Copyright: the useful article test

2L, Intellectual Property

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Useful articles are generally not copyrightable (go get a patent!). So how can we tell if something is too useful to be copyrightable? One has to find a separability between the useful part and the artistic part to protect the artistic part.

• Physical separation
  
• Conceptual separability
  
• Goldstein test:
  
  1. separable if artistic part can stand on its own as a work of art as traditionally conceived AND
     
  2. if useful part would be still be useful without the artistic element
     

Copyright: fair-use factors

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Elements that can be looked at to find "fair use" in copyright:

• Purpose and character of the use
• Nature of the workk
• Amount used--substantial amount or not?
• Effect on the market or value of the original work

Next, is it parody? (Parody requires reference/incorporation of the original work.)
Or, is it satire? (Satire makes fun of society as a whole, and shouldn't need to reference a single, specific work.)

Copyright: work for hire

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Elements that can be used to determine of an item is a "work for hire," meaning the copyright belongs to the employer instead of the creator:

• Right to control
• Who exercised actual control
• Back to a common-law definition of employee
• Salaried (a formalistic definition of employee)

Copyright: idea/expression dichotomy and tests

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Only expression is copyrightable, not ideas (or facts, or history... the more historical/factual, the "thinner" the copyright until is disappears entirely).

Three possible tests courts have used to separate these:

1. Levels of abstraction
2. Pattern
3. Total look & feel

Copyright: infringement elements

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Demonstrating copyright infringement requires that one show all three of the following:

1. Ownership of a valid copyright
2. Copying
3. Of constituent elements that are protected

A valid copyright is (all three required):

1. An original work
2. Fixed
3. In a tangible means of expression

An original work requires both:

1. A modicum of creativity
2. Independent creation

Trademark: fair-use factors

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Three factors may lead to a finding of "fair use" when one uses a trademark without permission (all are required to find fair use):

1. There is no way to readily identify a kind of product without using the trademarked name AND
2. Only as much of the mark is used as is reasonably necessary AND
3. There is no suggestion of sponsorship or endorsement by the trademark owner.

Trademark

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Goals of trademark law:

1. Prevent misappropriation of goodwill
2. Prevent consumer deception or fraud

No intent required in trademark infringement, but "bad faith" can nevertheless be a factor.

Four types of trademarks:

1. Fanciful: made-up (like "Kodak")
2. Arbitrary: the meaning is not related to the product
3. Suggestive: name suggests but does not describe ("Tide," "Roach Motel")
4. Descriptive: can only be trademarked if the mark acquires "secondary meaning"
   • generally requires showing 5 years of uninterrupted use
   
   

Patents: non-obviousness

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From § 103 of the Patent Act:

Two tests: (1) test is T-S-M (teaching-suggestion-motivation)

• meaning are there teachings, suggestions, or other kinds of motivations in the prior art or previous patents that make the "new" invention obvious?
  

OR (3) the Graham test (newer approach initiated by SCOTUS saying T-S-M was being too mechanically applied):

1. Scope and content of prior art
   
2. Different between prior art and current claims
   
3. Level of skill in art (is the inventor a PHOSITA [person having ordinary skill in the art] or not?)
   
4. Secondary considerations:
   
   • long felt but unsolved need
     
   • commercial success
     
   • failure of others
     
   • other copying (NEWER)
     
   others acquiescing by acquiring license (NEWER)
   

Patents: disclosure

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Describing and Enabling the Invention

Section 112 of the Patent Act requires:

1. Written description
2. Enablement
3. Best mode

Purpose

• Want to make sure description actually teaches society something
• Tells us you have in hand what you claim
• Encourages further "downstream innovation"
• So that public can know limit of rights granted by patent, must have notice
• Don't want to allow over-broad/over-reaching claims
• Make sure you've given enough: whether you've provided society with enough value to deserve a reward

Patents: utility

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This requirement comes from the broad language of Section 101 itself.

One does not have to identify all uses, only one specific use--patent will still cover all uses.

Why do we care if it useful? What is the problem if there is no use?

• Might still cause backlog in the Patent Office
• Don't want to encourage invention of non-useful devices
• Not cost-free to grant patents to people
• Still leaves an opportunity to exploit system: and the more patents out there, the more would-be patent holders have to do to get new patent

Entertainment is considered useful!

What about the issue of "moral utility"? (Don't give patents for things that are bad for society.)

• But don't want PTO to be arbiter of morality!
• Plus even "illegal" activities can change over time (alcohol and Prohibition...)
• As a result: not looked to much in modern times, but concept still exists and PTO/courts may still look to it

Specific Utility or, Does it Actually Work?

• Does this matter? 96% of patents never make a penny!

Patents: subject matter

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May be a:

• Process
• Machine
• Manufacture
• Composition

Cannot be:

• Laws of nature
• Mathematics
• Abstract ideas

Can also be:

• New life forms are patentable, not just process to create
• Purifying/extracting from nature (Parke-Davis)
• Formerly software not patentable, now that's changing

Patents: elements required to be granted a patent

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• Subject matter: living organisms, YES; math, NO (see Diamond v. Chakrabarty)
• Novelty/Non-obviousness
• Utility/Usefulness
  
• Non-triviality
• Adequate Disclosure: enablement and written description

See Patent Act Section 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Patents

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Constitution provides the foundation of patents (and copyrights), despite commerce not being otherwise a major part of the U.S. Constitution.

Goal of patent system:

• To promote public interest through advancements of science (not reward to inventors).
• May trade off perfection for rewarding individual inventors because it better serves ultimate goals.
• Why grant patent rights at all? To create incentives for inventions.

Rights gained:

• Can completely exclude others from making, using, or selling invention
• Cannot have independent discovery as a defense to infringement
• No reverse engineering allowed as a defense to infringement

Trade Secrets: Remedies

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Injunction

• May not use particular trade secret
• How long should it last? Trade secrets do not have limited terms!
• Courts try to undo damage defendant did, try to guess how long it would have taken thief to figure out by legitimate means, and set injunction to that time.
  

Damages

• In lieu or in addition to injunction
• Reasonable royalty approach: what court thinks trade secret holder would have charged as a licensing fee.
• Actual loss approach: what did misappropriation cost trade secret holder in lost sales? Compare sales defendant made vs. how many plaintiff lost.
• Treble damages allowed under UTSA for "willfullnes"

Criminal Penalties

• State law crimes (California, for example)
• Federal crimes, like the Economic Espionage Act

Trade Secrets: negative know-how

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Question: does trade secret law protect knowing, for example, something does not work? ("Negative know-how.")

Answers:

• Old Restatement of Torts: NO, but can sometimes recraft negative into a positive statement of knowledge
• UTSA & Modern Restatement of Torts: YES, although tricky re: personal knowledge of a person who leaves company--the law is unclear on this in regards to negative know-how.