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“Intellectual Property Law: More Than Meets the Eye” - by Ofer Barlev

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1. Title of Paper

“Intellectual Property Law: More Than Meets the Eye” - by Ofer Barlev


2. Thesis Statement

In order to correctly define and utilize the uniqueness of the Intellectual Property terms Trademark, Patent, and Copyright it is vital to carefully analyze each of their respective definitions, jurisdictions, as well as case and statute background. In order to do so, specific examples of cases throughout each of the laws, their respective histories, and their developments will be emphasized with a central theme leaning toward stricter regulation. Although opponents of said regulations have criticized the courts in recent years for their scrutiny and overstretched powers, they have nonetheless admitted that some uniformity and cooperation is necessary. 3. Scope of this Paper


The paper will define, give examples of, and differentiate between the three subcategories of Intellectual Property Law: Trademark, Copyright, and Patent. Next, it will cover some of their most monumental cases and current controversies through an analysis of arguments recognizing their societal importance and significance through citations of relevant cases and commentary on different views. Finally, the paper will include similarities between said laws and their similar future momentum, as well as conclude with a supposition into the inevitable issues and their consequences.


4. Body of your Research or Legal Writing Paper

Intellectual property is a field of law that includes several somewhat overlapping subcategories. Of those, Trademark law protects phrases and words that symbolize certain goods and services such as Dominos and Dell. Patent law protects inventions ranging from scientific to industrial and includes pharmaceutical advances, medicines, and athletics. Copyright law protects forms of expression such as musicals, movies and books. Each of these subcategories carries a uniquely shaped historical background and continues to develop as new regulations, cases, and technologies emerge, but what all three have in common is increased protection afforded by the courts.


Overall, each of the subcategories embodies a fundamental theme. This concept expresses an idea or information similarly to a tangible product or service, but ultimately is a formulation of the mind. The one who conjures the idea is entitled to exclusive rights in its production and distribution. Thus, the term intellectual property signifies rights, and not the work itself, that are protected by law in the same way as any other form of real property.


Because of the complexity of the matter in hand, ambiguity resulted and enforcement was handled differently in separate jurisdictions. Before intercontinental communication became widespread, an idea might have been used in different continents without the permission of the originator. For example, most people believe that Thomas Edison was the inventor of the light bulb. Now, although he had a tremendous part in the development and spread of the invention, as well as being credited with over a thousand other patents he nonetheless was not the inventor of the electric light bulb. Consequently, the courts at that time forced Edison to buy the patent, which he did, and credit the original inventor.


Over time, the courts have become more rigid in their protection of intellectual property. Moreover, with the establishment of the World Trade Organization (WTO) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) participating countries are soon becoming harmonized in their enforcement activity.This cooperation is most attributable to the US and their lead toward intellectual property regulation uniformity. Although Trademark, Patent, and Copyright law each enlists a unique categorization, they nonetheless experience much overlap in their labeling and development and share the trend toward regulatory standards.


Trademark law emerged as a binding regulatory force around the mid-1800s. The main source for this law is the Trademark Manual of Examining Procedure (TMEP). This law prevents anyone other than the original producer of a mark from producing and selling similar goods or services bearing that same original mark, unless legally permitted or authorized. Essentially, trademark law is used by businesses to identify and distinguish a product or service from other entities. What is protected may be a word, phrase, symbol, image or design, or even a combination of each. In fact, a service may be trademarked by what is called a ‘service mark’. However, not everything can be trademarked, and many complications have consequently developed in the public domain. Ultimately, it is the job of the courts to judge the legality of and extent of rights afforded to the trademark owner.


Initially, the marks protected by trademark law were limited as the courts required the manufacturer name to be displayed in order to be protected under the law. Eventually, toward to the end of the 1800s courts allowed protection to certain products that bear an arbitrary symbol or name as long as they had a secondary meaning. Secondary meaning meant that the consumers associated the names or symbols with their respective products. Moreover, towards the end of the 1900s, the courts expanded the protection even further by outlawing product imitations and design similarities. This same expansive tendency followed suit with the other privacy protective laws.


Protection against piracy, or duplication of use, has evolved over the years as governments and its constituents recognize its implications. Ideally, trademark laws aim to protect the originator of the mark from business loss as well as other companies or individuals who would waste their time developing and producing an existing product. When an entity blatantly ignores current trademarks, it is in essence risking being sued for infringement. In that case, the court would order the company to cease producing the good or service designated by that mark.


The most current enforceable protection of brands and trademarks in the United States is governed by the Trademark Act of 1946, or the Lanham Act. The Lanham act “defines trademark to include words, names, symbols, and logos that businesses use or intend to use in commerce for the purpose of distinguishing their foods from those made or sold by competitors.” Ever since the enactment of that act, the courts have broadened the definition of what is considered registered or public property. The act listed the current collection of common law of trademarks and clarified many conflicting issues. Over the years, congress has amended the act on several occasions to address concerns presented by consumers and producers. Even individual states have enacted trademark statutes to deal with the influx of cases not covered by the federal act. Accordingly, nowadays even marks such as shapes, sounds, smells and even tastes can now be found registered.


Patent law shares a similar development history in its case and statutory background. It is regulated according to the Manual of Patent Examining Procedure (MPEP). Simply, a patent is a set of exclusive rights granted by a governing body to the originator for the use and profiting of an invention or process. It must, however, conform to a set of conditions such as being “new, inventive, useful or industrially applicable.” According to Section 101 of the US Patent Act, in order for a patent to be patentable it must conform to the following: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title.” Thus, the patent would have to be statutory, new useful, and non-obvious. As one can tell, this definition can result in many interpretations and miscalculations. History has showed that this has indeed caused confusion and required careful specifications and a rigorous patent-granting process.


A patentee is given exclusive rights to prevent others from duplicating the product, using it for their financial benefit by selling or importing it. However complete these powers may seem, the patentee is still bound by prior patents as well as by current laws and regulations. For example, a new microchip design by a semiconductor company might receive a patent for complying with ingenuity and uniqueness as well as usability and marketability but may not infringe on other outlying patents or sacrifice the health and safety of the consumer.


The reason why patent law is important is that it allows protection to those who genuinely invented an item and wish to claim a property right over it. The government, namely the courts, has therefore assumed a duty of ensuring the most recent technology reaches the public good as well as discretion for the originator. With this power comes limited liability as well as an over-extending arm that supervises potential conflicts or disputes.


The regulating office for patents is the United States Patent and Trademark Office (USPTO) and has been for more than 200 years. It acts as the officiating power source over American inventions and ensures claims are properly channeled through. Its main role is “to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries.” Over the years, this government organization has created millions of employment opportunities and strengthened the United States economy. By supervising inventions and crediting entrepreneurs, it has advanced national technological progress and accomplishments.


Patents are usually enforced through civil lawsuits in United States federal courts and infringements are brought by the patent holder. When an infringement occurs, the patent holder may first take action for an immediate injunction to completely prohibit any future violating acts. The patent holder may then seek monetary compensation for the time of infringement. An important factor in this action is the limitations a patent holder may face. These include a challenge to the validity of the patent such as it not being specifically supported or it violates some prior invention. Once a patent is found to be invalid, the supposed infringer would not be held liable and is vindicated. Furthermore, the current patent and associated referenced would be questioned and reviewed by the USPTO.


There are other ways to resolve seeming patent infringements and product overlapping. A company may license its patents to others in exchange for a lease or profit sharing. One of the more recent developments in patent law has been cross licensing. This process allows the companies to cooperate in say a technical field such as software design for the joint success of the product. For instance, Time Warner’s America Online, in order to promote its patented internet service and other commercial advertising tools has cross licensed its products with a software package provided by Toshiba, a personal computer maker. When receiving the software package in a new Toshiba computer, America Online would be pre-installed and distributed free of charge for a limited amount of time. These and other conglomerations allow companies wider distribution and market share.


The enforcement of patents is regulated both by nation laws and international treaties. An example of a cooperating and enforcing body is the European Patent Office (EPO). Another is the International Bureau of the World Intellectual Property Organization (IBWIPO) which acts under the Patent Cooperation Treaty (PCT). An activity that these offices partake is the assurance that a software patent that transacts data storage is not reproduced without crediting the inventor. However, the enforcement of certain types of software patents has met with resistance.

Until the 1980s, computer software patents were not granted due to their nature being of scientific and mathematical algorithm. This changed when the legality of the USPTO regulation was challenged in the Supreme Court case of Diamond v. Diehr. In this ground-breaking case, a device that used computer software was brought forward for a patent where the internal software was an integral part of its function. Whereas until then the Courts would have held that no computer software, or mathematical algorithm, is patentable, this case revolutionized the field when the court ruled that the computer software is in fact patentable because the device that utilizes it could be. This set the trend for other technology companies to bring forth software patents and in the same way developed similarly to current trademark and copyright transformations.


Copyright law is the set of rights granted to safeguard information as an expression of an idea. It protects a multitude of original expressions including “art, sculpture, literature, music, songs, choreography, crafts, poetry, software, photography, movies, video games, videos, websites, architecture, and graphics. “ The length of a copyright or its duration is currently set by the Sonny Bono Copyright Term Extension Act and lasts for the life of the creator plus seventy years. If it’s a business entity, the life spans between ninety five to a hundred and twenty years. Similarly to patent and trademark law, copyright law enjoys a world-wide protection. For example, if a copyright is given in the US, it is assumed the other regions such as Europe and Asia are covered.


The requirements for a copyright are set in a similar fashion as a patent. The first item of the criteria is that the work must be original. Next, it must be conveyed in a medium of expression such as a paper, audio or video. Lastly, just like a patent, the art must have some creativity produced by the human ingenuity.

An important case that was based on the last requirement, creativity level, is Feist Publications v. Rural Telephone Service Co. In this case, the Supreme Court ruled that the alphabetical listing in the phone book are not copyright protected. This is because the creativity requirement must go above the one found in a telephone white pages which are not a creative selection of listings. This case provided the basis for databases and compilations and bases its decision on the effort put forth for the creation of the work. On the other hand, if the works are arranged and selected in an original manner they are entitled to copyright protection under the Copyright Act. Because of this ruling, a competing telephone directory publisher avoided liability for copyright infringement and was able to extract all of the data in the existing white pages.


Over the years, copyright protection has expanded to include other forms of expression manifested on the internet. However, from its early years copyright law depended on the speed of communication, accessibility and duplication degree of difficulty. In the early days, it was harder to duplicate expressions of art. Also, due to loopholes in the first known statute regulating the modern concept of copyright, known as the Statute of Anne, different regions of the world such as the American Colonies made use of cheaper methods of production to reprint English books without the direct permission of copyright holders.


The Berne Convention for the Protection of Literary and Artistic Works (BCPLAW) of 1886 first established the recognition of copyrights between sovereign nations. According to this convention, and differently than a patent or a trademark, the work copyrighted does not have to be registered or sent through an application process. As soon as the work is written or recorded, its creator is given a legally-binding copyright protection, unless of course he explicitly disclaims such protection. The United States joined most European nations and duly signed the Berne Convention in 1989.


The power to protect a work under the copyright law is covered under the Intellectual Property clause in the US Constitution. It specifically asserts that the congress has the 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.” In the US, congress has regulated copyright law since the enactment of the Copyright Act of 1790 which has been updated continually into the most currently abrogated Copyright Act of 1976.

Current legislation, the Sonny Bono Term Extension Act, was challenged by the landmark copyright decision in the case of Eldred v. Ashcroft. In 2003, the United States Supreme Court ruled on the challenge and affirmed that the length of a copyrighted work could be extended retroactively as long as the extension was limited. Therefore, works in the US that were published prior to 1923 are consequently in the public domain


More recently, the Internet has been responsible for many of the more current infringements. One of the most trying issues has been what is considered protect under free speech when discerning the reproduction of works. In another landmark case, the American Civil Liberties Union (ACLU) sued Janet Reno, the Attorney General at the time, and argued the Communications Decency Act (CDA) is an unconstitutional burden on free speech over the Internet. The main argument was whether the CDA violated the First and Fifth Amendments by being overly broad in their criminalizing of Internet communication. The district court agreed with the A.C.L.U., and found the CDA unconstitutional. The U.S. Supreme Court affirmed the lower court decision and ruled that the Act violated the First Amendment by completely covering and restricting freedom of speech. Its conclusion was based on the fact that the Act failed to clearly define indecent communication in its text.




Although the terms trademark, patent, and copyright are distinct in their respective histories, case rulings and statute formation, they nonetheless have developed similarly and are becoming more regulated.


The main treaties that have expanded intellectual property regulation are Paris Convention, Patent Cooperation Treaty, and the WIPO Database Treaty. The most pronounced statutes are Copyright (U.S. Code, Title 17), Patent (U.S. Code, Title 35), and Trademark (U.S. Code, Title 15). Additionally, the main source for regulation information is Intellectual Property Regulations Chapter 37 of the Code of Federal Regulations.


Three of the factors that led to the expansive regulatory nature of intellectual property law are the globalization of the world economy, the US Justice System evolving into a more authoritative entity, and the level of difficulty for the duplication and transmission of material, most notably via the Internet and emerging technology.


Overall, the aforementioned issues have indirectly forced the courts to take a more active approach in dealing with the regulation of intellectual property. Each case and issue has created more dependency on the courts and their finding. For instance, despite the obviousness of registration, there are issues that must be resolved before assigning exclusive rights to an owner. In order to confer protection, the Courts have required the proof of use or intended use of a product. Accordingly, the first to use a product will normally be given ‘proprietary’ rights. However, it is often difficult to prove first use or intended use in court. Therefore, courts have recommended expedited registration and have even given businesses incentives to do so.


As a result of stricter scrutiny by the US justice system, intellectual property has become a more regulated field. Detractors may be held liable for producing products or services that are similar to those existing whereas in the past more rigid tests were required. Appropriately, it is now the burden of the challenging company and not the originator to prove its exclusivity and right for production. Such a policy might seem to unevenly favor a company such as Microsoft or IBM, but ultimately it is the consumer that benefits from government regulations.


A famous US computer scientist by the name of Howard Hathaway Aiken has said that in regards to technology and the dissemination of digital work “Don't worry about people stealing an idea. If it's original, you will have to ram it down their throats.” However, this idea no longer holds true due to the fact that information nowadays is so widely available that it takes no more than a quick internet search to come up with anything conceivable.


5. __Footnotes__


2 Andrea M. Gauthier, "The Evolution of the Concept of Property in American Trademark Law." (1990)

3 Colman v. Crump, 70 NY 573, 578-79 (1877) (bull's head for mustard)

4 Cook v. Starkweather, 13 Abb. 265 US 47 (1924) [N. S.] 392. See Gauthier at 32-33 and Section 43(a) of the Lanham Act

5 www.bitlaw.com/source/15usc/lanhamact - Lanham Act, USC 15, 173, 222d Ann. Leg. Sess.

6 www.findlaw.com/12international/countires/nz/articles/482.html

7 US Patent and Trademark Office – 1800 Patent Cooperation Treaty, page 2


8 http://www.bitlaw.com/patent/requirements.html - Section 101 US Patent Act

9 Article 1, Section 8 of the United States Constitution

10 http://www.wipo.int/pct/en/gazette/

11 Diamond v. Diehr, 450 US 175, 101 S. Ct. 1048, 67 L. Ed. 2d 155 (1981)

12 Stim, Richard. Patent, Copyright & Trademark. Berkeley: NOLO, 2006. 184.

13 Feist Publications v. Rural Telephone Service Co, United States Supreme Court 499 U.S. 340 (1991)

14 Statute of Anne, 1710, England.

15 US Constitution in Article I, Section 8, Clause 8 or Intellectual Property Clause 8

16 Eldred v. Ashcroft, 537 U.S. 186 (2003)

17 ACLU v. Reno, 929 F. Supp. 824, 838 (ED Pa. 1996)

18 http://www.bitlaw.com/source/cases/internet/index.html

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