Suggested Additional Assignments
Research: Patents
Ask students to search the Patent and Trademark Office (PTO) database to locate two patented inventions,
one worthwhile and one frivolous. Students should prepare a brief description of each item and explain
why it is worthwhile or frivolous. The PTO’s searchable patent database is located at
http://www.uspto.gov/patft/index.html.
Research: Trademarks
Ask students to make up a name for a hypothetical product and then search to see if anyone else has a
trademark in that name. Their goal is to find a name that they could trademark. Searches are free on the
PTO’s Website: http://www.uspto.gov/.
How Recognizable is that Trademark
Ask students to bring to class a trademark from a product they own. It could be a label from a water or
soda bottle, a tag from a piece of clothing, or a label from a box, etc. Have the student cover up the brand
name. See how many students recognize the mark without seeing the brand name.
Research: Current Events
Have students choose a current event about an intellectual property issue in the news and describe the
issue to the class. What type of intellectual property is at the heart of the issue? Why is this issue
newsworthy?
Chapter Overview
Chapter Theme
Intellectual property is a major source of economic prosperity and individual wealth. New ideas increase
both productivity and pleasure. Where would we be, as a society, without intellectual property–patented
inventions, books, movies, computer software?
Patents
A patent is a grant by the government permitting the inventor exclusive use of an invention for 20 years
from the date of filing (or 14 years from the date of issuance in the case of design patents). During this
period, no one may make, use, or sell the invention without permission. In return, the inventor publicly
discloses information about the invention that anyone can use upon expiration of the patent.
Types of Patents
There are three types of patents: utility patents, design patents, and plant patents. A patent is not available
solely for an idea, but only for its tangible application.
Patents on Living Organisms. In 1980, the Supreme Court ruled that living organisms could be patented.
Requirements for a Patent
To receive a patent, an invention must be:
Novel
Nonobvious
Useful
Additional Case: State Street Bank & Trust Co. v. Signature Financial
Group, Inc.1
After the text went to print, State Street was overruled by In re Bilski, 2008 U.S. App. LEXIS 22479.
In State Street, the court held that a so-called “Hub and Spoke” computer software program that aided in
the administration of mutual funds was patentable because it produced “a useful, concrete and tangible
result.” The Bilski court, however, explicitly overruled State Street, holding that the “useful, concrete and
tangible result” is not sufficient. To be patentable, a process must either be tied to a particular machine, or
it must transform an article. The court referred to this standard as the “machine-or-transformation test.”
In Bilski, the applicants had tried to patent a method of hedging risk in the field of commodities
trading. For example, coal power plants purchase coal to produce electricity. The plants could suffer
financial disaster if the market price of coal increased dramatically. Conversely, coal mining companies
would be harmed financially if coal prices fell. The Bilski patent imagined a process whereby an
intermediary would buy and sell coal at fixed prices, thereby protecting the power plants and the mining
companies from market fluctuations. The intermediary manages its risk, and earns profits, by buying and
selling options to purchase coal. The appeals court ruled en banc that this process was not patentable
because it involved the purchase and sale of options, which are simply legal rights not involving the
transformation of any physical object or substance. In short, inventors can no longer patent a process that
simply involves thoughts.
Question: What is the likely impact of the Bilski case?
Question: What is likely to happen next?
Answer: It seems likely that the Supreme Court will have to resolve the scope and reach of business
method patents.
Patent Application and Issuance
To obtain a patent, the inventor must file a complex application with the PTO. If a patent examiner
determines that the application meets all legal requirements, the PTO will issue the patent.
Priority Between Two Inventors
When two people invent the same product, who is entitled to a patent—the first to invent or the first to
file an application? Until 2013, the person who invents and puts the invention into practice has priority
over the first filer. But in 2013, the AIA changes the law so that the first person to file a patent application
has priority.
Prior Sale
An inventor must apply for a patent within one year of selling the product commercially any place in the
world.
Duration
Patents are valid for 20 years from the date of filing the application (except design patents, which are
valid for 14 years from date of issuance).
Infringement
1 149 F.3d 1368, 1998 U.S. App. LEXIS 16869 United States Court of Appeals for the Federal Circuit,2
1998
A patent holder has the exclusive right to use the invention during the term of the patent. A holder can
prohibit others from using any product that is substantially the same, license the product to others for a
fee, and recover damages from anyone who uses the product without permission.
Patent Trolls
Due to a heavy workload, patent examiners sometimes issue patents for inventions that are not really new.
Traditionally this issue was not that important because companies with overlapping patents did not litigate
who the real inventor was. They were too busy developing products to sell. But then came patent trolls.
They are companies that do not make or market products, they simply buy portfolios of patents for the
purpose of bringing patent infringement claims against companies already using the technology.
International Patent Treaties
About half of all patent applications are filed in more than one country. Several treaties now facilitate this
process, although it is still not the one-stop (or one-click) effort that inventors desire. These treaties were
drafted by the World Intellectual Property Organization (WIPO) of the United Nations.
The Paris Convention for the Protection of Industrial Property (Paris Convention) requires each member
country to grant to citizens of other member countries the same rights under patent law as its own citizens
enjoy.
The Patent Law Treaty requires that countries use the same standards for the form and content of patent
applications (whether submitted on paper or electronically),
The Patent Cooperation Treaty (PCT) is a step toward providing more coordinated patent review across
many countries. Inventors who pay a fee and file a so-called PCT patent application are granted patent
protection in the 43 PCT countries for up to 30 months. During this time, they can decide how many
countries they actually want to file in.
The United States PTO has bilateral agreements with 16 other patent offices under a so-called Patent
Prosecution Highway. Under this system, once a patent is approved by one country, it goes to the head of
the line for patent examination in the other country. Finally, the European Union is in the process of
developing a single European patent that would require only one application.
Copyrights
The holder of a copyright owns the particular tangible expression of an idea, but not the underlying idea
or method of operation. The Copyright Act protects literature, music, drama, choreography, pictures,
sculpture, movies, recordings, architectural works, and computer databases, and computer programs “to
the extent that they incorporate authorship in the programmer’s expression of original ideas, as
distinguished from the ideas themselves.” A work is copyrighted automatically once it is in tangible form.
Copyright Term
A copyright is valid until 70 years after the death of the work’s only or last living author, or, in the case of
works owned by a corporation, the copyright lasts 95 years from publication or 120 years from creation,
whichever is shorter.
Infringement
Anyone who uses copyrighted material without permission is violating the Copyright Act. To prove a
violation, the plaintiff must present evidence that the work was original and that either:
The infringer actually copied the work, or
The infringer had access to the original and the two works are substantially similar.
Example
Most Americans are familiar with the legal debate over the college students who ran a website that
permitted fellow students to share copyrighted music files.
Question: Why is this activity illegal?
Question: What is the harm in copying a few songs off the Internet?
Answer: In this case, it is more than a few songs. But, no matter how many, it is still illegal. He is
Question: What is the harm? Record companies make so much money anyway.
Answer: If record companies do not make money and recording artists are not paid, there will be
Case: Lapine v. Seinfeld 2
Facts: Missy Chase Lapine wrote a book called The Sneaky Chef: Simple Strategies for Hiding Healthy
Foods in Kids’ Favorite Meals, which was about how to disguise vegetables so that children would eat
them. Her strategy was to add pureed vegetables to food that children like, such as macaroni and cheese.
(We are not making this up). Four months later, Jessica Seinfeld, wife of comedian Jerry Seinfeld,
published a book entitled Deceptively Delicious: Simple Secrets To Get Your Kids Eating Good Food,
which featured recipes involving pureed vegetables in (guess what?) macaroni and cheese and other
kid-friendly foods.
Lapine filed suit against Seinfeld, alleging violation of her copyright in the content of the book as well as
her trademark in the name and cover design. The district court granted Seinfeld’s motion for summary
judgment and Lapine appealed.
Issue: Did Seinfeld violate Lapine’s copyright and trademark in The Sneaky Chef?
Excerpts from the Decision of the Court:
Copyright Infringement
Plaintiffs assert that the two works are substantially similar in their unique and innovative expression of
the idea of sneaking vegetables into children’s food by means of a cookbook containing comprehensive
instructions for making and storing a variety of vegetable purees in advance, and then using the purees in
specially created recipes for children’s favorite foods. We are not persuaded.
Stockpiling vegetable purees for covert use in children’s food is an idea that cannot be copyrighted. 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. It is a fundamental principle of our copyright
doctrine that ideas, concepts, and processes are not protected from copying.
Further, to the extent the two works have general and abstract similarities — including their vaguely
similar titles and inclusion of illustrations of prepared dishes, health advice, personal narrative,
descriptions of how to make purees, instructions for preparing dishes, and language about children’s
healthy eating — the district court correctly concluded that these elements do not raise a fact issue for trial
because they are “scenes a faire,” or unprotectible elements that follow naturally from the work’s theme
rather than from the author’s creativity.
Our independent comparison of the two cookbooks confirms that the total concept and feel of Deceptively
Delicious is very different from that of The Sneaky Chef. Deceptively Delicious lacks the extensive
discussion of child behavior, food philosophy, and parenting that pervades The Sneaky Chef. Unlike The
Sneaky Chef, which uses primarily black, gray, and shades of brownish orange, Deceptively Delicious
employs bright colors and more photographs. While The Sneaky Chef assumes greater familiarity with
2 375 Fed. Appx. 81; 2010 U.S. App. LEXIS 8778 United States Court Of Appeals For The Second Circuit, 2010.
cooking, recommends 13 methods for hiding healthy foods, and provides recipes for multiple-ingredient
purees, Deceptively Delicious instructs readers about only single-ingredient purees and contains
more basic instructions.
Plaintiffs correctly note that no plagiarist can excuse the wrong by showing how much of her work she
did not pirate. Like the district court, we nevertheless conclude as a matter of law that the two cookbooks
lack the substantial similarity required to support an inference of copyright infringement.
Trademark Infringement
Having considered the overall impression on a consumer and the context in which the competing marks
are displayed, we reach the same conclusion as the district court: the marks are not confusingly similar.
Defendants’ depictions of a winking woman holding brownies near carrots or simply “shushing” are very
different from plaintiffs’ considerably less detailed and less colorful image of a female chef winking and
“shushing” while holding carrots behind her back. Further, defendants’ use of the famous “Seinfeld” name
reduces any likelihood of confusion regarding the marks. In sum, like the district court, we conclude that
dissimilarity of the marks is dispositive.
Question: Did the court find copyright infringement and/or trademark infringement?
Question: What were some of the courts reasons?
Answer: Recipes for vegetable puree cannot be copyrighted and the look and feel of the two
First Sale Doctrine
The first sale doctrine permits a person who owns a lawfully made copy of a copyrighted work to sell or
otherwise dispose of the copy.
Fair Use
The fair use doctrine permits limited use of copyrighted material without permission of the author for
purposes such as criticism, comment, news reporting, scholarship, or research.
Parody
Parody is permitted under copyright law as long as it does not use an excessive amount of the original.
Nor may the parody harm the market for the original. Below is a summary of the United States Supreme
Court decision explaining why parody may be considered a fair use.
Additional Case: Campbell v. Acu+-Rose Music, Inc., 3
Facts: Acuff-Rose filed suit against the members of a rap group, 2 Live Crew and their record company,
claiming that 2 Live Crew’s song “Pretty Woman” infringed Acuff-Rose’s copyright in Roy Orbison’s song
“Oh Pretty Woman.” The District Court granted summary judgment for 2 Live Crew holding that the
song was a parody and thus a fair use of the copyrighted work. Acuff-Rose appealed and the appellate
court reversed, holding that because the 2 Live Crew song was used for a commercial purpose, it is
presumptively unfair, and because Campbell used so much of the original work in its work, the group had
taken too much of copyrighted work. The United States Supreme Court granted certiorari.
Issue: Is the parody a fair use of the original work?
Decision: Appellate decision reversed and remanded. The Copyright Act of 1976 indicates that there are
allowable fair uses of copyrighted work, such as uses for criticism, comment, news reporting, and
teaching. The Act also states that four factors must be weighed in determining whether a use of a
3 510 U.S. 569, 114 S.Ct. 1164, 1994.
copyrighted work constitutes a fair use. The four factors are 1. the purpose and character of the use; 2.
the nature of the copyrighted work; 3. the amount of the copyrighted work used; and 4. the effect of the
use on the market for the copyrighted work.
According to the court, parody, like other comment and criticism may claim fair use. Under the first
factor, the focus is on whether the new work merely replaces the original work, or whether the new work
is a new “transformative” work, inserting new meaning and expression. The more transformative the new
work, the less important the commercial nature of the new work is considered. For parody in particular,
the heart of any parodist’s claim to quote from existing material is the use of some elements of an original
work to create a new work that comments on that author’s work. Here, 2 Live Crew juxtaposes “the
romantic musings of a man whose fantasy comes true” with degrading lyrics, a demand for sex, and relief
from paternal responsibility. The words can be taken as a commentary of the original, as a rejection of its
sentiment that ignores the “ugliness of street life and the debasement that it signifies.” This marriage of
reference and ridicule is the hallmark of parody that traditionally has enjoyed fair use protection as a
transformative work. According to the Court, the transformative nature of 2 Live Crew’s work should be
balanced against the commercial use of the work. Commerciality does not mean a presumptively unfair
use, to so hold would “swallow nearly all of the illustrative uses listed in the preamble” of the Act.
The third factor asks whether the amount of the original work used is reasonable in relation to the
purpose of the copying. The court agreed that the extent of the copying depends on the purpose of the
copying. According to the Court, parody presents a difficult case because parody’s commentary stems
necessarily from a recognizable reference to the original work. Thus, a parodist may use the most
recognizable parts of the original in its own parody of that original, but the context of the use is
important. According to the court, 2 Live Crew copied the characteristic opening bass riff of the original
and the words of the first line of the original. However, although those are the most recognizable portions
of the original, the group also departed significantly from the original lyrics, and otherwise produced
distinctive sounds, and overlaying the music with solos in different keys.
More Facts
When the owners of the Pretty Woman copyright sued 2 Live Crew, the group’s first inclination was to
withdraw the parody. The Capitol Steps, however, wanted the courts to establish once and for all that
parody is a protected form of speech. To persuade the Supreme Court to grant certiorari, the Capitol Steps
prepared an audiotape history of political parody in the United States. There is some evidence that this
tape was indeed influential in persuading the Supreme Court to grant certiorari.
If a recording of the Capitol Steps singing God Bless My SUV is no longer available from their
website (http://www.capsteps.com/), I can e-mail the MP3 file to any faculty using this text. My e-mail
address is ssamuels@bu.edu. Both the Roy Orbison and the 2 Live Crew versions of Pretty Woman are
available on http://www.benedict.com/ and can be purchased as singles from the iTunes Music Store.
General Questions:
Did 2 Live Crew and the Capitol Steps make excessive use of the original recordings?
Did they harm the market for the original?
Should Roy Orbison be allowed (if he were alive) to prevent 2 Live Crew from using his
material to mock women? What if he finds this material offensive?
Digital Music and Movies
In 2008, 40 billion songs were downloaded illegally, which is as much as 95 percent of all downloaded
music! Government and industry are striking back. The Prioritizing Resources and Organization for
Intellectual Property Act (Pro-IP) permits law enforcement officials to confiscate any equipment used to
steal copyrighted material.
Case: Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, LTD.4
Facts: Grokster, Ltd., and StreamCast Networks, Inc. distributed free software that allowed computer
users to share electronic files through peer-to-peer networks. The Grokster and StreamCast software could
be used for legal purposes, such as sharing non-copyrighted files. Nonetheless, nearly 90 percent of the
files available for download through Grokster or StreamCast were copyrighted. Billions of files were
shared each month. The two companies encouraged illegal use of their software.
A group of copyright holders sued Grokster and StreamCast alleging that they were violating the
copyright law. Both parties moved for summary judgment. The trial court held for Grokster and
StreamCast; the appeals court affirmed. The Supreme Court granted certiorari.
Issue: Were Grokster and StreamCast violating copyright law?
Holding: Judgment for Grokster and StreamCast reversed. Anyone who distributes a device for infringing
copyrights is liable if:
the distributor intends to promote the infringement of copyright law, and
there is actual infringement by recipients of the device.
This file sharing software is fostering disdain for copyright laws. It is impossible to enforce rights in
copyrighted works by going against all the direct infringers (those who use the software). The only
practical option is to go after the distributor of the software.
Question: What is a peer-to-peer network?
Question: Is there any legitimate use for a peer-to-peer network?
Question: Then why would it be illegal to use the peer-to-peer software?
Question: Is that what Grokster and the other defendants did?
Answer: Yes. They not only failed to filter copyrighted material they even helped users find it. Of
Question: Is intent to violate the law enough to create liability?
Question: Why didn’t the court just tell the plaintiffs to go after those users who were directly
infringing copyright law?
Question: What’s wrong with downloading music or movies for free? Everyone does it.
Answer: It’s illegal. Music and movies cost money to create and distribute. If no one pays for them
Question: When you graduate from school, would you like to go to work in industry where much or
all of the product is stolen?
4 125 S. Ct. 2764; 2005 U.S. LEXIS 5212 Supreme Court of the United States, 2005
The No Electronic Theft Act
Enacted in 1997, the No Electronic Theft Act is intended to deter the downloading of copyrighted
material. It provides for criminal penalties for the reproduction or distribution of copyrighted material that
has a retail value greater than $1,000, even if the offender has no profit motive.
The Family Entertainment and Copyright Act
Under the Family Entertainment and Copyright Act, it is a criminal offense to use a camcorder to film a
movie in the theater.
The Digital Millennium Copyright Act
The Digital Millennium Copyright Act (DMCA) provides that:
It is illegal to delete copyright information, such as the name of the author or the title of the
article.
It is illegal to circumvent encryption or scrambling devices that protect copyrighted works.
It is illegal to distribute tools and technologies used to circumvent encryption devices.
Online service providers (OSPs) are not liable for posting copyrighted material so long as they
are unaware that the material is illegal and they remove it promptly after receiving notice that it
violates copyright law.
International Copyright Treaties
The Berne Convention requires member countries to provide automatic copyright protection to any works
created in another member country. The WIPO Copyright Treaty and the WIPO Performances and
Phonograms Treaty add computer programs, movies, and music to the list of copyrightable materials.