Chapter1. Introduction
A. Philosophical Perspective (p.1-24)
1. IP is an intangible ownership.
a. Default rule is free to everyone except the subject of IP.
a. The reason why to protect IP is to benefit the public
b. What happened no patent law? everyone can reverse engineer – disadvantage to IP owner, but lower the price – advantage to consumer.
2. Philosophical Perspective
a. Utilitarian approach = Incentive Theory.
(1) Promoting Innovation and Creativity – balancing
(a) Economic Incentive Benefit
(b) Costs of Limiting Diffusion
(2) Clear in the Patent law.
(a) In order to provide incentive to invention. But it can go toward the monopoly, resulting in prices going up and less access of the public.
(b) Balance between incentive and the public. à you have to draw line b/t right and ethics
(c) Clear in Copyright law?
b. Labor theory of property? usually rejected in the U.S. Pursuant to this theory, patent right is absolute right
3. News Article – Consider 1st Amendment Free speech / Individual players’ publicity. / One who is Filming = presumptively owner of copyright
Southeast Conference
Bloggers
– Other people (i.e. ESPN) pay for right : we are going to lose money by putting video footage.
– Want to control over commentary
– Control over access
– Misappropriation
– Incentive to put money and time
– Creating/adding something new
– Promote SE’s product
– Share my thinking
– Using facts/news
– Dissemination of information : free speech concern
– More information is better in democratic society
– Anticompetitive
– Public benefit
B. Overview of Intellectual Property (p.24-31)
1. Trade Secret
a. Trade secret laws are state law doctrines that protect against the misappropriation of certain confidential information.
b. A form of private IP law under which creators establish contractual limitation or build legal fences that afford protection from misappropriation.
c. The information must be secret. Relative, not absolute, secrecy is required.
d. The owner must take reasonable step to maintain secrecy. à Once a trade secret is disclosed, protection is lost.
e. Misappropriation of trade sects in two circumstance.
(1) where the secrets were obtained by theft or other improper means.
(2) where they were used or disclosed by the defendant in violation of a confidential relationship.
f. It did not prevent competitors from “reverse engineering” à permitted.
2. Patent
a. 5 Requirement
(1) patentable subject matter
(2) usefulness,
(3) novelty
(4) non-obviousness
(5) disclosure sufficient to enable others skilled to make and use the invention.
b. An inventor must submit an application to PTO.
c. If the PTO grants the patent, the inventor obtains an exclusive right to make, use, and sell the innovation for a term of up to 20 years.
3. Copyright.
a. Covers literary and artistic expression : books, poetry, song, dance, dramatic works, computer programs, movies, sculpture, and paintings.
b. Ideas themselves are not copyrightable, but the author’s particular expression of an idea is protectable.
c. A work must exhibit a modicum of originality and be fixed in a “tangible medium of expression” to receive protection.
d. Copyright protection attaches as soon as a work is fixed.
e. Registration is not a requirement for validity, but US authors must register their works before filing an infringement suit.
f. The Copyright Act protects only against copying of protected expression.
g. A copyright last for the life of the author plus 70 years, or a total of 95 years in the case of entity authors.
h. The Copyright Act establishes compulsory licensing for musical compositions and cable television.
4. Trademark / Trade Dress
a. The Lanham Act protects words, symbols, and other attributes that serve to identify the nature and source of goods or services.
b. To receive trademark protection, an identifying mark need not be new or previously unused, but it must represent to consumers the source of the good or service identified. à purely identifying purpose.
c. Trademarks do not expire on any particular date but continue in force until they are “abandoned.”
d. The PTO examines trademark applications and issue trademark registration which benefits registrants prima facie evidence of validity, constructive notice to others, federal subject matter jurisdiction, and incontestability after five years of continuous use.
e. Federal trademark registration is not necessary to obtain trademark protection.
f. Infringement turns on whether consumers are likely to be confused as to the origin of the goods or services.
5. State IP Law – The Tor of Misappropriation
1. <INS v. AP> 248 U.S. 215 (1918) (p.854-863)
a. Issue : Is the publication for profit of news obtained from other news-gathering enterprises a misappropriation of a property right? Yes.
b. Rule & Application
(1) [R] Regarding the news as the material out of which both parties are seeking to make profits at the same time and in the same field, it must be regarded as quasi property, irrespective of the rights of either as against the public.
(2) In considering the general question of property in news matter, it is necessary to recognize its dual character, distinguishing between the substance of the information and the particular form or collocation of words in which the writer has communicated it.
(3) Such an article, as a literary production, is the subject of copyright.
(4) But the news element-the inform
(ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
3. Weakness of Trade Secret law
a. Encourage inventor to go to the patent law [federal law], rather than relying on trade secret law [state law].
b. Pervasiveness of the employment law problem
(1) Assignment agreement
(2) Trailer clause
(3) Confidential agreements
(4) Non competing agreements
(5) Not solicitation agreements (customers, employees)
4. Trade secret law is state law developed form tort law.
5. Theory of Trade Secrets (p.37)
a. Utilitarian : to protect the theft of proprietary information encourages investment in such information.
b. Deterrence theory : deterrence of wrongful acts. a tort theory
c. Property Rights : S.Ct. held that trade secrets were property – Reason: more tangible / assignable / form the res of a trust / passes to a trustee in bankruptcy / providing incentive to innovate
d. Tort law : a duty-based theory / the maintenance of commercial morality. à breach of confidence is the contract basis for trade secret law.
B. Subject Matter
1. Defining Trade Secrets (p.39)
(a) <Metallurgical Industries v. Fourtek, Inc.>
(1) If disclosure to others is made to further the holder’s economic interests, it should, in appropriate circumstances, be considered a limited disclosure that does NOT destroy the requisite secrecy.
(2) COA : π charged the ∆ with misappropriating its trade secrets.
(3) The Evidence of Secret.
(a) Expert witness testimony : good and enough? no b/c the other party’s witness can be adduced.
(b) Security measure.
1) Non Disclosure Agreement
2) Limited access to furnace
3) Legend / Signs.
4) Hidden from public view
(c) BUT, ∆’sDefense : Information concerned is disclosed to licensees/ already known to the public.
(d) BUT, π’s Counter claim: this is (1) Limited, (2) to get Economic gain.
(e) re Question :
1) who owns the information? company or employee? Generally, the company .
2) Considering cost of developing the secret device or process
(4) The Standard of Secret.
(a) Not being generally known or readily ascertainable. à critical standard.
1) matters of general knowledge in an industry cannot be appropriated by one as his secret.
(b) Absolute secret is NOT required. Somewhat relative secret is enough.
