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Intellectual Property
University of Kansas School of Law
Torrance, Andrew W.

Intellectual Property

Fall 2014


I. Overview.. 3

A. Theories of Intellectual Property. 3

B. Types of Intellectual Property Protections (See Table in textbook p.26) 3

II. Trade Secrets. 5

A. History. 5

B. Philosophy. 5

C. Current Legal Bases. 5

D. Elements (overview) 5

E. Protectable Subject Matter (UTSA § 1(d)) 6

F. Reasonable Efforts to Maintain Secrecy. 6

G. Misappropriation. 7

H. Agreements to Keep Secret (i.e., Contracting around Trade Secrets) 8

I. Remedies (UTSA) 9

J. Example Provisions (see last page of Trade Secret Slides) 10

III. Patent Law.. 12

A. Overview.. 12

B. Elements of Patentability. 12

C. AIA’s New Administrative Procedures at PTO (see p.290–94) 20

D. Infringement 20

E. Defenses. 22

F. Remedies. 23

G. International Patent Law.. 24

H. Provisional Patents. 24

I. Design Patents § 171. 24

J. Plant Patents. 25

IV. Copyright 27

A. History & Basics. 27

B. Threshold Requirements – Originality & Fixation. 28

C. Formalities / Procedural Requirements for Enforcing Rights. 28

D. Copyrightable Subject Matter 29

E. Ownership & Duration. 31

F. Ownership Rights & Infringement: 17 USC § 106. 33

G. Indirect Liability. 36

H. Defenses. 36

I. Digital Copyright 39

J. Remedies/Penalties for Copyright Infringement 41

K. International Copyright Law.. 42

V. Trademark Law.. 45

A. History & Overview.. 45

B. Trademark Subject Matter 45

C. Establishment of TM Right 47

D. Infringement 52

E. Defenses. 57

F. Remedies for Infringement 60

G. International Trademark Law.. 61

VI. State Intellectual Property Law.. 63

A. Tort of Misappropriation. 63

B. Contract Protection. 63

C. Idea Submissions. 63

D. Right of Publicity. 64

E. Moral Rights. 65

F. Trespass to Chattels. 65

VII. Federal Preemption. 66

A. Trade Secret & Patents. 66

B. Other Preemption. 66

I. Intellectual Property Fall 2014 Torrance

II. Overview

A. Theories of Intellectual Property

1. Natural Rights

a. John Locke – everyman has property in his own person

i. Fair return on labor

ii. Caveat (Locke Provisio): natural rights, so long as there is “as much and as good” left for the rest of society. I.e., don’t get to claim the entire ocean if you place a drop of wine in it.

2. Personhood

a. Georg Hegel – personal flourishing

i. Your work is your property because it is an extension of yourself

ii. Illustrated in copyright laws

3. Social Planning

a. William Fisher – create a better societal future

i. IP laws should promote some future societal goal

ii. Strong philosophy in US – promote activities in society that create a better society in future

4. Utilitarian

a. John Stuart Mills & Jeremy Bentham – maximize aggregate utility

i. Maximize the wealth/benefit to society

ii. Prato efficiency: maximize utility, however, make sure no one is worse off because of it

iii. Conflict: if create more wealth for a few but less wealth for majority, it may still maximize the aggregate utility while make the majority of people worse off. — Prato efficiency addresses this concern.

5. Libertarian

a. Robert Nozick – protecting property rights and free exchange are sacrosanct

6. Telelogical

a. Immanuel Kant

i. Create and live by rules that you would want to apply to yourself

ii. Think of people as ends, not means

iii. Important that people are treated well

iv. Categorical imperative: evaluate motivations for actions. E.g., if I am thirsty, I must drink.

B. Types of Intellectual Property Protections (See Table in textbook p.26)

1. Trade Secrets

a. Secret, valuable, and protected information

b. State-level right (but may be in federal court through jurisdiction)

2. Patent

a. Inventions or technical innovations

3. Copyright

a. Creative works of authorship

4. Trademark

a. Identifiers of goods or services

5. Other Intellectual Property Rights

6. Open, User, and Collaborative Innovation (OUC Innovation)

a. Innovation “wants to be free”

b. Open Source

i. Software

ii. Hardware

iii. Biology

II. Trade Secrets. 5

A. History. 5

B. Philosophy. 5

C. Current Legal Bases. 5

D. Elements (overview) 5

E. Protectable Subject Matter (UTSA § 1(d)) 6

F. Reasonable Efforts to Maintain Secrecy. 6

G. Misappropriation. 7

H. Agreements to Keep Secret (i.e., Contracting around Trade Secrets) 8

I. Remedies (UTSA) 9

J. Example Provisions (see last page of Trade Secret Slides) 10

III. Trade Secrets

A. History

1. Roman law

a. Actio servi corrupti – An action for corrupting a slave. You couldn’t bribe a slave in Roman times to give up secrets of the master.

b. Trade secrecy arose, in part, from slavery law

2. European businesses

a. Especially guilds (groups of businesses of a special kind)

i. Example, if you were part of a textile guild, you could only make certain types of approved textiles

ii. They had secret practices for making just the right color of red or blue or etc.

iii. To protect these secrets, strict laws were in place

3. Early 19th Century

a. Misappropriation became a tort in US and Britain

b. Misappropriation is simply commercial immorality

c. It was even worse if you misappropriated the information and then used it

d. A trade secret gives you an edge or advantage in business

i. If it didn’t give you an advantage, there wouldn’t be really any harm in losing it

ii. Everything that confers an advantage is possibly a trade secret

B. Philosophy

1. Theories

a. Utilitarian

b. Deterrence

2. Justifications

a. Property

b. Tort

c. Contract

C. Current Legal Bases

1. State Law

a. Uniform Trade Secrets Act (UTSA) (enacted in most states)

i. “Improper Means”

ii. “Misappropriation”

iii. “Trade Secret”

b. R.3d of Unfair Competition § 39 (largely consistent w/ UTSA)

2. Other Sources of Protection

a. Interstate Transportation of Stolen Property Act (ITSP)

b. Economic Espionage Act of 1996 (EEA)

i. Strong, possibly invasive protection of trade secrets

c. TRIPs Article 39

i. World Trade Organization

ii. Mandates all WTO countries provide TS protection

d. [Future federal legislation likely]

D. Elements (overview)

1. Protectable subject matter (a secret)

a. Qualifying subject matter (i.e. somewhat novel) (see below E)

b. Not publicly known

c. Secrecy confers value TO YOU.

2. Reasonable precautions against disclosure

3. Misappropriation (UTSA § 1)

a. UTSA Rule

i. Acquisition of information by one who knows or should have known that the information was acquired by improper means, OR

ii. Disclosure or use of TS without express or implied consent by person who:

ack” the TS.

a) E.g., Washington Post publishing Scientology church’s TS scriptures after reading them on website.

f. Gov’t Requirement

i. Gov’t may require disclosure of TS in order to promote social purpose

ii. Ex. food manufacturers and the disclosure of ingredients

G. Misappropriation

1. Improper Means (UTSA § 1)

a. Misappropriation of TS if someone discovered the TS by improper means and discloses or uses the TS w/o permission to do so

i. Intent Standard: Intent to obtain otherwise secret information and then sell/use it?

b. R.3d Unfair Competition – “Improper Means” à “theft, fraud, unauthorized interception of communications, inducement of or knowing participation in a breach of confidence, and other means either wrongful in themselves or wrongful under the circumstances of the case. Independent discovery and analysis of publicly available products or information are not improper means of acquisition.”

c. DuPont v. Christopher

i. Airplane espionage flying over competitors plant, taking pictures

ii. Flying over the plant was not otherwise tortious behavior, but was misappropriation of TS

iii. Someone may not avoid the labors of discovering a TS by taking the TS from the discoverer w/o the discoverer’s permission (However, may discover through “labor” of finding process on their own or reverse-engineering).

2. Confidential Relationship

a. Misappropriation if TS disclosed in confidence and TS is used/disclosed in breach of a confidential relationship

i. R.3d of Unfair Competition § 41: Establishment of Confidential Relationship

a) The person made and express promise of confidentiality prior to disclosure, or

b) The TS was disclosed to the person under circumstances in which the relationship btw the parties to the disclosure or the other facts surrounding the disclosure,

1) The person knew or had reason to know that the disclosure was intended to be in confidence, or

2) The other party to the disclosure was reasonable in inferring that the person consented to an obligation of confidentiality.

b. Express Confidential R’ship à K provision creating a confidential R’ship

c. Implied Confidential R’ship à implied from the nature of the R’ship

i. Smith v. Dravo Corp.

a) Negotiations to sell corp and disclosed TS as part of negotiations to assist in valuation. Negotiations fell through and actor stole/used TS learned through the negotiations

b) Disclosure was for a limited purpose (to sell the business) and D knew of that purpose. It was improper to use the plans outside of that purpose.

3. Reverse Engineering

a. Rule: reverse engineering is NOT misappropriation

i. Exception: the acquisition of the product must have been fair and honest and not through breach of a confidential relationship

4. Former Employees

a. Employee Trade Secrets

i. No Contract