Intellectual Property, Patents, Trademarks, and Copyright in a Nutshell
Authors:
Miller, Arthur R. / Davis, Michael H.
Edition:
6th
Copyright Date:
2018
23 chapters
have results for Intellectual Property Nutshell
Chapter 28 International Agreements 477 7 results (showing 5 best matches)
- The undemanding approach of national treatment has been the stated rubric of international intellectual property treaties even as, in fact, they depart from that approach in favor of agreement upon transnational minimum provisions. Thus, even NAFTA and TRIPS, which create important transnational norms of substantive intellectual property purport to be documents incorporating national treatment.
- The oldest and most well-established characteristic of intellectual property agreements is that of national treatment, which can best be understood historically. When the first intellectual property treaties were proposed in the nineteenth
- There are only a handful of important multilateral international agreements to which the United States is a party that directly affect intellectual property. The major agreements are the Paris Convention (addressing patent and trademark), the Patent Cooperation Treaty, or PCT (addressing patent), the Trademark Law Treaty, or TLT (addressing trademark), the Berne Convention (addressing copyright), The Universal Copyright Convention, or UCC (addressing copyright), NAFTA (addressing all three), and the Trade Related Aspects of Intellectual Property Rights, or TRIPS (also addressing all three). Although all differ in more than just their subject matter, they share certain characteristics that have historical and continuing significance. In 2003, the United States acceded to the Madrid Protocol of the Madrid Agreement, governing trademark, and is now a part of the so-called Madrid system of international trademark registrations.
- All of the international treaties governing intellectual property leave enforcement vague, at best. Although some of the agreements have enforcement provisions, they are either undefined, untested, or awkward to apply. In almost all instances, enforcement is left up to each individual state pursuant to its own legislative scheme.
- Perhaps as a result, the United States has reserved to itself the right to address international legal disputes over intellectual property in a unilateral fashion. The Trade Act of 1974, as amended, includes a provision, Special Section 301 of the Act which authorizes sanctions against foreign countries in violation of trade agreements or even, absent such violations, when they unfairly restrict our foreign trade. Amendments in 1988 produced so- called “Super 301,” which enhances these penalties and also includes the creation of various watch and priority lists and, ultimately, trade sanctions. What is most surprising is that even when a state is in full compliance with international agreements to which we adhere—such as TRIPS, for instance—the United States reserves, under section 301 of the Trade Act, the right to impose penalties upon countries that, in its view, do not provide “adequate and effective” intellectual property protection. There is some doubt whether the application...
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Chapter 24 Ownership 419 4 results
- Coauthors of joint works stand in relation to each other much as do coowners in common of any other kind of personal property, with some modifications peculiar to intellectual property. Thus, each owner has the right to use the property for her own purposes, but neither has the right to exclude the other from using the property. Likewise, neither owner can commit waste by depleting, squandering, or otherwise destroying the value of the property. As a result of these reciprocal rights, each joint author has the duty to account to the other for any benefits if using the property either excluded the other from using it or destroyed any part of the property. This is because intellectual property is not like real property; it is not possible for one person to use it—
- Consequently, the traditional rule forbidding accountings between coowners of commonly owned property is modified in the copyright context. Coowners of other kinds of property are permitted to use the property without accounting because it is assumed that all coowners can use the property in one way or another. But intellectual property is not so amenable to multiple uses. For example, the sale of rights to a song or dramatic composition immediately forecloses coauthors from doing the same. The market, in that sense, is more limited than it is for other forms of property, being less elastic and less amenable to multiple uses, either in space or time. Thus, copyright law has allowed the use of equitable relief, including demands for an accounting, which would be prohibited in other areas of property law.
- The distinction between the physical object and the copyrighted work in it is fundamental and applies to any work of authorship, no matter how far down the totem pole of artistic creation the work may lie. Thus, cases dealing with letters written from one person to another have held that, although the property interest in the physical object passes from writer to recipient, the right to reproduce the contents and the copyright generally can be retained by the writer when there is evidence of such an interest. being the physical object, were free of any continuing claim by the original author but that there was still no danger to the original author’s copyright. This is because the tile-mounted pictures, although the property of the book purchaser, could not be further reproduced without permission of the original author who would profit from any future reproductions she might authorize.
- to die. On the other hand, some common law doctrines relating to joint authorship still are viable. The most important of these are those relating to ownership rights and duties. Basically, joint authors become owners in common and their property rights and duties are determined accordingly. See § 24.3, infra.
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Introduction 1 3 results
- A book presenting the basics of intellectual property faces two difficulties. First, intellectual property traditionally includes the three legal areas of patents, trademarks, and copyrights. However, except for tradition and the fact that the three subjects are commonly taught together in one survey course, one might question why a single book should include these three divergent subjects. What they have in common is a relatively amorphous character and a highly abstract concept of property. Only two of them, patent and copyright, share a common constitutional source. That brings up the second difficulty. The “property” of intellectual property is not the concrete form that characterizes the area of real property, for instance. It has been said, with respect to tort law, and the supposed ease with which students grasp its basics, that anyone can recognize a punch in the nose. Unlike a punch in the nose, however, the force of intellectual property is more like that of the invisible...
- means that the law cannot be understood without occasional reference to the statute, it also means that, with the statute, at least some “black letter” law is immediately available. With the recent explosion of intellectual property as a mainstay of national and international trade has come a concomitant explosion of statutory changes. This presents a challenge to students and practitioners to stay up-to-date. Second, although intellectual property is relatively abstract, that is not to say that it is unfamiliar.
- Finally, a basic book in any area cannot pretend to be the last word. As is true of all legal subjects, the field of intellectual property is hopelessly entangled with other legal areas, such as torts and property. It
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- The manner in which a businessperson acquires a trademark is different from that in which other intellectual property, such as copyright or patent, may be legally protected. A trademark cannot be appropriated (in connection with) commercial activity. It is because of this central characteristic that trademark law differs from that relating to other intellectual property. Accordingly, it is said that trademark rights cannot be obtained by mere adoption. They must be appropriated through use and thus rights to trademark are acquired solely through priority of use.
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Chapter 18 Remedies 311 1 result
- Accounting is a traditional equitable remedy available to recover profits unfairly gained from another’s property. Under the Lanham Act, plaintiffs are entitled to an accounting about what portion of those gross sales are attributable to the cost of the items, advertising, administrative costs, and any other expenses that are deductible from gross amounts to determine profits. The defendant must prove to the court whatever expenses it wishes to claim are appropriate. This is a rule that applies to intellectual property generally.
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- Many state common law doctrines function in a way that is comparable to federal copyright in protecting interests and subject matter similar to those governed by the federal copyright laws. These state doctrines are described in a variety of ways. They can be included under the rubrics of unfair competition, unfair trade practices, misappropriation, and trade secrets. Some of them can be called moral rights, see § 27.4, infra. They relate to the law of intellectual property to the extent that they grant remedies for interferences with intangible property rights. The common law torts of defamation and invasion of privacy also affect and interact with interests related to copyright protection. They will not be extensively discussed in
- Moral rights refers to those inherent rights of authorship recognized in many other countries, that exist in individuals who create intellectual works separate and apart from the property rights created by copyright law. These rights allow authors to object to a use or distortion of their works, even if they no longer own or even never owned, the copyright, if it would injure their reputation or honor. Issues such as film colorization, see
- it was to misappropriate to itself property that belonged to the plaintiff. That the defendant was acting in bad faith was important, although the case also focused on the property rights of the respective parties. The result in
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- On the other hand, not all state doctrine regulating intellectual property impermissibly “clashes” with federal protection. In
- Inventors have state remedies in addition to federal patent protection. The relationship between federal and state protection is governed by the doctrine of federal preemption. Whether a state doctrine can coexist with federal patent protection depends upon whether the state doctrine is inconsistent or incompatible with federal protection. To the extent that the state remedy interferes with federal regulation, the state doctrine is preempted under the Supremacy Clause of the Constitution. “States may not offer patent-like protection to intellectual creations which would otherwise remain unprotected as a matter of federal law.”
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Chapter 21 Exclusive Rights 359 1 result
- The Intellectual Property and Communications Omnibus Reform Act of 1999 adopted further provisions respecting advanced technologies, many of which establish rights far broader than those of traditional copyright. These provisions, the Digital Millennium Copyright Act (DCMA) make it unlawful to circumvent protection measures that control access to copyrighted works. Unlike traditional copyright, the 1999 law does not directly protect the expressions themselves, but, instead, the “technological measures” employed to prevent the expressions from being copied—forbidding descrambling, decrypting, or otherwise circumventing those measures.
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- In a sense, nonobviousness follows on the intellectual heels of novelty; but it is distinctively different. An invention may not have been developed before a certain date. It is, at that point in time, new; it has novelty. However, just because it never
- The test of nonobviousness thus always must be directed toward the inventive new properties of the discovery, and not other features that may or may not themselves be nonobvious. In fact, the very obviousness of an invention’s structure may make its unexpected function nonobvious. A chemical easily may be described theoretically as an obvious derivative of other known chemicals. Similarity of related chemical formulas may make nonobvious an otherwise obvious derivative if the actual substance described by the compound has surprising, nonobvious qualities. A yet unanswered issue in this context is whether the invention covers only the nonobvious uses of a chemical or whether the entire chemical might receive protection.
- The nonobviousness of any invention must be unambiguously revealed in the application itself. A patent cannot rely on undisclosed properties, uses, or qualities for nonobviousness. The general rule is pungently restated in Justice Fortas’ aphorism that the patenting process does not confer a hunting license.
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Chapter 7 The Patenting Process 111 3 results
- The language of the claims should be descriptive and not functional. Functional language describes the invention’s effect on other things but fails to describe the invention itself. For instance, to claim a novel element, the claim must specify something about the invention that does not appear in the prior art. But if a claim simply states a new function or property, there is nothing new being claimed; it may well be a thing that is already in the prior art. If all that is claimed is a new function or property of something already in the prior art, such a claim would be barred by the rule prohibiting patents on newly discovered properties of old elements. New applications of known, even patented products, however, are not necessarily barred by that doctrine.
- as to violate the statutory command to describe with specificity. They should not be so narrow, however, that they give up what is legitimately the property of the inventor. Since the language of the claim is drafted by the inventor, or by her agents, she is bound by the language chosen. Thus, the claims and their language are strictly construed. The specification is the dictionary to which the courts refer when the language of the claim is questioned. The claim is thus read in light of the specification so that the same word is given the same meaning throughout the application.
- . The basis for the challenge, that the PTAB has no constitutional power to take property (a challenged patent) seems rather unpersuasive.
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- The development of a property right in the good will embodied in a trademark is the basis of modern expanded trademark rights and antidilution concepts. The rights in a trademark at common law were only those meant to prohibit confusion with respect to the origin of products. Therefore, those rights were very limited and were highly evanescent, since they could exist only with respect to the sale of particular products. The bar against ownership of trademark rights illustrated that trademark rights were not owned, as is typical of all other property rights, without respect to actual use.
- Thus, as courts sanctioned good will as a protectible feature of trademarks, the property interest in a trademark expanded. As that interest
- the common law limits of simple source confusion and, much like rights in one’s likeness, provide protection under a theory of misappropriation, thereby converting trademarks into property rights
- For instance, if consumers purchase shirts with alligators on them merely to have the alligator, it does not matter if a competitor markets an alligator shirt with a conspicuous disclaimer that they are only imitations. In this case, the owner has acquired a right in the mark itself, because the prohibition of the infringement does not prevent confusion so much as it prevents the marketing of similar marks. Confusion, if any, goes only to the mark and not to the product. In a sense, then, the requirement of confusion becomes collapsed into the element of similarity of mark. Such an expanded trademark theory elevates the trademark to a property interest. See
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- Under the new Act, the analog to the constitutional term “writings” is “works of authorship.” One issue is whether anything can qualify as a work of authorship beyond the notion of a writing. Because of the broad construction given the term “writing,” however, as “any physical rendering of the fruits of creative, intellectual or aesthetic labor,”
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Chapter 22 Infringement 379 2 results
- On the other hand, the simple title of a literary property is not subject to copyright protection—although it may be more than adequately protected under common law theories of unfair competition, misappropriation, or possibly even trademark law. For instance, in , the plaintiff sought to enjoin the defendant’s use of the title “Gold Diggers of Paris” as the title of a movie because the plaintiff owned the rights in a script entitled “The Gold Diggers.” The court denied the plaintiffs relief under copyright law, saying: “A copyright of a play does not carry with it the exclusive right to the use of the title.” However, it granted an injunction upon common law trademark grounds, since the title had acquired secondary meaning, the public having come to identify it with the plaintiff’s property. The possibility of public deception justified the relief.
- . Since literary properties consist basically of characters and sequence, it is necessary to identify the point at which either characters or sequence or a combination thereof become copyrightable.
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Chapter 23 Fair Use 395 1 result
- First Amendment claims sometimes are avoided by defining copyright as a property right, and therefore not subject to significant free speech defenses. In cases involving fraud or piracy, courts have dismissed defenses based on freedom of speech by noting that the defendants have no interest in speech and are exercising no right to communicate but, instead, are attempting to take the property of others.
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Chapter 4 Patentability—Utility 77 1 result
- . And, in fact, merely proving the utility of a new process may be insufficient if the result it produces is of no demonstrable utility. For instance, that a new chemical produced by an inventive process closely resembles another useful one is insufficient to patent the process or the chemical for it is impermissible to presume that the new chemical would have similarly useful properties.
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- Both of these theories, of course, are partially incomplete. The bargain theory denies any absolute right of the inventor to his productivity—he must accept the government bargain or have no protection at all. Likewise, the natural rights theory is inconsistent with the idea of a limited monopoly since, if the inventor has complete rights to the invention, it is not clear how the government can declare the invention public property after the patent expires.
- The natural rights theory has a very different emphasis. Under this theory, the product of mental labor is by right the property of the person who created it. Having all title to the invention, the inventor has no obligation to disclose anything and has every right to be compensated therefor. In order to obtain disclosure—and thus allow for other, later, inventors to build upon the earlier creation—the government assures an exclusive right to profit from the invention. This theory, too, is supported at least in part by the Constitution, since it mentions the “rights” of inventors and states that the advancement
- The theoretical arguments relating to natural rights also have great force in the continuing debate over the patent system. Critics argue that it serves only to increase the monopoly power of large corporations which receive the bulk of modern patents and that the government is failing to bargain sharply enough on behalf of its citizens. Supporters, however, pointing to the Constitution’s reference to “rights” of inventors, argue that inventors have a natural right to their inventions and that to shorten periods of exclusive rights or to stiffen the test of inventiveness is akin to a taking of the inventor’s property and is unjust.
- ..., patents granted under first-to-file provisions will be subject to prior user rights, enjoyed by those who, while failing to patent, nevertheless practiced the invention commercially one year prior to the application date. It is important to understand that American law does not require the patentee to put the patent into use or to allow others to do so. The first requirement, of putting the device to use, is called “working” the patent, a requirement with some historical meaning and considerable foreign patent law significance. The second requirement, of allowing others to use the patent, is called “compulsory licensing.” Like working, there is no absolute requirement in United States law of compulsory licensing (except, to a limited extent, for inventions achieved through government-funded research), but other aspects of the law, especially antitrust, may have the effect of obliging a patent owner to license others to use the patent. This rather absolute property right nature...
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- Because trademark rights never were considered to be property rights at common law except insofar as they actually were used in a particular commercial activity, the resolution of conflicting rights to the same trademark were and are determined, under common law, on the basis of both priority and market. The first user normally has priority but priority is measured and awarded only with respect to the market in which the first user conducted commercial activity. Since it was possible or even probable that a first user limited its commercial activity to only one area, it was not unusual for a second user to acquire rights in another area. With respect to that second area, the second user was, of course, actually the first user.
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Chapter 15 Trademark Practice 251 1 result
- . However, an apparent confusion between the use in commerce and use-in-trade requirements led the courts blindly to treat both as identical, without regard to the different results liberalization of each may have. This confusion was more understandable, however, upon examination of the Lanham Act itself, which, prior to the TLRA, defined use in commerce in terms confusingly similar to those that are relevant only to use in trade. Thus, although cases have minimized the interstate requirements, following the development of constitutional law generally, it seems to have gone unnoticed that to liberalize the use in trade requirement in a similar fashion had an extraordinary effect on the basis of the marks being registered, with respect to ownership, property, and common law issues generally.
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- Publication Date: June 1st, 2018
- ISBN: 9781634599023
- Subject: Intellectual Property
- Series: Nutshells
- Type: Overviews
- Description: Authors Michael Davis and famed Harvard professor Arthur Miller provide authoritative coverage on the foundations of patents, trademarks, and copyright laws. Authoritative treatment of all relevant doctrines and the latest statutory and judicial changes. Text further addresses relevant torts, property, antitrust, regulatory, and federalism intersections with intellectual property law.
