sculpture b/c they paid for it

(b) The owner of the © is independent of ownership right of the copy or the phonorecord in which the work is fixed.

iv) Copyright originally goes the author

(1) 3 ways to become the author

(a) you have creative conception and translate that into a tangible medium of expression

(b) work for hire – employer is considered the author

(i) work done by employee is course of employment

(ii) you commission work, it is one of the 9 enumerated work types, you have a writing saying it is a work for hire

(c) joint author

v) Joint works: §201(a) – authors of a joint work are coowners of the © in the work

(1) A joint work is a work prepared by 2 or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole

vi) Childress v. Taylor – Joint Authorship 3 Part Test

(1) Person gets Childress to write a play, she gives P some facts and added some new characters and some research materials. They have dispute and then Taylor gets another person to write a play on same person.

(2) Taylor says she is joint author so has right to license person to write another play but concedes that if this is not a joint work she is infringing.

(3) Court Holds that Taylor is not a co-author so she loses.

(4) Test for Joint Authorship

(a) Intent to merge contributions

(b) Intent to be bound as co-authors