Intellectual Property - Spring 2008

Responses to Student Questions

Student questions/responses.  Student comments in lowercase.  My responses in CAPS interspersed.

General Questions

Are the statutes listed in the syllabus the only ones we are responsible for?

YOU ARE RESPONSIBLE FOR ALL OF THE SECTIONS OF THE VARIOUS STATUTES WE DISCUSSED IN CLASS OR IN THE READING, WHETHER OR NOT THOSE SECTIONS OF THE STATUTE WERE SPECIFICALLY ENUMERATED ON THE SYLLABUS

Are we responsible for the Reform to Patent Act stuff?

YES.  WE DISCUSSED PATENT REFORM IN CLASS AND IN THE READING

Are we responsible for the information from the 2 guest lecturers

YES

Patent Questions

 Is there a difference between invention and discovery?

DISCOVERY IS NOT THE PRODUCT OF MAN-MADE INGENUITY AND EFFORT.  DISCOVERY IS MORE LIKELY TO REFER TO FINDING SOMETHING IN NATURE.  BUT "DISCOVERY" IS NOT A TERM OF ART SO IT COULD BE USED IN ITS COLLOQUIAL ENGLISH SENSE.

Regarding the 3rd pring of the test for Non-Obviousness from Graham v. John Deer, "Level of ordinary skill in the art," how do I identify the level of skill in the pertinent art?

THE PERSON HAVING ORDINARY SKILL IN THE ART IS DISCUSSED IN JOHN DEERE AND IN THE STATUTE.  WE ALSO DISCUSSED IN CLASS.  YOU SHOULD REVIEW BOTH SOURCES AND THE NOTES.  HERE'S A QUICK SUMMARY OF THE KINDS OF FACTORS YOU WOULD LOOK TO IN ORDER TO MAKE A DETERMINATION.

• Educational level of the inventor
• Educational level of active workers in the field
• Type of problems encountered in the art
• Prior art solutions to those problems
• Sophistication of the technology
• Rapidity with which inventions are made 
• Consider factors such as: educational level of the inventor, what is the typical education level of people working in the field, type of problems encountered in the art, prior art solutions to those problems, sophistication of the technology, etc.always considered at the time of the invention.

AH, YES, YOU GOT THIS ALREADY.  THE PATENT EXAMINER HAS TO PUT HIM OR HERSELF IN THE SHOES OF THE PERSON HAVING ORDINARY SKILL IN THE ART AT THE TIME OF INVENTION (NOT AT A LATER POINT).  IT IS AN INQUIRY AS OF THE TIME OF INVENTION AS TO WHETHER THIS FICTITIOUS PERSON WOULD HAVE KNOWN TO PURSUE THE INVENTION AND WOULD HAVE THOUGHT THAT HE HAD A REASONABLE CHANCE OF SUCCESS AT IT.

So the person trying to argue validity will argue a low level of skill to try to show obviousness?

THE PERSON TRYING TO ARGUE VALIDITY WANTS TO SHOW THAT THE INVENTION WAS NOT OBVIOUS AT THE TIME OF INVENTION.  HE OR SHE WANTS TO SAY THAT THAT NO ONE WOULD HAVE KNOWN TO DO THIS.  HENCE THE PERSON TRYING TO ARGUE VALIDITY WILL TRY TO SHOW THAT THERE IS A HIGH, NOT A LOW, LEVEL OF EDUCATION REQUIRED.  IT IS THE INVERSE FOR THE ALLEGED INFRINGER WHO IS TRYING TO DEFEAT THE VALIDITY OF THE PATENT.

Copyright Questions

Performance and Display (Right of copyright holder)
Owner has right to control the public (not private) performance and display of her works including both literary and performance oriented works. Right extends to computer programs and other audio visual works. How does the owner not have right to prevent the display of a particular original or copy of a work of art in a public place?

YOU MAKE A PAINTING.  I BUY THE PAINTING FROM YOU.  THIS GIVES ME THE RIGHT TO HANG THE ORIGINAL PAINTING WHEREVER I WANT TO AND TO DO WHATEVER I WANT WITH THAT COPY OF THE PAINTING.  IT DOES NOT, HOWEVER, CONVEY ALL THE COPYRIGHTS TO ME SO I AM NOT ENTITLED WITHOUT A TRANSFER OF THE COPYRIGHT TO MAKE 1000 COPIES OF THE PAINTING.

What are the 3 exceptions regarding original work of authorship and fixations?

I HAVE NO IDEA WHAT THIS REFERS TO.

Gucci wins trademark lawsuit in China

BEIJING: Gucci has won a trademark copycat lawsuit against a Chinese shoemaker, the state media said Tuesday, helping the luxury goods maker's battle in a country where knockoff designer gear is widely available.

Senda Group, based in the eastern Chinese province of Jiangsu, was ordered to pay Gucci 180,000 yuan, or $26,000, in compensation for infringing on the Gucci trademark featuring an interlocking "GG," according to the ruling handed down Monday by the People's Court of Shanghai Pudong District.

Senda's women's sandals bearing the logo were sold at Shanghai No. 1 Yaohan Department Store in August 2006, Xinhua, the Chinese government's official news agency, said.

"Gucci demanded Senda and the Yaohan department store stop manufacturing and selling the shoes carrying the logo and asked for compensation totaling 610,000 yuan from the two defendants," Xinhua said.

Fake and pirated goods ranging from drugs to golf clubs are widely on sale in mainland China. The European Union and the United States have kept pressure on China to combat counterfeits, which U.S. software and entertainment firms say costs them $2.5 billion a year.

http://www.iht.com/articles/2008/04/15/business/gucci.php

counterfeit quiz

http://money.aol.com/special/spot-the-counterfeit-products-quiz

sorry forgot to post the actual quiz earlier

counterfeit quiz

Just in case anyone wants to take a break from studying IP

You Can't Pick Up Your Exam By Email, Only Drop It Off

In response to a student asking whether they could have their exam emailed to them Oral Hope of the Registrar's Office had this to say:

I'm sorry, but we will not email the exams to students, because it is not our policy to do so.  However, we do have a system in place for students to return their exams via e-mail, which has made the exam
process much smoother for students.  We have also extended our office hours during exams to allow students to pick up their exams as late as 7:00 p.m. Monday - Thursday and 6:00 p.m. on Fridays.

We are currently working on a process to allow students to retrieve exams electronically; unfortunately, that process may not be in place until the end fall 2008 semester.  I know this is not helpful to your
current cause, but it will be helpful to students in the future.

If you or any of your classmates have any additional questions, please do not hesitate to contact us. 

10 Big Myths about copyright explained

I know we're all almost pros but stumbled upon an interesting article...

10 Big Myths about copyright explained

 

An attempt to answer common myths about copyright seen on the net and cover issues related to copyright and USENET/Internet publication.

- by Brad Templeton

Note that this is an essay about copyright myths.  It assumes you know at least what copyright is -- basically the legal exclusive right of the author of a creative work to control the copying of that work.  If you didn't know that, check out my own brief introduction to copyright for more information.  Feel free to link to this document, no need to ask me.  Really, NO need to ask.

1) "If it doesn't have a copyright notice, it's not copyrighted."

This was true in the past, but today almost all major nations follow the Berne copyright convention.  For example, in the USA, almost everything created privately and originally after April 1, 1989 is copyrighted and protected whether it has a notice or not. The default you should assume for other people's works is that they are copyrighted and may not be copied unless you know otherwise.  There are some old works that lost protection without notice, but frankly you should not risk it unless you know for sure.

It is true that a notice strengthens the protection, by warning people, and by allowing one to get more and different damages, but it is not necessary.  If it looks copyrighted, you should assume it is.   This applies to pictures, too.  You may not scan pictures from magazines and post them to the net, and if you come upon something unknown, you shouldn't post that either.

The correct form for a notice is:

 

	"Copyright [dates] by [author/owner]"

You can use C in a circle ©  instead of "Copyright" but "(C)" has never been given legal force.  The phrase "All Rights Reserved" used to be required in some nations but is now not legally needed most places.  In some countries it may help preserve some of the "moral rights."

 

 

2) "If I don't charge for it, it's not a violation."

False.  Whether you charge can affect the damages awarded in court, but that's main difference under the law.  It's still a violation if you give it away -- and there can still be serious damages if you hurt the commercial value of the property.  There is a USA exception for personal copying of music, which is not a violation, though courts seem to have said that doesn't include widescale anonymous personal copying as Napster. If the work has no commercial value, the violation is mostly technical and is unlikely to result in legal action.  Fair use determinations (see below) do sometimes depend on the involvement of money.

 

3) "If it's posted to Usenet it's in the public domain."

False.  Nothing modern and creative is in the public domain anymore unless the owner explicitly puts it in the public domain(*).  Explicitly, as in you have a note from the author/owner saying, "I grant this to the public domain."  Those exact words or words very much like them.

Some argue that posting to Usenet implicitly grants permission to everybody to copy the posting within fairly wide bounds, and others feel that Usenet is an automatic store and forward network where all the thousands of copies made are done at the command (rather than the consent) of the poster.  This is a matter of some debate, but even if the former is true (and in this writer's opinion we should all pray it isn't true) it simply would suggest posters are implicitly granting permissions "for the sort of copying one might expect when one posts to Usenet" and in no case is this a placement of material into the public domain.  It is important to remember that when it comes to the law, computers never make copies, only human beings make copies.  Computers are given commands, not permission. Only people can be given permission.  Furthermore it is very difficult for an implicit licence to supersede an explicitly stated licence that the copier was aware of.

Note that all this assumes the poster had the right to post the item in the first place.  If the poster didn't, then all the copies are pirated, and no implied licence or theoretical reduction of the copyright can take place.

(*) Copyrights can expire after a long time, putting something into the public domain, and there are some fine points on this issue regarding older copyright law versions.  However, none of this applies to material from the modern era, such as net postings.

Note that granting something to the public domain is a complete abandonment of all rights.  You can't make something "PD for non-commercial use."  If your work is PD, other people can even modify one byte and put their name on it.

 

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4) "My posting was just fair use!"

See

other notes on fair use for a detailed answer, but bear the following in mind:

The "fair use" exemption to (U.S.) copyright law was created to allow things such as commentary, parody, news reporting, research and education about copyrighted works without the permission of the author.  That's vital so that copyright law doesn't block your freedom to express your own works -- only the ability to appropriate other people's.  Intent, and damage to the commercial value of the work are important considerations.  Are you reproducing an article from the New York Times because you needed to in order to criticise the quality of the New York Times, or because you couldn't find time to write your own story, or didn't want your readers to have to register at the New York Times web site? The first is probably fair use, the others probably aren't.

Fair use is generally a short excerpt and almost always attributed.  (One should not use much more of the work than is needed to make the commentary.) It should not harm the commercial value of the work -- in the sense of people no longer needing to buy it (which is another reason why reproduction of the entire work is a problem.) Famously, copying just 300 words from Gerald Ford's 200,000 word memoir for a magazine article was ruled as not fair use, in spite of it being very newsworthy, because it was the most important 300 words -- why he pardoned  Nixon.

Note that most inclusion of text in followups and replies is for commentary, and it doesn't damage the commercial value of the original posting (if it has any) and as such it is almost surely fair use.  Fair use isn't an exact doctrine, though.  The court decides if the right to comment overrides the copyright on an individual basis in each case.  There have been cases that go beyond the bounds of what I say above, but in general they don't apply to the typical net misclaim of fair use.

The "fair use" concept varies from country to country, and has different names (such as "fair dealing" in Canada) and other limitations outside the USA.

Facts and ideas can't be copyrighted, but their expression and structure can.  You can always write the facts in your own wordsthough

See the DMCA alert for recent changes in the law.

5) "If you don't defend your copyright you lose it." -- "Somebody has that name copyrighted!"

False.  Copyright is effectively never lost these days, unless explicitly given away.  You also can't "copyright a name" or anything short like that, such as almost all titles. You may be thinking of

trade marks, which apply to names, and can be weakened or lost if not defended.

You generally trademark terms by using them to refer to your brand of a generic type of product or service.  Like a "Delta" airline.  Delta Airlines "owns" that word applied to air travel, even though it is also an ordinary word.  Delta Hotels owns it when applied to hotels.  (This case is fairly unusual as both are travel companies.  Usually the industries are more distinct.)  Neither owns the word on its own, only in context, and owning a mark doesn't mean complete control -- see a more detailed treatise on this law for details.

You can't use somebody else's trademark in a way that would steal the value of the mark, or in a way that might make people confuse you with the real owner of the mark, or which might allow you to profit from the mark's good name. For example, if I were giving advice on music videos, I would be very wary of trying to label my works with a name like "mtv."  :-)  You can use marks to critcise or parody the holder, as long as it's clear you aren't the holder.

6) "If I make up my own stories, but base them on another work, my new work belongs to me."

False.  U.S. Copyright law is quite explicit that the making of what are called "derivative works" -- works based or derived from another copyrighted work -- is the exclusive province of the owner of the original work. This is true even though the making of these new works is a highly creative process.  If you write a story using settings or characters from somebody else's work, you need that author's permission.

Yes, that means almost all "fan fiction" is arguably a copyright violation.  If you want to publish a story about Jim Kirk and Mr. Spock, you need Paramount's permission, plain and simple.  Now, as it turns out, many, but not all holders of popular copyrights turn a blind eye to "fan fiction" or even subtly encourage it because it helps them.  Make no mistake, however, that it is entirely up to them whether to do that.

There is a major exception -- criticism and

parody. The fair use provision says that if you want to make fun of something like Star Trek, you don't need their permission to include Mr. Spock.  This is not a loophole; you can't just take a non-parody and claim it is one on a technicality.  The way "fair use" works is you get sued for copyright infringement, and you admit you did copy, but that your copying was a fair use.  A subjective judgment on, among other things, your goals,  is then made.

However, it's also worth noting that a court has never ruled on this issue, because fan fiction cases always get settled quickly when the defendant is a fan of limited means sued by a powerful publishing company.  Some argue that completely non-commercial fan fiction might be declared a fair use if courts get to decide. You can read more

7) "They can't get me, defendants in court have powerful rights!"

Copyright law is mostly civil law.  If you violate copyright you would usually get sued, not be charged with a crime. "Innocent until proven guilty" is a principle of criminal law, as is "proof beyond a reasonable doubt."  Sorry, but in copyright suits, these don't apply the same way or at all. It's mostly which side and set of evidence the judge or jury accepts or believes more, though the rules vary based on the type of infringement.  In civil cases you can even be made to testify against your own interests.

 

8) "Oh, so copyright violation isn't a crime or anything?"

Actually, in the 90s in the USA commercial copyright violation involving more than 10 copies and value over $2500 was made a felony.  So watch out.  (At least you get the protections of criminal law.)  On the other hand, don't think you're going to get people thrown in jail for posting your E-mail.  The courts have much better things to do. This is a fairly new, untested statute.  In one case an operator of a pirate BBS that didn't charge was acquited because he didn't charge, but congress amended the law to cover that.

 

9) "It doesn't hurt anybody -- in fact it's free advertising."

It's up to the owner to decide if they want the free ads or not.  If they want them, they will be sure to contact you. Don't rationalize whether it hurts the owner or not, ask them.  Usually that's not too hard to do.  Time past, ClariNet published the very funny Dave Barry column to a large and appreciative Usenet audience for a fee, but some person didn't ask, and forwarded it to a mailing list, got caught, and the newspaper chain that employs Dave Barry pulled the column from the net, pissing off everybody who enjoyed it.  Even if you can't think of how the author or owner gets hurt, think about the fact that piracy on the net hurts everybody who wants a chance to use this wonderful new technology to do more than read other people's flamewars.

 

10) "They e-mailed me a copy, so I can post it."

To have a copy is not to have the copyright.  All the E-mail you write is copyrighted.  However, E-mail is not, unless previously agreed, secret.  So you can certainly report on what E-mail you are sent, and reveal what it says.  You can even quote parts of it to demonstrate.  Frankly, somebody who sues over an ordinary message would almost surely get no damages, because the message has no commercial value, but if you want to stay strictly in the law, you should ask first.  On the other hand, don't go nuts if somebody posts E-mail you sent them. If it was an ordinary non-secret personal letter of minimal commercial value with no copyright notice (like 99.9% of all E-mail), you probably won't get any damages if you sue them. Note as well that, the law aside, keeping private correspondence private is a courtesy one should usually honour.

 

11)"So I can't ever reproduce anything?"

Myth #11 (I didn't want to change the now-famous title of this article) is actually one sometimes generated in response to this list of 10 myths.  No, copyright isn't an iron-clad lock on what can be published. Indeed, by many arguments, by providing reward to authors, it encourages them to not just allow, but fund the publication and distribution of works so that they reach far more people than they would if they were free or unprotected -- and unpromoted.   However, it must be remembered that copyright has two main purposes, namely the protection of the author's right to obtain commercial benefit from valuable work, and more recently the protection of the author's general right to control how a work is used.

While copyright law makes it technically illegal to reproduce almost any new creative work (other than under fair use) without permission, if the work is unregistered and has no real commercial value, it gets very little protection.  The author in this case can sue for an injunction against the publication, actual damages from a violation, and possibly court costs.  Actual damages means actual money potentially lost by the author due to publication, plus any money gained by the defendant.  But if a work has no commercial value, such as a typical E-mail message or conversational USENET posting, the actual damages will be zero.  Only the most vindictive (and rich) author would sue when no damages are possible, and the courts don't look kindly on vindictive plaintiffs, unless the defendants are even more vindictive.

The author's right to control what is done with a work, however, has some validity, even if it has no commercial value.  If you feel you need to violate a copyright "because you can get away with it because the work has no value" you should ask yourself why you're doing it.  In general, respecting the rights of creators to control their creations is a principle many advocate adhering to.

In addition, while quite often people make incorrect claims of "fair use" it is a still valid and important concept necessary to allow the criticism of copyrighted works and their creators through examples. It's also been extended to allow things like home recording of TV shows and moving music from CDs you own to your MP3 player. But please read more about it before you do it.

Music Tax?

The Music Industry's Extortion Scheme:
The record labels want you to pay a tax on music. Its not as horrible as it sounds.
By Reihan Salam

What would you do if a bully—let's call him "Joey Giggles"—kept snatching your ice-cream cone? OK, now what if Joey Giggles then told you, "If you pay me five bucks a month, I'll stop snatching your ice cream." Depending on how much you hate getting beaten up, and how much you love ice-cream cones, you might decide that caving in is the way to go. This is what's called a protection racket. It's also potentially the new model for how we'll buy and listen to music.

Let's back up for a second. Four companies (Universal Music Group, Warner Music Group, Sony BMG, and EMI) control a staggering 90 percent of all record sales in the United States, and they're hopping mad. CD sales are in free fall, and the recording industry's revenues have shrunk from $15 billion to $10 billion in less than a decade. Instead of blaming themselves for failing to embrace the Internet soon enough, Big Music has pointed the finger at piracy, shaking down scofflaw MP3 downloaders with capricious, multimillion-dollar lawsuits. This has not strengthened the record companies' position—at this point, they're losing money and everybody hates them.

Now Big Music is mulling the Joey Giggles approach. Warner Music Group is trying to rally the rest of the industry behind a plan to charge Internet service providers $5 per customer per month, an amount that would be added to your Internet bill. In exchange, music lovers would get all the online tunes they want, meaning that anyone who spends more than $60 a year on music will come out way ahead. Download whatever you want and pay nothing! No more DRM! Swap files to your heart's content—we promise, we won't sue you (or snatch your ice-cream cone)!

read more:The music indusry's extortion scheme

Steal This Idea

    Steal This Idea        

      

By: Kermit Pattison

Why is piracy becoming such an economic force?

The human being is a copying machine. It's how we learn to talk and learn social norms. We organize ourselves as a society by imitating what the rest of society does. Piracy has been with us throughout history. The problem now is we have the ultimate copying machine--the Internet. Things can be copied so fast that no one can even determine the original anymore.

Is piracy ever healthy in spawning innovation or creating a market?

Absolutely. Sometimes it creates a more efficient market -- digital distribution is a much more efficient way to deliver music than CDs and that's why people switched to it without the music industry wanting them to. A lot of people think my argument is that all piracy is great, which isn't really the argument. The argument in the book is piracy can actually be a market signal. It really highlights market failures in many ways.

Microsoft, for example, is alarmed that Vista isn't being pirated very much.

This is an interesting thing with piracy -- it's become a new kind of rating system. It concerns people within Microsoft that people weren't pirating Vista; they're continuing to pirate XP. These are important metrics because it tells you something about your customers.

To rip off Stephen Covey, what are the habits of highly effective pirates?

An entrepreneur looks for a gap in the market; pirates look for a gap outside the market. They go to the taboo area, and that's where they set up shop. The second thing they do is create a vehicle or platform, and that medium is also a message. A $5 DVD highlights that gap outside the market and says to the consumer, "This is a good idea. Why can't you get this legally?" The third and most important thing pirates do is harness the power of their audience. If the audience decides that what they're offering is of value to society and is more efficient than the legal, established way of doing it, fighting in the courts no longer works. You won't be able to stop it. You'll be as likely to win that as the war on drugs or prohibition.

Looks like there's a demand for us these days....

Unprecedented Number of International Patent Filings in 2007

In a year that saw a record number of filings under the World Intellectual Property Organization (WIPO) Patent Cooperation Treaty (PCT), the cornerstone of the international patent system, inventors from the Republic of Korea (4^th place) and China (7^th) consolidated their top ten position in 2007, along with the United States of America (1^st) , Japan (2^nd), Germany (3^rd), France (5^th), United Kingdom (6^th), Netherlands (8^th), Switzerland (9^th) and Sweden (10^th). In total, a record 156,100 [1] applications were filed in 2007, representing a 4.7% rate of growth over the previous year. For the fourth year running, the most notable growth rates came from countries in north east Asia which accounted for over a quarter (25.8%) of all international applications under the PCT.

“The growth in patent filings by a number of countries in north east Asia and their share of overall patenting activity is impressive and confirms shifting patterns of innovation around the world,” said Dr. Kamil Idris, Director General of WIPO. “It is most encouraging to see clear evidence that countries in the region are embracing the tools of the international patent system to stimulate commercial activity and economic growth,” he added, noting “The PCT remains an attractive option for businesses as it makes it easier for companies and inventors to obtain patent rights in multiple countries.” The Director General further noted that “Strategic use of the patent system is a business imperative in today’s knowledge-driven economy. The success of the PCT is largely due to the sustained use of the system by some of the world’s foremost innovation-based companies.”

http://www.wipo.int/pressroom/en/articles/2008/article_0006.html

The Doctrine of Foreign Equivalents: Genericness of Trademarks That Are Descriptive in Foreign Languages

The Doctrine of Foreign Equivalents states that a word that is descriptive and generic in the language of another country does not become arbitrary for purposes of trademark validity in America just by being in a different language.  Generic words in other languges have been generally held to be generic in American trade. This also applies to slight changes to or phonetic spellings of foreign words although it may not be dispositive of the validity of trademarks based on words taken from dead languages  - McCarthy on Trademarks_s_12.41: The Doctrine of Foreign Equivalents

• "[W]ords in foreign languages are generally characterized according to their English translations." -  Holland v. C. & A. Import Corp., 8_F. Supp_259.doc
• HA- LUSH-KA means egg noodles in Hungarian. It was held generic as a mark for egg noodles sold in the United States. - Weiss Noodle Co. v. Golden Cracknel , 290_F.2d_845
• One test for whether this rule categorizes a certain word as generic and descriptive is whether the word would have a generic connotation to American buyers familiar with the foreign language. - applied in In re Hag Aktiengesellschaft, 155_U.S.P.Q. 598