IP Final Exam

INTRODUCTION TO INTELLECTUAL PROPERTY – MSVH INTRODUCTION: RATIONALE BEHIND IP LAW

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TRAGEDY OF THE COMMONS—OVERUSE + UNDER-CULTIVATION OF COMMON RESOURCES UTILITARIAN RATIONALE NATURAL RIGHTS (LOCKE) PERSONHOOD (HEGEL) PROBLEMS WITH OVER-PROTECTION

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TRADE SECRET LAW

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POLICY— UTILITARIAN + TORT + MKT. COMPETITION + EMPLOYEE MOBILITY EXAM APPROACH—DEFINE + EVALUATE 6 + IMPROPER CONDUCT +OWNERSHIP ISSUES = C/A? REQUIREMENTS FOR TS PROTECTION: (1) VALUE (2) SECRET INFO (3) REASONABLE

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PRECAUTIONS 1SUBJECT MATTER PROTECTED AS A TS: INFORMATION + VALUABLE + SECRET 2 REASONABLE EFFORTS TO MAINTAIN SECRET TS MISAPPROPRIATION—ACQUISITION BY IMPROPER MEANS OR IMPROPER DISCLOSURE 1 ACQUISITION BY IMPROPER MEANS 2 IMPROPER DISCLOSURE

DEFENSES TO TS MISAPROPRIATION DISCOVERY BY INDEPENDENT INVENTION REVERSE ENGINEERING ABSENCE OF SECRECY—PUBLIC DOMAIN DISCOVERY UNDER LICENSE FROM TS HOLDER REMEDIES FOR TS MISAPROPRIATION INJUNCTIVE AFFIRMATIVE ACTS OF PROTECTION REASONABLE ROYALTY DAMAGES UNJUST ENRICHMENT PUNITIVE DAMAGES ATTORNEY’S FEES CRIMINAL LAW SELF-HELP – SEIZURE OF EMBODIMENTS

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PATENT LAW

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POLICY PATENT PROSECUTION OVERVIEW REQUIREMENTS FOR PATENTABILITY 1PATENTABLE SUBJECT MATTER 2UTILITY 3NOVELTY & STATUTORY BARS 4NONOBVIOUSNESS 5ENABLEMENT INFRINGEMENT ANALYSIS LITERAL INFRINGEMENT DOCTRINE OF EQUIVALENTS DEFENSES TO INFRINGEMENT INVALIDITY EXPERIMENTAL USE//PERSONAL USE INEQUITABLE CONDUCT PATENT MISUSE EXHAUSTION LACHES/ESTOPPEL PRIOR COMMERCIAL USE IMPLIED LICENSE—FIRST SALE REMDIES FOR PATENT INFRINGEMENT INJUNCTIONS – PRELIMINARY & PERMANENT DAMAGES: EITHER (1) LOST PROFITS OR (2) REASONABLE ROYALTY INCREASED DAMAGES: WILLFUL INFRINGEMENT ATTNY’S FEES + TREBLE DAMAGES ARGUMENTS: INJUNCTIONS VS. DAMAGES VS. COMPULSORY LICENSING

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COPYRIGHT

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POLICY REQUIREMENTS FOR COPYRIGHT 1PROTECTED SUBJECT MATTER

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INTRODUCTION TO INTELLECTUAL PROPERTY – MSVH

1BUNPROTECTED SUBJECT MATTER 2 ORIGINALITY 3FIXATION 4 FORMALITIES EXCLUSIVE RIGHTS OF © HOLDER REPRODUCTION RIGHTS PREPARE DERIVATIVE WORKS PUBLIC DISTRIBUTION – GENERAL, ELECTRONIC, FIRST SALE, IMPORT/EXPORT PUBLIC DISPLAY PUBLIC PERFORMANCE DIGITAL AUDIO TRANSMISSION MORAL RIGHTS COMPULSORY LICENSES OWNERSHIP & TRANSFER INITIAL OWNERSHIP TRANSFERS AND LICENSES TERMINATION OF TRANSFERS

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INTRODUCTION: RATIONALE BEHIND IP LAW TRAGEDY OF THE COMMONS—overuse + under-cultivation of common resources The tragedy of the commons refers to the idea that common ownership of property will eventually lead to the overuse, under-cultivation/creation, and depletion of such common resources. It rests on the belief that when individuals share resources at each others expense that they will inevitably be irresponsible as to their use and its affect on the whole of the population. The analogy to farmers grazing their sheep in a field is often used. However, as a History major, I prefer the more traditional example. The commons derives from common lands, which were an integral part of English feudal society, in which certain parts of land were left open for use by all members. So, for example, the commons would contain a well that was used as the only or main source of water for the villagers. If one man is using the well to water his plants, feed his sheep etc., he benefits greatly from this “public” resource. However, when others are added into the situation, they too would like to benefit from the resource. It is important to note that humans are inherently self interested individuals so when people notice the quick depletion of a common source, they tend to take as much as they can, often more than they can use, just because they would rather have than not. As such, common property and selfinterest often lead to the depletion and under-cultivation of resources. Thus, over time, as the foundation of the well erodes, no one man would go out of his way to spend the time, money, and resources needed to repair it only to benefit everyone else in society; he would rather put his efforts into digging his own well so he can drink an unlimited amount of water to the exclusion of everyone else. Alas, the commons meets its nexus with intellectual property law. Although the problem of overuse is not present regarding intangibles such as intellectual property law, the notion of under-cultivation is one of the most fundamental policies behind intellectual property rights as they have developed over time to their “modern” state. Intangible mental creations are typically produced through great effort, time, and expense of the creator, but they are easily duplicated and non-exclusive as is the case with tangible items. That is, if I am wearing a t-shirt, no one else could wear it simultaneously (without some type of weird flexibility and discomfort to me). However, a song I sing could be sung by anyone who chooses to do so; a process I develop could be used by anyone with the skill of putting it to practice; and a mark I use to identify my company could be simultaneously used by anyone else. Each of these would be beneficial to society, yet an individual who puts in the effort in creating them, without some incentive to disclose their creativity or innovation, would be much more inclined to keep such socially beneficial intangibles to himself. Accordingly, the underlying policy of intellectual property rights can be boiled down to two competing interests: (1) innovation vs competition; and (2) socially beneficial dissemination vs granting a monopoly, however limited, to the creator. UTILITARIAN RATIONALE The utilitarian rationale is grounded on promoting innovation and creativity. Often called the economic incentive theory, it supposes that individuals will not invest the Page 2 of 19

INTRODUCTION TO INTELLECTUAL PROPERTY – MSVH time, effort, and resources needed to create socially beneficial inventions, works, and marks without some expected return; or that if one does create without a return, he has no incentive to disclose it to the public. Information is often characterized as a “public good” as it is consumable by many without being depleted and, as IP rights are nonexclusive, it is inherently difficult to identify others who are unwilling to pay for the use of such information and prevent them from using it. For example, a lighthouse can be used by all ships without defeating its functional value to anyone. The utilitarian rationale therefore, attempts to strike a balance between the competing interests of social value and incentivizing labor in order to achieve an economically efficient result. The difficulty behind such a balance is that intellectual property rights if too broad in protection, can be contrary to competition and innovation in respect to advances on technology or other works that exist. On the other hand, society as a whole benefits from encouraging invention, innovation, and investment. After all, not everyone has the capacity to “innovate.” Thus, the balance that the utilitarian theory attempts to strike is a middle ground between exclusion and promotion of advancement. This is reflected in many ways throughout the IP scheme, especially in patent law, where although the process of achieving a patent is complex and difficult and the protection is limited only to certain types of inventions, the protections afforded are vast due to high the social value of what is covered in patent law. For example, advances in pharmaceuticals are very beneficial to society because they help the sick get better. However, they are very expensive to research and create, so the Patent laws grant the holder of the patent a limited monopoly, to the exclusion of others, which can be enforced against anyone who infringes. On the other hand, a medical technique, although technically patentable, has no remedy for an infringer because excluding another doctor from using an innovative technique that could potentially save a life or limb is contrary to the social welfare/public policy. On the other hand, especially where medical research is concerned, it can be argued that there are many other incentives for innovators to create. For example, researchers and doctors often receive government grants to do their research; or from universities and corporations invested in a field of study. Additionally, there is also a reputational aspect that gives innovators and incentive to invent. For example, winning an award for their work or being renowned in a field for their work is unarguable a great incentive to create. NATURAL RIGHTS (LOCKE) PERSONHOOD (HEGEL) PROBLEMS WITH OVER-PROTECTION

TRADE SECRET LAW Trade secret law is a state law doctrine and is thus subject to federal preemption. POLICY— Utilitarian + Tort + Mkt. Competition + Employee mobility The policy behind trade secret protection is both utilitarian and based in tort. Protection provides incentives to businesses to develop and use innovative know-how, which ultimately benefits the public because it encourages investments in information. On the other hand, it promotes interests in discouraging dishonestly and immorality in commercial conduct. However, a competing interest is that strong enforcement of trade secret interests may prove to be detrimental to society because it can interfere us market competition as well as employee mobility and autonomy to choose their own careers in chosen fields. [1] In close cases it is best to evaluate these competing interests and whether they would be promoted or hindered by recognizing trade secret rights. For example, if the TS is not highly innovative then there is not as great an interest in providing rights as an incentive to create. Likewise. if the alleged misappropriater’s actions did not involve strongly objectionable moral conduct, the interests in assuring moral and honest business wont be undermined if the court does not find a c/a EXAM APPROACH—define + evaluate 6 + improper conduct +ownership issues = C/A? Page 3 of 19

INTRODUCTION TO INTELLECTUAL PROPERTY – MSVH [1] (1) Evaluate whether the information  This is essentially 2 basic qualifies as a TS (not all states follow- 41 questions: 1-4= is the information have enacted in some form) secret & 5-6= Does the o Provide UTSA definition: information, information have competitive including a formula, pattern, compilation, value program, device, method, technique, or [2] If factors indicate protection, there process, that derives independent may be a c/a if D engaged in improper economic value, actual or potential, from conduct: not being generally known to or readily o Improper means ascertainable through appropriate means o breach of confidence by other persons who might obtain o learning from 3P w/notice of TS and economic value from its disclosure or use; in violation of confidence or and is the subject of efforts that are improper means reasonable under the circumstances to o Use or disclosure w/notice of TS and maintain its secrecy. revealed through accident or o Evaluate 6 factors to indicate TS protection: mistake (1) how widely known outside π’s business [3] Consider ownership issues i.e. (2) how widely known w/I π company (3) evaluate whether an employer whether π took reasonable measures to employee situation is involved protect secrecy; (4) how difficult for others o Who actually owns the TS  don't to properly acquire or duplicate (5) does it forget Shop right give a commercial competitive advantage o Employee mobility issues? over others who don't know it (6) how [4] = Yes or no c/a for much effort or $ π expended to develop or Misappropriation acquire information. [§757 REST. Torts Cmt. [b]]

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REQUIREMENTS FOR TS PROTECTION: (1) Value (2) Secret info (3) reasonable precautions 1Subject matter protected as a TS: Information + Valuable + Secret [1] Economic value [2] Secret [3] End of protection if information becomes generally known or readily ascertainable by proper means. [4] 2 Reasonable efforts to maintain secret [1] Policy: [2] Reasonable efforts: TS MISAPPROPRIATION—Acquisition by improper means or Improper disclosure 1 Acquisition by improper means 2 Improper disclosure DEFENSES TO TS MISAPROPRIATION Discovery by independent invention Reverse Engineering Absence of Secrecy—Public Domain Discovery under license from TS holder REMEDIES FOR TS MISAPROPRIATION Injunctive Affirmative Acts of Protection Reasonable Royalty Damages Unjust enrichment Punitive damages Attorney’s fees Criminal Law Self-Help – Seizure of Embodiments

PATENT LAW POLICY

PATENT PROSECUTION OVERVIEW REQUIREMENTS FOR PATENTABILITY 1Patentable subject matter [1]Process [2]Machine [3]Manufacture [4]Composition of matter [5]Improvements [6]SUBJECT MATTER DOES NOT INCLUDE: [7]Laws of nature [8]Natural phenomena [9]Abstract ideas [10] Medical Methods [11] LIVING THINGS CONTROVERSY [12] Living things [13] BUSINESS METHOD CONTROVERSY [14] Machines [15] COMPUTER SOFTWARE CONTROVERSY [16] 2Utility [1]General [2]Specific [3]Moral [4]Policy 3Novelty & Statutory bars 4Nonobviousness 5Enablement INFRINGEMENT Analysis Literal infringement Doctrine of Equivalents

DEFENSES TO INFRINGEMENT Invalidity Experimental Use//Personal Use Inequitable conduct Patent Misuse Exhaustion Laches/Estoppel Prior Commercial Use Implied License—First Sale REMDIES FOR PATENT INFRINGEMENT Injunctions – Preliminary & Permanent Damages: either (1) lost profits or (2) Reasonable royalty Increased Damages: Willful Infringement Attny’s fees + Treble Damages Arguments: Injunctions vs. Damages vs. Compulsory licensing

COPYRIGHT EXAM APPROACH 1) Subject matter + Formalities + Originality looks good so far… look to I-E dichotomy OR Functionality//useful articles [PGS]  POLICY Identify the underlying purpose of © law & what interpretation of the precedent will best effectuate those purposes. Usually surrounds enriching the general public by adopting policies that will encourage creation of as many diverse works as possible while retaining as much public access as possible to the existing work. Need to find a balance between the two- don't undercut incentive//don't give too large a monopoly than necessary to provide incentive.  Identify the goals for that particular work and explain how resolution would promote those goals If there is protection, figure out infringement Owner of ©: initial owner//joint work//made for hire//transferred + Ds derived/copied from © + Sufficiently similar in expression BACKGROUND Historythe copyright laws developed from English censorship, used to grant a monopoly for use of the printing press to the stationers company. This system that was devised was under the complete control of this company and no one was allowed to

reproduce a book that was already registered by another person. Once it was registered the right to print the book continued forever. This right could be given away or sold but only to members of the guild. Eventually, the licensing acts that controlled the English process expired which greatly affected the book trade. As a result, the first modern copyright statute was enacted in 1710, called the statute of Anne. It granted the exclusive right to publish for fourteen years and was renewable for an additional 14 years. This statute was largely carried over to the United States when the Constitution was written. There are largely three waves of copyright law in United States. First, the time between the adoption of the Constitution to the enactment of the 1909 act. Second, the 1909 act. Third, the current copyright act of 1976. The two that are relevant for current copyright purposes are the 1909 act the 1976 act. The 1909 statute still governs copyrights that were obtained by publication or registration prior to 1978, subject to some important changes, such as duration and renewal. Some copyright obtained under the 1909 statute will continue to be in effect until 2072, as such, the 1909 statute remains important. 1976 Act The 1976 statute went into effect on January 1, 1978, thus, copyrights registered prior to that date are controlled by the old statute. 1976 statute extended federal statutory copyright protection to unpublished as well as published works. It’s restricted to state common law copyright protection to work that we’re not yet fixed in a tangible medium of expression. It’s also extended the basic copyright term, providing protection for the life of the author +50 years after his death. It’s also codified the idea – expression dichotomy. In 1989 the US joined the Berne Convention, thus, eliminating the requirement of notice on all published copies of the work as well as the requirement of the registration before filing suit for foreign works. However, all works, require registration in order to obtain statutory damages or attorneys fees. Adherence to the Berne Convention also prompted other statutory changes, such as the architectural works protection copyright act of 1990, the visual artists rights act of 1990 enacting a limited form of moral rights protection. It also restored a number of copyright in foreign works that had entered in the public domain for failure to comply with United States formalities. There are many other forms of legislation that followed for example, the digital millennium copyright act, which prohibits the circumvention of technological protection measures and limited the liability of Internet service providers; the sonny Bono copyrights term extension which added 20 years to the term of all existing and future copyrights, Including under the old act. POLICY 

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Utilitarian Incentivizing artistic creativity to benefit the public good o Balance Creation vs. optimal use & dissemination  Limiting scope of protection to ensure © doesn't unduly burden free expression Natural rights Secure fair return for creative labor Personhood Respecting author’s personal connect with work

The policies underlying © protection are grounded on the utilitarian, natural rights, and personhood theories. First, under the utilitarian regime, protection is extended as a means of incentivizing artistic creativity, which results in a benefit to the public good. Under this rationale, protection is granted as a result of a balance between creation and the optimal use and dissemination of works of authorship. As such, the scope of protection is limited in order to ensure that protection does not unduly burden the free expression of other creators. Under the natural rights theory, which has seen increasing

importance since the United States joined the Berne Convention, patent protection is intended to secure a fair return to an authors creative labor. And last, under the personhood theory, copyright protection also includes aspects of respecting the inventors personal connection with his work. REQUIREMENTS FOR COPYRIGHT § 102(a) defines copyrightable subject matter: “copyright protection subsists… in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. ” This section gives us to conditions for copyrightability (1) originality (2) and fixation in a tangible medium of expression. §102(b) limits the scope of copyright protection by codifying the idea-expression dichotomy. “In no case does (c) protection for an original work of authorship extent to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which is is described, explained, illustrated, or embodied in such work.” Thus, copyright only protects the original expression of ideas, not ideas themselves. Works must also fall within the constitutional and statutory definition of a work of authorship. 1Protected Subject Matter “Works of Authorship” §102(a)—Non-Exhaustive List (can be more than 1 kind) [1]§101 Literary Works Expressed in numbers, words, or symbols; Extends to literal text and to nonliteral elements of works such as structure, sequences, and organization a. Does not include words and short phrases, such as names titles and slogans (37 CFR §202.1) b. Computer programs fall under this category whether in source code, object code, or other form, which is surprising since computer programs are highly mechanical and not very expressive. §101 amended in 1980 defining computer programs as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” [2]§101 Pictorial, Graphic, Sculptural Works (PGS) 2D & 3D Works of fine, graphic and applied art; photos; prints; art reproductions; maps; globes; charts; diagrams; models; and technical drawings; including architectural plans. a. Literary work as PGS there could be an overlap where letters or symbols used are arranged artistically/in an artful manner like posters, signs, the poem “Easter wings” which has the lines of the words shaped like wings b. PGS - Works of artistic craftsmanship limited by useful article doctrine “insofar as their form but not their mechanical or utilitarian aspects are concerned” Useful articles are PGS only if they incorporate a PGS feature that “can be identified separately from, and are capable of, existing independently of, the utilitarian aspects of the article.” c. Useful article? No → apply originality and fixation requirements; Yes → apply separability tests [3]§101Musical works and Sound Recordings incl. accompanying words (see musical industry complications) a. Musical works – full complement of rights; can be original in melody, harmony or rhythm

b. Sound recording – no performance right, except digital; reproduction only actual copying of sounds. i. DOES not include the sounds accompanying a motion picture or other audio-visual work c. ALWAYS distinguish between a musical work and a sound recording when the song is fixed on a cd, the CD is the copy of the musical work and the phonorecord of the sound recording. [4]Dramatic, Pantomimes, and Choreographic Work Impromptu or unrecorded dancing NOT protectable because not fixed in a tangible medium of expression. Protection NOT extend to simple dance steps. Protection for pantomimes NOT incl. conventional gestures typically covers choreography, plays, movie scripts, radio, tv  a. Dramatic: Distinguishing feature here is that they are actions, which are performed as opposed to being narrated or described.  these things are intended to be performed. Dramatic refers to being “in character” plot doesn't matter. Opera would qualify under this- would also qualify under musical works. b. Choreography: “a related series of dance movements and patterns organized into a coherent whole.” © office compendium II. They DON'T need to tell a story to be © Protected. [5]§101 Motion Pictures and other Audio-Visual works “works that consist of a series of related images which are intrinsically intended to be shown by the use of machines, or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the work is embodied.”  a. The use of some device or machine is required. So, a play would not be an audio-visual work. [6]§101 Architectural Works Architectural Works CR Protection Act of 1990 protects “the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings” a. House Report says no CR protection for design elements that are functionally required (pp.439) Buildings include places that people enter but not structures such as bridges and highways b. §120 states the exclusive rights & limitations If the building is visible from a public place the © owner has no rights against the making, distribution, or display of images of the building & the owner of bldg. can alter or destroy it w/o © holders permission. [7]§101 Compilations/Collective Works Database, directory, collections, CD containing photo from national geographic. Compilation may be made of non-© elements, but the compilation itself is © - just need to look @ originality & scope of protection. [8]Vessel Hull Designs [9]§101 Derivative Works “a work based upon one or more preexisting works, such as translation, musical arrangement, dramatization, fictionalization, art reproduction, abridgement, or any other form in which a work may be recast, transformed or adapted.” a. Scope: §103 If NOT under © derivative could be © If UNDER © then holder has the exclusive right to make derivatives HOWEVER i. If a DW is sufficiently original it may be able to have its own ©. But the © in the derivative applies ONLY to the new creative expression- not elements copied from underlying work.

1. Important in context of scope & licenses & Termination of licenses 2. Musical works compulsory licenses allowing covers but not derivatives b. Policy for granting a separate copy in derivative work where already an original CR: i. Incentivize new creativity beyond original CR work, or derived from public domain (market for derivatives, Campbell) ii. Allow copyright owners to license to others to create derivative work → specialization of labor 1bUnprotected Subject matter §102(b)No (c) Idea, procedure, process, system, method, concept, Principle, discovery § 102(b) – CR protection does not extend to any idea, procedure (recipes), process, system, method of operation, concept, principle or discovery [policy: functional] [10] Facts & ResearchNot © because not sufficiently original; but compilations generally are where coordination/arrangement/selection is original.  a. PolicyThe rationale behind prohibiting the © of facts stems from the fact that they are too important to be subject to © limitations giving too powerful a monopoly. The “promotion of progress” which is the purpose of intellectual property protection under the constitution requires raw material to be able to be built upon i.e. the building blocks. Similarly, under patent law, the patenting of discoveries of nature is forbidden because doing so would limit things that occur in our environment to exclusive use and control. The point is, that the IP laws are not intended to reward inventors authors etc. Rather, they are intended to incentivize them to create and innovate. There is nothing innovative about reiterating that which already exists. b. Additionally, if facts were allowed to be ©, it would be virtually impossible to protect because facts are inherently similar. On the other hand, it can be argued that the collection of facts is so important to the growth of the public knowledge that © protection should be extended to them; this is especially true where significant work or “sweat of the brow” is involved in researching the facts. However, this argument seemingly does not have the needed veracity to compel protection in comparison with the general interests favoring the free-flow of the building blocks needed to innovate in the future. Similarly, the “sweat of the brow” argument was explicitly rejected in Feist for its lack of veracity. [11] Blank forms, time cards, address books, score cards, graph paperineligible for CR protection because designed for recording information and do not themselves convey info (37 CFR § 202(1)(c)) [12] Idea Expression dichotomy §102(b) [13] Literal copying is copying protected expression, likely infringement. Copying only the basic underlying idea (premis of a movie) is copying unprotected ideas, not infringement. The difficulty lies in the areas between those extremes.  [14] © only protects the elements of works that constitute “expressions” of ideas, which have creative elements to them. The idea-expression dichotomy is the underlying principle to all of these types of unprotected subjects because each of them has some sort of functional purpose rather than a creative purpose. Instead, functional items, especially because of their importance to society and the preference of keeping such processes etc. in the public domain, should be left to the stringent requirements of patent laws if they can be met. In fact, the prohibition of

ideas and processes etc. is the main distinction between © protection and patent protection; if ideas were © then the patent requirements would be easy to circumvent and very easy to maintain a monopoly on important technological, scientific, and even medical advances by simply jotting them down (fixation). The constitutional provision giving Congress the power to regulate patents and trademarks is purposed to “promote the progress of science” the idea expression dichotomy helps facilitate that purpose by keeping ideas in the public domain for later generations to build upon, dissect, criticize etc. as to promote the progress of knowledge in general.  As the court reasoned in Baker v. Selden, the copying of the forms were merely copying of a system or idea, rather than the expression of the idea because the forms and explanations following the forms produced by Baker were different than those of Selden. The same system could be used and © by others so long as it is not the expression being taken. Furthermore, the court explained that when copying a type of expression is the sole means of implementing the underlying idea of the expression, then any copying will not be infringement, because the idea is incapable of being distinguished from the expression i.e. blank forms were the only way to express the idea. Thus, in determining whether © protection should be granted to certain functional ideas, some courts may: (1) the merger doctrine [element necessary to implementing the underlying idea] ; (2) whether the element in question increases the efficiency of the process; (3) whether the element has become standard in the relevant industry or is needed for compatibility with other works (as in the case of Lotus 1-2-3) a. Judge Learned Hand in Nichols “upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times may consist only of its title; but there is a point in the series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his “ideas” to which, apart from their expression, his property is never extended.” i. I think the better approach is the balancing approach offered by Paul Goldstein, who provided 3 categories of unprotectable ideas: (1) “animating concept” behind the work; (2) the functional principles or solutions described or embodied in the work (e.g. S’s forms); and (3) the fundamental building blocks of creative expression (basic plot or character outlines in literary or dramatic work). This view purports to balance the dangers of overprotecting and underprotecting a particular work in determining which side the ideaexpression falls on. This approach is better because it seems to consider the extent of the ©’s scope/monopoly in vs. how large an area of works should be capable of exclusion. (JA) ii. Abstraction test [15] Methods of operation.  The I-E dichotomy is especially difficult to apply in software cases. The more functional aspects are not afforded © protection. However, issues such as copying the organization of code, or of the “look and feel” or user interface are borderline… For example, in Lotus, the court held that the copying of a computer command hierarchy is not © subject matter because it constitutes a method of operation under §102(b). The hierarchy was considered to be a means by which users operate the functional components of the system. The court likened the hierarchy to a VCR, which, without buttons would no longer operate. The court reasoned that even though buttons could be labeled, it doesn't make them a literary

work nor an expression of the abstract method of operating a VCR; the buttons ARE the way the VCR operates. Similarly, without the hierarchy, 1-2-3 would not not operate- pushing a button to print or is the same as pressing play on a VCR. Thus, the court reasoned, that even if the method of pressing the buttons were expressive, they would still not be (c) because they were needed to operate the system. [16] The Merger DoctrineTypically functional and fact-based works—Where there is only one or but a few ways of expressing an idea, then the idea behind the work merges with its expression and the work is not ©. For example, in Morrisey v. Procter & Gamble, the court, in denying © protection for the language of sweepstakes rules, reasoned that the rules can only be expressed in a limited amount of ways, and if they were allowed a © then they would be able to just make a few forms, and then they would eliminate all other possibilities for future use by removing the idea from the public domain. The policy behind this is that, we do not want to give too large a monopoly to perform an act e.g. like a contest, because there would be no other way of doing them if we granted such a monopoly, thereby eliminating the public benefit of offering the © in the first place. a. Thin© Under the merger doctrine some courts grant a thin © where there are a limited means of expression, thus, a nearly identical copy would be the only equivalent that would infringe. On the other hand, where there significantly few ways of expression, the courts tend to deny © completely.  [17] Scenes a FaireAuthors are also unprotected when the elements of a work is commonly found in or indispensable to works of that genre. This is predominantly used in the literary or dramatic context to forbid © protection for cliché language that is indispensable or standard to a specific topic. For example, if I wrote a book or a play about a German with a beer hall scene that scene would not be protectable because virtually every book about Germans contains one.  This is pretty much an attack at the originality requirement because if a scene a faire was involved it would be lacking in any modicum of creativity as they are expected and routine- similar to the alphabetical listing of the names in the white pages in Feist. [18] Words, Short phrases, slogans 37 CFR §202(1)(a)  due to the originality requirement and the (c) office has regulated that the following are not creative enough to be original: words, short phrases like names, titles, slogans, familiar symbols or designs, mere variations of typographic ornamentation, lettering or coloring, mere listing of ingredients or contents [19] PGS Useful Article Doctrine [20] PGS Pictorial, graphic, and sculptural works §101 PGS considered works of artistic craftsmanship “Insofar as their form but not their mechanical or utilitarian aspects are concerned; The design of a useful article, as defined in the section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspect of the article.” [21] Useful Article §101 defines useful article: an “article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a useful article.”  a. The key here is that you can separate the useful part from the appearance or the functional only those elements that are aesthetic are subject to © protection. The other parts that are utilitarian are not.

[22] (1) Is PGS a Useful Article? – intrinsic utilitarian function that is not merely to portray appearance of article or convey info? If no, doctrine doesn't apply. [23] (2) Physically separable? Is there an element physically separable from the utilitarian aspect of the article: a. TEST: (1) Element can stand alone from article; (2) separating it doesn't impair articles utility [24] (3) Conceptually separable//Temporal displacement test?Is an element conceptually separable from the utilitarian elements? a. Denicola TEST:[Applied by majority in Brandier] Separable where the design elements reflect artistic judgment exercised independently of functional influences [utilitarian//functional approach] i. Looks @ Artists purpose in choosing the design feature at issue if the design element was adopted due to utilitarian considerations, then the features are inextricably intertwined with the utilitarian function and not conceptually separable. If the design features were not required or influenced by the utilitarian or design function of the article, but purely aesthetic choices went into making it independent of the function, then they are separable. ii. For example, the court in Brandir held that the initially artistic bike rack was not protected by © b/c the functional concerns influenced racks aesthetic appearance. The alterations made by the author were oriented towards making it more functional, and as such, the design elements were not considered as reflective of artistic judgment independent of functional influences. b. Winters Test: However, the dissent in Brandir case concocted a different test to determine separability, in which it occurs when an ordinary reasonable observer perceives the aesthetic concepts unrelated to the article’s use. In using such a test, the dissent concluded that a reasonable observer would view the ribbon rack as an ornamental structure, and thus, it would be protectable. c. Temporal Displacement Test: [Newman Dissent in Barnhart] “aesthetic features are if the article stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function.” d. Primary Use test: “whether the primary use is as a utilitarian article as opposed to an artistic work” e. Marketable as art test: “whether the aesthetic aspects of the work can be said to be primary, and whether the article is marketable as art” i. Majority in Branir said these are not satisfactory f. Goldstein case: conceptually separable if PGS can stand on its own as a work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it. [25] RESULTS: NO THE ELEMENTS ARE NOT CONCEPTUALLY SEPARABLE No ©  YES THEY ARE SEPARABLE Thin protection only for those PGS features that are conceptually separable + Original + Fixed… [26] Government Works Works which are produced by government employees, in the scope of their official duties, and not subject to © Protection. §105 provides that no © protection is allowed for any works created by the US government. This is specific to federal US governmental employees. However, courts have found that various state statutes, codes, and judicial opinions are generally not subject to © protection. However, §105 does not prohibit independent contractors from being able to © his work; but in §105 and the typical independent contractor contract, there is a

provision that allows the federal government to take ownership of the ©, so, for example, an independent K’r retained to write model laws will not thereafter be able to claim © in them. The rationale behind the government works prohibition, is that as a corollary to the exclusive rights granted to the holder, people need to access government works for a number of reasons such as compliance with the laws and participation in government programs. Further, to permit the government to bar access is contrary to fundamental due process principles. Even more, issues of censorship may arise if the government does stuff behind closed doors. After all, there is very little incentive in exclusive rights where the public is paying for the production through taxpayer $. 2 Originality §102 requires: (1) Independent creation (2) Modicum of creativity --Sweat of brow//compilation of facts Elements & application §102 requires works of authorship to be original. Originality requires that the work be created by the author through some form of independent intellectual endeavor. Additionally, the work must exhibit a “modicum” or minimal amount of creativity. For example, in Feist, the court held that the white page listings were not original because they were lacking in a modicum of creativity. The compilation was just a list of phone numbers, names, and the town of subscribers, which the court reasoned were facts, which are inherently un-original. On the other hand, the way in which those facts were selected and arranged could be original, and thus, copyrightable. The court in Feist held that the compilation in that case was not original because the facts were merely listed in alphabetical order, in a seemingly mechanical manner that completely lacked any creativity in a completely “obvious” manner. What this means is that, it is most obvious to compile those facts in alphabetical order, which is “an age old practice… so commonplace that is has come to be expected as a matter of course.” THIN © Compilation of facts- Creativity oriented In Feist, the court held that a compilation of facts can only be held as original where the selection arrangement and coordination of the facts are original. Whether selection or arrangement constitutes as original is judged by the author’s decision in compiling them i.e. whether he was creating the compilation for a functional purpose or for a fanciful/creative one by using, for example, certain colors or lighting. Even when the originality threshold has been met, the copyright protection afforded is a seemingly thin and only protects the information that survives the originality muster. Thin © is where the cts recognize protection in the work, but will only find infringement where the copying is nearly exact. No judicial artistic measurementMeeting the originality requirement is a seemingly low threshold, as courts are reluctant to judge the artistic merit of a work. As the court in Feist reasoned, (in my own words/understanding) what constitutes a creative or artistic work is inherently subjective, and often changes over time. Sometimes others cannot appreciate the artistic merit other than the creator himself. Sometimes, it takes time for people to realize the creativity. Van Gough created over 900 paintings, and only sold one during his lifetime; but today his work is revered. Thus, the court is in many respects, unfit to judge the artistic merit of a work. Originality vs. Novelty Feist case, the court stated that “originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying.” The patent requirement of novelty is more in regards to existing works i.e. that the work already on the market is not the same as to defeat the purpose of granting a monopoly. Whereas Originality is two pronged, requiring that the work be Original to the author as well as minimally creative,

just not verbatim copied from another person i.e. it need to be author’s rendition of whatever it is.  3Fixation in a Tangible Medium of Expression §101 §101 a work is “fixed in a tangible medium of expression” for copyright law purposes when “its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is ‘fixed’ for purposes of this title if a fixation of the work is being made simultaneously with its transmission.” PolicyThere are a number of policy reasons for having a fixation requirement. Fixation allows individuals to prove authorship it protects direct communications and offers a clear standard that avoids frivolous infringement suits. Intangible vs Tangible Works of authorship are inherently intangible, which is why §102 requires that works of authorship be reduced to a fixed tangible “phonorecord.” As such, the difference between the intangible idea and the fixation of it must be recognized. For example, if I write a poem, the poem is what the © law is protecting, not the paper that I write it on. Constitution requires it the fixation requirement is imposed by the constitution since it requires that Congress protect writings. For something to be written, it needs to be in fixed form, it cannot just be the ideas alone. Otherwise why have copyright law in the first place? No one is going to copy a poem that is stuck in my head, at least not if I don't tell it to them. Copies §101 defines a copy as a material object that is not a phonorecord that can be used to reproduce perceive of communicate. Examples would be paper, or floppy disks. Phonorecords §101 are those that music or videos can be “perceived, reproduced, or otherwise communicated” to such as MP3 files and DVDs Sounds and dramatization simultaneous with transmission Usually a work must be fixed before public performance (e.g. make a sound recording or video recording) to be protected by federal ©, but §101 allows simultaneous fixation at the same time of a live performance where the performance is being transmitted/broadcasted to another location to be recorded. Recording live performancesHowever, recording authorized live performances is not fixed. So not © protection for an audience members recording of a live show. Congress passed the anti-bootlegging statute §1101 to address this issue under their commerce powers State common law protection§301(b)(1) Unfixed works like improvisation, performances, or broadcasts can be protected by state law, as the Copyright act’s preemption provisions expressly allows for state protection for unfixed expressions. 4 Formalities –Notice//Publication//Registration//Deposit Notice §401 Copyright notice is very simple to satisfy, and only requires a © symbol or abbreviation, and the name of the author. Thus, although notice is no longer a requirement, §401 encourages conforming with the notice requirement by allowing © holders to receive more damages for infringement. 1909-1978Notice required on published works in order to have a federal ©. At the time federal © was primarily in the form of published written work, and those that were not published were protected under state law. 1979-1989Still required notice, however, the 1978 Act provided a liberalized cure for deficiencies in terms of the location and form. Further, failure to give notice did not result in forfeiture of © protection as long as (1) there were only a limited number of copies without notice in circulation; (2) the work was registered

no later than 5 years after it was published and after the omission was discovered, the author made a reasonable effort to fix copyright notice on the distributed copies/phonorecords; (3) the licensee omitted the notice in violation of the written licensing agreement. Publication of the work 1978-Currently, no publication is required to receive federal © protection. However, failure to publish still affects the duration of protection and the termination of transfers. 1909 unpublished work was protected under the state common law and was not afforded federal © protection. Registration §408 Registration with the Copyright office was previously required, however, for current works made after 1969 registration is optional. Registration is simple, and merely entails filling out the form, paying a small fee, and depositing a copy of the work. There are a number of incentives for authors to register. First, §411 provides that an application for registration is a requirement to file suit for copyright infringement for works in the US. Second, if the copyright holder registers prior to an infringement action, §412 provides that he is able to sue for statutory damages and attorney’s fees. Finally, if an author registers within 5 years of publication, the work is presumptively valid i.e. it is prima facie evidence of copyright validity. Deposit w/ library of congress§407 requires that 2 copies of a work be deposited in the library of Congress within 3 months of publication. This requirement is mandatory, but it is not a prerequisite to federal protection. An author who fails to register is subject to fines. The purpose of the deposit requirement is to promote progress by making knowledge accessible and it also serves as a notice to the copyright office as to who is registering. Policy The relaxation of formalities changed the lapse to public domain that had previously existed and extended copyright protection to many foreign works that had fallen within the public domain because of failure to comply with trivialities. As a result, there is less material in the public domain, and less accidental loss, which in turn helps foreign and unsophisticated authors receive protection for their work. EXCLUSIVE RIGHTS OF © HOLDER Reproduction Rights [1]General [2]Electronic Reproduction [3]Exceptions & limitations Prepare Derivative Works Public Distribution – General, Electronic, First Sale, Import/Export [1] Generally a. [2] Electronic Distribution a. [3] First Sale a. [4] Import/Export Rights a. Public Display

Public Performance [5] Generally a. [6] Secondary Transmissions a. [7] Exceptions/Limitations a. [8] Performing Rights Organizations a. D Digital Audio Transmission Moral Rights [1]Generally [2] [3]Visual Artists [4] Compulsory Licenses OWNERSHIP & TRANSFER Initial Ownership [9] Works for Hire [10] [11] Joint Works [12] [13] Collective Works [14] Transfers and Licenses Termination of Transfers

TRADEMARK STATE LAW PROTECTION MISAPROPRIATION BREACH OF CONTRACT Shrinkwrap Licenses Clickwrap licenses Copyright Preemption of K law

THE RIGHT OF PUBLICITY

EXAM ESSAY OUTLINE I.

II. III. IV.

Causes of Action a. Trademark  A v. B i. Go through elements dismiss them if it is clear… or briefly state ii. Defenses? b. Copyright c. Patent d. State C/A Additional Information needed Future protection Policy Args.