IP Outline 2024 PDF

IP Outline Professor Tso 2024 Patents: Protect the holder with the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. A patent expires approximately 20 years after the patent application date. 3 Main components of patents: 1. Descrip...

IP Outline Professor Tso 2024 Patents: Protect the holder with the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. A patent expires approximately 20 years after the patent application date. 3 Main components of patents: 1. Description: describes the invention 2. Figures: shows the invention 3. Claims: defines what the invention covers (infringement or not) a. Legal definition of what the patent covers The name of the game is the claim! Patent Prosecution: interaction bw the patent application and the USPTO before the patent is issued. Begins w a broad claim, which is usually rejected After rounds of arguments or claim amendments, application is issued as patent or abandoned by applicant Distinct from Patent Litigation, which is the legal action relating to patent infringement 35 USC 102: Conditions for patentability; novelty (a) NOVELTY; PRIOR ART - a person shall be entitled to a patent unless - (i) The claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention if public use, then no patent Pennock v. Dialogue: P invented new type of tubing and got a patent 7 years later. They sold more than 13k feet of tubing in between the time. If an invention is publicly used or sold before the patent application, the inventor loses the right to a patent. City of Elizabeth v. American Nicholson Pavement Co.: Nicholson owned a patent for an improvement for constructing pavement and sued the city for patent infringement. If an invention is placed in public use for greater than 2 years, the inventor has abandoned his right to a patent. A patent is valid even if the invention is put into public use for the purpose of experimentation and testing its qualities. ○ He placed it in the public bc there was no other way for him to test the quality and determine if it would work properly. This does not quality as “public use”. ○ He did not sell/allow others to sell it; in control of his invention the entire time; 35 USC § 101: Patent Subject Matter Eligibility 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. ★ Note: laws of nature, physical phenomena, or abstract ideas are not, patentable. ○ Includes minerals discovered in earth, plants found in wild, scientific equations and laws Diamond v. Chakrabarty: a man made (human made) organism is not naturally occurring, this is patent eligible Dissent: 101 does not include living organisms Mayo Collaborative Servs. v. Prometheus Labs., Inc.,: a natural law or phenomena must be sufficiently added upon or transformed in order to make an idea, formula, mechanism, or test patentable. Mayo Framework 1. Determine whether the claims are directed to a patent-eligible concept 2. If yes, determine if there is something more to the claim a. Consider elements of each claim individually and as an ordered combination to determine whether the additional elements transform the claim into a patent-eligible application b. A search of an inventive concept (element that ensure patent is significantly more than a patent upon the ineligible concept) Association for Molecular Pathology v. Myriad Genetics, Inc.,: an isolated segment of DNA is naturally occurring in nature, thus is not patentable subject matter. While they made an important discovery, it has not created anything new, they are just separating an existing gene from the chromosome For other patent, Myriad has created a new substance, not naturally occurring; creating synthetic DNA; is patentable Bilski v. Kappos: B wanted a patent for instructions on how to protect against risk in purchase of energy commodities. Said it was a patentable “process” under the federal patent act. A method for protecting a purchasing risk is not patentable. ○ allowing a patent on Bilski's risk avoidance strategy would monopolize a fundamental economic practice, which is an abstract idea, and that the machine-or-transformation test is not the sole test for determining patent eligibility. “Machine or transformation” test is proper here. ○ A claimed process is surely patent eligible under 101 if 1. It is tied to a particular machine or apparatus OR 2. It transforms a particular article into a different state or thing Alice v. CLS Bank: a claim that involves an abstract idea is patentable only if the balance of the claim adds something of significance to the idea, in that it transforms the idea to a new and useful end. claims at issue simply add a computer-generated aspect to the time-honored practice of mitigating settlement risk. This addition is not significant and is insufficient to transform the abstract idea of intermediated settlement mitigation into a patentable invention. En Banc Decisions: French for “in bench” Means that judges of an appellate circuit will hear the case Lawyers petition for case to be heard en banc Get more weight than 3 judge opinions bc there are more judges deciding Patent Term - Effective June 8, 1995: Filed before june 8, 1995 - 17 years from grant date or 20 years from filing date, whichever is greater Filed on june 8, 1995 and after - 20 years from the filing date America Invents Act - Effective March 16, 2013 Pre AIA - The first to invent gets the patent AIA - the first to file gets the patent 35 USC 102: Conditions for Patentability; novelty. a. NOVELTY; PRIOR ART - a person shall be entitled to a patent unless: i. The claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention or b. Exceptions.- i. Disclosures made 1 year or less before the effective filing date of the claimed invention.- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if- 1. A. the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or 2. B. the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Takeaway The inventor has a 1 year grace period to file in the US from the disclosure date. Brenner v. Manson: for a process to be patentable and to fulfill the utility requirement, it must confer a present specific benefit for society Manson was unable to show that the steroid had tumor inhibiting characteristics.  His process requires further research to incur a specific benefit on society and become patentable In re Fisher: to meet the “substantial” and “specific” utility requirements, a patent application must show that the claimed invention provides a significant, presently available, well-defined, and particular benefit to the public. Nucleotide sequences lacked a concrete, specific, and substantial utility Uses them as probes or markers were too speculative and did not demonstrate specific utility Gayler v. Wilder: under the novelty requirement, an applicant is entitled to a patent as the original and first inventor if there was no publicly accessible prior use and knowledge of the invention or discovery. Conner invented a safe in 1829-1832. Others knew about it, but he kept it for himself. He did not file a patent. F filed a patent for the safe in 1843. Was F the “original & first inventor” and therefore entitled to a patent? ○ Yes, society derives no advantage or benefit from Conner’s invention. The Patent Act of 1836, Ch. 357, §6 Authorizes a patent where the applicant has discovered or invented a new and useful improvement,”not known or used” by others before his discovery or invention. BUT §15 says that if the patentee believed they were the first inventor when they applied, their patent should not be void on account of the invention/discovery having been known or used in a foreign country or there being no prior patent or published description. Manual of Patent Examining Procedure (MPEP) 2107.01 General Principles Governing Utility Rejections [R-10.2019] The Office must examine each application to ensure compliance with the "useful invention" or utility requirement of 35 U.S.C. 101.... Deficiencies under the "useful invention" requirement of 35 U.S.C. 101 will arise in one of two forms. The first is where it is not apparent why the invention is "useful." This can occur when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966); In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005); Manual of Patent Examining Procedure (MPEP) 2107.01 General Principles Governing Utility Rejections [R-10.2019] I. SPECIFIC AND SUBSTANTIAL REQUIREMENTS To satisfy 35 U.S.C. 101, an invention must be "useful." Courts have recognized that the term "useful" used with reference to the utility requirement can be a difficult term to define. Brenner v. Manson, 383 U.S. 519, 529, 148 USPQ 689, 693 (1966) (simple everyday word like "useful" can be "pregnant with ambiguity when applied to the facts of life.")... A. Specific Utility A "specific utility" is specific to the subject matter claimed and can "provide a well-defined and particular benefit to the public." In re Fisher. B. Substantial Utility "[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the ‘substantial’ utility requirement, an asserted use must show that the claimed invention has a significant and presently available benefit to the public." Fisher. Anticipation: every element in the claim is either expressly or inherently described in a single prior art reference Coffin v. Ogden: a patent is invalidated by proof that the subject invention was created by another inventor and existed in complete form prior to the grant of the patent. K invented reversible lock door and got patent. Later patent was owned by C. C sued O for copying his patent but 5 people say that they knew of this invention before 1960 and that another man was the inventor.(E) Proven that E’s lock was complete & capable of working, lock had been used in E’s house, tested, and successful, known to at least 5 people. Diff from Gayler bc invention here is presently being used and in the memory of those who testified. In Gayler C used for private use, and source of invention was forgotten Verdegaal Bros v. Union Oil: a patent claim is anticipated by prior art if each and every element in the claim is expressly or inherently described in a single prior-art reference. V claims that U’s prior patent on fertilizer anticipated the claim bc it disclosed several similar elements and methods. Union Oil's earlier patent disclosed all essential elements of Verdegaal’s method, which meant Verdegaal’s patent lacked novelty and was therefore invalid. 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. In re Cruciferous: an invention is unpatentable if it merely applies known techniques to achieve a predictable result in a way that would be obvious to someone skilled in the field.  Scientists and consumers already knew that cruciferous veggies contained health promoting compounds. Idea of producing sprouts to enhance these compounds was predictible Person skilled in plant bio/nutrition likely have thought to do the same thing as a logical way to concentrate compounds. PHOSITA Person Having Ordinary Skill In The Art Graham v. John Deere: an invention may be patented only if it is novel, useful, and nonobvious Got patents for a device that helped a plow avoid damage from things in the soil then another patent later for improvements to this original invention. Here, the improvements were obvious, so patents were invalid 4 Step Test for Obviousness: 1. Scope and content of the prior art 2. Differences bw prior art and the claims in alleged patent 3. Level of ordinary skill in the art 4. Secondary considerations can be considered to give light to circumstances surrounding origin of subject matter sought to be patented a. Commercial success b. Long felt but unsolved needs c. Failure of others Stratoflex v. Aeroquip Corp.: the determination of whether an invention is obvious in light of prior art requires the consideration of several factors viewed as a whole. Relevance of Prior Art: The court found rubber-hose technology relevant to Aeroquip’s invention, and Aeroquip failed to prove otherwise. Minor Differences: Aeroquip’s claimed differences in material and carbon-black dispersion were deemed minor when viewing prior art as a whole, supporting obviousness. Level of Ordinary Skill: a chemical engineer w substantial experience in the extrusion arts. Insufficient Secondary Evidence: Aeroquip couldn’t show the invention’s success was due to the patent or that others had tried and failed to solve the problem. Affirmation Standard: Applying a “clearly erroneous” standard, the court upheld the district court’s finding of obviousness and patent invalidity. In re Clay: In order for prior art to be considered analogous to a claim it must be from the “same field of endeavor” irrespective of the issues it aims to solve, or, if it is from a distinct field of endeavor, it must be relevant to the problem the inventor seeks to solve. 2 Criteria for Determining whether Prior Art is Analogous: 1. Whether the art is from the same field of endeavor, regardless of the problem addressed 2. If the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bell: For a claim to be deemed obvious under 35 USC § 103, the prior art must reasonably suggest or teach the claimed invention to a person of ordinary skill in the art. A mere existence of general methods (cloning) is not sufficient if the prior art does not specifically direct or guide an ordinary skilled person to the claimed composition The obviousness determination requires considering the practical feasibility of deriving the exact claimed invention based on prior art teachings Prior art that “teaches away” or suggests that the method or approach may not yield the desired result weakens a prima facie case of obviousness. Here, the combo of prior art references does not make the claimed invention obvious. ○ No teaching or suggestion to combine R & W in a way that would render the claimed sequences obvious. ○ Not an issue of whether the method was obvious, but whether the composition of the acid sequences was obvious. Kimberly-Clark v. J&J: an inventor’s awareness of another inventor’s non-public work does not qualify the nonpublic work as prior art. Under 102(g) For an invention to be propr art, it must be conceived and reduced to practice (fully realized and functional) C’s patent was valid since he filed before R’s invention was completed, but didnt fully anticipate R’s invention, which added adhesive strips M’s work lacked reduction to practice = not prior art Claim Construction: process where the USPTO, a court, or tribunal decides what the patent claim means. Often determines the outcome of a patent infringement case. Great A & P Tea v. Supermarket Equipment Corp: a patent claiming a combination of old components must still rise to some level of inventiveness to achieve patentability. Merely extending the length of a portion of the counter did not constitute a patentable invention. Need for an actual invention that rises above the know state of the art when evaluating claims that combine known pieces of art. KSR v. Teleflex: a claimed invention is obvious if a flexible and expansive consideration of the Graham factors shows that the invention was predictable. Combining prior art elements doesnt make an invention obvious unless its predictable to a skilled person The TSM test determines if it was predictable The TSM (Teaching, Suggestion, or Motivation) test is a method used to determine whether a claimed invention is obvious under 35 U.S.C. § 103. It examines whether there is a teaching, suggestion, or motivation in the prior art that would lead a person of ordinary skill in the field to combine existing ideas in a way that would result in the claimed invention. The TSM test looks at: Teaching: Whether the prior art explicitly teaches the claimed invention or combination. Suggestion: Whether the prior art suggests the combination of elements in the claimed invention. Motivation: Whether a person of ordinary skill in the field would have been motivated to combine prior art elements to achieve the invention. If there is a clear teaching, suggestion, or motivation in the prior art to make the invention, the invention may be considered obvious, and thus not patentable. Obviousness inquiry is flexible, considering the creativity of skilled individuals. Markman v. Westview: the court, because of its training in complex issues and knowledge of written documents, is more competent to correctly, fairly, and uniformly make decisions relating to interpreting a term of art. Construction of a patent, including terms of art within its claim, is exclusively within the province of the court. Markman Hearing: a court hearing in which a judge determines the meaning of disputed words in a claim in a patent infringement lawsuit. Amendment VII: In suits at CL, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury shall be otherwise reexamined in any Court of the US, than according to the rules of the CL. Chef America v. Lamb Weston: if the only reasonable construction of a patent claim leads to a nonsensical result, a court cannot reinterpret the claim language to support a more sensible result. Claims are construed according to the plain and ordinary meaning of the terms. Patent claim’s heating limitation unambiguously required the dough to be heated to the specified temperature, not just the oven setting. Up to those who write the patent to write it clearly ○ CA could’ve used words to make it clear they meant the temperature of oven, not the dough’s Declaratory Judgment: binding judgment from a court defining the legal relationship bw parties & their rights. Often, a party that received a cease and desist letter will seek DJ from the court Terms: - Direct Infringement: one party performs every element in the claim, or directs or controls another party to perform the missing claim elements. - Joint/Divided Infringement: all elements in the claim are performed amongst multiple non-related parties. A party is liable for infringement when they induce another party to perform the missing claim elements 35 USC 271 Infringement of Patent: a. Except as otherwise provided in this title, whoever wo authority makes, uses, offers to sell, or sells any patented invention, within the US, or imports into the US any patented invention during the term of the patent therefore, infringes the patent. b. Whoever actively induces infringement of a patent shall be liable as an infringer c. Whoever offers to sell or sells wi the US or imports into the US a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to  be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. BMC v. Paymentech: P performed some steps but not all. Other steps performed by financial institutions and customers. B not prove that P had control or direction over the third parties in how they performed their steps. A party cannot be held liable for direct infringement of a method patent unless: 1. It performs all the steps of the claimed method itself, or 2. It controls or directs other entities that perform some of the steps 271 a: liability for infringement requires a party to make, use sell or offre to sell patented invention, meaning the ENTIRE patented invention. ★ Merely working tg w other parties or cooperating in performance of a methos is not sufficient for DI ★ Control or direction requires: one party to have level of authority/influence over how other parties perform remaining steps of the method. Graver Tank & Manufacturing v. Linde Air Products Co.: evidence showed that manganese could be substituted for magnesium in flux composition, and therefore, that L does substantially same thing in same way as U. L infringes under DOE. (below) Doctrine of Equivalents: a competing product is considered the equivalent of a patented product - and therefore infringes - if the competing product performs substantially the same function in substantially the same way to obtain the same result as the patented invention. Purpose: prevents fraud on patent & avoids narrow interpretations that allow minor changes to evade infringement. Warner-Jenkinson Co v. Hilton Davis Chemical Co.: The Doctrine of Equivalents survived the 1952 amendments to the Patent Code. Amendments did not address DO, so it still applies BUT doctrine should be narrowed: applied ti each individual element of a claim, not patent as a whole. Prosecution-history estoppel could limit doctrine’s application. Limelight v. Akamai: an individual cannot be held liable for inducing patent infringement when no one party is liable for directly infringing the patent. ★ Method patent is not infringed unless all steps are employed by same ∆, either directly or via agency law. ★ L’s customers, independent entities, performed the step, NO DIRECT INFRINGEMENT. ○ Remand: fed ct says LL directly liable due to joint enterprise w customers, redefining direct infringement on method patent ○ But holding on inducement liability is unchanged. Class 9 Defend Trade Secrets Act of 2016 18 USC 1833 Sears v. Stiffel: federal patent law allows the free use of articles that are not protected by a patent or copyright. State laws cannot crete monopolies on unpatented or uncopyrighted items by prohibiting copying or awarding damages for such copying. State law gave trade secret protection to stiffel’s lamp under likelihood of confusion. But Stiffel did not obtain a patent, trademark, or copyright. So this is equivalent to a patent monopoly. Kewanee Oil v. Bicron: State trade secret laws can coexist with federal patent law State and federal patent laws serve diff purposes and do not conflict. Trade secret is not in the public domain Bonito Boats v. Thunder Cradt Boats: State law may not grant exclusive rights in the design and utilitarian aspects of articles that would otherwise remain unprotected by federal patent law. Scotus followed sears and compco in that a state cannot offer an exclusive right to extend a monopoly which essentially circumvents the patent system. EI du Pont de Nemours v. Christopher: the discovery of trade secrets by any improper means is wrongful and constitutes a cause of action. ∆ took pics of industrial plant from the public airspace in order to obtain a trade secret. This is industrial espionage. Trade Secrets: Information, including a formula, pattern, compilation, program, device, method, technique or process that: ○ Derives independent economic value,a actual or potential, from not being generally known to, and not being readily ascertainable by proper meany by, other persons who can obtain economic value from its disclosure or use; and ○ Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Rockwell Graphic Systems v. DEV Industries: a trade secret that is regularly disclosed to confidentiality-bound vendors and frequently copies is protectable if the owner takes reasonable steps to maintain the secret. Trade secret is protectable if it confers a competitive advantage and reasonable steps are taken to maintain its secrecy ○ “Reasonable protection” is fact-sensitive ○ R took precautions: kept drawings in vault and required confidentiality agreements. COPYRIGHTS Article 1 Section 8(8) of the US Constitution Congress shall have power - to promote the Progess of Science and useful Arts, by securing for limited Time to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. How to obtain a copyright: ★ Created the moment you create something that is copyrightable subjectmatter, and is “fixed in any tangible medium of expression.” ★ Registration w US copyright office not required, but is a good idea ○ Prerequisite to lawsuit ○ Puts public on notice that you own the work ○ Can make you eligible for statutory damages and fees ○ Gives presumption of copyright validity ★ Note: mailing a copy of work to yourself has no legal significance. Statute: 17 USC § 102 Subejct Matter of Copyright: In General (a) Copyright protection subsists in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be percieved, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: 1. Literary works 2. Musical works, including any accompanying words 3. Dramatic works, including any accompanying music 4. Pantomimes and choreographic works 5. Pictorial, graphic, and sculptural works 6. Motion pictures and other audiovisual works 7. Sound recordings and 8. Architectural works (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. How long does a copyright last?: life of author + 70 years and for corporate works, 120 years after creation or 95 years after publication, whichever is earlier. For works registered or published before 1978: 95 years from publication. Feist v. Rural: To be granted copyright protection, works must be original, meaning that they entail some minimal degree of creativity.  ★ Facts are not copyrightable ★ Compilations of facts can be copyrightable, but they must show a minimal degree of creativity. ○ R’s alphabetical arrangement of subscriber info did not meet standard of originality. Baker v. Selden: Copyright only grants protection to the expression of an idea. Blank forms in a bookkeeping system are not copyrightable. S had bookkeeping system w black ledger forms. B copied forms Letters Patent: a public document issued by the US government conferring a patent. Copyright Merger Doctrine: an idea, and the expression of that idea, are closely tied together such that there are only a limited number of ways to express that idea. Thus, this expression of the idea is uncopyrightable. Herbert Rosethan Jewelry v. Kalpakian: If an idea and expression are inseparable, the expression can be copied. (merger doctrine) So long as not plagiarized copy of another’s effort, there is no requirement that the work differ substantially from prior works or contribute anything of value. No other way to place jewels on bee other than way similar to π’s. The idea (jeweled bee) and expression (π’s arrangement of jewels) cannot be separated. Expression can be copied. Morrisey v. Proctor & Gamble: when an uncopyrightable idea is very narrow so that there is only one or a few ways to express it, the expression fo such subject matter is not copyrightable Copyright protects expression of an idea, not the idea itself. When idea is narrow that there are only a few ways to express, expression merges w idea and therefore not copyrightable. - presents monopolization ○ Sweepstakes instructions were so basic that they fell under merger doctrine. ™: trademark - not necessarily registered with the USPTO SM: service Mark. similar to ™. But not necessarily registered with the USPTO ®: registered ™. Protected by USPTO. 10 year, renewable C: copyright. Not necessarily registered. Copyright Infringement: 1. That the ∆ had access to π’s work AND 2. ∆’s work is substantially similar to protected aspects of π’s work Kregos v. Associated Press: factual compilations may be eligible for copyright protection if the author’s selection, arrangement, and coordination of facts is original. K listed stats about baseball pitchers. Had a syndicated pitchin form to newspapers.  Compilation of baseball statistics may be copyrightable as a matter of law. It is for a jury to decide K entitled to trial to determine if selection and arrangement of factual data in baseball pitchin form exhibit minimal degree of creativity required for copyright protection. Star Athletica v. Varsity Brands: the design of a cheerleading outfit is copyrightable. Only things copyrightable on the uniforms is the designs on them. 17 USC § 101 only gives protections if: 1. It can be perceived as a 2 or 3 dimensional work of art separate from the useful article AND 2. Would qualify as a protectable pictorial, graphic, or sculptural work if it were imagined separately from the useful article its incorporate into. Scotus –2 part test: 1) can the work of art, or design, be identified separately from the article? 2) Is the work of art able to exist independently from the article (in another tangible medium)? Independent existence: if the design cannot exist elsewhere, it is utilitarian and not copyrightable Lotus v. Borland: a method of operation, defined as the means by which someone operates or uses something, is uncopyrightable. Court saw a computer menu command hierarchy as a method of operation, thus uncopyrightable. ○ Menu command hierarchy: provided how uses control and operate lotus for others to use. Establishing copyright infringement - π must prove: 1. Owner of a valid copyright and 2. Copying of constituent elements of the work that are original (feist v. rural) 17 USC § 102 (B) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. USC 17 §101 Definitions “Pictoral, graphic, and sculptural works” include: 2D & 3D works of fine, graphic, and applied art, photos, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include 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 this section, shll 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 aspects of the article. Brandir International, Inc. v. Cascade Pac. Lumber Co.: a useful article is ©able only if its aesthetic considerations are conceptually separate from its functional considerations. Test focuses on motivations of the artist, rather than mind of the beholder: ©ability ultimately should depend on extent to which work reflects artistic expression uninhibited by functional considerations. (if design elements can be identified as the designer using his artistic judgment, independent of functional influences, there is conceptual seperability. Here, while originating as a series of wire sculptures, the Ribbon Rack’s final form was due to the adaptation of the original aesthetic elements to accommodate and further a utilitarian purpose. ○ The aesthetic elements accommodate the utilitarian purpose, no artistic element of the rack can exist separately & independently from the utilitarian aspects. Useful Article: object that has an intrinsically useful function that is not to portray its own appearance or convey information, or an object that is normally part of a useful article A useful article, in and of itself, does not enjoy © protection. (next case) 17 USC § 101 “copies”: material objects, other than phonorecords in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated either directly or w the aid of a machine or device Work is “fixed” when its embodiment in a copy or under authority of author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. MAI v. Peak: the transfer of a copyrighted computer program to a computer’s random access memory creates a fixed copy of the computer program for purposes of the CR act of 1976 Since copy created in the RAM can bepercieved, reproduced, or otherwise communicated, the loading of the software into the RAM creates a copy under CR act. Peak’s loading of CR software into RAM created an infringing copy. ○ It is fixed in RAM and can be accessed and perceived. ○ It exists for a duration sufficient to meet the "transitory" standard, even though RAM is temporary memory. 17 USC § 117. Limitations on exclusive rights: Computer Programs a. Making of additional copy or adaptation by owner of copy b. Lease, sale, or other transfer of additional copy or adaptation c. Machine maintenance or repair: not an infringement for owner or lessee of machine to make or authorize the making of a copy of a computer program if such copy is made solely by virtue of the activation of machine that lawfully contains an authorized copy of the computer program, for purposes only of maintenance or repair of that machine, if -  1. Such new copy is used in no other manner and is destroyed immediately after the maintenance or repair is completed AND 2. W respect to any computer program or part thereof that is not necessary for that machine to be activated, such program or part thereof is not accessed or used other than to make sucha new copy by virtue of the activation of the machine. Religious Technology Center v. Netcom: an internet service provider is not liable for direct © infringement when a user posts copyrighted material on an internet bulletin board. BUT contributory infringement & vicarious liability is fact dependent, depending on ∆’s level of control. An ISP is guilty of contributory © infringement if 1. The provider had notice that a user was posting infringing material using the provider’s system AND 2. The provider did nothing to stop the distribution of infringing material. BUT they cant be held liable for direct © infringement if they didn’t take any action that resulted in copying the work. Digital Millenium Copyright Act (DCMA) (1998) DCMA Takedown Notice: informs the ISP or host (ex youtube) that they are hosting material which infringes on a valid copyright. 17 USC § 512: Limitations on Liability relating to material online C. information residing on systems or networks at direction of users 1. In general: a service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of © by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the same service provider, if the service provider - a. Does not have actual knowledge that the material or an activity using the material on the system or network is infringement; b. In the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or c. Upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material. §106. Exclusive rights in copyrighted works Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: (1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;  (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission. Nichols v. Universal: general story ideas are not eligible for copyright protection. But the unique way to tell the story is. There is no bright line to delineate the idea and the expression of the idea. High level plot outlines and undeveloped characters are considered mere ideas, which cannot be copyrighted. Specific details and development of characters and plot in the 2 works were sufficiently different to avoid copyright infringement. Computer Associates v. Altai: copyright protection extends beyond a work’s literal componsents to its non-literal components. (if they represent original expressions of ideas) Copyrightable aspects are not sufficiently similar to ∆’s work. No infrinement Test for non-literal copying of computer programs 1. Abstraction: is the hierarchical structure substantially similar? 2. Filtration - filter out the unprotectable material from the abstraction level a. Unproectable: element dictated by efficiency (merger, functionality), baker v selden bookkeeping form; elements dictated by external factors, mechanical specs of computer, widely accepted programing practices. 3. Comparison - after the unrpotectable elements are siftedout, is there a “golden nugget” (a core of protectable expression)? Quimbee version: Specifically in this step, courts must filter out components that are (1) an uncopyrightable idea or that the designer included due to efficiency, and thus are tied to an idea; (2) included due to external factors, such as standard techniques that are inherently necessary in any computer program; and (3) taken from the public domain. Filtering out these program components that are not copyrightable allows courts to reach step three, which is comparison. Anderson v. Stallone: an unauthorized derivative work is not entitled to copyright protection, even for the noninfringing portions of the work. Rocky characters are entitled to © protection ○ Well developed and central to the narrative, treatment heavily borrowed from characters & plotlines. He had no permission to use. ○ The new elements were inseparable and infringing use of characters. Arnstein v. Porter: in an action for © infringement, π must prove that: 2 Pronged © test: 1. ∆ copied from π’s © work 2. Assuming copying is proved, Copying went too far s to constitute improper appropriation. Π’s claims raised issues of fact re whether ∆ had access to π’s works. - need jury No summary judgement when witness credibiluty is at issue Newton v. Diamond: use of a © work does not constitute © infringement if the portion used is de minimus, meaning that it is so minimal or insubstantial that it does not qualitatively or quantitatively constitute a significant part of the original work. Sampled portion of “choir” was only 6 seconds and 3 notes, which was not a substantial part of the 5 min song. Average audience would not recognize he appropriation if performance-specific elements were stripped away. Fragmented literal similarity: ∆ copies π’s work wo appropriating the work’s overall essence or structure. Bright Tunes Music Corp v. Harrisongs Music, Ltd.: strict liability applies to © infringement claims. Even if H didnt mean to copy song, he is still guilty of infringement bc the other song is very similar. H’s intent did not matter. Fact that he was living in england when the song was popular and that he shared the charts w the song shows he had access to it. 17 U.S.C. § 107. Limitations on exclusive rights: Fair use Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include— (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors. Fair use: is a defense you use when someone accuses you of copying. 1. Purpose?  a. Parodies - making fun of something and transformative works - turn og into something new, lean towards fair use. b. Creativity - if super creative, more protection c. How much did you take? - more you take, harder it is to argue fair use, esp if ur using for money d. Will it mess w market? If work competes w og and could hurt value or sales Sony v. Universal: the sale of articles of commerce does not constitute contributory infringement if the product is widely used for legitimate, noninfringing uses. Selling copying equipment does not count as helping w © infringement if it’s mostly used for legal purposes. Betamax has many legal uses. Even though people can use it to record copyrighted material, they can also use it to record noncopyrighted material or material that © owners are ok w copying. Main way people use Betamax is to record shows to watch later which is fair use. S does not control what users do w the VTR. VTR can be used for legitimate purposes. Balancing Test: used mainly for time shifting, convenient, valuable service. Sony is not guilty of helping w © infringement by selling the Betamax. Harper & Row v. Nation: permitted use of a copyrighted work is not expanded under the fair use doctrine even if the subject matter is of high public concern Pres. Ford contracted π to publish memoirs. π contracted Time for $25K to publish exclusive Nixon pardon excerpt. Nation secretly obtained and published 300-400 words (13%) as "hot news story," wo commentary. Time canceled & refused to pay. Interest at stake is highly relevant to a fair use analysis 1. Fair use doctrine is not expanded when it applies to the work of a public figure 2. 107- 4 factor test: purpose/nature of work/amount & substantiality/effect on $ a. All 4 factors weighed against ∆. Dr. Seuss v. Penguin Books: claiming a work is a parody is not a separate defense. Its just a way of saying that people probably wont be confused about who made the work. Penguin pub parody by of OJ trial mocking ™ for dr seuss books. Dr seuss sued for ™ infringement over book’s cover. Parody isnt a magical defense, just another way of saying, “no one will confuse this w the real thing?” 8 factor likelihood of confusion test should be applied to determine ™ infringement Seuss mark’s are strong, substantial similarity bw marks, no evidence of actual confusion, P’s intent was to draw attention based on similarity. 8 factor likelihood of confusion test 1. Strength of mark  2. Proximity of the goods 3. Similarity of the marks 4. Evidence of confusion 5. Marketing channels used 6. Type of goods and degree of care likely to be exercised by purchasers 7. ∆s intent in selecting the mark 8. Likelihood of expansion of the product lines Dr. Seuss v. ComicMix: Fair use doctrine allows limited use of copyrighted material wo permission for purposes like criticism or commentary. Merely recontextualizin an existing work is not sufficiently transformative to constitute fair use. 4 factors to analyze fair use: purpose and character/nature of © work/amt & substantiality of portion/effect on potential market for orig work. ∆ created Boldly, mashup of Dr. Suess’s Go! And Star Trek. copied text and illustrations, planned to sell wo auth from dr seuss New book not transformative, commercial in nature, copied substantial portions, could negatively impact market for book & derivatives. Didnt critique go, just copied for profit. NO FAIR USE. Opinion above mentions the Rogers Test: 1. Title must have some artistic relevance to the underlying work 2. Title must not explicitly mislead consumers as to the source or content of the work § 501. Infringement of Copyright a. Anyone who violates any of the exclusive rights of the © owner as provided by sections 106 through 122 or of the author as provided in section 106A(a), or who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright or right of the author, as the case may be. For purposes of this chapter (other than section 506), any reference to copyright shall be deemed to include the rights conferred by section 106A(a). As used in this subsection, the term "anyone" includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity. Key points: The term "anyone" explicitly includes state actors (states, agencies, employees). State entities are not immune from copyright infringement claims—they are held accountable like private parties. This ensures that copyright protections apply universally, without exemptions for government actors. 17 USC § 110. Limitations on exclusive rights: Exemption of certain performances and displays Exact language on class 16 powerpoint 17 USC § 110 explanation: 1. Classroom use: face to face teaching at a nonprofit educational institution is exempt if done in classroom or similar setting. BUT does not apply to movies or audiovisual works if copy was illegally made & person presenting knew it was not lawful 2. (4) Noncommercial Performances: performances of nondramatic literary or musical works (reading book outloud, playing song) allowed wo copyright permission, provided: a. Performance is not publicly transmitted b. No intention to gain commercial benefit c. Performers, promotors, and organizers aren’t paid (5) Public Communication by Establishments: when businesses can play radio or TV broadcasts of nondramatic musical works wo infringing ©, (5)(B)(i) General Establishments: Scope: businesses other than food/drinking establishments Conditions based on size ○ Small