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Introduction to Intellectual Property
University of Cincinnati School of Law
Armstrong, Timothy K.

FALL 2013
                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                INTRODUCTION & CONSTITUTIONAL FOUNDATION
United States Constitution, Article I, Section 8, Clause 8:
The Congress shall have power … 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.
●        Which “exclusive rights” should Congress create?
○         “Science” – basis for copyright law
○         “useful Arts” – basis for patent law
●        must Congress act?  what happens if it does not?
○         USA:  Intellectual Property rights are things we grant b/c they are utilitarian in nature; we grant them b/c we want to accomplish something and/or benefit the public.
■         how is it utilitarian?  because humans can COPY things; copying is possible whenever a work is written down.
●        IP Law: We have to protect authors from copying, or they will not bother to create in the first place (due to copying) and then we ALL suffer.  Thus, the progress of science & the creative arts would suffer.
○         Europe: very strong tradition to protect the author’s “moral” rights b/c the idea is when you create something, that creation is actually a part of the author’s self; you are entitled to control what happens to your creations. — “The Law of Author’s Rights”
■         The Berne Convention – requires signatory countries to create various protections for IP; we all are supposed to be a unified, global framework for IP law/rights.  We are to work together to create one, harmonious standard for IP law.  We CANNOT imagine ourselves in an IP “bubble,” but rather take into account what other countries think about IP law.
●        how strong should the exclusive rights be?
○         balancing act – give authors/inventors incentive to create; however, not too much incentive b/c too much protection could cut off future invention/creation
○         another justification for IP law is
●        can Congress protect works that don’t “promote progress”?
○         the “promoting science” test works only in the AGGREGATE; it is NOT a test for each individual work.
●        what is a “limited time”?
●        what is a “writing”?
“Property” vs. “Monopoly” —- the tension b/t these two metaphors drives IP Law.
The Battle of the Metaphors
●        IP goods are “non-rival” – more than 1 person can have the goods
○         IP is a way of making non-rival goods become rival goods; allows markets to arise thru protection.
●        “Property” is essentially a metaphor, but it is not the only one
●        “Monopoly” is another competing metaphor (monopoly rights), especially with regard to Patent Law.
○         monopolies can be both good or bad for consumers.
Minimum Requirements of Copyrightability
1.       Baker v. Selden
a.        Facts: Selden (P) obtained a copyright for his book on “book-keeping”.  Selden sued Baker (D) for CR infringement
b.       Holding: Copyright does NOT cover systems, methods of operation, etc.  Selden cannot use the copyright system to obtain a Patent on his accounting system. (Later codified in`7 USC § 102(b) – In no case does CP protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work).
c.        TAKEAWAY → Ideas CANNOT be copyrighted, but expression of an idea can be copyrighted (idea vs. expression); Selden has a “THIN” copyright. — literally only protects the LITERAL thing (ex: photocopying his book)
2.       Feist Publications v. Rural Telephone Service → Originality – the Minimum Requirement
a.        Facts: Rural (P) provides phone service in NW Kansas; req’d. by state to issue an annually updated phone directory.  Feist (D) specializes in FREE phone directories w/ much larger geographical coverage, but got its coverage from asking 11 phone Co’s if they could use their directories (Rural said “NO!”, but Feist used it anyways).  Rural and Feist compete for yellow page ads
b.       Holding: Rural’s selection, coordination, and arrangement of its whitepages DO NOT SATISFY the minimum constitutional standards for constitutional protection; they are ENTIRELY TYPICAL (alphabetical by last name); the names/towns/numbers copied by Feist were NOT original to Rural and therefore are not copyrightable.  “The end product is a garden-variety white pages directory, devoid of even the slightest trace of creativity.”  “But there is nothing remotely creative about arranging names alphabetically in a white pages directory.”
c.        TAKEAWAY → (1) there is actually a constitutional minimal threshold for creativity/originality, and its not much; (2) post-Feist gives defendants the argument that “The plaintiff's work was not original/creative enough to warrant copyright protection.”; (3) “sweat of the brow” doctrine is DEAD; and (4) even though databases are costly, Feist makes it more difficult to have copyright protection for databases; companies has to take extra steps in order to obtain copyright protection (trade secrecy)
Statutory Protection  for Copyright
3.       Wheaton v. Peters
a.        Facts: Plaintiffs insist that an author was entitled at common law to a perpetual property in the copy of his works and in the profits of their publication & to recover damages for its injury.
b.       Holding: Concludes the author's rights which the parties were arguing about came out of the copyright act; copyright is NOT NATURAL.
c.        TAKEAWAY → ALL copyright protection and rights originate directly from STATUTE; all copyrights are grounded in statute.
Copyrightable Subject Matter
4.       Burrow-Giles Lithographic Co. v. Sarony → Photography
a.        Facts: Sarony (P) took several photos of Oscar Wilde while Wilde was on a public speaking tour and Burrow-Giles (D) got some of these photos and started making knockoffs of Sarony's work.
b.       Holding: Photographs are included in the class of inventions for which the Constitution intended Congress should secure to P the exclusive right to use, publish, and sell.
c.        TAKEAWAY → (1) “writings” means literary productions of authors – ideas in the mind of the author are given visible expression; (2) US Const. covers photographs b/c they are representative of original intellectual conceptions of an author (everything from Wilde's pose, background, etc. all qualify as creativity); (3) the photography is an original work of art & the product of the P’s intellectual invention of which he is the author (it came ENTIRELY from his own mental conception); and (4) But NOT EVERY photograph has this kind of creativity…
5.       Matthew Bender & Co. v. West Publishing Co. → Selection & Arrangement
a.        Facts: West Publishing (D) & HyperLaw manufacture & market compilations of judicial opinions stored on CD-ROMs w/ “star pagination”; Bender (P) creates & publishes printed compilations of fed & state judicial opinions.  Bender seeks judgment to declare star pagination will not infringe on West Publishing’s copyrights in its compilations of opinions.
b.       Holding: West concedes that a computer automatically inserts page breaks and assigns page #s – NO CREATIVITY, therefore, the volume & page #s are not original components of D’s compilations & ~copyrightable; Under Copyright Act, insertion of star pagination does NOT amount to infringement of West’s arrangement of cases. – “Prohibiting star pagination would simply allow West to protect unoriginal elements of its compilation that have assumed importance and value.
c.        TAKEAWAY → Court thinks this still looks like an attempt by West to support a “sweat of the brow” analysis; distinguishes the Mead case (“if there is value, there is a right”; just an existence of monetary injury was found enough to bring the challenged conduct into the scope of West’s property).  Pages numbers are incidents of a book, NOT of a literary work, and are non-expressive; should not magically become part of that work.
6.       Hoehling v. Universal City Studios, Inc. → Plots & Character

tified separately from, and are capable of existing independently of, the utilitarian aspects of that article. → 17 USC § 101
d.       113(a): If you have a copyrightable work, it doesn’t lose it’s protection because it’s used in a utility product.
10.    Brandir International, Inc. v. Cascade Pacific Lumber Co. → Useful Articles
a.        Facts: Brandir – original design of RIBBON Rack came from wire sculptures that its owner had created; displayed at his home for means of personal expression.  Levine’s (chief owner of Brandir) friend, Bailey, saw sculptures and said they would be good bike racks — Levien started promoting & advertising in ‘79.  In Nov. ‘82, Levine found out Cascade was selling a similar product → decided to get a copyright.
b.       Holding: RIBBON Rack, using Denicola’s test, is NOT copyrightable b/c: (a) form of the rack is influenced in significant measure by utilitarian concerns and thus any aesthetic elements cannot be said to be conceptually separable from the utilitarian elements; (b) RIBBON Rack in its final form is a product of industrial design; and (c) There remains no artistic element of the RIBBON Rack that can be identified as separate and “capable of existing independently of, the utilitarian aspects of the article.”
c.        TAKEAWAY → (1) Denicola Test for conceptual separability: if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements.  BUT, where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists; (2) court is focusing on the industrial purpose of the RIBBON Rack — (a) Cascade CHANGED the design in order to make it more useful for bikes and (b) Brandir did NOT put a copyright notice on it until after he saw people using his design for bike racks (seemed ad hoc); and (3) A lot of the times, the copyright does not protect the entire work.  Problems – There is a risk of pushing the Brandir test too far – you could say a lot of objects' design were inseparable from their functional purposes.
Legislative History:
1.       in 1976 Act, Congress thought software should be protected by copyright, but did not give a reason why
2.       setup a commission – The CONTU Commission
a.        go study and see if software should be protected by copyright
3.       CONTU Commission:
a.        did not have any members who knew a damn thing about computers
b.       the term “program” is an ambiguous term
c.        looked at programs for 2 years
i.         issued a report to Congress in 1978:
1.       should software be protected? YES – expensive to develop, cheap to copy (incentive theory)
2.       if so, protected by copyright? YES – neither patent law or trade secrecy work for software:
a.        patents – they are $$ and hard to get; also, overprotected and would stifle innovation if applied to software.  if certain basic programming techniques were able to be patented, nobody could ever use them.  programmers frequently borrow ideas, so if ppl could own parts of that process it would slow down software development
b.       trade secrecy – big drawback for software is that it is LOST when the secret is disclosed; very valuable when you plan to get the product locked up in a vault, but not for a product for which you plan to send out in mass distribution to the world