Intellectual property the law of copyrights, patents and trademarks

WEST’S LAW SCHOOL

ADVISORY BOARD

_________

JESSE H. CHOPER

Professor of Law,

University of California, Berkeley DAVID P. CURRIE

Professor of Law, University of Chicago YALE KAMISAR

Professor of Law, University of Michigan

Professor of Law, University of San Diego MARY KAY KANE

Chancellor, Dean and Distinguished Professor of Law,

University of California,

Hastings College of the Law WAYNE R. LaFAVE

Professor of Law, University of Illinois ARTHUR R. MILLER

Professor of Law, Harvard University GRANT S. NELSON

Professor of Law, University of California, Los Angeles JAMES J. WHITE

Professor of Law, University of Michigan

i

INTELLECTUAL PROPERTY THE LAW OF

COPYRIGHTS, PATENTS AND TRADEMARKS

By

Roger E. Schechter

Professor of Law,

George Washington University

John R. Thomas

Professor of Law,

Georgetown University

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iii

For Craig

– R.E.S.

For Sayuri

– J.R.T.

*

v

Acknowledgments

_________

Only other authors of similar books really understand the large number of

people who make a work like this possible. I am deeply grateful to several

remarkable law students at George Washington University who helped in the

research for this work, including Michael Alter, John Donboli, James Gallagher,

Mark Glaze, John Moran, Douglas Rettew and Wayne Stacy. Thanks are also

due to David Colletti and Paul M. Levine for meticulous help in proof-reading

under great time pressure.

Leonard Klein, a research librarian at the Jacob Burns Law Library was, as

always, masterful, in finding just the right resource at just the right moment. My

colleague Robert Brauneis offered many useful observations on several chapters,

rescuing the reader from much ambiguity.

There are many others whose contributions were one step removed from the

preparation of this book, but who laid the foundation that made it possible. I am

greatly indebted to Professor J. Thomas McCarthy of the University of San

Francisco, not only for his extraordinary contribution to trademark law through

his definitive treatise, but for his many thoughtful observations and kindnesses

over the years. He is one of the true gentlemen and scholars in our business. I

would not be in law teaching if not for the confidence and support of Professor

Glen E. Weston, my emeritus colleague at George Washington, who illustrated

for me what a teaching book should look like. I am grateful as well to Jerome A.

Barron, the Dean who hired me, and to Michael K. Young, my current Dean, for

doing so well the hardest thing a Dean can do—namely to leave a faculty

member unmolested to pursue a large project. The forbearance, patience, and

grace of several at West Group, notably Tom Berreman, Doug Powell, Pam

Siege, Heidi Hellekson and Roxy Birkel, has been remarkable.

This volume would have been simply impossible without the collaboration

and encouragement of my co-author Jay Thomas, whose enthusiasm and

amazing hard work kept me moving through many hard patches. Finally, there

are no sufficient words of thanks for my students. So many teacher-authors have

said it before that it may take on the trappings of a cliche, but the intellectual

curiosity, probing questions, good humor, excitement and energy of two decades

worth of G.W. law students have been, more than anything, what got me out of

bed each morning and what made this book possible.

ROGER E. SCHECHTER

_________

My participation in this project would not have been possible without the

efforts of many mentors and colleagues. The late Chief Judge Helen

vi

W. Nies gifted me with two unforgettable years of training in the work of the

remarkable court on which she served. I miss her dearly. I shall always be

grateful to Professors Martin Adelman and Rebecca Eisenberg for igniting my

interest in intellectual property, Harold Wegner for first placing me in front of a

law school classroom and Professor Hugh Hansen for proposing a full-time

career in law teaching. I also acknowledge Professors Rochelle Dreyfuss, Jerome

Reichman and Pamela Samuelson, distinguished senior colleagues who have

inspired a new generation of intellectual property scholars. The thoughful

commentary of Professor Douglas Lichtman improved the patent portions of this

text and was of immeasurable help. My thanks also to Peter Corcoran, Jyotsna

Gautam and Brian McMahon for their invaluable research assistance.

I was pleased to attend Roger Schechter’s classes as a student and delighted

to enter academia as his colleague; now I am honored to serve as his co-author.

Roger’s insight and eloquence of expression is apparent from the pages of this

text, but I also admire his collegiality and extraordinary commitment to his

students. The original vision of this treatise was his, and I am grateful to have

shared in the work of fulfilling it.

JOHN R. THOMAS

vii

Preface

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Writing a book about intellectual property at the dawn of the twenty-first

century is like trying to hit a moving target while riding in the bow of a

speedboat. Dizzying political, economic and technologic changes have prompted

the Congress to undertake massive revisions to all three major branches of

intellectual property law over and over again in the past few years. Those new

enactments, along with problems not addressed by legislation, have led to a

cascade of decisional law on a stunning range of highly complicated issues. That

in turn leads to circuit splits, law review articles, more legislation, and still more

cases. Anything that one endeavors to say on the subject runs the risk of being

obsolete before the ink has dried or the toner has cooled on the page.

We have done our best in this legal typhoon, to offer up a coherent survey of

both basic principles and emerging issues. Our goal is to provide, in a single

volume, a reasonably thorough introduction to the field that will be helpful to

students, practitioners and judges alike. We have tried to summarize what is

clear, identify what is unsettled, and sometimes to offer brief thoughts as to how

some sticky issues might be resolved or why some existing rules seem poorly

though through. We have attempted, above all, to make the text lively and

readable and to leaven it with numerous examples and occasional humor. As

always, our readers will determine if we have succeeded.

While there are many common themes that pervade the different branches of

intellectual property law, the law of copyrights, patents, and trademarks still

remain fairly discrete fields. Each is governed by its own separate, and fairly

elaborate federal statute, and the cases dealing with problems in one of the areas

rarely cite cases from the others. Our organizational scheme reflects this

segregation of topics. After an introductory chapter exploring some of the

unifying themes in all intellectual property disputes, we have divided this work

into three principal parts dealing respectively with the three branches of the law.

We have tried, however, through cross-references in both text and notes, to alert

the reader to overlap or even conflict between the various branches of

intellectual property law.

We have sought to steer a middle ground with the citation of authority. In

order to keep the book to a manageable size, we did not attempt to follow the

law review practice of supporting every statement with a citation, nor did we

attempt to gather complete lists of authorities for various propositions. That such

a task would have been impossible in a single volume is evidenced by the

existence of huge multi-volume works in all three branches of intellectual

property law. On the other hand, we have tried to provide at least some support

for most major points, and sufficient

viii

information to allow the curious reader to get a head start on further research.

Intellectual property issues are unusually engaging and stimulating. The

excitement of this area of the law reflects the excitement of living in a

technologically advanced, culturally diverse, economically robust time and

place. As more and more authors develop more and more ways to express

themselves and to disseminate their work; as more and more technologists

conjure more and more ways to make our lives longer, healthier, easier and more

fun; and as more and more merchants conjure more and more varieties of goods

and services to cater to our needs and wants along with appealing symbols to

identify them; the law has been in a mad scramble to keep up. The Internet and

globalization have thrown down extraordinary challenges to the legal system.

For the student of intellectual property, there is never a dull moment.

Even more significantly, we believe that thoughtful legal rules in these areas

can facilitate amazing progress and much good for the citizens of the United

States and the world, while rules crafted to advance special interests hold the

potential of doing great harm to large numbers of people. Our hope is that this

book will help a wide variety of actors in the legal system to gain the kind of

introduction to copyright, patent and trademark issues that will enable them both

to distinguish between sound and unsound legal regimes and to become

champions of the former. A teaching book can aspire to no more and should

aspire to no less.

ROGER E. SCHECHTER

JOHN R. THOMAS

Washington, D.C.

March, 2003

March, 2003

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WESTLAW® Overview

_________

Intellectual Property: The Law of Copyrights, Patents and Trademarks offers

a detailed and comprehensive treatment of the complex issues involving

intellectual property. To supplement the information contained in this book, you

can access Westlaw, West’s computer-assisted legal research service. Westlaw

contains a broad array of legal resources, including case law, statutes, expert

commentary, current developments, and various other types of information.

Learning how to use these materials effectively will enhance your legal

research abilities. To help you coordinate the information in the book with your

Westlaw research, this volume contains an appendix listing Westlaw databases,

search techniques, and sample problems.

The instructions and features described in this Westlaw overview are based

on accessing Westlaw via westlaw.com® at www.westlaw.com.

THE PUBLISHER

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xxxi

INTELLECTUAL PROPERTY THE LAW OF

COPYRIGHTS, PATENTS AND TRADEMARKS

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xvii

Table of Contents

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PREFACE

WESTLAW OVERVIEW

Chapter 1. Introduction to Intellectual Property

§ 1.1 Forms of Intellectual Property

1.1.1 Copyright and Related Rights

1.1.2 Patents, Trade Secrets and Related Rights

1.1.3 Trademark and Related Rights

§ 1.2 Norms of Intellectual Property

1.2.1 Intangible Property

1.2.2 The Right to Exclude

1.2.3 Exhaustion of Rights

1.2.4 The Public Domain

1.2.5 Territoriality

§ 1.3 Intellectual Property Policy

1.3.1 Instrumental Rationales

1.3.2 Natural Rights

1.3.3 Criticism of Intellectual Property Law

Chapter 2. Introduction to the Law of Copyright

§ 2.1 Brief Overview of the Copyright Law

§ 2.2 Historical Development

2.2.1 Early Origins

2.2.2 The Statute of Anne

2.2.3 Colonial Copyright and the Constitution

2.2.4 The 1909 Act

2.2.5 The 1976 Act

2.2.6 Subsequent Legislative Developments

§ 2.3 International Copyright Harmonization

2.3.1 The Berne Convention

2.3.2 The TRIPS Agreement

§ 2.4 Rationales for Copyright Law

2.4.1 Instrumental Rationales

2.4.2 Natural Rights

2.4.3 Criticism of the Copyright Law

Chapter 3. The Subject Matter of Copyright—Basic Requirements

§ 3.1 Originality

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3.1.1 Independent Creation

3.1.2 Minimal Creativity

§ 3.2 Fixation

§ 3.3 No Protection For Ideas

§ 3.4 Procedural Considerations

Chapter 4. The Subject Matter of Copyright—Specific Categories of

Protectable Works

§ 4.1 Literary Works

4.1.1 Fictional Works

4.1.2 Non–Fiction Works

4.1.3 Computer Programs

§ 4.2 Musical Works

§ 4.3 Dramatic Works

§ 4.4 Pantomimes and Choreographic Works

§ 4.5 Pictorial, Graphic and Sculptural Works

§ 4.6 Motion Pictures and Other Audiovisual Works

§ 4.7 Sound Recordings

§ 4.8 Architectural Works

§ 4.9 Derivative Works

§ 4.10 Compilations

§ 4.11 Non–Copyrightable Subject Matter

4.11.1 Works Prepared by the U.S. Government

4.11.2 Fonts and Typefaces