Intellectual Property Outline

Intellectual Property Outline: Table of Contents
 
Trade Secrets 1
Subject Matter 2
Metallurgical Industries Inc. v. Fourtek, Inc.
Rockwell Graphic Systems v. DEV Industries
(Defining Trade Secrets; 1986) 2 (Reasonable Efforts to Maintain Secrecy, 1991) 2
Misappropriation 2
E.I. DuPont v. Rolfe Christopher
Smith v. Dravo Corp.
Chicago Lock Co. v. Fanberg
Wexler v. Greenberg
(Improper Means, 1971) 2 (Confidential Relationship, 1953) 2 (Reverse Engineering, 1982) 3 (Departing Employees, 1960) 3
Patents 4
Copyrights 10
Requirements: Originality, Fixation, and Formalities 11
Originality 11 (Originality, 1991) 11
Fixation 11
Formalities 11
Subject Matter: Exclusions 11
Baker v. Selden
Morrissey v. Proctor & Gamble
Brandair International v. Cascade Pacific Lumber Co.
(Idea-Expression Dichotomy; 1879) 11 (Merger Doctrine; 1967) 11 (Useful article doctrine; 1987) 11
Subject Matter: Types of Goods 12
17 U.S.C. § 102: Subject Matter of ©: In General 12 (Compilation; 1970) 12
Ownership 12
CCNV v. Reid
(Works for hire; 1989) 12
Factors courts consider in deciding whether someone was an employee 12 (Joint works; 2000) 13
Duration and Renewal 13
Duration and Renewal 13
Exclusive Rights 13
Reproduction 13 (Copying; 1946) 13 (Improper Appropriation; 1930) 14 (Substantial Similarity; 1987) 14
Right to prepare derivative works 14 (Derivative Works; 1989) 14
Distribution Right 14
Public Performance and Display Rights 14
Moral Rights 14
Moral Rights in the U.S. – § 106(A) 14
Contributory Infringement 15
Contributory © Infringement 15 (Vicarious liability; 1996) 15
Fair Use 15
17 U.S.C. § 107: Limitations on Exclusive Rights: Fair Use 15 (Unpublished works; 1985) 15 (Videotaping; 1984) 15 (Parody; 1994) 15
Trademarks 16
Three elements of a trade secret claim:
Subject Matter
Reasonable precautions were taken to protect
Misappropriation
§
information capable of adding economic value to the plaintiff, and is not generally known
§
formula, pattern, compilation, program, device, method, technique, process
§
secret holder must be consistently diligent in protecting the information
§
information cannot be acquired through deception or theft
§
 
explicit and implied duties to protect secret can lead to wrongful disclosure
Underlying Theory
Freedom of contract; protection against unfair means of competition
Source of Law
State statute (e.g. UTSA); common law
Subject Matter
Formula, pattern, compilation, program, device, method, technique, process
Standard for Protection
Information not generally known or available; reasonable efforts to maintain secrecy; commercial value
Scope of Protection
Protection against misappropriation
Period of Protection
Until becomes public knowledge
Disclosure
Loss of protection
Rights of Others
Independent discovery; reverse engineering
Costs of Protection
Security expenses; personnel dissatisfaction; litigation costs
Licensing and Assignment
Discouraged by inherent nature of bargaining
Remedies
Civil suit for misappropriation; conversion; unjust enrichment, breach of K; damages (potentially treble) and injunctive relief, criminal prosecution for theft
 
Factors to consider in determining whether something is a trade secret:
Subject Matter
Metallurgical Industries Inc. v. Fourtek, Inc.
Issue
Holding
Factors used to determine trade secret
:: Yes. : do modifications fit the definition of a trade secret such that they should be afforded protection?
Rockwell Graphic Systems v. DEV Industries
Issue
Holding
Rationale
Notes
:Two different complimentary reasons we have trade secret law in the first place:: Posner is defining reasonableness in context – how much disclosure was necessary to make sure that the trade secret was used effectively and not wastefully. At what point would added precautions unduly impair productivity?: Maybe – not an issue for SJ.: whether Rockwell tried hard enough to keep its piece part drawings secret.
(Reasonable Efforts to Maintain Secrecy, 1991) (Defining Trade Secrets; 1986)
o
M’s efforts to keep secret its modifications was important b/c security measures cost money, and a manufacturer therefore wouldn’t incur these costs if it believed that its competitors already knew the information they were trying to protect
o
the trade secret holder can divulge his information to a limited extent without destroying status as trade secret. Otherwise, the holder’s ability to profit from his secret would be greatly limited. Factors to determine if limited disclosure:
·
disclosures were not public announcements; M divulged its information to only two businesses with whom it was dealing
·
the disclosures were made to further M’s economic interests
o
M can show value of the modifications and the cost of developing the secret device or process. Court says this criteria shows the equitable underpinnings of this area of law. Only fair that one should be able to keep and enjoy the fruits of his labor.
o
defendant based perspective
o
 
plaintiff based perspective
Misappropriation
See
E.I. DuPont v. Rolfe Christopher
Issue
Holding
Rule
Rationale
Notes
: Ways to legally obtain a trade secret: (1) discover it on your own; (2) buy a product and inspect it; (3) reverse engineer it.: we should not require a person or corp. to take unreasonable precautions to prevent another from doing that which he ought not to do in the first place.: 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. : Yes, it is. : whether ariel photography of plant construction is an improper means of obtaining another’s trade secret
Smith v. Dravo Corp.
Facts
Issue
Holding
: Yes. P disclosed their design for one purpose – to enable D to appraise it with a view in mind of purchasing their business. There can be no question that D knew and understood this limited purpose.: Was there a confidential relationship between the parties, even though there was no express agreement?: P and D were in contact regarding D’s possible purchase of P’s business. D didn’t buy, but allegedly used info he got while in contact to create similar product, sold to customers that he was told about by P.
Chicago Lock Co. v. Fanberg
Issue
Holding
Rationale
Notes
Reverse engineering part of trade secret law would create a sort of never ending patent without the process of the patent system. TS law does not protect against independent invention b/c of this.
: there was no