IP Outline
Introduction – Major Themes in IP
Multiplicity
· 5 types of regimes:
Trade Secrets: Protects concrete information of economic value.
Based on common law and state statutes
Trademark: Protection of words, symbol, devices adopted and used to id. goods and distinguish them from others.
Lanham Act-Federal, unfair competition
Rights of Publicity: Exclusive control over commercial use of his or her identity, name, or image. Moral Rights are examined too.
Common law/state statutes
Laboratory for a small IP regime
Copyright: Grants holder exclusive right to reproduce, distribute perform, display, or license his or her work.
1976 Copyright Act
Analysis of the copyright clause of constitution.
Patent law: Confers rights upon new and useful process, machine, manufacturing or composition. Issues of what is patentable and infringement.
Heavily administrative regime. U.S. Patent and Trademark Office.
Annotation:
This kind of multiplicity allow complex lawyering strategic
they conflict with each other à sorting through preemption;
· Sources of Law: 1) common law, 2) state statutes, 3) Federal statutes, and 4) International statutes;
· Jurisdictions: State and Federal Courts
· International jurisdictions: e.g. TRIPs
Origins of IP: Justification
3 justifications
Labor Theory-John Locke (2nd Treatise of Gov’t.)
Value is added by investment of labor
Words belong to everyone (public domain) but you take those words and manipulate them so they become protected.
No harm proviso: You may take from the pot but only as long as you do no harm
Personality Theory-Hagel
Ongoing relationship with certain objects and you have certain rights to the object because you vested it with your personality
Utilitarian-Jeremy Benthem
Promoting Innovation and Creativity:
Private market economies would not have investment for new ideas if IP was not protected.
Therefore, creators must either
Be able to sell their new idea
Or utilize it to a comparative advantage without competitors finding out
Goal of IP
· Protect new/improved goods and therefore incentivize creation/invention
· Prevent unfair competition and maintain integrity in marketplace;
· Promote disclosure of ideas into public domain;
Basis for IP Rights – Unfair Competition
· Misappropriation – protection against direct competitor;
· Trade Secret à quasi-property right, common law protection as basis;
· TM à palming off = misrepresenting something for something which is not (trick somebody to purchase something);
Private Rights vs. Public Goods
· IP – rights are property rights
· Right to exclude, exhaustion of rights
· Goal: keeping “private rights” in balance with “public goods” à general factors: transaction costs, rent seeking and fencing cost
Cases in this conjunction
INS v. AP
Pitney-Misappropriation is at issue (quasi property right) (labor theory justification) Remedy is time limited injunction
Holmes-Reputation is at issue (similar to palming off, real property right that already exists in law) (personality theory justification) Remedy is attribution
Brandeis (dissent)-Statutory quid pro quo; state must decide (utilitaries theory justification) Remedy is monetary damages with accordance to the significance of the appropriate news. Purpose of IP is to grant limited monopoly
What type of protection should be afforded:
Court holds for P bcs. INS is taking AP’s work as a competitor not individual. This is an unfair trade practice (common law protection)
Alternative is that once AP publishes its bulletin, it is allowing the work into the public domain
Courts test to determine if there is a “hot news” protection:
P generates information at a cost (labor). (maybe-cost of salary etc.)
Time sensitivity (for P)
Free riding by the D (for P)
Direct competition (maybe-NBA has potential direct competition)
Free riding harms incentives (for D)
Necessary to recognized dual character of the news
Substance of information
Particular form or collocation of words in which writer communicates
Copyright v. misappropriation
Copyright: Property Right: Protected against the world.
Protects the actual fixed expression
Misappropriation: Quasi-property right: Therefore all AP has is protection against its direct competitor.
Protects just the facts
In NBA v. Motorola (105 F.3d 841) à after ©1976 “preemption” case: “We hold that the surviving “hot-news” INS-like claim is limited to cases where: (i) a plaintiff generates or gathers information at a cost; (ii) the information is time-sensitive; (iii) a defendant’s use of the information constitutes free riding on the plaintiff’s efforts; (iv) the defendant is in direct competition with a product or service offered by the plaintiffs; and (v) the ability of other parties to free-ride on the efforts of the plaintiff or others would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.”
Sears v. Stiffel Company
Stiffell (P) brings suit against Sears (D) after it secures design and mechanical patents to a pole lamp. Later this patent is declared invalid by District Court for the Northern District of Illinois (ND Ill.)
Why is this not patentable?
In some ways, this simply is not good enough.
Sleeping on rights
, TS protects the wrongful access of information.
Generally state law
Inherent tension between TS and PAT-you can either disclose and get patent protection, or keep it a secret and hope that you qualify for TS
Remembering though that sometimes you have no choice-customer lists aren’t patentable but still need protection.
Patents are also far more expensive initially
Note that TS doesn’t necessarily address ownership. So many times whether there was wrongful appropriation depends.
TS protects misappropriation
Negative know how-knowledge of what not to do- is not protected
Theories on TS:
Utilitarian
Protecting against theft of proprietary info. Encourages investment in such information.
Similar to view that trade secrets are a form of property.
Tort Theory
Trade secret law’s goal is to punish and prevent illicit behavior, and even uphold reasonable standards of commercial behavior.
Duty based theory that is often called the maintenance of commercial morality.
Idea that D stood in confidentiality with P and breached his duty of confidence.
Tort theory also merges the duty element of a breach of contract.
Contract law:
“breach of confidence” generally explicitly stated in a contract;
this merges in the tort-based theory of breach of duty;
TS claim requirements (in general):
Valuable information (i.e. any economic value)
Not known to others (“secret”)
Reasonable precautions
Prove that D acquired the (secret) information wrongfully à D must have “misappropriated” the TS
TS: Standards of Common Law Protection
Metallurgical v. Fourtek-carbine processing case: District Court held TS was not applicable to information bcs. it was too general. 5th Cir. reverses and says that holder of TS can divulge information to limited extent without destroying status of TS. Example of where holder can communicate to employee bcs. of duty of confidentiality and disclosure was made to further economic interest.
Trade secret claim has 3 elements:
