Intellectual Property
University of North Dakota School of Law
Johnson, Eric E.

 
UND School of Law – Spring 2016          INTELLECTUAL PROPERTY – Professor Eric Johnson
 
INTELLECTUAL PROPERTY
BASIC FRAMEWORK
 
WHAT IS INTELLECTUAL PROPERTY?
·         Copyrights
·         Trademarks
·         Patents
·         Trade Secrets
·         Right of Publicity
 
WHAT IS PROTECTED?
©
Expression (text, images, recordings)
Patent
Inventions (manmade)
TM
Indications of commercial source
Trade Secret
Transferrable commercial secrets
Right of Publicity
Indications of personal identity
 
WHAT DOES IT TAKE TO GET IT?
©
Fixation (immediate)
Patent
Application, gov’t review
TM
Use in commerce, creating meaning
Trade Secret
Nothing
Right of Publicity
Nothing (fame, some places)
 
 
 
 
 
 
 
 
 
WHAT DOES IT TAKE TO KEEP IT?
©
Nothing
Patent
Payment of maintenance fees
TM
Continued use in business
Trade Secret
Keeping it secret
Right of Publicity
Nothing
 
HOW LONG DOES IT LAST?
©
About 100 years
Patent
About 20 years
TM
Forever (if used)
Trade Secret
Forever (if kept secret)
Right of Publicity
Life + extra sometimes
 
HOW IS IT LOST?
©
Very difficult
Patent
Unpaid fees; successful challenge
TM
Failure to keep exclusive control
Trade Secret
The secret gets out
Right of Publicity
Very difficult
 
DEFENSES
©
Fair use
Patent
Invalidity (otherwise, not much)
TM
Non-trademark uses, fair uses
Trade Secret
Reverse engineering
Right of Publicity
News, free speech, non-commercial
 
 
 
 
COPYRIGHT
 
Copyrights are available to original works of authorship, fixed in any tangible medium expression from which they can be perceived, either directly or with the aid of a machine.
 
GENERAL
 
Current State of Law
·         Protection begins automatically upon the fixing of the work
·         Registration is optional, but is a prerequisite for filing an infringement suit
·         Generally, © protection extends for life of the author, plus 70 years
 
Purposes/Policy
·         Focus on the benefits derived by the public from the labors of authors
·         Incentive to create new products
·         Limited monopoly provides time for adequate return on investment
·         U.S. is less about philosophy and more about economics
 
Authority
·         Federal, state, and common-law authority
·         Exclusively federal for new works
o   Title 17 U.S.C.
·         State law for sound recordings pre-1972
o   Example:  File sharing a Beatle’s song (band ended in 1970)
§  Copyright in composition is owned by the artist
§  Copyright in sound recording is owned by the label
§  So, not a federal offense
·         With few exceptions, there has never been a common law of copyright infringement
 
 
History
Increasing Scope of Subject Matter/Copyrightable Material
·         Originally:  only books, maps, charts
·         Now:  photographs, songs, dances, architectural work, computer software
Longer Duration
·         Originally:  14 renew for 20
·         Now:  10 years (average depends if under your own name, pseudonym, or corporation)
 
Decreasing Formalities and Requirements for Protection
·         Originally:  write a copyright notice, register copyright, send a copy to Congress, no copyright on translation of a work
·         Now:  no notice, no registration (however affects damages and ability to bring suit)
 
Current Formalities
Registration
·         Not mandatory
·         Advantages:
o   Can be used as evidence of copyright validity
§  Prima facie evidence that the copyright is valid and that the info on the certificate is true
o   It may enhance damages recovery
§  Registration within 3 months or before infringement permits fees (ex. Attorney fees) and statutory damages
o   Prerequisite to bringing suit
§  You can register the copyright after the infringement and still successfully sue
 
Deposit
·         Leave a copy of the work when registering
 
Notice
·         “A notice of copyright as provided by this section may be placed on publicly distributed copies from which the work can be visually perceived, either directly or with the aid of a machine or device.”
 
Requirements of Notice:
1)      The symbol:  ©, the word “Copyright”, or the abbreviation “Copr.”;
2)      The year of the first publication of the work; and
3)      The name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.
 
Position of Notice:
o   “The notice shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright.”
 
Evidentiary weight of notice:
o   “If a notice of copyright in the form and position specified by this section appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then no weight shall be given to such a defendant’s interposition of a defense based on innocent infringement in mitigation of actual or statutory damages.”
 
Duration
·         Life of the author, plus 70 years
·         For corporate or unsigned works, 95 years
·         In the case of a work made for hire, the duration is the earliest computed date of 120 years from creation or 95 years from first publication
 
Public Domain
Things that are not copyrighted:
·         Works published in the U.S. on or before 1922
·         Works published before 1989 (or 1978) in the U.S. without proper notice
o   1977-1989 – gap period, but not necessarily in the public domain
·         U.S. Federal Government works
o   Anything they produce is not copyrightable
·        

of, the utilitarian aspects of the article.
o   If not, get a design patent.
 
Physical Separability
·         If the sole function of the item is utilitarian, then you can’t protect the way it looks.  But if a utilitarian object has artistic elements that can exist independent of the utilitarian function, those parts can be protected.
o   Maizer v. Stein (statuettes of Balinese dancers for base of lamp) – Copyright protects the artistic expression, not the utilitarian value.  You can protect the useful article, but only to the extent that you can exclude exact copies, not the style.  So, anyone can make lamps w/a woman at the base, just not the same Balinese dancer as the plaintiff’s.
 
Conceptual Separability
·         Ability of artistic features to exist conceptually separate from utility
o   Brandir International, Inc. (bike rack) – Aesthetic form too intertwined with function
 
Words or Simple Phrases Are Not Protected
 
CATEGORIES OF AUTHORSHIP
1)    Literary works
o   Includes just about everything you might think could possibly be included – software, computer program catalogs, databases, etc.
2)    Musical works
o   Instrument and lyrics
3)    Dramatic works
4)    Pantomimes and Choreographic works
5)    Pictorial, Graphic, and Sculptural works
6)    Motion Pictures and other audiovisual works
o   Including soundtracks
7)    Sound Recordings
8)    Architectural works
 
COMPILATIONS AND DERIVATIVE WORKS
 
Compilation
The collection and assembly of pre-existing material that are arranged in such a way that the resulting work as a whole constitutes an original work of authorship.
            I.E. – directories and databases
 
Feist Publications v. Rural Telephone Svc. – Feist copied 1,300 names from Rural’s phone book.  Protection of a factual work extends only to its original selection or arrangement.  An alphabetical listing of telephone subscribers and numbers not nearly original enough.  Court rejected the ‘sweat of the brow’ doctrine (expenditure of resources entitles to protection).
 
Derivative Works
Work based upon one or more original works (i.e. translation, motion picture version, or abridgement).
·         Protected as long as the underlying work was:
o   Used w/copyright holder’s permission; or
o   Was in the public domain
·         Only the new/original parts of the derivative work are eligible for protection