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Property II
University of Georgia School of Law
Smith, Paul

What is IP? intangible rights protecting commercially valuable products of the human intellect.
Includes: trademark, copyright, and patent rights, but also includes trade secret rights, publicity rights, moral rights, and rights against unfair competition (misappropriation).
No precise boundaries – laws of patents, copyrights and trademarks were well established before the term and protect different interests
The Historical Foundations of IP law
The Constitution – Article 1, Section 8 – “The congress shall have the 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
1790 – Congress passed 1st patent law – to be patentable, an innovation must:
           i.     subject matter was defined as “any useful art (process or method), machine, manufacture or composition of matter, or any new and useful improvement thereon.
         ii.     be novel, useful and non-obvious.
1790 – Congress passed 1st copyright law – Subject matter initially, only covered “maps, charts and books” Broadened in the 19th and 20th centuries to include every form in which info can be expressed.
Different categories of IP – protect different interests.
1. Patents – The right to exclude others from making, using, marketing, selling, offering for sale or importing an invention for a specified period (20 yrs), granted by the fed govt to the inventor if the device or process is novel, useful, and nonobvious.
a.Fed govt given constitutional authority to grant this under 35 USCA §§ 101-103.
b.Process: inventor files app and it’s reviewed. If granted, has 20 yrs of exclusive rights from date of application. Used to be 17 yrs from date of issuance.
c.Patents – must be novel, useful, nonobvious.
                    i.     Novelty – exists unless the invention is already in the possession of the public as an operative art or instrument. Rule is 35 USC 102
                  ii.      Useful – Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. Rule is 35 USC 101
                iii.     Non-obvious – A patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Rule 35 USC 103
1.came later (in 1952). was a CL rule under before then (Hotchkiss)
2.Graham v. John Deere Co. could not get patent on a machine that had no operative mechanical distinctions to an already patented device nor could he get a patent on another machine that only had small, nontechnical differences to an existing patented machine.
3.Want to incentivize creativity, ingenuity and skill.
4.Test of whether it is obvious or not is based on someone engaged thoroughly with the state of the art at the time of the patent.
5.Factors to consider whether it is obvious:
1.scope and content of the prior art
2.differences between the prior art and the claims
3.level of ordinary skill in the pertinent art
1. commercial success
2. long felt but unsolved needs
3. failure of others
d.Design patents – a right to exclude others from manufacturing or selling an article of manufacture embodying a claimed ornamental feature (i.e. pillow shaped).
a.Requirements of design patent:
                              i.     Novelty
                            ii.     Nonobviousness
                          iii.     No utilitarian advantage to the form (i.e. it is purely ornamental and is not cheaper/better to make the cereal in pillow shape). The “utility” for a design patent is that it is aesthetically pleasing.
Note: don’t want too many design patents – competition is thwarted. Note too that it is purely ornamental and doesn’t increase utility (so if buy tires and it says patented, most likely a design patent and not getting a better tire)
2. Copyright – a property right in an original work of authorship (including a literary, musical, dramatic, or other work) fixed in any tangible medium of expression, giving the holder the exclusive right to reproduce, adapt, distribute, perform and display the work Copyright law is governed by the copyright act of 1976 17 USCA §§ 101-1332.
a.      Copyright is good for life of author plus 70 years.
b.      Registration is beneficial but not essential – after 1978 amendment, CR protection arises when the work is created, and embodied in a tangible medium, without any application process.
c.       Subject matter has expanded.
d.      Exceptions (when you can copy a Crable work).
1.Fair use provision -allows people without CR to reproduce a Cred work for criticism, comment, news reporting, teaching, scholarship or research. To determine if it’s fair use:
a.Purpose and character of use (is it commercial or for educ?)
b.Nature of the copyrighted work
c.Amt and substantiality of the portion used in relation to the Cred work as a whole
d.Effect of the use upon the potential market for or value of the Cred work.
2.Exemption of certain performances and displays
a.Nonprofit use
b.Govt use
e.       Goal of CR is to give rewards to the creator proportional to the value of the work so they can recapture their capital investment plus make a profit. 2 justifications for the rewards
1.Public benefits (Utilitarian) – should only be rewarded an incentive just large enough to encourage the creator to do the socially useful creative or innovative work that society wants them to do (Jefferson)
2.Natural rights – authors/inventors are naturally and inherently entitled to the value of the work
f.Copyright – the use/illustration distinction
                                                        i.            Baker v. Selden – expression (author’s original writing) is Crable – ideas (facts) are not. So no right to the methods of operation or the diagrams (only to the explanatory text). Exception: can have CR in an ornamental design or pictorial illustrations addressed to the taste – where the form is their essence/end).
Hypo: a map is not Crable (idea) but a version of a map is (expression).
                                                      ii.            Phone book case (can compilations of facts be Crable).
                                                                              1.            Rule: no author may copyright his ideas or the facts he narrates.
                                                                              2.            BUT compilations of facts are copyrightable.

nding the absence of competition between the parties or the absence of confusion as to the source of goods or services.
                                                      ii.            There are 3 grounds under which an owner of a distinctive TM may obtain relief under an antidilution statute (i.e. there is dilution of the TM): injury to the value of the mark caused by actual or potential confusion; diminution in the uniqueness and individuality of the mark or; injury resulting from use of the mark in a manner that tarnishes or appropriates the goodwill and reputation associated with P’s mark.
                                                    iii.            Parody exception – no cause of action if use is being done in parody
                                                    iv.            Rule from Panavision case: Fed trademark dilution act: the owner of a famous mark shall be entitled to an injunction against another person’s COMMERCIAL use IN COMMERCE of a mark or trade name, if such use begins after the mark has become famous and CAUSES DILUTION of the distinctive quality of the mark.
                                                      v.            To show violation of the Fed trademark dilution act, P must show:
                    1.     The mark is famous
                    2.     The D is making a commercial use of the mark in commerce
                    3.     The D’s use began after the mark became famous and
                    4.     The D’s use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services.
In Panavision D’s conduct diminished the capacity of the P’s marks to identify and distinguish P’s goods and services on the internet. May tick off Ps customers if they can’t find web site under their name (they lose business) and dilutes the value of the TM.
h.      Trademark Tarnishment
                                                        i.            Majority rule: a mark can be tarnished if it is used in an unwholesome context. What suffices as unwholesome depends on the circumstances, though being in poor taste is not enough. degrading assoc with the TM holder’s name and marks tarnishes/appropriates the good will of the holder.
                                                      ii.            Minority rule: a TM is tarnished by use in a context which, while not inherently unwholesome, is out of keeping with the TM holder’s high quality image.
                                                    iii.            Parody exception – parody is not actionable under either tarnishment or dilution. With parody, D was benefiting from a humorous association and not from a public confusion so it is ok. TM law is aimed at stopping confusion of source, sponsorship or affiliation, which is not the same as a right not to be made fun of.