AN INTRODUCTION TO INTELLECTUAL PROPERTY LAW FOR FIRST-YEAR STUDENTS ____ 2004 - 2005 Prepared for the Students of Santa Clara University School of Law by Professor Dorothy J. Glancy © 1998, 1999, 2001, 2002, 2003, 2004 Professor Dorothy J. Glancy 2004 Edition. All Rights Reserved. AN INTRODUCTION TO INTELLECTUAL PROPERTY LAW TABLE OF CONTENTS I. Intellectual Property Law in the United States 1 A. Types of Intellectual Property 1 1. Patent 1 2. Copyright 3 3. Trademark 5 4. Trade Secrets 7 5. Rights of Personality (Privacy Rights or Publicity Rights) 8 B. Ownership of Information 10 International News Service v. Associated Press 10 (Dissenting Opinions of Holmes, J. and Brandeis, J.) C. Copyright and Creativity 15 White-Smith Music Publishing Co. v. Apollo Co. 15 (Concurring opinion of Holmes, J) Feist Publications, Inc. v. Rural Telephone Service Company, Inc. 16 (Copyright claims to information in telephone directory white pages) D. Copyright and Digital File Sharing 22 Contributory Copyright Infringement - Thje Sony Betamax Decision 22 In re: Aimster Copyright Litigation 23 (Both contributory and vicarious copyright liability) MGM Studios Inc. v. Grokster Ltd. 29 (Neither contributory nor vicarious copyright liability) E. Trademarks as Property 39 DeGido v. West Group, Corp.. 39 (Trademark claim to “LAWOFFICES”) Moseley v. V Secret Catalogue, Inc. 45 (Trademark dilution of Victoria’s Secret’s famous mark) i F. Persona as Property 51 Midler v. Ford Motor Company 51 (Bette Midler’s ownership of the sound of her voice singing “Do you Want to Dance?”) White v. Samsung Electronics America, Inc. 53 (Vanna White’s ownership of her image as letter-turner on “Wheel of Fortune”) Hoffman v. Capital Cities/ABC 64 (Magazine use of altered photo that looks like Hoffman as “Tootsie”) ETW Corp. v. Jireh Publishing, Inc. 66 (Tiger woods’ trademark and right of publicity claims against a “sports artixt”) G. Patenting Life 73 Diamond v. Chakrabarty 73 (Patents on living organisms) H. Property in Human Genetic Material 80 Hecht v Superior Court 80 (Will contest over frozen sperm of deceased person) Kass v. Kass 86 (Rights regarding frozen pre-embryos when a couple divorces) In re Marriage of Whitten 92 (Divorcing couple’s rights with regard to frozen embryos) II. Intellectual Property Ownership 101 A. Property Owned at Death 101 Memphis Development Foundation v. Factors Etc., Inc. 101 (Did Elvis Presley’s right of publicity die with him?) B. Co-ownership of Intellectual Property 105 Zuill v. Shanahan 105 (Co-ownership of the copyright to “Hooked on Phonics”) ii Brown v. Mojo Records 109 (Copyright co-ownership claims among ex-members of a band) Ethicon, Inc. v. United States Surgical Corporation 112 (Co-owner of a patent prevents infringement action.) III. Patent Assignment Estoppel 119 Diamond Scientific co. v. Ambico, Inc. 119 (Estoppel by Patent Assignment.compared with Estoppel by Deed.) IV. Registered Title to Intellectual Property 126 Contrasted With Recorded Land Titles V. Intellectual Property Licenses 127 VI. Regulatory Takings of Intellectual Property 129 Ruckelshaus v. Monsanto Company 129 (Government that takes trade secrets must pay just compensation.) iii I. INTELLECTUAL PROPERTY LAW IN THE UNITED STATES Intellectual Property is among the most interesting aspects of property law. Property rights to information, ideas and other products of human creativity raise many interesting issues for property lawyers. Some people believe that intellectual creations should not be property at all. Even those convinced that intellectual property is appropriately treated as property usually seek to limit intellectual property rights. As a result, intellectual property rights are usually time-restricted and sometimes even evanescent. A. Types of Intellectual Property Modern intellectual property law in the United States is a mosaic of several different types of law. Within the field of property law intellectual property is considered a form of intangible property, which in turn is a form of personal property. The sources of intellectual property law are many and varied. State common law, federal statutes and constitutional law, all contribute to intellectual property law in the United States. Some intellectual property law comes from the United States Constitution. Much of intellectual property law is statutory. But common law concepts regarding the nature of property rights to information, ideas and even human personalities are also essential parts of intellectual property law. These materials provide an introduction to some of the basic property concepts fundamental to intellectual property law. Upper division courses at Santa Clara University School of Law afford a wide array of opportunities to study specific aspects of intellectual property law in greater depth. Among the many facets of intellectual property law in the United States, the five most important forms of intellectual property are: Patent Copyright Trademark Trade Secrets Publicity Rights (also known as Rights of Privacy or Personality Rights) Each is considered a distinct type of intangible personal property. The sections that follow briefly introduce these forms of intellectual property and outline some of the laws that govern them. 1. Patent Article 1, Section 8 of the United States Constitution provides that “Congress shall have Power, . To Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries . .” Note that, although this clause (Article I, Section 8, clasue 8) is frequently referred to as “the Patent Clause,” the Constitutional language does not contain the word, “patent,” which came from British monopolies terminology. Enacted pursuant to this Constitutional directive, the federal Patent Act establishes a national system of property rights in inventions. -1- Current federal patent statutes give an inventor who receives a patent a limited monopoly over the use of his or her patented invention for 20 years from the time the patent application was filed. A “new and useful process, machine manufacture or composition of matter” is considered patentable. 35 U.S.C. § 101. Patent protection extends to computer science and to biotechnology, as well as to machines and devices. Diamond v. Chakrabarty, 447 U.S. 303 (1980), infra, is a United States Supreme Court decision that approved patents on living organisms. In addition to the utility patents that are the focus of the discussion that follows, there are a number of additional types of inventions afforded legal protection under specific statutes. For example, federal patent statutes protect design patents under 35 U.S.C. § 171-73; plants under the Plant Patent Act, 35 U.S.C. §§ 161-64 and the Plant Variety Protection Act, 7 U.S.C. § 2321; as well as rights regarding semiconductor electronic circuitry under the Semiconductor Chip Protection Act, 17 U.S.C. §§ 901-14. The limited-time monopoly an inventor secures though issuance of a patent is granted to encourage new discoveries by rewarding invention. In exchange for this monopoly on use of a patented invention, the inventor must publicly disclose the patented invention and the best ways to use or practice it. After the term of the patent expires (20 years after the date the patent application is filed), the innovation becomes part of the public domain, freely available to all. 35 U.S.C. § 154. The process for obtaining a utility patent requires an inventor to submit an application to the United States Patent and Trademark Office (PTO) which conducts a search of the prior art and examines the patent application under criteria set by the Patent Act and published PTO guidelines. To receive a utility patent, the invention must meet four requirements: patentable subject matter, novelty, utility and non-obviousness. The inventor must also disclose the innovation to the public in a way that would enable others to make and use the invention. Although the requirement regarding utility is fairly easy to satisfy, novelty and non-obviousness are often more difficult to establish. If after an independent review of the application, the PTO grants the patent, the inventor obtains the right to exclude others from making, using, offering to sell and selling the innovation for a term of 20 years from the date the patent application was filed. This monopoly is essentially negative - a veto power over use of the invention by others without authorization from the patent holder. This negative right of the patent holder is nearly absolute and will prevent even those who have independently developed the same invention from using or practicing the patented art. However, when a patented invention makes use of an earlier patented invention, the new patent cannot be “practiced” even by its inventor without permission from the earlier patentee. Once a patent has been issued by the PTO to the inventor or inventors, the patent can by transferred, through assignments and licenses. Transfers of such rights regarding the patent are usually recorded in the PTO. Under the Patent Act, patent assignments, which have been recorded within three months of the date of the assignment, place later potential transferees on constructive notice that the patent rights were previously assigned and are therefore no longer available. This public registration system helps to clarify and to protect the rights of patent owners. 35 U.S.C. § 261. An inventor is not required to seek a patent to protect the inventor’s claims to an invention. The inventor can, instead, protect the invention as a trade secret. (See discussion of trade secrets, infra.) However, not filing a timely patent application with the PTO risks loss of rights to patent the invention. For example, once an inventor describes an invention in a publication, the inventor has one year to file a patent application. If no application is filed within that time, the invention is deemed to be in the public domain. 35 U.S.C. § 102(b) The patent -2- statute requires that the patent application clearly disclose what the inventor claims to have discovered and how the invention works.