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Intellectual Property
University of Toledo School of Law
Gibbons, Llewelyn Joseph

Intellectual Property Survey – Professor Gibbons Spring 2010
I. Copyright Law
1. Generally
A. Congress authorized copyright protection for “works of authorship,” a very broad category but narrower in scope than the term “writings” found in the Constitution.
B. U.S. copyright generally only protects an author’s economic rights in their works, not moral rights.
C. U.S. copyright generally only protects the intangible work of authorship, the law of personal property protects the tangible embodiment on which the work of authorship is transcribed.
D. Copyright Act §204 provides that any transfer of copyright other than by operation of law must be in a signed writing. Therefore selling a tangible piece of property with a copyrighted work on it is insufficient to transfer the copyright.
2. Subject Matter of Copyright
A. §102(a) provides that copyright consists of “original works of authorship fixed in any tangible medium of expression…from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine…”
B. Two important requirements: must be “original” and must be “fixed” in a tangible medium.
a. Originality
i. The author must engage in some intellectual endeavor and not just have copied from a preexisting source.
ii. The author’s work must exhibit a minimum amount of creativity, a “modicum of creativity” that is very easy to satisfy
iii. Facts do not constitute copyrightable expression, but an author’s original selection and arrangement of facts may if sufficiently creative.
iv. Selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever.
v. The Supreme Court has rejected the “sweat of the brow” doctrine – labor alone cannot serve as a substitute for creativity or originality.
vi. Words and short phrases such as names, titles, slogans, familiar symbols or designs, mere variations of typographic ornamentation, lettering or coloring, and listings of ingredients are excluded from copyright 37 C.F.R. §202.
vii. Words and short phrases are considered de minimus, and thus lacking creativity or originality.
viii. Scenes a faire: an author may not obtain a copyright in incidents, scenes, characters, settings, or other elements that are essential to, or common place in, the treatment of a certain subject matter.
b. Fixation
i. A work is fixed in a tangible medium when, by or under the authority of the author, it is sufficiently stable to permit it to be perceived, reproduced, or otherwise communicated for more than a transitory duration.
ii. A protected work of authorship is intangible and distinguishable from any tangible object in which the work is fixed.
iii. Copyright attaches to the intangible literary work, not the tangible manifestation.
iv. A literary work is only eligible for federal copyright protection after it has been fixed in a tangible for at least once.
v. “Writings” in constitution means that congress is not authorized to extend federal copyright protection to works of authorship that have never been fixed, such as oral statements or unrecorded musical improvisations.
vi. Fixation can be in any type of stable, tangible medium.
vii. The scope of qualifying material objects is very broad, ranging from paper and floppy disks to stone slabs, precious metals, and fabrics.
viii. A work will not be deemed fixed unless its embodiment in a copy was done by or under the authority of the author. Unauthorized fixation will not suffice.
ix. Normally a work must be fixed before publicly performing to have federal copyright protection. §101 provides that fixation simultaneous to performance will suffice if the performance is being transmitted and recorded simultaneously.
x. Computer programs are sufficiently fixed because the game is fixed in the disk or chip, there are a limited number of possible screen shots all dictated by the author’s work, and the screen shot are highly repetitive.
xi. Federal copyright only protects works that have been fixed in a tangible medium of expression that allows perception, communication, or reproduction for more than a transitory duration. State law may continue to protect common law copyright for unfixed works.
C. Exclusion of ideas, procedures, and processes.
i. “In no case does copyright protection for any original work extend to any idea, procedure, process, system, etc. regardless of the form of the work”
ii. Copyright protection is limited to an author’s particular way of expressing ideas.
iii. Merger doctrine: When the subject matter of a work is so narrow and straightforward that there are a limited number of ways to express it, there can be no copyright in any way of expressing it because then the author could copyright all the ways and obtain a monopoly on the idea, fact, or discovery.
iv. Thin copyright: In cases where the author’s creative expression is limited, and the work consists mainly of ideas and facts, the court will afford a thin copyright and only protect against near exact or literal copying.
v. Facts are “discoveries” and are not copyrightable subject matter. An author does not create facts, they exist independently.
vi. In non-fiction literary works the underlying structure of the work may not be protected because it was dictated by persuasive writing techniques and others may need to use nearly the same structure to write about the same topic (history-chronological order).
D. Categories of protectable works of authorship
a. Computer programs
i. Computer programs are copyrightable as literary works. A computer program is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.
ii. The Altai court set forth the “abstraction, filtration, comparison” test to identify which elements of a programs structure are copyrightable.
iii. Abstraction – the court should break down the program into its structural components, and look at the process in progressively increasingly generalized conceptions, leaving out increasing amounts of detail.
iv. Filtration – at each level the court should filter out the facts, ideas, and functional material
v. Comparison – the court should then compare the work to the defendant’s programs and determine whether they are substantially similar, and thus infringe.
vi. The selection, coordination, and arrangement of a computer program is protectable, but have been afforded only thin copyright and the defendant must have created a bodily appropriation of expression or virtually identical work.
vii. Lotus (5th, Supreme split 4-4) said that a menu command hierarchy could not be protected even though it had elements of creative expression in the selection and arrangement of commands because these were functional aspects – they were a method of operation that should be addressed in patent law.
viii. Mitek (4th) said even though expressive elements may be a method of operation at a high level of abstraction, they are protectable at a lower level.
b. Pictorial, graphic, and sculptural works
i. Pictorial, graphic, and sculptural works include two dimensional and three dimensional works of fine, graphic, and applied art, photographs, prints, and art reproductions, maps, globes, charts, diagrams, etc, including architectural plans.
ii. Useful Articles
a. An article is useful if it has an intrinsic utilitarian function that is not merely to portray the appearance of the artic

vi. The author does not gain any copyright in the preexisting works or the facts used in the compilation, only the creative selection, arrangement, and coordination of them and any commentary or annotations added.
vii. The compiler’s selection, coordination, and arrangement must satisfy a minimum threshold of standard of creativity in order to be original.
viii. A compilation copyright will not extend to any portion of a compilation that incorporates a copyrighted work without the copyright owner’s authorization.
g. Derivative Works
i. Derivative works are works based on one or more preexisting works, such as a translation, musical arrangement, motion picture version, sound recording, art reproduction, abridgment, condensation, other work that may be recast, transformed, or adapted.
ii. Copyright protection only extends to the original material contributed y the derivative author, not the preexisting material that has been adapted.
iii. Copyright does not extend to portions of a derivative work in which preexisting material has been used unlawfully.
iv. Two prong test for copyrightability of derivative works: 1) whether the derivative work is creative and original, and 2) whether giving copyright in the derivative work would unduly inhibit the owner of the preexisting work by inhibiting his ability to license other derivative works.
h. Government Works
i. Copyright is not available for any work of the U.S. government. A work of the U.S. government is a work prepared by an officer or employee of the U.S. government as part of that person’s official duties.
ii. Works created by independent contractors should be analyzed on a case by case basis to determine whether granting a copyright would further copyright goals or force the public to pay for the work twice.
iii. The U.S. government may own and hold copyrights transferred to it by others.
iv. The copyright act does not preclude state and local governments from owning copyrights.
v. Judicial opinions, statutes, city ordinances, and other government laws and regulations may not be copyrightable because due process requires that the public have access to works that have the force of law. Also, when they become law, they become facts.
3. The Rights Afforded by copyright
a. The copyright owner may be either the author or the author’s assignee, and that person has the exclusive right to do or authorize the following:
i. Reproduce the work
ii. Prepare derivative works (right to adapt)
iii. Distribute copies of the work
iv. Publicly perform the work (does not apply to sound recordings, or pictorial, graphic, or sculptural works, or the architecture)
v. Publicly display the work (does not apply to sound recordings or architectural works)
vi. For sound recordings, perform the work publicly in digital audio.
b. Moral Rights for works of Visual Art: the rights of attribution and integrity; author may
i. Claim authorship in the work