COPYRIGHT LAW 2002: CLASS 3 Professor Fischer Columbus School of Law The Catholic University of America January 14, 2002

Differences Between Copyright and Other Intellectual Property Other than copyrights, what other forms of intellectual property are there?

DIFFERENCES BETWEEN COPYRIGHTS AND OTHER FORMS OF INTELLECTUAL PROPERTY Patent Law (e.g. Bell v. Catalda (2d Cir. 1951) -- CB p. 52 Trademark Laws (e.g. Frederick Warne v. Book Sales, Inc. (S.D.N.Y. 1979)) -- CB p. 65 Trade Secrets

Patents Protect inventions - right to exclude others from making, using, offering for sale, or importing Art. 1 section 8 of the U.S. Constitution - “promote the Progress of Science, and useful Arts, by securing for limited Times to.. Inventors the exclusive Right to their.. Discoveries” Patent Act (35 U.S.C. s. 1 et seq.)

REQUIREMENTS FOR PATENTABILITY Novelty Usefulness Non-obvious to people with ordinary skill in the art REMEMBER: Catalda case

TYPES OF PATENTS Utility (20 years) Design (14 years) Plant (20 years)

STATUTORY BAR S. 102 of the Patent Act A patent will not be granted to an applicant unless the application is filed less than one year from the date that the invention was sold or offered for sale within the United States. The patent will be denied unless the application is filed within one year of the date the invention was described in a printed publication anywhere in the world

HOW DO YOU GET A PATENT? File a patent application Pay a Fee Specification and claims (see s. 112) PTO examination of the patent Getting a patent is expensive and time consuming compared to getting a copyright!

What’s a Trademark? A trademark is any symbol, such as a word, number, picture, or design, used by manufacturers or merchants to identify their own goods and distinguish them from goods made or sold by others.

TRADEMARKS The law of consumer marketing Protects brands from unauthorized confusing use by others Not because they are especially creative or novel But because they signify a single source of a product and a consistent level of quality to customers Protects reputation and goodwill - relates to use, not invention or authorship: non- intellectual intellectual property

Examples of Trademarks Not all marks treated alike Arbitrary, fanciful, suggestive, descriptive, generic marks

History of Trademarks Trademarks are a product of the industrial revolution.

Legal Protection for Trademarks Under U.S. Law A patchwork of protection under federal law, state law, and common law. Federal: Lanham Act of 1946 Benefits of Federal Registration

Federal Trademark Registration U.S. Patent and Trademark Office (Department of Commerce) Requirements: 1. actual use in commerce; (2) sufficiently distinctive; (3) not confusingly similar to another federally registered trademark "Intent to Use Registration" What is the duration of protection for a federally registered trademark?

Duration of Federal Protection for Registered Trademarks 20 years, renewable, so long as mark is not abandoned and is properly used. TM, 

Trademark Infringement Any seller who uses a mark so similar to a registered trademark that it is likely to cause customer confusion is an infringer and can be sued in a state or federal court (depending on other jurisdictional rules) Remedies include injunctive relief, damages Trademark Owners Must Be Vigilant in Enforcing Trademark Rights – Otherwise Risk of Abandonment

Assignments and Licenses of Trademarks A trademark is often a valuable property of a seller or manufacturer, because it is the symbol of the company's goodwill and of its products and services. Thus, a trademark can be sold or assigned when a company and its assets are sold. It can also be licensed to others to use as long as the owner exercises control over the quality of goods or services supplied by the licensee

TRADE SECRETS Protect secret technologies or formulas

Alfred Bell & Co. v. Catalda (2d Cir. 1951) Who were the plaintiffs? What did they seek copyright protection for? Were the plaintiffs’ works “original” enough to be copyrightable as “Writings of Authors”, according to Justice Frank? Did it matter that they were copies of public domain works? Do you agree? Why or why not?

In Bell v. Catalda, Justice Frank stated: “A copyist’s bad eyesight or defective musculature, or a shock caused by a clap of thunder, may yield sufficiently distinguishable variations [to be considered original enough to be copyrighted]. Having hit on such a variation unintentionally, the “author” may adopt it as his own and copyright it.”

Question At p. 56 the authors of your casebook ask (Question 3) whether it would make any difference if the engraving at issue in Bell v. Catalda was based on a copyrighted painting, not a public domain old master. What provision of the Copyright Act of 1975 assists you?

Another Originality Question Jane writes a song. Jane never plays her song for anyone else, and consequently Emma has never heard Jane’s song. Suspend credulity and imagine that Emma writes a song that is identical to Jane’s. Is Emma’s song copyrightable?

Learned Hand “...[I]f by some magic a man who had never known it were to compose anew Keats’ Ode On a Grecian Urn, he would be an “author,” and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats.” Sheldon v. MGM, 81 F.2d 49, 54 (2d Cir. 1936), aff’d, 309 U.S. 390 (1940)

Authorship What if a Dr. Know-It-All, a famous scholar explores the stacks of various libraries and archives, and finally, after huge effort, finds a Shakespeare manuscript that has never been discovered? Can Dr. Know-It-All copyright the manuscript?

Exact Copies Arthur, a forger, creates an exact reproduction of Rembrandt’s 1629 Self Portrait. Experts cannot distinguish Arthur’s copy from the original Is Arthur an “author” for the purposes of copyright?

ORIGINALITY REQUIREMENT Can we reconcile Bleistein, Catalda, and Burrow-Giles tests for originality? Remember: “Writings” of an “Author” in U.S. Constitution Article 1 section 8

COPYRIGHTABILITY Originality requirement (“original works of authorship” 17 U.S.C. s. 102(a) Fixation requirement (“fixed in a tangible medium of expression”) 17 U.S.C. s. 102 (a)

COPYRIGHTABILITY: ORIGINALITY REQUIREMENT See 1976 Act section 102 “Original works of authorship” “Fixed in any tangible medium of expression” Include categories (1)-(8) what other things are copyrightable that are not in this list? Do these categories overlap?

Magic Marketing v. Mailing Services of Pittsburgh (1986) What is the issue in this case? What procedural stage has this action reached? Why is that significant? What is the holding? What is the reasoning of the court? Do you think this case was correctly decided? Why or why not?

LABELS/SLOGANS To what extent is the label on my Poland Spring water bottle copyrightable?