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

IP Law

Michael Risch

2013 Supplement

Participation ^ grade

Final: MC (several hypos, then questions with several answers)

Clicker q’s are good practice

IF Prof talks about something -> important

I. IP – umbrella term for many subjects

1. What is IP?

– Acquisition – first in time (rule of capture)

– Rights (exclusive use/transfer of trademarks, secrets, copyrights, art etc.)

– HYPO: morality vs. economics

– HYPO (Avengers movie): should there be action against the pirate network who distributes copies for free? Same question goes for music? How do we maintain incentives for people to make movies/music to keep making them (investing!) if they lose part of profit due to piracy? How about borrowing scenes from a different movie to use in yours?

– HYPO: New soccer team in CA called NY Yankees. Can real Yanks complain? How about someone selling me a knock-off jersey?

II. Difference of IP vs. Real property?

1. Intangible assets (pen example): ideas cannot be appropriated as opposed to real property. Public goods cannot be exclusive. (T. Jefferson).

2. Ideas are non-rivalarious

3. Implications: Legal protection may be needed to promote intellectual creativity vs. Once created there is no social cost of sharing intellectual creativity.

4. Some ideas decrease in value with more use

III. Philosophical perspectives

1. Natural rights – ppl convert their stuff into property through their labor

– Lockean provisos: how hard I work and how much I risk (think: tomato can into ocean=>I don’t own the ocean)

a. Spoilage: use as much as u can before it’s gone bad

b. Sufficiency: only own so much that enough is left for others

c. Using suff v spoilage how would we consider our hypos?

d. FYI: courts reject labor investments as argument

2. Personhood/Property Spectrum

a. Self-actualization=good

b. Spectrum of Personal (wedding ring)<—————————–àFungible(money) but can get tricky with music/art/inventions (who owns them – corporation (more fungible) or a person (more personal)) etc.

3. Utilitarian/Economic incentives

a. Society’s goal: greatest happiness for the greatest number (J. Bentham)

b. US Constitution: Article I Section 8

c. Policies to promote innovation

– Gov’t R&D subsidies

– Post-development payoff

– Intellectual property

– Secrecy

d. Consider cumulative nature of innovation

– I would not have seen so far had I not stood on the shoulders of giants. Newton.

– If we protect today too much, we risk not having tomorrow

– Example:

GUI’s: Xerox Alto->Star->Macintosh->Windows->iOS->Android

Music: Beach Boys=>Beatles=> Ray Charles

===è how does it all affect us downstream???

4. Process

– First, check for subject matter (is there property to protect?).

– Second, check acquisition requirements (i.e paten requires a regulation etc.).

– Third, check duration (has your right expired?).

– Fourth, consider limitations and defenses (any limits to your right? Fair use defense?).

– Fifth, infringement analysis (prove that someone infringed on your right).

– Finally, you consider your remedies

5. IP Overview (see ppt)

– Copyrights

a. Original works of authorship fixed in tangible medium of expression

b. Expression NOT ideas

c. To file suit -> must register with copyright office

– Trade secrets

a. Innovation that derives value due to secrecy

b. Mostly governed by common law and state statutory law

c. 48 states passed Uniform Trade Secret Act

– Patents (utility)

a. Novel, useful, nonobvious inventions

b. Governed by patent acts

c. Major overhaul in 2011

– Trademarks

a. Words/symbols that distinguish the source of marketplace offerings

b. A lot of apps get rejected

c. Do not have to register TM to be valid

d. Protected by fed statute as well as state statute

e. Source – Commerce Clause

IV. Copyrights

1. Copyright levers

a. Subject matter

b. Acquisition

c. Duration

d. Limitation

e. Defenses

f. Infringement

g. Remedies

2. Requirements

a. Copyright protection subsists…in original works of authorship fixed in any tangible medium of expression: original work of authorship+fixation+formalities.

– Lasts for 70 years (original authorship)

– Does not need to be registered

b. Originality requirements

– Sine qua non of copyright is originality

– Requirements come from Constitution

– Original author

– Does not require novelty, ingenuity, or esthetic merit.

– Elements of Originality:

a. Independent creation

b. Modicum of creativity

3. Facts and historical research are not copyrightable (BUT compilations of facts ARE)

a. Hindenburg hypo

b. Feist case (see brief)

– Section 101: A “compilation” is a work formed by the collection and assembling of preexisting materials or data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.

– Rural’s creation lacked any modicum of creativity (very rare conclusion) =>no copyrights

4. Modicum of creativity

– Burrows-Giles Lithographic Co. v. Sarony, 11 U.S. 53 (1884)

– Breakout game- geometrical shapes are not copyrightable but their arrangement together with sound and visual effects make a copyrightable combo

– Rhythm is typically not copyrightable

– Words and short phrases suc

und recordings

– See def in HW notes

– Quality of recording does not affect copyrightability

8. Architectural works

– See HW notes for def.

– The entirety of the building can be protected but not individual features

– Before: separability analysis

– Now, buildings can be copyrighted but with functionality limitation (only habitable buildings etc.)

– Now, plans are protected

– Today, others cannot build from same plans (unless functional, unlikely in detailed plans)

– Photos, alteration and destruction are permitted

VII. Limiting doctrines

1. Idea/expression dichotomy

– See HW for def

– Baker v. Selden – beginning of blank form doctrine

a. It is different from a traditional way of bookkeeping

b. The names and layout were changed

c. Selden cannot own the system because it prevents public use

d. See quote in ppt

e. Copyright vs Patent

f. Created the Blank Form doctrine (see def.) (coloring book would be still copyrightable – has a modicum of creativity)

2. Merger Doctrine

1. Where there is only one or but a few ways of expressing an idea, courts will find the idea behind the work merges with its expression and the work is not copyrightable.

2. Morrisey v. Procter & Gamble (1st Cir. 1967)

– Was the Rule copyrightable?

– Has P&G infringed by copying the rules?

– There is a very limited way of expressing Contest Rules in general so their idea merges with their expression to prevent monopolizing => not copyrightable

3. Jelly fish in a glass hypo => court held not copyrightable (b/c it makes sense to put jelly fish in a glass shape) but a patent would work for protection

4. Clown fish hypo – the idea of a clown fish as a character is not copyrightable

5. Scenes a faire (separate doctrine) aka standard to the type: copyright does not extend to the “incidents, characters or settings which are as a practical matter indispensable, or at least standard in the treatment of a given topic.”

1. Hookers and G’s in a show about South Bronx

2. Competing Golf games: u’d expect to see grass, khakis, sand etc.

3. Right click is a scenes a faire

4. It’s ur duty to police ur copyright otherwise it might become scenes a faire