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Friday, April 16, 2004
Basic IP Questions
Please feel free to tell me that these can wait until the review session - but yes/no or really short answers are fine...thanks!
- (1) can you patent business methods? (I have conflicting information in my notes about this - at one point it was a judicially created exception to patentable subject matter, but now it is allowed?)
- (2) what exactly is the relationship between copying, improper appropriation, and substantial similarity for infringement?
- (3) what are the different rights that come into play for sound recordings and musical compositions - I know the rights are separable, but is the major difference just compulsory licensing?
- (4) is the focus on the patent enablement requirement just the prevention of undue experimentation?
- (5) for patent infringement, the analysis is claim by claim - just have to show all the elements (or equivalents) of a claim were present in potentially infringing device? So then does that infringing device simply have to get rid of that one claim and can keep everything else or is the whole product worthless?
- (6) for TM, geographically misdescriptive is okay with secondary meaning but geographically deceptively misdescriptive is not?
- (7) why does product design need secondary meaning and why can't it be inherently distinctive (I'm thinking of the classic coke bottle - but is that considered secondary meaning...it's not functional, right?)
Posted by Holly Fernandez on April 16, 2004 at 10:32 PM in Questions | Permalink
Comments
I think the quick ones to answer are:
(1) yes
(6) yes
(7) the bottle in this case is most likely the package (the drink is the product)
Now, my own questions:
(8) Why did the court have to resort to "fair use" in the Lewis Galoob case? Infringement requires a copy. 17 USC 101 requires "copy" to be "fixed" and "fixed" does not include "transitory". So, in this case, it seems that there was not even a copy, so there was no infringement, so the fair use doctrine was not needed. Same result, different reasoning.
(9) Who owns the script from Anderson v. Stallone? Anderson has no copyright since it was a derivative work of Stallone's Rocky. But Stallone should not have a copyright on it since: (a) 106 only gives him the exclusive right to make derivative works (and he did not make this work) and (b) 103 says that the derivative work can be copyrighted only to the extent that he created it. This seems intuitively correct, since someone who is not the actual author should be able to copyright a work. Thus, it seems that while Stallone can exclude anyone from making or using a derivative work, he does not actually own the copyright to that derivative work, and in fact nobody does. That is why he (and only he) can use it even though Anderson created it.
Any thoughts?
Also, I cannot make it to the review session. Thanks
Posted by: Larry Zelson at Apr 18, 2004 12:34:43 PM
[1] Yes.
[2] Copyright infringement requires copying + improper appropriation. Copying refers to the actual 'copying' of the copyrighted work - circumstantial evidence of this requires access + substantial similarity. Improper appropriation considers whether the copying is impermissible: again on the basis of whether the allegedly-infringing copy is 'substantially similar' to the original work.
[3] Yes. The primary differences are {a} that musical compositions are subject to a compulsory license and {b} there is a much lesser public perforamnce right for sound recordings. See pages 371-72 of the book for the full details.
[4] No. The enablement requirement is a basic requirement for patentability, and requires that patents must describe the invention in sufficient detail such that a PHOSITA could make or use the invention without undue experimentation.
[5] Patent infringement requires that each element of a claim be present (literally or equivalently). So a device that contains all the claim elements will infringe -- regardless of whether it also contains additional elements. A device that contains 'all but one' of the claim elements will not infringe.
[6] Yes.
[7] The Supreme Court thinks that product design is less entitled to TM protection than packaging -- largely for competitive reasons and because you can get patent protection for product designs.
[8] A couple of points: (a) recall that the courts don't think that the fixation of electrons in a computer is transitory; and (b) in Galoob, the display on the screen is the relevant 'copy'.
[9] The court holds that Anderson has no copyright, and impliedly holds that there isn't a 'copyright'. But as a practical matter, Stallone 'owns' Anderson's work: only Stallone can use Anderson's treatment, and Anderson can't stop him. So you might say that, in effect, the copyright law has granted Stallone the de facto copyright over Anderson's treatment.
Posted by: Polk Wagner at Apr 18, 2004 4:28:30 PM
