Mindmap of Intellectual Property
Updated September 5, 2012
Visiting Associate Professor of Law, Texas Tech University
OPEN ALL NODES
CLOSE ALL NODES
Intellectual Property
- + -
Charter-type
- + -
Copyright
- + -
Federal, state, and common-law authority
- + -
Exclusively federal for new works
- State law for sound recordings pre-1972
- With few exceptions, there has never been a common law of copyright infringement
- + -
History
- Trend of increasing scope of subject matter
- Trend of longer and longer duration
- Trend of decreasing formalities and requirements for protection
- + -
DMCA
- safe harbor
- anti-circumvention
- + -
What is copyrightable?
- + -
Categories of works
- + -
literary works
- includes software
- + -
includes just about everything you might think could possibly be included
- includes mindmaps, for instance
- musical works
- dramatic works
- pantomimes and choreographic works
- pictorial, graphic, and sculptural works
- motions pictures and other audiovisual works
- sound recordings
- architectural works
- + -
Fixation requirement
- must be fixed in a tangible form
- + -
Originality
- must have some minimal degree of creativity
- mere compilations of data are not copyrightable
- "sweat of the brow" theory rejected
- Expression (not ideas)
- + -
Not useful articles
- Not scenes-a-faire
- Not words or simple phrases
- + -
Exclusive rights
- to reproduce
- to prepare derivative works
- to distribute copies
- + -
to perform publicly
- only for literary, musical, dramatic, choreographic, and audiovisual works
- + -
to display publicly
only for literary, musical, dramatic, choreographic, pictorial, graphic, sculptural, and frames of audiovisual works
- to perform by means of digital audio transmission
- + -
Duration
- life of the author plus 70 years
- for corporate or unsigned works, 95 years
- + -
Public domain
- works published in the U.S. in 1922 or before
- works published before 1989 (or 1978) in the U.S. without proper notice
- U.S. federal government works
- note that derivatives of public domain works may not be in the public domain
- + -
Notice and formalities
- + -
registration
- not necessary for copyright to apply
- must register before filing suit
- registration within three months or before infringement permits fees and statutory damages
- + -
Infringement
- + -
Elements
- Copying
- Substantial appropriation
- + -
Proving copying
- Direct evidence
- + -
Indirect evidence
- Access
- Substantial similarity
- + -
Defenses
- + -
Fair use
- + -
the four factor test
- the purpose and character of the use
- the nature of the copyrighted work
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole
- the effect on the market for the copyrighted work
- + -
License
- + -
Statute of limitations
- three years
- application is somewhat complicated
- + -
Ownership and authorship
- Joint works
- Collective works
- + -
Works for hire
- + -
must qualify under one of two circumstances
- + -
employment
- created by an employee in the regular course of employment
- + -
commission, if both requirements met
- "work for hire" agreement in writing, signed by both parties
- + -
one of 9 categories of works
- collective work
- motion picture or other audiovisual work
- translation
- supplementary work
- compilation
- instructional text
- test
- answers to a test
- atlas
- + -
Assignment
- transfer, must be in a signed writing
- + -
Civil remedies
- + -
damages
- lost profits plus additional defendant's profits
- + -
stautory damages
- + -
neither willful nor innocent
- + -
willful
- + -
innocent
- fees and costs
- impoundment and destruction
- injunction
- + -
Criminal sanctions
- for purposes of commercial advantage or private financial gain
- over-threshold reproduction or distribution (>$1,000 in retail value w/in 180 day period)
- leaking work intended for commercial distribution
- + -
Patent
- + -
Utility
- + -
jurisdiction and governing law
- federal
- Patent Act of 1952
- Federal Circuit
- + -
rights
- to exclude others from making, using or importing the invention claimed
- NOTE: no right is granted to make or use
- + -
requirements
- + -
subject matter
- + -
35 USC 101
any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof
ISSUE: improvements and blocking patents
- + -
NOT:
- laws of nature
- natural phenomena
- naturally occurring species
- abstract ideas
- useless inventions
- inventions not reduced to practice
- + -
SOMETIMES:
- algorithims
- business methods
- useful
- + -
novelty
- + -
post March 15, 2013
- + -
35 USC 102 - entitled to patent unless:
+ -
(a) 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
- + -
pre March 16, 2013
- + -
35 USC 102 - entitled to a patent unless:
- someone else invented it first
- more complications ...
- + -
nonobviousness
- + -
35 USC 103(a)
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
- + -
enablement
- + -
35 USC 112
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. ...
- + -
duration
- 20 years from date of application
- previously, 17 years from date of issue
- + -
priority
- first to invent
- first to file
- + -
infringement
- + -
claims
- literal infringement
- + -
doctrine of equivalents
- + -
remedies
- reasonable royalties
- lost profits
- injunction
- + -
Design
- ornamental
- novel
- nonobvious
- + -
Plant
- asexually produced strain
- + -
Plant variety protection
- sexually produced variety
- Mask work
- Vessel hull design
- Geographical designation of origin
- Database protection
- + -
Tort-type
- + -
Trademark
- Federal, state, and common-law nature
- + -
Actions
- + -
Infringement / passing off
- Reverse passing off
- + -
Dilution
- + -
What is trademarkable?
- subject matter
- + -
distinctiveness
- arbitrary or fanciful
- suggestive
- + -
merely descriptive
- must have acquired secondary meaning
- generic
- non-functionality
- trade dress
- + -
Ownership
- The touchstone is use and source
- Priority
- Authorship irrelevant
- Only one owner per trademark
- + -
Establishing rights
- + -
Registration
- + -
Categories
- trademark
- service mark
- certification mark
- collective mark
- Principal and secondary register
- Intent-to-use
- Incontestibility
- + -
Infringement
- + -
Defenses
- Fair use
- Laches
- License
- Improper licensing
- Abandonment
- Genericide
- + -
Right of publicity
- + -
Governing law
- Common law or idiosyncratic state statutes
- + -
History
- Dates to the 1950s in its modern form
- Appeared as one of four branches of the right of privacy
- The right of privacy emerged as a tort around 1900
- + -
Blackletter statement
A person is entitled to the exclusive commercial use of one's name, image, likeness, voice, and other indicia of identity
- + -
Key limits on extent of doctrine
- First Amendment
- Copyright preemption
- Spinning, tweaking, selectively ignoring facts/doctrine
- + -
Duration
- Default: dies with plaintiff
- By statute, many states allow post-mortem claims
- Moral rights
- + -
Undeveloped ideas
- Breach of confidence
- Breach of fiduciary duty
- Fraud
- + -
Trade secret
- + -
Governing law
- Uniform Trade Secrets Act
- Common law in states without UTSA
- Federal criminal law
- + -
Requirements
- Actually a secret
- Subject to reasonable efforts to keep secret
- Used in business
- Independent economic value
- Value derives from secrecy
- + -
Examples
- Formula (including recipe)
- Method of manufacturing
- Device
- Technique
- Customer list
- Source code
- Computer algorithims
- + -
Duration
- So long as kept secret; potentially forever
- + -
Once the secret is out and the information is public knowledge, the trade secret ceases to exist
- It doesn't matter if the secret escaped becuase of wrongful action
- + -
Ownership
- Can be owned seperately by multiple parties, as long as each is keeping the secret
- + -
Action for misappropriation
- Secret used or disclosed to competitors or to the public
- + -
Wrongfully
- Through illegal means or through legal means that are unethical, deceitful, etc.
- Reverse engineering is not wrongful
- Independent invention is not wrongful
- + -
Comparison to patents
Patents necessarily involve public disclosure; trade secrets necessarily involve nondisclosure to public
Patentable inventions must meet threshold of nonobviousness; trade secrecy can protect obvious inventions, minor advances, mere information that is not an invention
- + -
Why is trade secret law necessary for the protection of secrets?
- + -
You can keep a secret without trade secret law
- Security
- Contract
- + -
Torts
- Breach of confidence
- Breach of confidential relationship
- Breach of fiduciary duty
- Fraud
- Trespass to land
- Trespass to chattels
- Battery
- Family
- Trust
- Incentives, equity
- Don't tell anyone
- + -
What trade secret law does that other law doesn't
- Allows injunctions against innocent third parties
- Criminal sanctions
- Trope function
- + -
Economic/societal impact
- Silicon Valley, software/internet industry
- Manufacturing industry
- Employment relations
- Use in litigation to keep documents from public scrutiny
- + -
Contract-type
- + -
Undeveloped ideas
- Breach of express contract
- Breach of implied-in-fact contract
- Breach of implied-by-law contract
- Trade secret
- Click-wrap and shrink-wrap agreements
Copyright 2008-2012
Eric E. Johnson. All rights reserved.
Konomark. Most rights sharable. If you would like to re-use, redistribute and/or modify this document without paying anything, go ahead and contact
me and ask. I am generally willing to share.