Intellectual Property Law Outline – Summer 2012I. Introduction to IP

John Lockeo Man’s labor is his property and when you mix your labor w/

something it becomes a claim as your property Utilitarian Basis of IP

o The idea is to have the most good for the most amount of people

o “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

o Economic incentive/issues Competitive Equilibrium: the point where the price

meets the quantity on the demand curve (price = marginal cost)

Monopoly Equilibrium: when the price is much greater than the marginal cost and the quantity supply goes down (efficiency loss bet. The high price and where the price = marginal cost)

o Limits: Length of Term

Patent: 20 yrs Copyright: life + 70 yrs Trademark: indefinitely until abandoned Trade secrets: forever

o Breadth of protection Scope of rights Completeness of exclusivity Etc….

need to balance the economic incentive while limiting diffusion to ensure inventors have protection of rights.

II. Patent Law

important component of national economic policyo could give us a competitive advantage over other nations

patent system spans the economy and affects how people behave in diff markets

o i.e. software, alga rhythms, housing economy (derivatives) Recent policy changes

o there is now one US fed ct of appeals for ALL patent judgments across the US.

o want to basically apply the patent law across the US Patent office is an Administrative Agency that is part of the

department of commerce The patent document

o Discloses the information and establishes boundaries o No requirement for a picture, but there usually areo At the bottom of the document there are a series of

numerical claims These are the words that determine the scope of

the rights You start out trying to claim as broadly as

possible, then add dependent claimso Claims are there to set forth your legal rights

Private enforcemento Have private property rights that you can enforce yourselfo You are responsible for enforcement

Claiming Incentives:

o public: would want them to be clear and easy to understand

o patentee protecting your patent from companies using it or

licensing w/o permissiono breadth: broader the claim, the more subject matter of

activity may fall in the scopeo there is a concern if u try to make something really broad, it

may be invalid. o Can’t patent a prior art

Claim drafting is important: o i.e. making it vague, but still encompassing a narrow category

enough to make it seem broad need to balance clarity with vagueness.

Patent Lifeo From date of filing: 20 yrs beginso Period between filing and issue is the prosecution stage. o If a patent is rejected (during prosecution stage) you can

appeal it and point out the reasons why. can amend or re-write claims as well.

o Cannot renew a patent

Prosecutiono Ex parte process: just between patent applicant and office (no

other parties involved)o Most can be published after 18 monthso Possibility to continue prosecuting by paying feeso 90% issue

o PTO incentives encourage issue They want u to get patents Examiner productivity is measured by what they do with

your patento If the PTO doesn’t issue you a patent after a while of

prosecution, you can then appeal it. First, you would appeal w/in the agency. If you lose, then you go to court system. Can go to Fed Cir, or DC then Fed Cir

o Reexamination or reissue Applicants or competitors can ask to reexamine a

patent o

III. Patentability

1. Proper subject matter (sec. 101)o doctrine that says patents are only available for certain kinds

of things albeit broad thingso “process, machine, manufacture, or composition of matter."

2. Utility (sec. 101)o has to be new AND useful o Three Types

Operable Whether the invention works for its intended

purpose Operability Presumed; PTO has burden to show

reasonable doubt

Inherently unbelievable undertaking or involves implausible scientific principles

Beneficial Moral and just Juicy Whip CASE

Practical Brenner v. Manson CASE

patent for process synthesizing steroid was a homologue to another steroid that

had tumor inhibiting activity Court rejects this bc it’s a theoretical

assumption. Just bc the other steroid worked doesn’t mean this steroid will work either.

o Utility evaluated at the time of filing 3. Properly disclosed (sec. 112)

o need to meet certain requirements for describing the invention to the patent office and that those requirements are satisfied

o Two Parts: Enablement

Enable people skilled in the art to make and use the same (a lot of content)

Refers to people of ordinary skill in the art Enablement Summary: judge’s have given

Standard: The disclosure in the specification must

enable a person of ordinary skill in the art to make and use the claimed invention w/o undue experimentation

Whether or not you have undue experimentation is a question of fact.

Look at the Wands factors – just a list of factors, not determinative

Usually, the more unpredictable the art is, the more disclosure you have to give

Written Description Invented what is claimed… inventor had

possession of the claimed subject matter as of the filing date.

Something that by reading the patent specification will capture the invention that is being claimed

Not much contentThe issue is there is no guidance or context regarding what a written description is

definitively, courts have said that written description and enabling requirement are two distinct things.

So judge’s are going to give it content. At a minimum, judge’s aren’t meant to decide

what the term means (SOP issue). Judge’s may not just fill this up at all. They may

just write an opinion and not really telling us what they are doing (inability to see the mental processes).

Gentry Gallery Case pg 196 Reclining sofa: two of them next to each other

with control arms in the middle console: no specific area mentioned.

court says: the original disclosure clearly identifies the

console as the only possible location for the controls.

The limitations must be stated in the claims section, not just the technological description given.

4. Novel sec. 102(a) and 102(g)o new, not prior art (have existed before)o only new inventions are eligible for patents

o section 102(a) you’re entitled to a patent unless it is known or in use

by someone else in this country or patented here or in a diff country “before the invention thereof by the applicant for

patent” – the first person to invent it idea has been wiped out by the new reform taking place March 2013.

Still need to know this for patents granted before this

o The new requirement is the first in time to file idea o Anticipation standard:

Novelty is determined by this The prior art must contain expressly or inherently each

and every element of the claimed invention Prior art must enable the making of the claimed

invention Enablement for purposes of anticipation is a lower

standard than for making claims. Harsher when it comes to barring people as

well as for giving them patentso Rosarie case pg 210

hydrocarbon of soil for prospecting for oil invention Rosarie and Horvitz have patents for this invention and

national lead is saying that their patents are not novel bc they were used before.

The defendants, national oil, are being sued for patent infringement

The theory for the invalidity claim by national lead is that the invention is not novel.

Process is known or used by someone Rosarie concedes that Teplitz of gulf oil used this shit

before, but he never patented or published it to disseminate this knowledge to the public.

the court basically says that no previous case requires a showing to public must be shown before you can invalidate a subsequent patent.

So long as it is done openly and in the ordinary course of business, it is probably safe.

o A little more Novelty 102(g) Involves a special set of circumstances compared to

102(a) 102(a) and 102(g) is mostly gonna disappear after the

reform act takes place next yr. 102(g)

addresses interferences and conventional forms of use of prior art (what we’ve been talking about)

interference: administrative adjudication that happens in the

patent office. A patent office litigation to determine who is the

first inventor (1) Also addresses non-interference context (2)

Kind of like 102(a) but slices thru it in a diff way Doesn’t include knowledge or use by others (just

says “made in the U.S.”) Also there’s “not abandoned, suppressed, or

concealed.” – this is an anticipatory act Rule: RTP – file an application enabling disclosure

First to reduce to practice is the inventor (presumption)

Exception If someone can say they conceived the

invention first and used reasonable diligenceor

The original inventor abandons, suppresses, or conceals the invention

o America Invents Act (not in reading) What you need to know from this is the pretty big

generalizations Takes effect March 16, 2013.

The thing is that patents filed before this date still adhere to the old rules.

So basically, you will have to analyze the old rules to some patents for the next 20 or so yrs and the new rules to others filed after this date.

The “new” novelty: (a1): took out the geographical barriers bc technology

allows info to be passed around the world rather easily. Also it is now based on the effective filing date (first to file) rather than when invented first.

Also added “otherwise available to the public.” Maybe it’s just the judicial interpretation of known or used by others that was previously used. – don’t know yet bc the court hasn’t decided any cases yet.

(a2): filing date very important. Even if the second filer happens to be the first inventor, if someone’s application earlier has the invention they get it.

Exceptions to America Invents Act (b1): all apply to (a1).

Disclosures made 1 yr or less Any disclosure coming from the inventor Any disclosure coming by others after a disclosure

coming from the inventor (b2): all apply to (a2)

first filer derived from second filer first filer filed after public disclosure by applicant so basically with the exceptions in mind: it’s a first to file or first to publicly disclose

o5. Avoids Statutory Bars (sec. 102(b))

o Loss of a right to patent o “patented or described in a printed publication in this or a

foreign country” is the same meaning as in Novelty (102(a))o “in public use or on sale in this country” is added

o “more than one year prior to the date of the application for patent”

o use the anticipation standardo In re Hall CASE

Printed publication barred patent claimo Egbert CASE

Corset springs use in public invalidated patent claimo Exception: City of Elizabeth CASE

Patent for pavement and used in public for 6 yrs. Court said this constituted Experimental use and NOT

public use.

6. Non-obvious * (sec. 103)o not just be new, but a big enough technological leap from

what came before it i.e. patent exists for wooden doorknobs and someone

makes doorknobs from porcelain. Not big enough leapo Most difficult to overcome in theory o section 103

need to see whether someone skilled in the art would have been obvious to one skilled in the art.

Patentability wouldn’t be disqualified just by the manner in which it’s invented

So if there is something that is easy to make it’s still patentable and not disqualified bc it was a simple thing/idea.

1. Obviousness is a question of law judges will be the ultimate deciders

2. Three factors scope and content of the prior art differences bet the prior art and the claimed invention

level of ordinary skill in the art3. secondary considerations may have relevancy

commercial success long felt but unsolved needs failure of others

- by and large, if you do steps 1 and 2 and determine that it’s obvious, the buck stops there.

o Graham v. John Deere Co. CASE pg 235o - a shock absorber patent for a plow. There was one patent

graham already got (‘811). o he tried to get another patent a bit later (‘798) that just

inverted one of the pieces. o the court doesn’t specify what the skill of art here is. o any secondary considerations?

Nopeo court concluded that this invention was obvious. o several cases since this one, the supreme court has cited that

the invention as obvious in similar situations. o

7. Made by inventors (sec. 116)

Problem Areas o Bio-patenting

living organisms and naturally occurring chemicals Diamond v. Chakra CASE

Microorganism that broke down crude oil Patent office rejected patent bc:

Organisms are “products of nature” Living things are not patentable

Court said living things CANNOT be patented BUT living things can be patented when

there is a human modification involved Subject matter is “anything under the sun

that is made by man” Parke-Davis CASE

Adrenaline was isolated from suprarenal gland of animals.

Court: when a product is sufficiently separated from its naturally occurring state, then it is patentable.

Even if the isolated product is naturally occurring (non-human modified)

o Algorithms – Abstracted Processes Abstract Ideas

Bilski CASE Patent for hedging against risk of price

changes of commodities Fed circuit said that if you are claiming a

process it has to be tied to a machine or transforming a thing into a diff state or thing

Sup. Ct took this case and said fed cir was right that the claim wasn’t patentable but for the wrong reason (machine-transformation test is not the sole test)

Mayo v. Prometheus CASE Patent for a process of administering drug

level to patients Court said not patent eligible bc not

profound Computer Software

Business Models

IV. Patent Infringement Infringement Section 271

o (a) anyone who doesn’t have authority (a license), make, use, offer to sell, or sells any patented invention w/in US or imports into the US any patented invention during the term of the patent therefore, infringes the patent

how to determine infringemento define the invention, by properly interpreting the claims (i.e.

perform claim construction)o compare construed claims to the accused device, if each and

every claim and claim element is present literally, or equivalently in the accused device, then infringement

“that which infringes if later, anticipates if earlier” Direct infringement (sec. 271 (a)) – Two Types

o literal infringement the word “comprising” (term of art) – all the limitations

plus anything else in the world “consisting of”- this means the accused device just has

to have those things “consisting essentially of” – intermediate phrase that’s

an in between of the above two o infringement under the doctrine of equivalents

exact same analysis as the literal infringement when it no longer reads on the literal (i.e. 85% graphite

and 15% clay vs. 90% graphite and 10% clay) Claim construction

o idea of claim construction is to make it a clear cut way of demonstrating your ideas instead of having to decipher it into a description

o the task of taking the words in the patent document and giving them some meaning in the dispute

o to figure out whether a claim is anticipated you got to figure out the claims

o claim construction is the center of patent law Markman v. Westview Instruments

o A question of law for the judge o claim construction is a mongrel practice

meaning it’s a mix question of law and fact: got factual and legal issues

usually the jury would decide the question of fact and the judge the question of law

o Justice Souter says judges are better at interpreting written instruments than jurors are

o he says that we don’t have to worry about judges messing up the facts here, but the jury can mess up the legal aspect. this is why its better left up to judges than jurors

LEGAL LIMITATIONS: The Policy of Doctrine of Equivalents

o Mess up the incentive structure if there are similar equivalents to things that are already patented

o allowing imitation with minor differences would render the existing patent useless

o one court notes: a finding of equivalence is a determination of fact.

1. All elements/Vitiation rule:o if you cant find literal infringement, you go element by

element rather than as a whole to see the equivalento Warner-Jenkenson CASE

Substantiality of the differences accused device must perform substantially the

same function in substantially the same way to achieve substantially the same result

o Vitiation: the issue with this is that it wipes out the significance of a claim

i.e. two inch bolt with five sided nut v. a two inch bolt with a four sided nut the five sided nut is vitiated and no longer a limitation

if it doesn’t affect the function, way, and result of the claimed element then the claim is vitiated and the patent is invalid

o the question is that since this equivalent is a Q of fact, do you let this go to a jury?

Best solution would be for judges to use rules to limit accessibility/availability of doctrine of equivalents

2. Disclosed but Unclaimed Subject Mattero Under Doc. Of Equiv. cannot include subject matter in

disclosure but not claim it. Johnson and Johnson CASE: Disclosing in the

specification and not in the claims section means that it was meant for the public.

3. Prosecution History Estoppelo Amendments made during the application process to avoid

prior art can give rise to estoppel. Festo CASE

Means Plus Function (specialized form of claiming)o sec 112 par. 6 allows for functional claiming Statute allows

u to write claims that have limitations o if you have a means plus function claim, you go into the

specification to figure out what structures are w/in the scope of the claim

if you don’t have means plus function then you use the guidelines under the Phillips case (baffles are at 90 degrees only)

o the inclusion of the word “means” creates a presumption that we have a means plus function claim and vice versa

i.e. claim 1 says a connector vs. means for connecting now look at the specification: nails and screws suppose an accused device comes along (meets the

claims) and the connector is glue, Velcro, magnets or welds

if we are under means for connecting, we have to look to the specification and see what it discloses and add the equivalent for nails and screws. will have a hard time claiming infringement under means plus function bc specifically state “nails and screws” vs. connector is very broad and more likely to be infringed (the glue, Velcro, etc)

Indirect Infringement (sec. 271 (b) and (c))o Lets focus on part C:

who gets in trouble for this? What category of folks? People selling goods (i.e. replacement parts) that are

patentedo Gotta see if your product has substantial non-infringing uses. o If you’re making a product and selling it and it only has one

use then you are likely to be infringing if it’s patentedo A lot of times the defense is that you were using the product

for something other than its patented applicationo C.R. Bard v. Advanced Cardiovascular systems CASE

Catheter for something There is a patent on the method of usage for the

catheter Doctors are using the catheters. For indirect infringement, there has to be direct

infringer The issue here is whether the way doctors were using

the catheter constituted an infringement of the patented method

Trial judge found a lot of use of the catheter When you are an inducer you are supposed to know

about the patent The least amount of mental state you can have is willful

blindness toward the patent V. Defenses to Infringement

I. Experimental Useo Reasons the court would allow this defense:

Not for sale, just playing with it in essence with no economic expectation

o Some patent owners might not like this use bc maybe it will reveal harmful stuff, is ineffective, etc.

o Common Law Application: Madey v. Duke CASE Madey was working at the research lab at Duke. He

owned two patents during his research there and Duke kept using the inventions from the patents after he left

Madey sues for patent infringement and Duke defends by claiming their use was for experimental use

Court says this is not experimental use It’s unclear what Duke was using the inventions for but

the court stated that so long as the act is in furtherance of the alleged infringer’s legitimate business and is not for amusement, there is a violation

o Universities are almost always pl’s in cases, so this is a rare situation

Reason is they want to make money of the patents and they cant make money off making and selling the goods.

The only way they monetize these inventions is by licensing and when people don’t do licensing, the universities sue them for infringement

Universities almost never get sued for infringement bc (speculation) people don’t really want to stop a university that is using the patent to try to cure a disease or help society in a beneficial way

People would just use them for free research and when something comes out of it, sue the places that license out the invention from the universities

o Statutory Application: Merck v. Integra CASE Used when using the patented application for uses

related to the development and submission of info under federal law regulating the manufacture, use, or sale of drugs or veterinary biological products

This usually comes up in pharmaceutical drugs and this case deals w/ how this statute is interpreted

Case dealt with lab testing of tumor research. Sup. Ct narrowly interpreted the safe harbor statute

that permits a drug manufacturer to perform potentially infringing experiments needed to obtain FDA approval without incurring liability for patent infringement.

allowed the use of patented compounds in preclinical studies, as long as there was a reasonable basis to believe the compound could be the subject of an FDA submission.

II. Inequitable Conducto Doctrine taking a look at how the applicant behaved when

applying for the patent What kinds of things it said to the patent office, the

information and its accuracy, failure to disclose things or false info.

o Remedy: Entire patent unenforceable If any claims in patent are found inequitable, then all

claims of patent are unenforceable o Without inequitable conduct, patent lawyers may be more

inclined to bend the rules as much as possible o Determining inequitable conduct:

Material misrepresentation (question of fact) Was there an intent to deceive? (question of fact) Court balances material misrep and intent to deceive to

determine inequitable conducto Kingsdown v. Hollister case CASE pg 347

the invention here is an ostomy bag used for openings in abdominal wall for release of waste.

pl filed for patent in 1978 and it took until 1984 to grant it

in between there was a series of prosecutions, rejection, amendments, etc.

during the application for appeal, kingsdown accidentally kept in parts of the rejected claim.

The issue is with equitable conduct. Kingsdown claims they did not have an intent to

deceive. The court agrees with Kingsdown and said Gross

Negligence is not enough by itself to qualify for inequitable conduct.

o Summary of Inequitable Conduct Need “specific intent” – knew of the reference, knew it

was material, and made a deliberate decision to withhold it.

Duty to Discloseo Patent office made certain rules pertaining to thiso good faith duty to disclose to the office all info known to the

individual to be material to the filing. Duty extends to each inventor, attorney or agent, and

every other person substantively involved in the prosecution.

o As long as the info is in the file its ok, doesn’t have to be disclosed w/ every piece of info.

o It’s the kind of info that’s anticipatory, gotta disclose it if you know about it

o Main section of disputes: (b)(2)o If you know about info that’s inconsistent w/ the position that

you’re taking with the patent office, then you’re supposed to disclose.

UPDATE: TheraSense – (b)(2) not material to courts anymore

o Hypos:1. working on someone’s patent application and come up with an existing art, so you amend your complaint based on the previous art and never tell the patent office.

Certainly before TheraSense it would have been inequitable conduct.

Today, however it probably wouldn’t be inequitable conduct.

2. Patent attorney working on an invention app for a client. Ask them if they know of any prior art to get the right description. The inventor says she doesn’t know anything material.

patent issues and inventor later goes to attorney and says I did know about some prior art. Inequitable conduct?

Clearly inequitable. Could try to disclose it for re-examination, but other than that it’s too late. so basically your screwed if it later ends up in court.

3. in a disclosure you list 50 patents, 1 of which is highly material and the other 49 are not really material at all. Inequitable conduct?

If you did so w/ intent to bury the important one, in theory it could be inequitable conduct.

No one has ever got busted for this, but it is possible.

Patent Misuseo Motion pictures patents v. universal CASE pg 363

pl had patent on a film player that had a license that you could only use film that was purchased from the patent owner to use the machine.

There’s a case (Morton Salt) that is very similar to this In both this and morton, the patent was found to be

unenforceable. But one could argue that the patented machines are

best used with the corresponding product or the machine wouldn’t work efficiently

Take-away: If you had market power in the market for the

patented product and tied in the license, then you can still have patent misuse.

But if you don’t have market power, then it’s not patent misuse.

o The kinds of patent misuse issues are very close to Antitrust claims

Exhaustiono An unconditional sale of a product exhausts your rights as a

patentee. o If you have patents in connection with some product and you

sell the rights to someone, your claim to it is over.

VI. Patent Damages award adequate damages to compensate what the patentee would

have made had their been no infringement. o But if you can’t do that, the court will try to give a reasonable

royalty. the court can award damages up to three times the amount found

or assessed when there is:o willful infringemento exceptional cases (i.e. patentee got a patent through

inequitable conduct) Summary:

o lost profits (patentee usually wants this)or

o reasonable royaltyVII. Trade Secrets

Definition from UTSA: information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

o Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, AND

o Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

trade secret law’s origins are in the c/l and have become somewhat codified

Sources of Law

o Uniform Trade Secrets Act (most states have incorporated at least part of this)

o C/Lo Various Restatements (torts, unfair competition)

Elements1. Trade Secret

gotta be the type of knowledge that trade secret law was meant to protect

holder of trade secret took reasonable precautions to prevent its disclosure

2. Misappropriated there has to be some kind of misappropriation two ways:

breach of confidence improper means

theft, bribery, misrep, breach or inducement of a breach of a duty to maintain secrecy, or espionage thru electronic or other means

UTSA definition pg 36: 2(i): ex. is the aerial photography case. Both the

person hiring the photography company and the photography company can be liable for misappropriation bc it just deals with “acquisition”

2(ii)(A): bribing an employee to get documents or breaking into some place and getting information (person themselves getting the info)

2(ii)(B)(I): hire an investigator who wiretaps someone’s phone and gets info (3rd party getting the info)

2(ii)(B)(II): employee in possession of confidential info from his employer and has a duty not to disclose it ( person themselves)

2(ii)(B)(III): same as above except (3rd person getting the info)

2(ii)C: maybe an employee gets an accidental email from someone at work sending confidential info

or maybe someone leaves some documents on a train by accident and someone finds it

Confidential Relationships Smith v. Drago CASE Confidential relationship is established when a

trade secret is disclosed to a person under the circumstances where the relationship between the parties or facts justify a reasonable conclusion that the disclosure was to be confidential

Reverse Engineering A proper means of obtaining information by taking

an existing product and working backwards to re-create its design or manufacture process

Kadant CASE: reverse engineering found acceptable means

Departing Employees Protecting company’s trade secrets while allowing

employees to freely divulge their knowledge and expertise at work

Default rules of ownership of inventions1. Employee is hired to invent a device or process

o General rule: employer owns whatever this is

2. Employee invents on employee’s time or with employer’s materials

o This area is more greyo General rule: employees own these

kinds of inventions and employers get shop rights or a non-exclusive license to use whatever the invention is (can’t sell it but can use it)

3.Employee invents on his own time and outside the field of employment

o i.e. work at a video game company, but hobby is making lawnmower shit

in 1 and 2, the employee is making things that are valuable to the employer

o this is still possible under 3 as well How to deal with this:

o Assignment agreements stating what will be owned by the employer and assign what you make during the employment

o Confidentiality agreement: a non-disclosure agreement promising not to disclose employers info

o Non-competition agreements Not to compete w/ ur employer

for some amount of time after leaving your employer

In almost all states (not in CA), you can have non-competition agreements.

Requirements: Reasonable in length to

protect employers legitimate business interests

Reasonable in scope – allows employee to be employed and be able to use their skill and knowledge

Reasonable from standpoint of public policy

CA:

“every contract which anyone is restrained from engaging in a lawful profession or trade is void”

Edwards v. Anderson LLP pg 91 Held that non-competition

agreements are invalid in CA

Why not use patent instead?o Patent has a term limito Need to disclose thingso If trying to enforce and lose, could make a patent invalid and

lose rights of exclusivity Situations giving rise to trade secret claims

o When employee leaves and goes to a new employer, disclosing the trade secrets.

o Could go after employee and then the company for misappropriation

Metallurgical CASEo D’s provided furnaces to Metallurgical and D’s examine the

furnaces and send it back to get modifications. o D’s later start making their own furnaces based off the ones

from metallurgicalo court takes all the information in and does a factor based

analysis: merely disclosing it to two companies w/o a non-

disclosure agreement is something to take into account but is not an automatic loss of trade secret

The main goal of trade secret law is to promote utilitarianism

D’s were found to have misappropriated the trade secret bc it was only disclosed to them and one other company, not the general public

Rockwell Graphic CASE

o Printing presses replacement parts and former employees working for a rival company.

o Court: that Rockwell gave piece part drawings to vendors that disclosed trade secrets to a limited number of outsiders doesn’t forfeit trade secret protection

Disclosure of Trade Secretso General Rule: public disclosure of a trade secret destroys its

legal protection as a trade secret more of the promiscuous type (Rockwell: not all public

disclosures destroy its protection) Licensing

o Warner-Lambert CASE Doctor who created Listerine. Dr. licenses it to Lambert, but a number of yrs later the

formula becomes public knowledge. Lambert tries to get out of agreement, but court said

both parties agreed for the license agreement to continue indefinitely so Lambert is screwed.

VIII. Defenses to Trade Secrets Not a trade secret Reverse Engineering Proper means

IX. Remedies to Trade Secrets A lot of the remedies are money based but there are injunction ones

that are associated w/ property law. Can get a court to enjoin someone from distributing something or

order return of copies of somethingX. Damages for Trade Secrets

Can get any damages caused by misappropriation Actual damages, lost profit, royalty, etc Doubling damages for willful or malicious misappropriation Possibility of shifting attorney’s fees

XI. Copyright applies to original works of authorship; fixed in a tangible medium

of expression

basically put together in a system that most people would recognize as a property system

Rightso Right to make copies (reproduce) most important righto Right to prepare derivative works (make adaptations)

Translations, screen play from a novel, editorial revisions, marginalia, etc.

This is kinda w/in the scope of the right to make copies o Right to control distribution copies (to (first) sell copies of

copyrighted material, e.g. books) Bought a book from bookstore, finished reading it and

then sell it at garage sale is ok Bookseller gets its hands on unauthorized copies, can’t

sell those bookso Right to control public performance (e.g. to put on a play)

So like singing in the shower ok, but not making a play and inviting a whole bunch of peeps to see your performance

o Right to display publicly Put some copyrighted material on a whole bunch of t-

shirts Copyright Term:

o Depends when the work is created – generally on or after Jan. 1, 1978

life + 70 yrsor

publication + 95 yrs or creation +120 yrs Before Jan. 1, 1978

(Very) generally 95 years from publication created before 1978, but published between 1978 and

Feb. 1989 (not before 2047) lots of exceptions

Getting a copyrighto Formalities:

notice © publication

registration (need to register w/ copyright office first to get damages)

the earlier you register the better damages you are likely to get

deposit o Formalities are generally unnecessary for © after 1989, but

deposit “required” anyway, registering is necessary to sue; and there are advantages to voluntarily giving notice (© 2012 Petherbridge)

Enforcemento (mostly) private enforcement o similar to patents

Copyright existence:o for the same reasons patent exists (progress of science and

the arts… nonrivalrious, nonexcludable, etc.) Subject Matter of Copyright: Section 102 pg 420

o Tangible things that exist now or later developed i.e. so like before there were no dvd players in existence

but now there are o audiovisual works and sound recordings are two diff things

i.e. the recording in the studio vs. the cd found in the store

o pictorial, graphic, and sculptural works include things like jewelry, furniture, etc

o Architectural works can be copyrighted but somewhat more limited than the other categories

Fact/Expression Dichotomyo Facts aren’t copyrightable, but expression iso Expression can be found in the selection, incorporation, and

compilation of factso Rural Telephone CASE

Taking white page info from a publication and adding it to their own directory is not a copyright violation

Facts are not copyrightable – they don’t owe the creation to anyone

Idea/Expression Dichotomy

o Idea’s are not copyrightable, need to go to patent for these things

o Copyright will protect the expressive aspects of your work, but not a mere idea. Section 102(b) – method of operation not copyrightable

o Baker CASE Book that outlined a system of book-keeping Court noted that this is more of an idea and should be

patented rather than to receive copyright protection Merger Doctrine

o When there are only one or but a few ways of expressing an idea, the court will find that the idea behind the work merges w/ its expression

When you can’t separate an expression and an ideao Proctor and Gamble CASE

Changing the sweepstakes instruction not copyright violation bc there are only limited ways to make instructions for this.

Computer Codingo Can have a copyright, but relatively weak.

Better off doing patent Doctrine of Conceptual Separability

o Artistic elements of a useful article must be physically separable from its overall design to be protectable

o Hypos in class: Disney Telephone and the artist designed belt buckle

XII. Copyright Ownership General rule of copyright ownership:

o creator(s) is the owner(s) unless the subject matter is a work for hire.