INTRODUCTION TO INTELLECTUAL PROPERTY MSVH

INTRODUCTION: RATIONALE BEHIND IP LAW

TRAGEDY OF THE COMMONSOVERUSE + UNDER-CULTIVATION OF COMMON RESOURCES

UTILITARIAN RATIONALE
NATURAL RIGHTS (LOCKE)
PERSONHOOD (HEGEL)
PROBLEMS WITH OVER-PROTECTION

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TRADE SECRET LAW

POLICY UTILITARIAN + TORT + MKT. COMPETITION + EMPLOYEE MOBILITY

EXAM APPROACHDEFINE + EVALUATE 6 + IMPROPER CONDUCT +OWNERSHIP ISSUES = C/A?
REQUIREMENTS FOR TS PROTECTION: (1) VALUE (2) SECRET INFO (3) REASONABLE

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PRECAUTIONS
1SUBJECT MATTER PROTECTED AS A TS: INFORMATION + VALUABLE + SECRET
2 REASONABLE EFFORTS TO MAINTAIN SECRET
TS MISAPPROPRIATIONACQUISITION 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 SECRECYPUBLIC DOMAIN
DISCOVERY UNDER LICENSE FROM TS HOLDER
REMEDIES FOR TS MISAPROPRIATION
INJUNCTIVE
AFFIRMATIVE ACTS OF PROTECTION
REASONABLE ROYALTY
DAMAGES
UNJUST ENRICHMENT
PUNITIVE DAMAGES
ATTORNEYS FEES
CRIMINAL LAW
SELF-HELP SEIZURE OF EMBODIMENTS

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PATENT LAW

POLICY
PATENT PROSECUTION OVERVIEW
REQUIREMENTS FOR PATENTABILITY
1PATENTABLE SUBJECT MATTER
2UTILITY
3NOVELTY & STATUTORY BARS
4NONOBVIOUSNESS
5ENABLEMENT
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 LICENSEFIRST SALE
REMDIES FOR PATENT INFRINGEMENT
INJUNCTIONS PRELIMINARY & PERMANENT
DAMAGES: EITHER (1) LOST PROFITS OR (2) REASONABLE ROYALTY
INCREASED DAMAGES: WILLFUL INFRINGEMENT ATTNYS FEES + TREBLE DAMAGES
ARGUMENTS: INJUNCTIONS VS. DAMAGES VS. COMPULSORY LICENSING

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COPYRIGHT

POLICY
REQUIREMENTS FOR COPYRIGHT
1PROTECTED SUBJECT MATTER

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INTRODUCTION TO INTELLECTUAL PROPERTY MSVH

1BUNPROTECTED SUBJECT MATTER

2 ORIGINALITY
3FIXATION
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 COMMONSoveruse + 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
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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 misappropriaters 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 APPROACHdefine + evaluate 6 + improper conduct +ownership issues = C/A?
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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 s business [3] Consider ownership issues i.e.
(2) how widely known w/I company (3)
evaluate whether an employer
whether 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 $ 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
1Subject 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 MISAPPROPRIATIONAcquisition 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 SecrecyPublic Domain
Discovery under license from TS holder
REMEDIES FOR TS MISAPROPRIATION
Injunctive
Affirmative Acts of Protection
Reasonable Royalty
Damages
Unjust enrichment
Punitive damages
Attorneys fees
Criminal Law
Self-Help Seizure of Embodiments

PATENT LAW
POLICY

PATENT PROSECUTION OVERVIEW

REQUIREMENTS FOR PATENTABILITY
1Patentable 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]
2Utility
[1]General
[2]Specific
[3]Moral
[4]Policy
3Novelty & Statutory bars
4Nonobviousness
5Enablement
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 LicenseFirst Sale
REMDIES FOR PATENT INFRINGEMENT
Injunctions Preliminary & Permanent
Damages: either (1) lost profits or (2) Reasonable royalty
Increased Damages: Willful Infringement Attnys 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
Historythe 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. Its
restricted to state common law copyright protection to work that were not yet fixed in a
tangible medium of expression. Its also extended the basic copyright term, providing
protection for the life of the author +50 years after his death. Its 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

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 authors 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.
1Protected 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
1bUnprotected 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 & ResearchNot because not sufficiently original; but compilations
generally are where coordination/arrangement/selection is original.
a. PolicyThe 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
paperineligible 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. Ss 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 DoctrineTypically functional and fact-based worksWhere 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 FaireAuthors 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 clich 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
articles 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 Kr 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 authors 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 measurementMeeting 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 authors rendition of
whatever it is.
3Fixation 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.
PolicyThere 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 performancesHowever, 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 protection301(b)(1) Unfixed works like improvisation,
performances, or broadcasts can be protected by state law, as the Copyright acts
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.
1909-1978Notice 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.
1979-1989Still 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 attorneys 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 congress407 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.