Intellectual Property
Professor Ben Depoorter
Fall 2013 – UC Hastings College of the Law
Foundations of IP Law
Justifications:
1) Natural Rights (Locke, Labor Theory)
-you own your body, your labor, and material things you mix with your labor
-author/inventor’s labor creates IP > because creator owns labor it owns products of labor
-what types of labor qualify?
Copyright: creative expression, protection against copies and things substantially similar
Trademark: goodwill, protects against most uses
Patents: non-obvious labor, can give right to exclude
2) Personhood (Hegel, Moral Rights Theory)
-moral connection between creator and work
-novels, films, poetry, etc is personal expression
-very popular in Europe > later people cannot make alterations to work
3) Utilitarianism (Bentham, Utilitarianism)
-law should serve greatest good for greatest number > consequentialism: laws evaluated by consequences
Costs/Benefits of IP
a) Economic costs: high fixed costs in creating V. low variable costs (1 more), low cost copying (esp. digital work)
b) Fear: if no protection, there is no incentive to create
-If people can copy your work without making initial investment, they can just push you out of business
c) IP gives you an artificial monopoly over work > less people get access to cultural works > deadweight loss
-Delicate tradeoff of how much protection should be given
d) Information costs can stifle innovation > ppl don’t want to litigate patents OR run risk of infringing another’s
-Trademarks reduce information costs to consumers (confusion)
IP Rights as Incentives:
-IP incentives business in other areas (financing, production, marketing, distribution, etc)
-profits encourage IP production
-trademarks aligned with social incentives > work for good of consumers and don’t stifle competition
Policy Issues in Copyright and Patent Law:
-how much protection is needed?
-why aren’t there differences in IPR benefits for different types of IP subject matter?
-what about follow-up creators and innovators?
Copyright Law
Requirements of Copyright Protection (§102, Copyright Act):
1) Must be an original work of authorship
-independent creation + modicum of creativity = lowest standard of creativity/originality
-fictitious facts are wholly protected (all fabricated by author)
-photos have protection > creativity in exposure, angle, etc.
-NOT protected:
-Facts (arrangement can be, if paired with de minimis level of creativity)
-databases have limited protection to protect investment in fact-finding
-Ideas: the more abstract a concept, the more difficult to copyright
-“expressions” must be more specific (continuum of abstraction)
-Merger Doctrine: When there is one or only a few ways of expressing an idea, courts find that the idea merges with its expression and is NOT copyrightable (i.e. sweepstakes)
-Conceptual Separability (majority test below – Brandir):
-Functional Adaptation Test: What was designer’s purpose/intent choosing design at issue?
-Functional: Then design is “inextricably” linked with utilitarian function of article > NOT copyrightable (could get design patent)
-Aesthetics: If the design feature has use wholly separate from its utilitarian function, then the design IS conceptually separable (copyrightable)
-Minority Test: Would reas. person view design as utility or aesthetic (narrow)?
-Many criticize b/c doesn’t protect creative blended design >just last minute additions
2) In a tangible medium of expression
-Types, generally:
Literary works
Pictorial, Graphic, and Sculptural Works
Architectural works
Dramatic, Pantomimic, and Choreographic Works
-NO WAY to copyright move (quadruple lutz) > idea/expression same (merger)
-expression/delivery of jokes is copyrightable but not enforced (too difficul
Musical Works and Sound Recordings
Motion Pictures & Audiovisual Works
Derivative Works & Compilations
Are performances copyrightable if not fixed in medium?
3) Result: Protection of the Expression
-Low threshold for protection > easy to obtain
-Ownership of Work:
a) Works Made for Hire (Copyright Act of 1976 – §101):
(i) Work prepared by an “employee” within the scope of his employment
-“Employee” determined by common law agency principles
– Court must examine hiring party’s right to control manner/means of work:
-Factors include: duration of relationship, skill of work, location, extent of worker’s discretion, sub-employees and who hired, etc. -OR-
(ii) Fits within 1 of 9 categories (contrib. to collective work, movie/audio work, etc…)
-AND- Is evidenced by written agreement between parties that work is intended to be a “work for hire”
Result: Companies own work directly, employee doesn’t transfer title (automatic)
b) Joint Works:
i) copyrightable work
ii) prepared by two or more authors
iii) with intent that their contributions be merged into inseparable/interdependent parts of a unitary whole (at time of writing)
-Must be independently worthy of copyright > minor edits/changes not enough
-Co-owners of a copyright may each independently exercise rights of their copyright
Copyright Infringement
1) D copied from P’s work
-Can be shown by:
a) Direct evidence (saw D copy or he admits to it)
b) Circumstantial evidence D had access & work is substantially similar
-access = generally available to public -or- specifically available to D
-substantial similarity (objective) = look similar w/o any explanation but copying
-technical expert sees what chance there is of independent creation
c) Circumstantial evidence the works are strikingly similar (rarely, items are so similar access doesn’t need to be shown)
-Doesn’t matter whether there was intent to copy
-The more similarity there is, the more likely there was copying AND access
-Best to have access AND substantial similarity but enough similarity may be enough
2) Improper Appropriation (more difficult Q)
a) D took copyrighted expression (subjective substantial similarity)
i) Was something of value taken? (qualitative)
-only analyzes the copied parts of each work > some courts listen to whole feel of song
-if the copied portion is creative, then should not be copied
b) Would the audience for whom the works were intended perceive substantial similarities overall between D’s work and P’s protected expression
Arnstein: tests the subjective response of the average member of the intended audience
-for most works, non-expert testimony is given to prove substantial similarity
-children or technical specialists may be needed, depending on what type of audience the work is intended for
Depo: Would ordinary hearer expect original artist to get compensation?
Bridgeport: New case that requires payment for all samples (tough on rap)
Evidence in Substantial Similarity:
-take public polls, ask experts the chance of there being independent creation
-fake facts (ex. In code) give easy red flags of copying
-how many ways are there to express this idea?
C) Results:
-Wha
fiting by exploiting copyrights w/o paying
ii) Was the use in good faith?
-Harper, writer knowingly used parts of stolen transcript for article > weighed against
-If this weighs heavily against, other important factors can still make fair use
iii) Transformative Use? (adds something new, different message or expression)
b) Nature of the Copyrighted Work
-what is the underlying work like? (fiction weighs against, non-fiction/history in favor)
-the more creativity involved, the more protection
c) Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work as a Whole
-only allowed to use as much of work as you NEED
d) Effect of the use upon the potential market for or value of the copyrighted work
-Most important factor > how much is the author losing because of your use?
-Does transformative use pull into separate market?
-Broad: could this behavior potentially have later effect on value even if not now? (circular)
-American Geophysical: the cost of obtaining a license is considered > if cheap, weighs against
-If there’s potential future market for license/use of copyright, court should weigh against
-Bill Graham: Cts. looks at traditional markets and derivative markets (fair use) > broad or narrow-ness of these categories is difficult to determine (how different are markets?)
(NOT EXHAUSTIVE LIST > can also consider other factors)
-How much of the infringing work is copied and how much is author’s contribution?
-How much public interest in infringing work? (Pentagon Papers – fair use of unpub. work)
2) Parody (falls under Fair Use)
-MUST: a) Imitate and Reflect on Original Work,
b) Copy enough of Original to make Critical Commentary Recognizable to Audience
-Court looks at music, lyrics, etc. to determine
-Parody isn’t necessary for fair use, but helps > First and Third Factors of Test most important
-Parody v. Satire:
-“Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s … imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.
-Disney v. Air Pirates: if parody too similar to original/hard to distinguish (same title, characters, appearance), then weighs strongly against Parody
-Mattel v. Pitt: Dominatrix doll looked very similar to Barbie. Markets were VERY different > Mattel’s market share not affected (PARODY)
3) De Minimis Use
-Extremely brief use (just a few seconds) that was not severe enough to be infringement
4) Independent creation
5) Consent/license
6) Inequitable conduct
7) Copyright misuse > if copyright only serves to block others (bad faith)
8) First Amendment > contentious issue: courts must temper 1st Am. protection with IP rights
9) Statute of Limitations > 3 years from moment of infringement
