Intelectual Property

Question 1

Is the basis for intellectual property rights at common law or statutory?

Answer 1

Statutory. There is no common law protection of intellectual property. Cheney Brothers v. Dorris Silk Corp.
- Exception: Common law does provide protection against the imitation or appropriation of a celebrity’s name and likeness. White v. Samsung.

Question 2

Where does the common law’s protection of “name and likeness” come from?

Answer 2

The common law’s protection of “name and likeness” comes from the common law’s right of publicity, and not from any common law protection of intellectual property.

Question 3

What are the elements of the common law’s right to publicity cause of action?

Answer 3

1. The defendant’s use of the plaintiff’s identity; or
2. The appropriation of the plaintiff’s name or likeness to the defendant’s advantage, commercially or otherwise;
3. Without consent
4. Resulting in injury

Question 4

Four types of intellectual property? Which type of law generally governs each type?

Answer 4

1. Copyright, Constitutional law and federal statute
2. Patents, Constitutional law and federal statute
3. Trademarks, generally state statute, but also federal statute
4. Trade Secrets, federal statute

Question 5

What federal statute governs copyrights?

Answer 5

1976 Copyright Act

Question 6

What are the three elements of a copyright under the 1976 Copyright Act.

Answer 6

1. Originality
2. Works of authorship
3. Fixation

Question 7

For how long does the 1976 Federal Copyright Act protect works of authorship?

Answer 7

70 years for private authorship, 90 years for corporate/work for higher authorship

Question 8

Must copyrights be registered? Is notice required?

Answer 8

No.

Question 9

What are the two elements of copyright infringment?

Answer 9

1. ownership of a valid copyright

2. copying of constituent elements of the work that are original

Question 10

When will the publishing of facts meet the requisite “minimum level of creativity?”

Answer 10

When the selection and arrangement of the facts meet the “minimum level of creativity.”

Question 11

Why does the Constitution grant Congress the power to regulate patent law?

Answer 11

“[t]o promote the Progress of Science and the useful Arts…”

Question 12

Can abstract concepts, mathematical algorithms, scientific principles, and physical phenomena be patented?

Answer 12

No

Question 13

What is the current federal statute that regulates patent law? What are the elements that the statute requires for a patent?

Answer 13

35 U.S.C. § 101

1. Patentable subject matter
2. Utility
3. Novelty
4. Nonobviousness
5. Enablement

Question 14

Under U.S.C. 35 § 101, what is the current term for patents?

Answer 14

20 years

Question 15

Under 35 U.S.C. § 101, what are the four patentable subject matters?

Answer 15

1. Process
2. Machine
3. Manufacture
4. Composition of matter

Question 16

Under 35 U.S.C. § 101, what is the definition of “utility?”

Answer 16

The utility element is satisfied if the process/machine/manufacture/composition of matter provides actual benefit to humans

(this is rarely an issue, extremely low standard)

Question 17

Under 35 U.S.C. § 101, what is the definition of “novelty?”

Answer 17

For a process/machine/manufacture/composition of matter to be novel, it must be distinguishable from all which preceded it

Question 18

Under 35 U.S.C. § 101, what is the definition of “nonobviousness.”

Answer 18

Novelty must not have been obvious for a “person of ordinary skill to have noticed.”

Question 19

Under 35 U.S.C. § 101, what is the definition of “enablement?”

Answer 19

The patent must provide enough detail for a similar person to replicate the process/machine/manufacture/composition of matter

Question 20

When with the Patent and Trademark Office (PTO) issue a patent? Does this mean that the patent is valid?

Answer 20

PTO will issue patent if all five elements, (subject matter, utility, novelty, nonobviousness, and enablement) are met.

This does NOT mean that the patent is valid. Many patents are held invalid by courts after litigation.

Question 21

Is a living, human made, microorganism patentable?

Answer 21

Yes. A living, human made, microorganism could constitute either a manufacture/composition of matter. So long as it is created by humans and not naturally occuring, it is patentable. Diamond v. Chakrabarty.

Question 22

What is required to prove literal infringement of a copyright?

Answer 22

To prove literal infringement, one must show that every element of a patent claim is present in the allegedly infringing product. If just one is missing, the claim will fail. Larami Corp. v. Amron (holding that because the allegedly infringing watergun did not have an “elongated housing having a chamber therein for a liquid,” as the original patent stated, it did not infringe on the patent).

Question 23

What federal statute governs trade/service marks

Answer 23

Federal Lanham Act of 1947

Question 24

Can a color be trademarked?

Answer 24

Yes. Just as a word, name, symbol, or device may be trademarked if it identifies and distinguishes a particular brand, a color may also be trademarked if it acquires a “second meaning” which identifies and distinguishes a particular brand.