Notes from Law School - Kristopher Nelson

Copyright: the useful article test

2008-05-08T18:34:00.000-07:00

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

2008-05-08T18:31:00.000-07:00

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

2008-05-08T18:30:00.001-07:00

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

2008-05-08T18:28:00.000-07:00

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:

Levels of abstraction
Pattern
Total look & feel

Copyright: infringement elements

2008-05-08T18:24:00.000-07:00

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

Ownership of a valid copyright
Copying
Of constituent elements that are protected

A valid copyright is (all three required):

An original work
Fixed
In a tangible means of expression

An original work requires both:

A modicum of creativity
Independent creation

Trademark: fair-use factors

2008-05-08T18:22:00.000-07:00

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

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

Trademark

2008-05-08T18:18:00.001-07:00

Goals of trademark law:

Prevent misappropriation of goodwill
Prevent consumer deception or fraud

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

Four types of trademarks:

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

Patents: non-obviousness

2008-05-08T18:12:00.000-07:00

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):

Scope and content of prior art
Different between prior art and current claims
Level of skill in art (is the inventor a PHOSITA [person having ordinary skill in the art] or not?)
Secondary considerations:
- long felt but unsolved need
- commercial success
- failure of others
- other copying (NEWER)

Patents: disclosure

2008-04-30T14:39:00.000-07:00

Describing and Enabling the Invention

Section 112 of the Patent Act requires:

Written description
Enablement
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

2008-04-30T14:29:00.000-07:00

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

2008-04-30T14:24:00.000-07:00

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

2008-04-30T14:19:00.000-07:00

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

2008-04-30T14:14:00.000-07:00

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

2008-04-30T13:20:00.000-07:00

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

2008-04-30T13:18:00.000-07:00

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.

Trade Secrets: readily ascertainable

2008-04-30T13:16:00.000-07:00

Question: Can information be a trade secret if it is readily available but not generally known in the industry?

Answers:

Old Restatement of Torts (1939) and Roman-Haas case: YES (no concept of readily ascertainable).
Uniform Trade Secret Act: NO, once it is readily ascertainable then it is not a trade secret.
Modern Restatement of Torts: NO. Once readily ascertainable by proper means then no longer a secret. Plus, when info is readily ascertainable from public sources, actual resort to the public domain is a mere formality.
In California: eliminated "readily ascertainable" language from the UTSA, and changed it to a defense: "readily ascertainable" can be evidence that something is generally known.

Trade Secrets: elements of misappropriation

2008-04-30T13:10:00.000-07:00

3 Elements of Misappropriation of a Trade Secret

a valuable trade secret
wrongfully acquired
reasonable precautions

International Criminal Court

2007-07-12T18:30:00.000-07:00

The International Criminal Court (ICC):

104 Countries Have Ratified (139 have signed)
25 from Western Europe and Other
16 from Eastern Europe
22 from Latin America and the Caribbean
29 from Africa
12 from Asia & the Pacific
Not the United States
Court became effective July 1, 2002

How are cases initiated

Referred by a state party
Referred by the Security Council (Chapter VII of the UN Charter)
Initiated by the Prosecutor and Approved by the “Pre-Trial Chamber”

US Concerns about ICC include:

State sovereignty
States, not international institutions, "are primarily responsible for ensuring justice in the international system"
Undermines the Security Council (which should have the sole power to determine aggression)
Creates a prosecutorial system that is “an unchecked power”
Interferes with the right of self-defense by "chilling" the willingness of countries "to project power in defense of their moral and security interests"

Nuremberg Tribunal

2007-07-12T18:24:00.000-07:00

Justice Robert Jackson, prosecutor for US at Nuremberg:

"[W]e are not prepared to lay down a rule of criminal conduct against others which we would not be willing to have invoked against us."

Nuremberg Charter - Article 6

Crimes against peace (aggression)
War crimes (mistreatment of civilians and prisoners, misuse of weapons)
Crimes against humanity (massive killing of civilians)

Principles of Nuremberg

Individuals are responsible if they commit "a crime under international law"
Heads of State do not have immunity from prosecution
The "defense of superior orders" will not relieve an individual of responsibility, "provided a moral choice was in fact possible to him"

Thoughts Regarding Nuremberg

Did the Tribunal apply existing law to the actions of the defendants?

Or did they create new law?

Did this proceeding violate the principle prohibiting ex post facto prosecutions?

Nuremberg prosecutor and the Court tried to say no—

That judgment reaffirmed, applied existing law
BUT, in reality, Nuremberg essentially created new law

Jurisdiction and War Crimes Courts (like the ICTY)

2007-07-11T18:17:00.000-07:00

International courts, such as the ICTY (International Criminal Tribunal for the former Yugoslavia), need the following kinds of jurisdiction to proceed (this is similar to, but distinct from, the jurisdictional issues faced by domestic American courts):

1. Subject matter jurisdiction (a nexus with an armed conflict)

Articles 2 - 5 of ICTY Statute
War crimes, grave breaches of Geneva, and crimes vs. humanity, genocide)

2. Personal jurisdiction (limitations in terms of who can be prosecuted)

Persons responsible for serious violations of international humanitarian law

3. Temporal jurisdiction (war crimes tribunals are limited to specific times of investigation)

Committed in the territory of the former Yugoslavia between 1 Jan 1992 and a date to be determined by Security Council upon the restoration of peace

What is Fraud?

2007-07-10T00:11:00.000-07:00

Torts
One may be liable in torts if one (1) intentionally made (2) a misrepresentation to the other of a fact, intention, or of a law (3) with the intention of inducing the other person to act or to refrain from action in reliance on the misrepresentation, if the other person can demonstrate (3) financial loss as a result of (5) having relied upon the misrepresentation.

Criminal Law
Generally, other than specific crimes like mail fraud, wire fraud, bank fraud, and more, state and federal law requires (1) intentional (knowing) (2) misrepresentation of (3) materials facts as identified in the statute. Criminal law does not require a showing of harm.

Contracts
A fraudulent (intentional) misrepresentation that induces one party to sign a contract may make that contract voidable. In addition, a contract can be voidable for a material misrepresentation even if it was not intentional. Unlike criminal law and tort law, contract law does not require a deliberate misrepresentation. Thus a contract can be rescinded even without an intent to deceive.

What Forms International Law?

2007-07-09T19:58:00.000-07:00

International Law consists of obligations resulting from:

Treaties, bilateral and multilateral
Customary international law

From the practices of states undertaken in recognition of a legal obligation, must believe they are obliged to do something

Can also be determined by examining authoritative statements made by countries
For example of how it's determined, see Nuremberg Judgment (Lillich, p. 991)

The law of war is to be found not only in treaties, but in the customs and practices of states which gradually obtained universal recognition, and from the general principles of justice applied by jurists and practised by military courts.
This law is not static, but by continual adaptation follows the needs of a changing world.

Current Jus Cogens ("Commanding Law")

2007-07-03T19:36:00.000-07:00

Jus Cogens ("Commanding Law")

A norm from which no derogation is permitted
See also 1969 Vienna Convention on the Law of Treaties, Article 53
Slavery is bad
Aggression is bad
Genocide and crimes against humanity are bad
Self-determination is good
Racial equality is essential
Right to be free from torture, extrajudicial murder, and prolonged, arbitrary detention
Democracy is essential? – Controversial!

International Law as of 1900

2007-07-03T19:33:00.000-07:00

What was the content of international law as of 1900?

Diplomatic immunity
Follow treaties: pacta sunt servanda
Protected rights of aliens in foreign countries
Maritime law
Rights in international rivers
Laws regulating use of force (to protect noncombatants)
Piracy and slavery prohibited

What do you do if you have an ethical dilemma?

2007-07-03T19:31:00.000-07:00

What do you do if you face an ethical dilemma?

Be careful in speaking about dilemma so as not to violate duties of confidentiality

The "Rules" allow certain approaches that make it OK.

E.g., hypotheticals, posed so as not to identify any parties

Can ask for a formal opinion from the ethics committee

o Slow!

o But can almost always rely on opinion and be safe (rarely changed, but sometimes is).

Can call an "ethics hot line" from bar or similar
Most large firms have ethics committees, written guidance documents, etc.
Insurance providers often provide guidance on ethics too (as part of “loss prevention”)