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Intellectual property rights: an overview *
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Intellectual property law:
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* copyright
* patents
* trade secrets
* trademark
* contracts
* etc
Historical origins in the U.S.:
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* U.S. Constitution, Art. I, sec. 8, cl. 8:
"Congress-given power to promote the PROGRESS OF SCIENCE and
useful arts by granting EXCLUSIVE RIGHTS to AUTHORS and inventors
for limited times for their WRITINGS and discoveries"
* Statute, 17 U.S.C. 102(a):
"Copyright subsists in ORIGINAL works of authorship that have been
FIXED in a tangible medium of expression"
The basics of copyright:
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One may be able to copyright
* literary work (software?)
* RAM contents (tangible enough)
* artistic work, including movies and sound recordings
* architectural work (software?)
* etc
Getting a copyright requires that the work be categorized as above.
The scope and procedures of the property right depend on and vary
with these categories.
Copyright protects "originality of expression".
"Sweat of the brow" is not enough (case with telephone white pages).
Spark of creativity or judgment (e.g. selection or arrangement of data,
web pages?).
highly original = broad protection (the arts) <-- SOFT?
not very original = narrow protection (factual work) <-- WARE?
"idea/expression merger": the idea is pretty much determined by the
functionality of the "problem" --> NO protection
Who gets the copyright?
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The author(s), unless it is WORK FOR HIRE.
Employees may contract to keep those rights.
INDEPENDENT CONTRACTORS' work is generally NOT for hire,
but they may assign their rights.
Assignments are a SALE of copyright interests.
Licenses are a PERMISSION to use in stated ways.
Contracts define scope of rights.
Copyright for persons: life + 50 years in the U.S.
life + 70 years in the E.C.
for companies: >= 75 years
How does one infringe on these rights?
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Complicated Case Law!
- proof of ownership
- proof of access
- analytic dissection of similarities
- layman impression
- etc
exemptions under "Fair use" principle possible (eroding, though), e.g.
- home taping for time shift purposes
- parody of "Pretty Woman"
- etc
"First sale" rule (software??, sound recordings??).
Criminal liability for copyright infringements:
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as much as five years of jail and $250,000 fine!
Copyright on the net:
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* temporary copying (caching?, mirroring?, browsing?)
* digital storage and transmission:
public performance (outside a circle of friends)
vs. public distribution ("private")
* first sale?
no first sale rights on digital works?
technology for lending rights? (e.g. additional bits in the http
protocol: "cache-able?", etc)
* ISP liability?
* right to first publication:
in sending the operator the message that Sally's husband sent to
John, John may violate the husband's right to first publication
* regulating infringement-enabling technology (CD burners, MP3 players, etc)
Software:
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* May make a backup copy
* May modify to make suitable for one's use
* copyright for user interfaces possible
* increasingly, software is PATENTED
* reverse engineering MAY not be an infringement (Lotus vs. Borland)
* look-and-feel claims can go either way
* etc
Trade secrets
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* e.g. the coca cola "recipe"
* generally: security systems are more effective in protecting trade secrets
than existing law
* one must be able to show that the secrets
- were reasonably protected
- involved development efforts
- represent an economic investment
* unfair practices (bribery, espionage, etc) are trade secret
misappropriations
* how to balance the right of an employee to use skills versus the right of
an employer to protect assets?
* problems:
- laws are not uniform even within the U.S.
- how to maintain a secret?
- laws not designed for computer technology
Patents (typically limited to seventeen years)
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* intent of granting patents:
- to foster invention
- to promote the disclosure of inventions
- to assure that ideas already in the public domain
remain there for free use
- to see the profit of the inventor as a MEANS, not a MERE END
- mathematical algorithms can NOW often be patented!
* available for machines, manufactures, and compositions of
matter and processes
* necessary conditions for granting a patent:
- must have a "permissible subject matter"
(problematic for software: what is the subject matter being
transformed by data? Often filed
under "business practices")
- new (not in "prior art")
a NON-example:
In 1964 a ship sunk in the harbor of Kuwait. Experts pumped
foam rubber into the vessel, causing it to surface again.
Then, Danish experts and the chemical company BASF filed for
a patent for this procedure. In February 2000, it became known
why the application was denied:
Donald Duck used the same idea in a comic strip in May 1949!!
(source: Die Zeit, No. 9, 24 Feb 2000)
- NON-OBVIOUS (inventive advance over the prior art) and
Stalmarck's method?
one-click ordering?
etc?
- useful
a potential NON-example:
Donna Rawlinson MacLean, a poet and casino waitress from Bristol in
western England, recently filed a patent application for "herself"!
``It has taken 30 years of hard labor for me to discover and invent
myself, and now I wish to protect my invention from unauthorized
exploitation, genetic or otherwise,'' said Maclean.
* application process:
- must apply through the U.S. Patent & Trademark Office
(for U.S. patents)
- disclose to the U.S. Patent & Trademark Office how the invention works
- COSTLY! (patent attorney fees, U.S. Patent & Trademark Office fees)
* rights from granted patent:
- EXCLUSIVE right to make, use, and sell the invention for twenty
years from the FILING date
* patent infringement:
- broad remedies
- up to TRIPLE of actual damages!
* examples on the net:
- RSA patent on the RSA public-key cryptosystem
- patent on "digicash"
- search algorithm patents
- one-click ordering (amazon.com)
- affiliate programs (amazom.com)
- etc
* problems: conducting an expensive and extensive patent search is not
fostering the growth of small businesses; at the same time,
the patent office's classification system for software is
poor
Trademarks:
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* What can be trademarked?
- Words ("Pepsi"),
- symbols (Wildcat head),
- slogans ("Fly the friendly sky."),
- packaging (Pizza Hut doggy bags),
- designs (McDonald's arch), and
- look & feel ("FUBU" clothes).
provided that
- its primary function is to identify the source of the goods or services
- it is non-functional (other designs can compete)
- used in the market-place as a source identifier.
* registration: with the U.S. Patent & Trademark Office for
national protection of the mark
* protection: against uses in the market-place that are likely to
"confuse" the public
* protection: possibly against a "dilution" of highly distinctive marks:
- "whittling away" of distinctiveness, disparagement of a mark.
* some past issues:
- Star Trek fan club versus the owners of the Star Trek trademark
- commercial versus expressive use
- no infringement when comparing products
- no infringement if trademark is required to adequately describe a
product
- linking to trademarked web sites to suggest an "affiliation"?
Questions:
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1. Do the existing mechanism for securing intellectual property rights
enhance or get in the way of software development?
2. Do they "promote the PROGRESS OF SCIENCE and
useful arts"?
Copyright 2001 Michael Huth (huth@cis.ksu.edu).