Intellectual property : examples & explanations / Stephen M. McJohn.
2012
KF2980 .M42 2012 (Map It)
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Details
Author
Title
Intellectual property : examples & explanations / Stephen M. McJohn.
Published
New York : Wolters Kluwer Law & Business, [2012]
Copyright
©2012
Call Number
KF2980 .M42 2012
Edition
Fourth edition.
ISBN
9781454803324
1454803320
1454803320
Description
xxiv, 571 pages ; 26 cm.
System Control No.
(OCoLC)779530111
Bibliography, etc. Note
Includes bibliographical references and index.
Record Appears in
Variant Title
Intellectual property : examples and explanations
Gift
Purchased from the income of the Edith L. Fisch Fund
Gift
The Arthur W. Diamond Law Library
Purchased from the income of the Edith L. Fisch Fund
Table of Contents
Preface
xxiii
ch. 1
The Contours of Intellectual Property Law
1
Copyright
2
Patent
3
Trademark
4
Trade Secret
5
pt. I
COPYRIGHT
7
ch. 2
Subject Matter: Creative Expression, "No Matter How Humble, Crude, or Obvious"
9
Justifications for Copyright Law
11
Economic Bases for Copyright
11
Philosophical Justifications for Copyright
14
The Legal Structure of Copyright
15
Originality
17
Independent Creation
18
A Minimal Spark of Creativity
22
New Works (Especially Factual Works, Compilations, and Derivative Works) May Incorporate Nonoriginal Elements
26
Copyright Estoppel
28
Copying Unprotected Material Is Not Infringement
29
Work of Authorship
41
Categories of Works
48
Literary Works
48
Musical Works, Including Any Accompanying Words
50
Dramatic Works, Including Any Accompanying Music
51
Pantomimes and Choreographic Works
51
Pictorial, Graphic, and Sculptural Works
52
Motion Pictures and Other Audiovisual Works
53
Sound Recordings
53
Architectural Works
54
Compilations (Works Created by Assembling Other Works or Information) and Derivative Works (Works Based on Existing Works) Are Also Copyrightable
56
Compilations
56
Derivative Works
57
Fixation
58
ch. 3
Excluded Subject Matter: Ideas, Functional Aspects, Infringing Material, Government Works
69
Ideas and Functional Aspects
69
Idea v. Expression: The Abstractions Test
73
Functional Aspects of Works
85
Instructions and Rules
88
Software
91
Useful Articles
97
Infringing Works
101
Government Works
103
ch. 4
Obtaining Protection and Licensing: Ownership, Formalities, Duration
109
Initial Ownership of Copyright
109
Who Is the Author?
111
Individual Works
111
Works Made for Hire
112
Joint Authors
120
Collective Works
123
Ownership of Copyright Distinguished from Ownership of Material Object
126
Copyright as Property: Licensing, Recordation, Termination, and Common Law
128
Licensing
128
Selling the Copyright
129
Exclusive Licenses
129
Nonexclusive Licenses
130
Formalities
131
Open Source Licenses and Free Software ("Think Free Speech, Not Free Beer")
136
Recordation
138
Termination of Transfers and Licenses Granted by Author
139
Copyright as Personal Property
141
Formalities: Copyright Notice, Deposit, and Registration
144
Copyright Notice
145
Works Published Between 1909 and Dec. 31, 1977
145
Works Published Between Jan. 1, 1978, and Feb. 28, 1989
147
Works Published After March 1, 1989
148
The Limited Information in a Copyright Notice
148
Form of Notice
149
Registration
150
Deposit
151
Restoration of Lost Copyrights for Foreign Authors
152
Period of Protection
157
Bring Back Formality Requirements?
159
ch. 5
Exclusive Rights: Their Enforcement and Limitations
161
Exclusive Rights of the Copyright Owner
162
Reproduction Right
162
Volition or Causation
163
Actual Copying
163
Misappropriation
165
Substantial Similarity
166
The DRAM Issue: Is a Temporary Copy Inside a Computer a Potentially Infringing Copy?
166
Adaptation Right
168
To Distribute Copies or Phonorecords of the Work to the Public
170
To Perform the Work Publicly
172
Collective Rights Organizations
173
To Display the Work Publicly
174
Section 106A: Moral Rights in Works of Visual Art
175
Walter's Grand Slam: A Quick Review of the Exclusive Rights
179
Digital Rights Management: Protection for Anti-Copying Technology, Anti-Access Technology, and Copyright Management Information
186
Limitations on the Exclusive Rights
193
Fair Use
193
Summing Up Fair Use
196
First Sale
206
Limits on First Sale Rights in Sound Recordings and Computer Programs
210
Copyright Holders May Seek to Limit First Sale Rights
212
First Sale and Digital Works
214
First Sale and Importation
215
Compulsory License for Nondramatic Musical Works
217
Limitations on Exclusive Rights in Computer Programs
217
Other Limitations on the Exclusive Rights
218
Contributory Infringement and Vicarious Liability
221
Immunity for Internet Service Providers
223
Remedies
225
pt. II
PATENT
229
ch. 6
Patentable Subject Matter: Products and Processes
231
Categories of Patentable Subject Matter
233
Processes
234
Products
235
Machine
235
Manufacture
236
Composition of Matter
236
Improvements (Herein of Blocking Patents)
237
Excluded Subject Matter
242
Laws of Nature
243
Physical Phenomena (and Biotechnology Patents)
243
Abstract Ideas (Herein of Mathematics, Computer Software, and Business Methods)
246
Immoral Inventions, Human Beings, Tax Strategies, Atomic Weapons, and Medical Procedures
249
ch. 7
Substantive Standards for Protection: New, Useful, and Nonobvious Inventions
261
"New": Novelty and Loss of Right
263
Novelty
264
Anticipation ([§] 102(a), (e))
264
Derivation ([§] 102(f))
269
Priority ([§]102(g))
270
Loss of Right ([§]102(b))
271
"Useful": The Requirement of Utility
282
Nonobviousness
287
The Scope and Content of the Prior Art
288
Differences Between the Prior Art and the Claims at Issue
289
The Level of Ordinary Skill in the Pertinent Art
289
Obvious or Not?
290
ch. 8
Obtaining Protection, Ownership, and Licensing: Of Hoops and Pitfalls
299
The Patent Application and Examination
300
Written Description Requirements
304
Written Description
304
Enablement
305
Best Mode
307
The Claims
311
Ownership and Licensing
318
Inventorship (and Misjoinder)
318
Patents as Property: Assignment and Licensing
319
Duration
320
ch. 9
Rights and Infringement: "The Benefit of His Invention"
325
Infringement Analysis
326
Scope of the Rights to Exclude
326
Determination of Infringement
328
Claim Interpretation
329
Literal Infringement
331
Infringement Under the Doctrine of Equivalents
332
Indirect Infringement
333
Defenses
343
Invalidity
343
Inequitable Conduct
343
Implied License and First Sale
344
Repair and Reconstruction
345
Experimental Use: A "Truly Narrow" Exception
345
Laches
346
Antitrust and Patent Misuse
346
Patent Litigation
353
Jurisdiction
353
Standing
354
Remedies
354
Injunctions
354
Damages
355
Attorneys' Fees
356
Remedies Against the United States
356
Baseless Litigation
358
pt. III
TRADEMARK
359
ch. 10
Subject Matter of Trademark Law
361
Categories of Marks
363
Trademarks
363
Service Marks
363
Trade Dress
364
Collective Marks
365
Certification Marks
365
Symbol
372
Source-Identifying Function
373
ch. 11
Substantive Standards for Protection: "The Source-Distinguishing Ability of a Mark"
381
Distinctiveness
382
Inherently Distinctive Marks
383
Arbitrary and Fanciful Marks
384
Suggestive Marks
384
Marks That Are Protectable Only with Acquired Distinctiveness
385
Merely Descriptive Marks
386
Primarily Geographically Descriptive Marks
387
Primarily a Surname
388
Deceptively Misdescriptive Marks
388
Color
389
Product Design
389
Generic Terms
390
Unprotectable Symbols
400
Likely to Cause Confusion with an Existing Mark
400
Functional Matter
401
Deceptive Matter
402
Primarily Geographically Deceptively Misdescriptive Marks
402
Mark Suggesting False Connection
403
Immoral or Scandalous Matter
403
Disparaging Marks
404
Government Symbols
404
Names or Likenesses of Individuals
405
ch. 12
Obtaining Protection and Licensing: Using, Registering, Licensing, and Losing a Trademark
411
Trademark Rights Come with Use of the Symbol as a Mark
412
Trademark Searching
412
Acquisition of Trademark Rights
413
Registration
419
Registration Process
419
Incontestability
423
Ownership
427
Determining the Owner
427
Priority Between Confusingly Similar Marks
427
Priority Based on Use
427
Geographic Limitations
428
Assignment
429
Abandonment and Loss of Rights
430
Use Discontinued with Intent Not to Resume Use
430
Loss of Rights Through Mark Becoming Generic
431
Other Ways to Lose Significance as a Mark
431
ch. 13
Infringement and Related Rights Under Trademark Law
437
Trademark Infringement
437
Ownership of a Valid Mark
438
The Alleged Infringer Used
438
In Commerce
439
The Mark or a Similar Symbol
439
In Connection with Marketing of Goods or Services
439
Likelihood of Confusion
440
Necessary Showing of Confusion
440
Factors for Determining Likelihood of Confusion
442
Defenses
445
Secondary Liability
458
Section 43 (a): "False Designations of Origin and False Descriptions Forbidden"
459
False Designation of Origin
459
Infringement of Unregistered Mark
459
Trade Names and Other Nonmark Indications of Source
460
Misrepresentations Concerning Commercial Activities
460
False Advertising
461
Titles and Artistic Freedom
461
Standing for [§]43 (a) Actions
462
Remedies for Infringement, False Designation, or False Advertising
466
Dilution
467
"Cybersquatting": ACPA and UDRP
471
pt. IV
TRADE SECRET
475
ch. 14
Trade Secret Subject Matter: Information with Economic Value from Not Being Generally Known
477
Typical Trade Secret Cases
480
Business v. Former Employee
480
Employer v. Next Employer
480
Business v. Former Partner or Former Potential Partner
480
Inventor or Author v. Business
481
Business v. Competitor
481
Business v. Person Who Makes Information Public
481
Business v. Agency or Court
482
Subject Matter of Trade Secret Protection
482
Trade Secret Must Be Information
482
Formula
482
Pattern
483
Compilation
483
Program
483
Device
483
Method, Technique, or Process
483
Information Must Have Value
484
Trade Secret Must Have "Economic" Value
484
Information Not in Continuous Use
485
Information Not in Positive Use
485
Information Not in Use in a Business
485
Information Not Yet in Use
485
Information That Does Not Give a Competitive Advantage
485
Economic Value Must Be "From Not Being Generally Known"
486
Information Must Not Be "Readily Ascertainable" by Others
487
ch. 15
Getting Protection Through Reasonable Security Measures and Losing Protection Through Public Disclosure
497
Reasonableness of Security Measures
498
Value of the Information
498
Need to Disclose the Information to Employees and Others to Exploit It
498
Limits on Disclosure of the Information
499
Means Taken to Maintain Confidentiality When Disclosure Is Made
499
Physical Limitations on Access
499
Keeping Track of Copies of the Information and Keeping Records of Those with Access
499
Whether Employees and Others Were Informed of Restrictions
499
Industry Standards and Ethics
500
Whether an Overall Security Program Is in Place
500
Costs of Security Measures
500
Application of the Factors
501
Contractual Measures Used in Connection with Trade Secrets
502
Employee Contracts
502
Confidentiality/Nondisclosure Agreements
502
Covenants Not to Compete
503
Assignment of Inventions Clauses
504
Holdover/Trailer Clauses
505
Keep Employees Happy---An Ounce of Prevention
505
Regulations
505
Outsider Contracts
506
Confidentiality/Nondisclosure Agreements
506
Cross-Licenses
506
Grant-Back Clauses
507
Enforceability Issues
507
Ownership
507
Termination of the Trade Secret by Public Disclosure
509
ch. 16
Misappropriation and Remedies
521
Misappropriation Defined and Illustrated
521
Definition of Misappropriation
521
Variations on a Theme: Examples of Misappropriation
522
Examples of Cases That Do Not Constitute Misappropriation
523
Duty to Maintain Secrecy or Limit Use
524
Modes of Misappropriation
525
Improper Disclosure
525
Improper Use
525
Improper Acquisition
526
Remedies
528
Injunctions
528
Damages
530
Punitive Damages and Attorneys' Fees
530
pt. V
THREE STATE LAW THEORIES AND PREEMPTION
539
ch. 17
Three More State Law Theories and Federal Preemption
541
Contract Law and Idea Submissions
541
Was a Contract Formed?
542
Express Contract: Offer and Acceptance, Definiteness
542
Consideration
543
Implied Contract
543
Did the Defendant Use the Submitted Idea?
543
Did the Submitter Perform the Promised Contractual Obligation?
544
Avoiding Contractual Obligations
544
Misappropriation
547
Right of Publicity
549
Whether the State Recognizes the Right of Publicity
550
Who Has a Right of Publicity
550
How Broadly the Protected Identity Is Defined
550
How Broadly the Exclusive Right to Commercial Exploitation Is Defined
551
The Duration of the Right
551
Assignability
551
The Scope of Limitations to the Right
551
Federal Preemption of State Law Affecting Intellectual Property Rights
554
Copyright Preemption
555
Explicit Preemption
555
Conflict Preemption
557
Patent Preemption
558
Index
567