• Title 17 of U.S. Code is "Copyright"

• + - literary works
  • includes software
  • + - includes just about everything you might think could possibly be included
    • includes mindmaps, for instance
• musical works
• dramatic works
• pantomimes and choreographic works
• pictorial, graphic, and sculptural works
• motions pictures and other audiovisual works
• sound recordings
• architectural works

• must be fixed in a tangible form

• must have some minimal degree of creativity
• mere compilations of data are not copyrightable
• "sweat of the brow" theory rejected

• conceptual separability

• only for literary, musical, dramatic, choreographic, and audiovisual works

• only for literary, musical, dramatic, choreographic, pictorial, graphic, sculptural, and frames of audiovisual works

• not necessary after 1989
• Copyright 2019 Eric E. Johnson

• not necessary for copyright to apply

  must register before filing suit

  registration within three months of publication or before infringement allows recovery of attorneys fees and statutory damages

• It's a copyrighted work
• Copying
  • + - Proving copying
    • Direct evidence
    • Indirect evidence
      • Access
      • Probative similarity
        • "Probative similarity" is a more accurate term, but ...
        • courts often say "substantial similarity" (confusing!)
• Substantial appropriation
  • "Appropriative similarity"
  • courts often say "substantial similarity"

• ... but some would not categorize this as an affirmative defense
• and, in fact, the courts aren't clear about how they conceive of it
• + - the four factors
  • the purpose and character of the use
  • the nature of the copyrighted work
  • the amount and substantiality of the portion used in relation to the copyrighted work as a whole
  • the effect on the market for the copyrighted work

• + - express
  • need not be in writing
• implied in fact

• three years
• application is somewhat complicated

• Owned by co-authors as tenants in common
• Any co-owner has the power to grant a valid nonexclusive license
• + - Duty to account
  • A licensor co-owner must share licensing fees with other co-owners

• + - must qualify under one of two circumstances
  • + - employment
    • + - created by an employee in the regular course of employment
      • this is a real employee, in the sense of other bodies of law, like tax and wage and hour laws
  • + - commission, if both requirements met
    • "work made for hire" agreement in writing, signed by both parties
    • + - one of 9 categories of works
      • collective work
      • motion picture or other audiovisual work
      • translation
      • supplementary work
      • compilation
      • instructional text
      • test
      • answers to a test
      • atlas

• an assignment is a transfer
• + - either
  • the whole copyright
  • + - or exclusive license (part of the copyright)
    • e.g., limited by geographical territory, timespan, or category of exploitation
• must be in a signed writing

• + - general measure of damages
  • lost profits plus additional defendant's profits
• + - stautory damages
  • available if registered before infringement or within three months of publication
    • neither willful nor innocent
      • $750 - $30,000
    • willful
      • up to $150,000
    • innocent
      • down to $200

• fees if registered before infringement or within three months of publication

• e.g., YouTube receipt of and action on takedown notices

• e.g., criminalization of jailbreaking cellphones

• Exclusively federal law
• Title 35 of U.S. Code is "Patents"
• Exclusive federal court jurisdiction
• + - Patent Act of 1952
  • main current structure of patent law
  • + - America Invents Act of 2011
    • changed from first-to-invent to "first to file"
• There are no patent rights without an issued patent
• + - USPTO
  • + - U.S. Patent and Trademark Office
    • exclusive recipient of patent applications
    • patent examiners decide whether to allow or reject applications
    • exclusive issuer of patents
• + - Federal Circuit
  • Exclusive intermediate appellate jurisdiction from all district courts

• to exclude others from making, using or importing the invention claimed
• NOTE: no right is granted to make or use

• + - subject matter
  • 35 USC §101

    • any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof

  • + - includes any
    • process
    • machine
    • article of manufacture
    • composition of matter
    • + - improvement of any of the above
      • ISSUE: improvements and blocking patents
  • + - does NOT include
    • laws of nature
    • natural phenomena
    • naturally occurring species
    • abstract ideas
    • useless inventions
    • inventions not reduced to practice
  • + - on the margins
    • algorithims
    • business methods
    • biotechnology, medical diagnostics, gene-related things
• + - utility
  • + - 35 USC §101
    • "useful"
  • + - required forms of utililty
    • + - beneficial utility
      • + - must not be frivolous or immoral
        • this doctrine seems to be essentially dead
    • + - general utility (operability)
      • + - must operate to produce the results claimed
        • very low threshold, must be completely incapable of achieving claimed result
    • + - specific utility (practical utility)
      • + - there must be a specific thing the invention does that is useful
        • e.g., a new compound cannot be claimed to be useful as a paperweight
        • tends mainly to be an issue in chemistry and biotechnology
    • + - substantial utility
      • can be considered a subset of specific utility
      • must be a current, real-world benefit to the invention
      • tends to be an issue in chemistry and biotech
• + - novelty
  • the invention must be NEW
  • + - AIA reforms
    • huge overhaul of novelty law
    • + - Pre-AIA law
      • for applications filed on or before March 15, 2013
      • applies going forward to all patents issued from such applications
    • + - AIA law
      • for applications filed on or after March 16, 2013
      • applies going forward to all patents issued from such applications
  • + - different senses of newness
    • + - anticipation
      • the invention is already found in the "prior art"
      • i.e., the invention was known to the public before applicant's "invention"
    • + - priority
      • + - where there are two applicants for the same invention
        • Pre-AIA: first to invent
        • + - Post-AIA: "first to file"
          • sort of - it's actually more complicated than that
    • + - statutory bars
      • inventors can lose their rights to patent by waiting too long after they publicly disclose
    • + - derivation
      • the applicant inventor must be the true inventor
      • cannot have taken someone else's invention
    • + - NOTE
      • these categories of newness corresponded well to the pre-AIA §102
      • the new §102 does not divide things up this way, although the concepts still in there
• + - nonobviousness
  • + - 35 USC 103(a)

    • A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

  • starting from the prior art, is the invention obvious to a phosita?
  • + - Graham analysis
    • Determine the scope and content of the prior art
    • Ascertain the differences between the prior art and the invention as claimed
    • Determine the level of ordinary skill in the pertinent art
    • Determine nonobviousness with reference to above
    • + - Also may consider secondary factors ("Graham factors")
      • Long-felt but unsolved need
      • Others have tried and failed
      • Commercial success
      • Unexpected results
      • Scepticism of others
      • Acquiesence
      • Copying
      • Adoption by industry
  • the "wow" test
    • (not recognized by any court ...)
• + - enablement

  • + - 35 USC §112

    • The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. ...

    Must explain in writing how to build and operate the invention clearly and completely enough that a phosita could do it

• + - Some key concepts
  • + - These requirements are important in two contexts
    • whether the USPTO will allow an application
    • whether a defendant can successfully prove the affirmative defense of invalidity
  • + - The PHOSITA
    • Person Having Ordinary Skill in the Art
      • comes up under
        • 103 - nonobviousness
        • 112 - enablement
  • + - The importance of claims
    • Everything is determined in reference to the claims

• from date of issuance to 20 years from date of application
• for applications before June 8, 1995, 17 years from date of issue

• + - claims
  • literal infringement
  • + - doctrine of equivalents
    • allows for infringement not meeting the literal lanugage of the claims
    • + - file-wrapper estoppel

      • prevents plaintiffs from using the doctrine of equivalents where ground was surrendered in prosecution

• reasonable royalties
• lost profits
• injunction

• generally the same as with utility patents

• + - novelty
  • same as for utility patents
• + - ornamental
  • not dictated by function
• + - nonobviousness
  • not much of a limit
• on a functional article
• enablement

• + - test
  • drawings

• 14 years from issuance for applications filed before May 13, 2015
• 15 years from issuance for applications filed after May 12, 2015

• generally the same as with utility patents
• Plant Patent Act of 1930 is the main source of law

• likelihood of confusion

• famous marks
• injury
  • tarnishment
  • blurring

• anything capable of indicating commercial source
• can include trade dress

• arbitrary or fanciful
  • distinctive
• suggestive
  • distinctive
• merely descriptive
  • must have acquired secondary meaning
• generic
  • not distinctive ever

• trademark
• service mark
• certification mark
• collective mark

• Improper licensing
• Abandonment
• Genericide

A person is entitled to the exclusive commercial use of one's name, image, likeness, voice, and other indicia of identity

• It doesn't matter if the secret escaped becuase of wrongful action

• Through illegal means or through legal means that are unethical, deceitful, etc.
• Reverse engineering is not wrongful
• Independent invention is not wrongful

Patents necessarily involve public disclosure; trade secrets necessarily involve nondisclosure to public

Patentable inventions must meet threshold of nonobviousness; trade secrecy can protect obvious inventions, minor advances, mere information that is not an invention

• Security
• Contract
• + - Torts
  • Breach of confidence
  • Breach of confidential relationship
  • Breach of fiduciary duty
  • Fraud
  • Trespass to land
  • Trespass to chattels
  • Battery
• Family
• Trust
• Incentives, equity
• Don't tell anyone

• Allows injunctions against innocent third parties
• Criminal sanctions