Select Page

Intellectual Property
Villanova University School of Law
Risch, Michael V.

Intellectual Property Survey, Risch, Fall 2012, 35 pgs


Not rivalrous, non-scarse – used without being used up (unlike with private goods)

Theories behind protecting:

1) Locke – Natural Rights: I made it, so it’s mine. We own the subject of our own labor.

One owns self + labor + physical objects in nature = private property rights. (private benefit)

Lockean Provisos:

a) spoilage – can’t hoard so that it spoils, let others use pieces of it

b) sufficiency – leave in common for others, just use what you need (can’t own so much that others can’t own the field)

Problems –

i) this is hard to apply to patent and copyright, what if others put in labor and independently come up with the same idea (more applicable with Trade Secrets bc each can develop and trade secret an idea)

ii) with IP, you are excluding others from ideas, not stuff, Locke is about stuff

2) Hegel – Personhood Property Spectrum: It’s a personal part of me and should be protected. Certain objects are so tied to us that they are part of our personhood and to flourish we must protect them. (private benefit)

Problems –

i) assignability – if so tied to the person, why are you allowed to assign the right?

ii) group projects/company projects – how can these be so personal?

3) Utilitarianism/Economic Incentives (biggest): Legal protection needed to promote incentive to create/invent. If not protection, people would just wait until someone else put in the time and resources to invent it and then they would steal it = no one would invent.

– Greatest happiness for the greatest number of people. (public benefit)

– Applies to copyright, trade secrets, patents, not so much with trademarks bc they ensure integrity rather than encourage invention.

– Backed by Constitution: Congress has power to promote progress in the science/arts by granting limited exclusive rights and after that time, it is available to all.

Theories behind free use:

Jefferson = there is no exclusivity of public goods in nature (free use to society).

Other incentives to promote innovation outside of IP protection:

a) govt subsidies, b) post development payout, c) secrecy

Case Analysis with each type of IP:

1) subject matter 5) defenses

2) acquisition requirements 6) infringement analysis – was there injury

3) duration of protection 7) remedies

4) limitations (4-7 refer to the scope of protection. Narrow= harder to infringe.

Broad= easier to infringe/more limitations)


Promotes publishing.

Original works authored, fixed in a tangible medium of expression.

Originality 2 Prongs: (threshold): Purposely not defined in statute, so look to constitution = for authors.

i) independent creation (easy standard to meet) – not copied, may be identical to another but ok if made independently. (ie – Keat’s Ode on a Grecian Urn: “If by some magic a man who had never know it were to compose anew Keat’s Ode on a Grecian Urn, he would be an author and, if he copyrighted it, others might not copy that poem, though they might of course copy Keat’s.” = unlike patents with inventors)

– Artistic merit is not judged.

– Does not require novelty, ingenuity, esthetic merit.

ii) of modicum of creativity (de minimus)– does not protect facts (if you represent something as fact when it is not, you probably can’t recover if it is copied bc you represented as fact)

Categories Protected: tangible medium of expressions

1) literary works – broad, low bar for creativity, no literary merit criteria or qualitative value: “works, other than audiovisual works expressed in words, numbers or other verbal symbols or indicia, regardless of nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.”

– extends to structure sequence, and organization

– short phrases: names, slogans, etc = not protected. Logo is protected.

2) musical works, including any accompanying words – music, lyrics, arrangements as long as fixed in a tangible medium of expression.

3) dramatic works, including any accompanying music – portraying story by means of dialogue or acting (extends to written or otherwise fixed instructions for performing a work of art).

– doesn’t extend to gestures

4) pantomimes and choreographic works – not simple steps, but the series of steps fixed so that they may be followed.

Hypo – Triple axle ice skating move. Copyrightable? Not the one simple move itself but a series of moves choreographed together are protected.

5) pictorial, graphic, and sculptural works– art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans (but not the work/structure itself – that is separate protection #8).

*Can’t protect design of a functional object unless you can separate the design from the utilitarian aspects. (ie- separate logo from tshirt).

Hypo – Arrow logo: copyrightable? Yes, if there is an incorporation of independent design and it is considered creative (not necessarily “artistic”.)

6) motion pictures and other audiovisual works – series of related images which when shown in succession impart and impression together with accompanying sound.

7) sound recordings – two different protections: sound recordings regardless of the nature of the disks, cds, etc in which they are embodied and the composition.

8) architectural works – actual structures and can include the plans and drawings (which are also #5-PGS) (this provides more protection than with PGS)

– can’t prevent others from making representations (ie-photos) of the work if visible from a public place

– can’t prevent from reproducing certain features of the structure

– building owner can alter/destroy without violation

i) are there original design elements present, ii) are the design elements functionally required = protected

Not protected: facts, research, or ideas. Because you did not create facts, you just discovered them. Facts are of public domain.

– rhythm

– short phrases: names, titles, slogans

– typefaces

Compilations – If authorized compilations, not rights in that pre-existing material (introduction, ordering, design = what you bring to the table is all that is protected, not what existed before). “Thin copyright” = you can take bits and pieces of fact without infringement but if you copy the whole compilation, you are infringing (ie-photocopying). Compilations of facts can be original if you did work, designed/arranged the facts (structure, sequence, organization) = can be copyrighted but doesn’t make the facts inside copyrighted. Some independent design

(does not protect accidental works, ie- drop your camera and it takes a pic)

(ie- protects encyclopedia of star trek facts (the work contains facts, but they are fiction) (ie- phone book layout/design protected but phone number lists inside are not)

Protects from copying part if material or substantial. Protects derivative works. Protects distortion/mutilation.

Hypo: Yellow pages = copyright protected. D copies the entire yellow pages directory. Liable? Yes, even though there are pure fact ads, which are not protected, this is a compilation so the structure and non-fact ads are protected. (thin copyright)

Hypo: Lexis needs to point to page number in the Federal Reporter (West). West sues Lexis saying their Fed Reporter page numbers are copyrighted. Is the text of the federal opinions copyrightable? No. Works of fed govt aren’t copyrightable, so West does not own the judge’s opinion. Otherwise, it would be. Case summary copyrightable? Unclear if just facts or if enough creativity. Headnotes copyrightable? Yes. West compiles them. Are the page numbers (pinpoint cites) copyrightable? Unclear, split today. (Yes. Original arrangement – page numbers aren’t random = structured, sequenced, organized in a way that pages are lined up. Vs-No- nothing original, creative about layout of facts-de facto standard. Became used by everyone, so too valuable to

yrightable, but if influenced by aesthetics in the design = copyrightable. – Here, he modified the structure/shape to make it function as a bike rack not focusing on aesthetics. This was an “industrial design” – not protected.

– Many functional objects that can still be copyrighted bc of the separability of aesthetic elements – problem: you are essentially granting a backdoor patent (without requiring novel, nonobvious, and greater scrutiny in granting).

Lotus v Borland:

Borland created an electronic spreadsheet with a menu that was based on a Lotus menu. No source codes were copied but command menu names/org was same as Lotus. Not copyrightable bc it is a method of operation/process/procedure/system. Menu is inseparable part of method of operation bc necessary to run the system. (like play button on VCR).

Copyright Protection Spectrum:

Pure Expression = protected

Pure Fact = not protected (does not originate with the discoverer)

Compilation or scenes a faire – copyrighted whole but exclude those portions that are not copyrightable (filter)

Infringement: Violation of one of Copyright’s exclusive right: (detailed below)

1) Reproduction 106(1)

2) Adaptation 106(2)

3) Public Distribution 106(3)

4) Public Performance 106(4)

5) Public Display 106(5)

1- Reproduction Right:

Gives copyright owner the sole right to reproduce the work (and to authorize) in a copy or phonorecord. Prevents exact or substantially similar copies.

2 Prong Test for Infringement:

1) reproduction (rather than independent creation)

2) of protected material

– distribution not required for infringement

Ways to Determine if Improper Appropriation:

1) (FACTUAL COPYING) – actual copying– shown by either direct evidence OR circumstantial evidence [substantial similarity + access (expert can testify to the similarity being a copy)], (the more similarity = the less access required – can be inferred),

– objective

2) (COPYING AS A LEGAL MATTER) – illicit copying (natural ear believes copied enough to be improper) – material was copyright protected and there is a substantial similarity (striking similarity as decided by the jury (ordinary observer)– similar enough to be an infringement.)

– subjective

Reproduction Test: Start with determining the copyright protected material:

– Dissect the P’s work into elements,

– then evaluate the protectability of each element,

– filter out the unprotected elements,

– leaving only the “golden nuggets” (which are what the fact-finder considers when deciding if substantially similar):

– which requires consideration of the type of people to whom the works seem similar,

– and the nature of the similarity,

– and the degree of similarity that amounts to substantial

Exclusive Right #2 Adaptation –to Prepare Derivative Works

-translation, musical arrangement dramatization, fictionalization, motion picture, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted from a copyrighted work. Which consists of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent a new, original work of authorship.