Introduction to Intellectual Property
Lemley, Fall 2002
· COVERAGE
o Basic intellectual property rules
§ Trade secrets
§ Patent law
§ Copyright
§ Trade-marks
§ Plus quasi-IP
· NATURE OF IDEAS – LIKE A PUBLIC GOOD
o Non-excludable
o Non-rivalrous consumption
o Consequence?
§ Under-provided. No incentive to create.
o Solution?
§ Create a property right in ideas through IP.
· But the property right is not absolute –
o you must disclose in order to get patent protection
o the protection lasts only for a fixed term of years.
· THEORIES OF PROPERTY/IP
o Lockean – If I use it it’s mine.
o Personhood – there is something innate in my property that is part of myself. (Margaret Radin).
o Utilitarian – property regime should maximize social utility.
· STRUCTURE TO THE VARIOUS IP RIGHTS
o Requirements: How do you prove you own this IP?
o Rights: What rights do you get from owning this IP?
o Defenses: What defenses do I have against an infringement charge?
o Remedies: What remedies do I have in light of someone using my IP?
From casebook pp. 24-26
Trade Secret
Patent
Copyright
Trademark/dress
Underlying theory
Freedom of contract; protection against unfair means of competition
Limited monopoly to encourage production of utilitarian works in exchange for immediate disclosure and ultimate enrichment of the public domain
Limited (although relatively long-lived) monopoly to encourage the authorship of express works; developed initially as a means of promoting publishing.
Perpetual protection for distinctive nonfunctional names and dress in order to improve the quality of information in the marketplace.
Source of law
State statutes (e.g., Uniform Trade Secrets Act); common law.
Patent Act (federal)
Copyright Act (federal); common law (limited)
Lanham Act (federal); common law (unfair competition)
Subject matter
Formula, pattern, compilation, program, device, method, technique, or process
Process, machine, manufacture, or composition of matter; plants (asexually reproducing); designs – excluding: laws of nature, natural substances, business methods, printed matter (forms), mental steps
Literary, musical, choreographic, dramatic, and artistic works limited by idea/expression dichotomy (no protection for ideas, systems, methods, procedures); no protection for facts/research.
Trademarks; service markets; certification marks (e.g., Good Housekeeping); collective marks (e.g., Toy manufacturers of America); trade dress (§ 43(a)); no protection for functional features, descriptive terms, geographic names, misleading aspects, or “generic” names (e.g., Thermos).
Standard for Protection
Information not generally known or available; reasonable efforts to maintain secrecy; commercial value.
Novelty, non-obviousness, and utility (distinctiveness for plant patents; ornamentality for design patents).
Originality; authorship; fixation in a tangible medium.
Distinctiveness; secondary meaning (for descriptive and geographic marks); use in commerce (minimal); famous marks (for dilution cases).
Scope of Protection
Protection against misappropriation – acquisition by improper means or unauthorized disclosure
suit requires registration; litigation costs.
Truthful reflection of source of product; fair and collateral use (e.g., comment).
Licensing and Assignment
Discouraged by inherent nature of bargaining (seller wants guarantee before disclosure; buyer wants to know what is offered)
Encouraged by completeness of property rights, subject to antitrust constraints
Assignor has termination right between 36th and 41st years (of notice given).
No naked licenses (owner must monitor license); no sale of trademark “in gross”.
Remedies
Civil suit for misappropriation; conversion; unjust enrichment; breach of contract; damages (potentially treble) and injunctive relief; criminal prosecution for theft
Injunctive relief plus damages (potentially treble); attorney fees (in exceptional cases)
Injunction against further infringement; destruction of infringing articles; damages (actual or profits); statutory ($200 – $100,000 damages within court’s discretion); attorney’s fees (without court’s discretion); criminal prosecution
Injunction; accounting for profits; damages (potentially treble); attorney fees (in exceptional cases); seizure and destruction of infringing goods; criminal prosecution for trafficking in counterfeit goods or services.
