1. Useful Articles, Works for Hire Intro to IP – Prof Merges 2.9.12

2. Today’s Topics Review: Levels of Abstraction Useful Articles Government Works Ownership (Works for Hire)

3. Levels of Abstraction Test Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930)

4. Upon any work … a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times may consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘‘ideas’’ to which, apart from their expression, his property is never extended.

5. Mazer v. Stein: Lamp Base/Statue may be copyrighted

6. Pictorial, Graphic & Sculptural Works [PGS] – Sec. 101 Includes “two dimensional and three dimensional works of fine, graphics, and applied art, … 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 ….”

7. PGS works (cont’d) “…the design of a useful article … shall be considered a [PGS] work only if, and only to the extent that, such design incorporates [PGS] features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

8. Sec. 101: “Useful article” A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”.

9. Applied art vs. “industrial design” Applied art: hood ornament; cartoon character figures attached to a product; separate, decorative elements of commercial products Industrial design: sleek and comfortable pen or kitchen appliance; sports car design

10. IDSA Award Winners

11. Design Elements

12. Brandir Int’l v. Cascade Pacific Physical separability: Mazer; hood ornament “Conceptual separability” – what does this mean in practice?

16. ' RIBBON' and the Brandir International Inc. logo are trademarks of Brandir International Inc. used exclusively by A A A RIBBON Rack Co.

18. Carol Barnhart

19. Carol Barnhart holding Shirt mannequins are purely utilitarian Not copyrightable subject matter

20. Conceptual separability test Judge Newman test (Carol Barnhart dissent): “[O]bject stimulates a conception that is separate from its utilitarian function...” Too “ethereal”?

21. Commercial market “test” If a work is mass produced, and sold for a useful purpose, it is not copyrightable... Problems: Shuts down market for “applied art”? Salvador Dali ties; Picasso trash cans...

22. Denicola Test “Industrial design process” – Height, bends, and material – all utilitarian – Compare: ties and waste basket...

23. P. 468 – Ipnta 5 th ed. “[I]t is in its final form a work of industrial design...”

24. “Form and function are inextricably intertwined in the rack...” -- p. 468 Of course, this is the essence of much of modern design: Form follows Function!

25. Form and function...

26. Kieselstein: Belt Buckles

27. Dissent: Judge Winter Purely fortuitous events dictate the outcome under the Brandir test – What if “aesthetic” sculpture happened to coincide with good dimensions for a bike rack?

28. Update: Batmobile case DC Comics v. Towle, C.D. Cal., No. 2:11-cv-03934-RSWL-OP, 1/26/12

30. Fashion Design Debate Kal Raustiala and Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1687 (2006). C. Scott Hemphill & Jeannie Suk, The Law, Culture, and Economics of Fashion, 61 Stan. L. Rev. 1147 (2009)

31. Government Works Statutes, case law, regulations Idea/Expression merger here? Government contractors’ works: case by case

32. Ownership Patent vs. Copyright Copyright “vests initially in the author or authors of the work.” Section 201 Patent: same

33. Section 201(b) (b) Works Made for Hire. — In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

34. Definition of “work for hire” – sec. 101 (1) a work prepared by an employee within the scope of his or her employment; or (2)... Specially ordered or commissioned [in certain categories]

35. “Scope of employment” Very similar to invention ownership rules For patents: Typically governed by contract, BUT default rules apply where no contract

36. Patent Ownership “Hired to invent” – employer owns Related to employer’s business, made with employer’s resources: employer may have “shop right” to use invention, but employee owns Unrelated to employer’s business, made with employee resources: employee owns

37. Robert P. Merges, The Law and Economics of Employee Inventions, 13 Harv J L & Tech 1 (1999) Explaining patent ownership rules

38. Reid and CCNV

39. James Reid

41. Work for Hire (WFH) Two major categories 1. Employee works 2. Specially commissioned works in nine certain specific fields

42. A “work made for hire” is — (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

43. A “work made for hire” is — (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a (1) part of a motion picture or (2) other audiovisual work, as (3) a translation, as (4) a supplementary work, as (5) a compilation, as (6) an instructional text, as (7) a test, as (8) answer material for a test, or (9) as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

44. CCNV v Reid 4 tests on operation, pp. 491-92 Ipnta 5th Control vs. “agency” Court takes “common law agency” view

45. 4 tests Hiring party retains right to control Hiring party wields actual control Common law, agency law meaning Only formal, salaried employees

46. General Supreme Court approach “Congress intended to describe the conventional master-servant relationship as understood by common-law agency doctrine....” – Ipnta 5 th 492.

47. [W]e consider the hiring party’s right to control the manner and means by which the product is accomplished. Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools;

48. [L]ocation of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party;

49. [T]he extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business;

50. [T]he provision of employee benefits; and the tax treatment of the hired party. See Restatement [of Agency] §220(2) (setting forth a nonexhaustive list of factors relevant to determining whether a hired party is an employee).