patentability
- subject matter
- enablement
- utility
- novelty
- nonobviousness
should be reviewed by PTO in order
infringment/ rights of patentees
- claim construction (metes and bounds, scope of the monopoly rights)
- literal infringment (for each element of patentability, ether literally or by...)
- doctrine of equivalents (estoppel and XX)
remedies to protect the rights of patentees
- injunctive relief (not forgone conclusion. an equitable balancing test must be done to see if injunctive relief is the appropriate remedy. "patent trolls" are a concern too. even if injunctive relief isn't available,
- damages must be available to compensate the patentee for infringment. damages can include loss of profits (difficult) but usual a "reasonable royalty" to reflect what we think the two parties in negotiation would have arrived at in an agreement
- willful infringment: there may be punitive damages imposed.
defenses to claims of infringment
- experimental use: moribund defense that doesn't carry much weight
- inequitable conduct: if you withhold/ provide false info to PTO then your patent is invalidated so it's not just an individual's defense
- patent misuse: attempts to deal with the problem with where the market can confer power on the patentee to restrict or limit competition in a separate market
copyrights
17 USC - Copyrights
Intro. CR spends most of its history trying to catch up to technological innovation. In line with this development, there is parallel development in the CR term. Patent term is 20 years, but CR terms have increased drastically over the centuries.
1790: 14 years + 14 years
1831: 28 years + 14 years
1909 Act: 28 years + 28 year renewal
1976 Act/ Berne Convention: life of the author + 50 years
1998 ("Sonny Bono Extension Act"): life of author + 70 years, for all works from 1923
The Digital Age: enhancements to copyright protection considering the advancements in and increased access to digital technology
Even as technology allows for cheaper, wider and faster distribution, the copyright protection becomes longer period. Why?
- Original 14 years term was based on 2 periods of apprenticeship. Also, people live longer.
- Creative works become more important to the economy as they're created and distributed, which takes a longer period. Want to incentivize the creation of these creative works.
- Mickey Mouse would fall into the public domain if not for Sonny Bono (will have to consider if different regimes should be employed to protect Mickey)
Power of creators to control their distribution.
How do we create a legal regime to balance the pressures between creators desire for protection and use for the public?
Ownership of a valid CR conveys protection from:
- Copying
- Derivative work
- Distrib
- Performance
- Anticircumvention: such as encryption
- Moral Rights: prevent distortion and mutilation of work
Criteria for CR Protection
- Originality
- Fixation
- Limits on Copyright
- subject matter
- useful articles
- idea/expression
The CR Regime: an Overview
CR subject matter - broad range of literary and artistic expression
Threshold for protection - only a modicum of originality is required
Duration - life of author plus 70 yrs, or 95 yrs for anonymous works
Requirements
Originality
17 USC s.102(a)
original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be preceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device...
17 USC s.101: "fixation", "copies" and "phonorecords"
- a work is fixed in a tangible medium when its embodied 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.... (this distinction becomes important when thinking of internet CR protection)
if you haven't fixed it, it's not subject to CR-"copies" are material objects other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.
- "phonorecords" are materials objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.
why require fixation?
- efficiency
- (recording at 30 min)
original works = independent creation (not copied from other sources) with some modicum of creativity
sheldon v. MGM: "the 'author is entitled to a copyright if he independently contrived a work completely identical with what went before; similarly although he obtains a valid copyright, he has no right to prevent another from publishing a work identical with his, if not copied from his."
alfred bell v. catalda fine arts: courts do not judge the artistic merit of a work... rarely are artistic works found to be de minimus originality threshold of copyright law.
should copyright protect mechanical works? "sweat of brow theory" has 2 rationales
1. economy: compilation is necessary and efficient
2. fairness: unjust to permit one person to benefit from another's hard work
why are we concerned about not chilling invention but chilling creativity?
- public policy: there's something more personhood interests invested in creative endeavors
than in scientific and mechanical inventions
- utilitarian interest: 1st amendment reflects the fundamental commitment of our society to freedom of expression, and CR is an infringment to that right to say "you can't say that, i said it first"
- efficiency: much more difficult to draw distinction between creativity
feist v. rural
"feist is not a telephone co, let alone one with monopoly status, and therefore lacks indep access to any subscriber info... fiest aproached each of the 11 telephone cos operating in NW ka and offered to pay for th eright to use its wihite page listings. .. only rural refused to license its listings. feist used them without rurals approval. 1,309 of the almost 47K listings in feist's directory were identical to listings in rurals. four were even fictitious id tags! rural sued for CR infring
axiom of CR -- "no author may copyright his ideas or the facts he narrates (i.e. facts and discoveries are not CR protected)." see harper v. nation
to qualify for CR, a work must be original, meaning only that hte work was indep created by the oughtr and possesses at lest some miminal deg of creativity. the req level of creative is extremely low, even the lsight amouth uwill suffice. ORIGINAL is not same as NOVEL!
originality is const mandated. the trademark cases -- "the const scope of writings. "originality is required, fuites of intellectual labor, embodied in print and the like."
facts are not CR - facts do not have authorship. creation v. discovery; the diff is person finds and reports discoveries, doesn't create them.
but factual COMPILATIONS may have the req originality. chooses what facts to include, order, arrangement, etc. even a directory with only facts may meet the const min for CR if it features an original sellection or arrange.
just because a work is CR, not every E is CR, only the components with originality.
not all copying is CR infring. to est infring:
1. ownership of CR must be proven
2. copying of protected E that have originality
did feist, by taking 1309 names from rural CR infring original work? NO - these are unCR facts.
so did rural, by selecting, arranging, etc make the UnCR facts in a CRable way? NO, garden variety white pages arranged in alpha order with no creativity exercised, even though the threshold is low.
CR estoppel: "equity and good morals will not permit one who asserts something as a fact which he insists his readers believe as the real foundation for its appeal to those who may buy and read the work, to change that position for profit in a lawsuit."
**listen to recording at 54:00 **
we want everyone to be able to come up with different ways of arranging facts and sharing them. the arrangement and expression of facts might be copyrightable. but what about something that's pretty big, like a phone book?
reason for CR is to promote the disemmination of knowledge. but for some products using a monopoly right would be harmful rather than helpful.
brenner -- "a patent is not a hunting license" if you haven't created something useable, then
protectable and unprotectable elements of a work: with respect to facts, we think that copyright is a bad way to get them. with extent to the way that facts are shared and arranged, we think that's cool and we're willing to give a copyright, but absent a modicum of creativity we don't think that CR is a good bargain for us as society.
17 USC 103: Compilations
"the subject matter of CR... includes compilations... but... copyright in a compilation... extends only to the material contributed by the author of such work, as distinguished from the pre-existing material employed in the work"
fixation.
the existing requirement that a work be "fixed in a tangible medium of expression"
that this medium may be one "now known or later developed"
and that the fixation is sufficient if the work "can be perceived, reproduced,
or otherwise communicated, either directly or with the aid of machine or device."
-- this language is derived from white-smith v. apollo co
in a work consisting of sounds, images, or both, that are being transmitted, the work is regarded as fixed if a fix is being made at the same time as the transmission. unless/until, the work doesn't qualify for CR
17 USC 106(1): CR owner has the exclusive right to "re the cr work in copies or phone" where "copies is "material obj in which a work is fixed," thus a D does not infringe the right to rep unless s/he has rep the CR work in fixed form.
copyrightable subject matter
limitations on copyrightability: distinct function and expression
17 USC s.102(a)
works of authorship include the following categories:
1. literary works
2. musical works, including accompanying words
3. dramatic works and accompanying music
4. pantomimes and choreography
5. pictorial, graphic, and sculptural
6. motion pictures and audioworks
7. sound recordings
8. architectural works
(listen to recording at 1:09) idea-expression dichotomy 17 USC 102(b): concerned about XX
"in no case does copyrighting protection for an original work of authorship extend to any idea
baker v. selden
copyright of a book "selden's condensed ledger" sues complaint against D baker for an infringement of the CR of his condensed ledger.
if it be assumed the system is open to public use, it seems to be equally difficult to contend that the books made and sold by D are a violation of the CR of the P's book considered merely as a book explanatory of the system. where the truths of a science or the methods of an art are the common prop of the whole world an author has the right to express the one, or explain and use the other, in his own way. asa n author, selden explained teh system in his way.
an unfixed work of authorship, such as an improvisation or unrecorded choreography, performance or broadcast, would continue to be subject to protection under common law or statute, but would not be eligible for federal statutory protection under 17 USC 102.
no doubt that a book on bookkeeping can be CR material!!novelty of the art has nothing to do with validity of the CR.
info on the subject contained the book is given freely to the public, like a phys desk reference. public derives application and use from the info of the book. if the subject should be protected, need a patent. CR just protects the printed material. "description of the art in the CR material in no way lays exclusive claim to the art itself."
distinguishing idea and expression: "upon any work, a great number of patterns of increasing generality will fit equally well.. (see 416)
**listen to recording at 1:18**
CR office does not CR blank forms, time cards, graph paper, account books, diaries, etc.
morrissey v. proctor and gamble co
morrissey is the CR owner of a set of rules for the sales promo contest of the "sweepstakes" type involving the SSID of participants. P provided the rules as evidence. the district court followed the decision of gay v. gillis and decided that since the substance of the contest was not CR (correct), and the substance was simple, it must follow that P's rules spriung from the substance and contains no original creative authorship. App court holds for the D: UnCR subject matter is very narrow: if not only one form of expression, at best only a limited number, to premit CR would mean that a party by CR a mere handful of forms could exhaust all possibilities of future use of the substance.
you can't just write down a set of rules and say, "aha! now i have created the sweepstakes and its the only kind!!"
the merger doctrine: when there is only one or but a few ways of expressing an idea, the courts will find that the idea behind the work merges with its expression and is not CRable.
CR law doesn't protect historical facts, because they're not original works.
CR doesn't protect "incidents, characters or settings which are as a practical matter indispensable to a treatment of a given topic."
useful art doctrine.
17 USC 101: "pictorial, graphic, and sculptural works... including works of artistic craftsmanship insofar as their form but not their mechanical or... (see rest of slide)
why? because if you can get patent protection, why not get trademark protection... channeling of intellectual property laws and ideas into the right value of protection for the material.
brandir int'l v. cascade pacific lumber co.
useful articles are excluded from CR claim protection.
"RIBBON rack" bicycle rack made of bent tubing said to have originated from wire sculpture.
the conceptual separability is distinct from the physical separability and when present entitles the creator of a useful article to a CR on the design.
Denicola test: statute directive required a distinction between works of industrial design and works whose origins lie outside the design process, despite the utilitarian environment in which they appear. CR - ultimately should depend on the extent to which the work reflects artistic expression uninhibited by function considerations. if design E reflect a merger of aesthetic and functional considerations, can't say concept is separate from utility. but when design E is artistic judgment sep from functional consideration, then they're separable.
trier of fact will determine whether the aesthetic design E are significantly influenced by the functional considerations.. court found RIBBON is not CRable. brandir argues correctly that a CR work of art does not lose its protected status b/c later put to functional use. while the rack is derived from "works of art" it is in its final form essentially a product of industrial design. adapted the original aesthetic E to accommodate and further a utilitarian purpose.
** it is not enough the rack may stimulate in the mind of a reasonable observer a concept separate from the bicycle rack concept. the RIBBON rack may be worthy of admiration for its aesthetic qualities alone, but it remains nonetheless the product of industrial design. no artistic element that exists independently.
therefore, affirm on the copyright claim.
but who's perspective should we use to determine if something is useful? the majority uses Denicola, and the subjective perspective of the creator: whether he was influenced by the utilitarian components of the design or if it simply manifested in a utilitarian way. just one drop of utilitarian consideration will make it a useful item instead.
(a) look at it from the designer's process
(b) if 1 drop is useful, it's not CRable
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