Intellectual Property

Boston College Law School

January 21, 2009

Copyright – Exclusions

Idea/Expression Dichotomy

• 17 U.S.C. § 102: Subject Matter– (a) Copyright protection subsists,… in original works

of authorship fixed in a tangible medium of expression, ….

– “(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery regardless of the form in which it is described, explained, illustrated, or embodied in such work.”

Baker v. Selden

Baker v. Selden

• Idea/expression doctrine– Copyright law protects expression, not ideas– Ideas, methods, etc. are subject to patent

• Merger doctrine– Where only one or a few ways to express an

idea, not copyrightable– Otherwise, effectively grants protection to idea

Cookbook Hypo

• Elements of cookbook– Recipes

– List of ingredients

– Description of specific steps

– Pictures illustrating techniques

– Pictures of finished dishes

– Description of history of dishes

Video Game Hypo• What is the idea?

– Hand to hand combat game

– Hand to hand martial arts combat game

– Hand to hand martial arts combat game with side view

– Hand to hand martial arts combat game with side view and changing backgrounds

– Hand to hand martial arts combat game with side view, changing backgrounds, power bars, special moves, ...

What is the idea?

• What is the idea?– Story about wizarding

school

– Story about wizarding school with orphan hero

– Story about wizarding school with orphan hero and spunky group of friends

– Story about wizarding school with orphan hero and spunky group of friends and friendly headmaster, fighting evil wizard

Bee Pin Hypo

• What is the idea?– Insect pin

– Bee pin

– Bee pin made of gold

– Bee pin made of gold and jewels

– Bee pin made of gold and white/blue jewels

– Bee pin made of gold and white/blue jewels in a certain arrangement

When is there merger?

• Morrissey– Entrants should print name,

address and social security number on boxtop, or a plain paper.

– Entries must be accompanied by … boxtop or by plain paper on which the name … is copied from any source.

• P&G– Entrants should print name,

address and Social Security number on a Tide boxtop, or on plain paper.

– Entries must be accompanied by Tide boxtop (any size) or by plain paper on which the name “Tide” is copied from any source.

Pictorial, Graphic, Sculptural

• 17 U.S.C. § 101: – Pictorial, graphic, and sculptural works:

• “include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproduction, maps, globes, charts, diagrams, models, and technical drawings …”

Pictorial, Graphic, Sculptural

Useful Article Doctrine

• 17 U.S.C. § 101: – Useful article:

• “article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”

Useful Article Doctrine

• 17 U.S.C. § 101: – Pictorial, graphic, and sculptural works:

• “the design of a useful article … shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

• H.R. Rep. No. 94-1476:– “Separability”

• Physical separability• Conceptual separability

Useful Article DoctrineApplied Art Industrial Design

Copyright, Patent, Trademark

Patent Copyright

Trademark

Useful ArticleDoctrine

ProductDesign

Brandir v. Cascade

• Temporal displacement (Newman)• Primary use• Primarily aesthetic (Oakes)• Marketed as art (Nimmer)• Design process (Denicola)• Ordinary observer (Winter)

Hypotheticals

Other Design Protection Regimes

• Sui Generis Legislation– Not passed

• Design Patents– Novelty, nonobviousness, …– Must get approval from PTO

• Trademarks– Secondary meaning– Nonfunctionality

17 U.S.C. § 102

• (a) Copyright protection subsists,… in original works of authorship fixed in a tangible medium of expression, …. Works of authorship include the following categories:– (1) literary works;

– (2) musical works, …;

– (3) dramatic works;

– (4) pantomimes and choreographic works;

– (5) pictorial, graphic, and sculptural works;

– (6) motion pictures and other audio visual works;

– (7) sound recordings; and

– (8) architectural works

Literary Works

• Definition: “works … expressed in words, numbers, or other verbal or numerical symbols or indicia”

• Examples: books, articles, papers, catalogs, data compilations, software

• Limitation: short words and phrases not protected

Pictorial, Graphic, Sculptural

• Definition: “include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models ….”

• Limitation: useful article doctrine

Architectural Works

• Protection extended in 1990• Limitations:

– Functional elements not protected– Pictorial representations permitted– Alterations and destruction of buildings permitted

Dramatic, Pantomime, Choreo.

• Works that are meant to be performed

• Examples: plays, dances, screenplays, etc.– Must be fixed; if unfixed, subject to state law

– Subject to special rules re: public performance right

Musical Works

• Includes both tune and lyrics

• Examples: “Happy Birthday”, Copeland’s Third Symphony, Britney Spears’s latest song

• Limitations: compulsory cover license

Musical Works

• Compulsory “cover” license,

– 17 U.S.C. 115, if:• Author has already authorized distribution of a recording

• Payment of statutorily set royalty for every copy sold

• No material change to fundamental character of the work

Covers

Sound Recordings

• Definition: “works that result from the fixation of a series of musical, spoken, or other sounds”

• Examples: N.Y. Philharmonic’s recording of Copland’s Third Symphony, Britney Spears’s latest album

• Limitations: No general public performance right (although recent digital performance right)

Musical Works and Sound Rec.

Musical Work:I Shot the Sheriff

by Songwriter

Unauthorized Copyof Bob Marley

Sound Recording

UnauthorizedBroadcast of

ClaptonVersion

Sound Recording:I Shot the Sheriff

Bob MarleyLicense

Sound Recording:I Shot the Sheriff

Eric ClaptonCompulsoryLicense

Sound Recording:I Shot the Sheriff

Joe Liu

No Royalty:Infringementof Musical Work

Infringement of Sound Recording

Infringement of Musical Work

InfringementOf MusicalWork

No Infringement of Sound Recording

Motion Pictures and A/V

• Definition: “works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any….”

• Examples: movies, multi-media works, video games, etc.

Derivative Works

• Definition: “based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version ….”

• Example: movie version of Harry Potter– Additional originality subject to protection

– Subject to multiple copyrights

Compilations

• Definition: “work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”

• Examples: academic journals, certain encyclopedias, musical compilations, factual compilations

• Main issue is originality

Roth v. United Card

Roth Greeting Card United Greeting Card

Assignment for Next Class

• Read II.D – Ownership and Duration