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

Intellectual Property Outline

I. Introduction

A. Philosophical Perspectives
1. The Natural Rights Perspective
a. John Locke, Two Treatises on Government
b. Fair Return on Labor – “For this labour being the unquestionable property of the labourer, no man but he can have a right to what that is once joined to, at least where there is enough, and as good left in common for others.”
2. The Personhood Perspective
a. Margaret Jane Radin, Property and Personhood
· Premise is that to achieve proper self-development – to be a person – an individual needs some control over resources in the external environment.
b. Hegel’s Philosophy of Right – the person becomes a real self only by engaging in a property relationship with something external.
3. The Utilitarian/Economic Incentive
a. Prompting Innovation and Creativity
· Economic Incentive Benefit – Intellectual property protection is necessary to encourage inventors, authors, and artists to invest in the process of creation.
b. Ensuring Integrity of the Marketplace
· Ensures maximizes aggregate utility, i.e. the pareto efficient solution.
4. Social Planning
a. William Fisher – create a better societal future using law as incentives and disincentives.

B. Overview of Intellectual Property
1. Trade Secret
2. Patent
3. Copyright
4. Trademark/Trade Dress

II. Trade Secret Protection

A. Introduction
1. History
a. Roman cause of action – actio servi corrupti, literally an action for the corrupting of a slave to give up his master’s secrets.
2. Overview of Trade Secret Protection
a. Elements of Trade Secrets
· Protectable
o Qualifying subject matter
o Not publicly known
o Secrecy confers value
· Reasonable Precautions Taken Against Disclosure
· Misappropriation
o Acquisition of information by one who knows or should know that the information was acquired by improper means
o Disclosure or use of information of secret information without consent.
o Preexisting obligation
3. Current Laws
a. Uniform Trade Secrets Act (“UTSA”) – state by state protection.
· Information is NOT a trade secret if it is “generally known” or “readily ascertainable by proper means”
b. Interstate Transportaiton of Stolen Property Act (“ITSP”)
c. Economic Espionage Act of 1996 (“EEA”)
d. TRIPs Art. 39
4. Theory of Trade Secrets
B. Subject Matter
1. Defining Trade Secrets
a. Metallurgical Industries Inc. v. Fourtek, Inc.
· Had security measures.
· “a holder may divulge his information to a limited extent without destroying its status as a trade secret.”
· Can include secret combinations of items which by themselves are publicly known.
b. Restatement – a trade secret is any information that can be used in the operation of a business or other enterprise and that is sufficiently valuable and secret to afford an actual or potential economic advantage over others.
i. Restatement of Torts Factors pg. 45.
2. Reasonable Efforts to Maintain Secrecy
a. Rockwell Graphic Systems, Inc. v. DEV Industries, Inc.
· Mere fact that Rockwell gave piece part drawings to venders did not forfeit trade secret protection.
· “Reasonable” precautions is a balancing act.
b. Data General – suggests that reasonable efforts to protect secrecy of an

ng the trade secret from published literature.
2. Confidential Relationship
a. Smith v. Dravo Corp.
· Had special devices on shipping containers that allow for direct from ship to rail to truck shipping.
b. Confidential Relationship is established in the following circumstances: (Restatement of Unfair Competition)
· The person made an express promise of confidentiality prior to the disclosure of the trade secret; or
· The trade secret was disclosed to the person under circumstances in which the relationship between the parties to the disclosure justify the conclusions that, at the tiem of the disclosure,
o The person knew or had reason to know that the disclosure was intended to be in confidence, and
o The other party to the disclosure was reasonable in inferring that the person consented to an obligation of confidentiality.

3. Reverse Engineering
a. Kadant, Inc. v. Seeley Machine, Inc.
b. Contract Prohibition – contract provision prohibiting reverse engineering of software void as against public policy. Vault Corp. v Quaid Software Ltd.
4. The Special Case of Departing Employees
a. Employee Trade Secrets
i. Wexler v. Greenburg
Where an employer has no legally protectable trade secret, an employee’s “aptitude, his skill, his dexterity, his manual and mental ability, and such