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

3. Today’s Topics Useful Articles Government Works
Ownership (Works for Hire)

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

5. 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 ….”

6. 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.”

7. 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”.

8. 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

9. IDSA Award Winners

10. Design Elements

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

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

17. Carol Barnhart

18. Conceptual separability test
Judge Newman test (Carol Barnhart dissent): object stimulates a conception that is separate from its utilitarian function . . .”
Too “ethereal”?

19. 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 . . .

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

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

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

23. Form and function . . .

24. Kieselstein: Belt Buckles

25. 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?

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

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

28. 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.

29. 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]

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

31. 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

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

33. Reid and CCNV

34. James Reid

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

36. 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.

37. 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.

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

39. 4 tests Hiring party retains right to control
Hiring party wields actual control
Common law, agency law meaning
Only formal, salaried employees

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

41. [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;

42. [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;

43. [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;

44. [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).