Research Administration For Scientists COMP 290 -083 Tim

Research Administration For Scientists COMP 290 -083 Tim Quigg Class 13: April 7 • History of Copyright Law o Common/Registered o Duration o Infringement o “Fair Use” • Comparison of Patent vs. Copyright Protection • Design Patent vs. Copyright • Trademark Law o Service/Certification/Collective Marks o Trade Names • Trade Secret Law o Business Data • Trade Secret vs. Patent Protection

History of Copyright in the U. S. • Late 15 th Century England – Introduction of Printing Press • 1710 – Statute of Anne • Established principles of author’s ownership of copyright • Fixed term of protection (14 years, renewable for 14 more if author is alive upon expiration of protection) • Created a “public domain” for literature by limiting term of protection and ensuring that once a work was purchased the author no longer had control over its use • 1787 – U. S. Constitution • According to Article I, Section 8, Clause 8 of the U. S. Constitution, “the Congress shall have 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”

History of Copyright in the U. S. • 1790 – U. S. Copyright Act • Granted American authors the right to print, re-print or publish their work for a period of 14 years and to renew for another 14 years • 1831 – Revision of the U. S. Copyright Act • Extended term of protection to 28 years with possibility of a 14 year extension • Conformed with European law • 1870 – Revision of the U. S. Copyright Act • Administration of copyright registrations moved from District Courts to the Library of Congress Copyright Office • No change in term of protection

History of Copyright in the U. S. • 1886 – Berne Convention • Mutual recognition of copyright between sovereign nations • Uniform law to replace need for registration in every country • U. S. did not become a signatory until 1988 • 1908 – Berlin Act • Set duration of copyright protection at life of author plus 50 years • Expanded scope to include newer technologies • 1909 – Revision to the U. S. Copyright Act • Broadened scope to protect all works of authorship • Extended term of protection to 28 years with possibility of a 28 year renewal

History of Copyright in the U. S. • 1976 – Revision to the U. S. Copyright Act • In anticipation of U. S. adherence to the Berne Convention (1886), extended term of protection to life of author plus 50 years (75 years for works for hire) • Allowed for library copying without permission for purposes of • scholarship • preservation • inter-library loan • “Fair Use” Doctrine was Codified • the “fair use” of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright”

History of Copyright in the U. S. To determine whether use is a “fair use”: 1. purpose and character of use (including whether the use is commercially motivated or instead is for nonprofit educational purposes) 2. nature of copyrighted work 3. amount and substantiality of the portion used in relation to whole 4. effect of use on potential market • 1988 – U. S. becomes Berne Convention Signatory • 1990 – Revision to the U. S. Copyright Act • Allowed libraries to lend computer software provided “copy of a computer program which is lent by such library has affixed to the packaging containing the program a warning of copyright”

History of Copyright in the U. S. • 1991 – Basic Books, Inc. v. Kinko’s Graphics Corp. A Federal District Court in New York ruled that Kinko’s Graphic Corporation infringed copyrights, and did not exercise fair use, when it photocopied coursepacks that included book chapters, and then sold them to students for classwork. The court found that most of the fair use factors worked against Kinko’s in this case, especially given Kinko’s profit motive in making the copies. Additionally, the court found that the classroom guidelines did not apply to Kinko’s. The court did not rule that coursepacks cannot constitute fair use in other circumstances.

History of Copyright in the U. S. • 1991 – Feist Publications v. Rural Telephone Service Co. , Inc. The U. S. Supreme Court found that the U. S. Constitution requires that, for a work to receive copyright protection, it must reflect creative expression or originality. Thus, the compilation of a telephone directory by Feist was not an infringement even though it was compiled from the information in the Rural Telephone Service White Pages. The information in the white pages was not copyrightable because it comprised “comprehensive collection of facts arranged in conventional formats. ”

New Challenges to Intellectual Property Rights in the Digital Age • Copyright and Printed Matter • • Copying a book is expensive (poor quality) Loaning it to someone means you can’t use it Somewhat self-enforcing Law, public policy, economics and technology were in relative balance • Copyright and Electronic Information • • • Infinite number of high quality copies Free and instantaneous distribution (world-wide) Expectations of internet users access to information Copyright infringement is relatively easy to accomplish Law, public policy, economics and technology are no longer in relative balance

New Challenges to Intellectual Property Rights in the Digital Age • The Digital Dilemma • The promise of more quantity, quality and access to information while • Imperiling the means for rewarding those who create and publish thus • Reducing the incentive to create! • 200 Years of Intellectual Property History • Rethinking our fundamental premises and practices • Test cases of significant importance occur almost daily • Changes are every bit as significant to society as those associated with the industrial revolution • All this occurring in the context of a global economy where laws and practices vary widely

New Challenges to Intellectual Property Rights in the Digital Age • Remember – Balance of Private Rights and Public Interest “the Congress shall have 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”

Copyright Law in the Digital Age • 1988 – Apple v. Microsoft • 1985 – License agreement between Apple and Microsoft concerning screen display • 1988 – Copyright and breach of contract lawsuit by Apple alleging that in Windows 1. 0 Microsoft (and HP’s New. Wave) went beyond license agreement • 1994 – 9 th Circuit Court of Appeals Ruled • Copyright law protects the original expression of ideas in tangible form (not ideas alone) • Normal standard – infringing copy is substantially similar to original work • New standard – Virtually identical (higher standard)

Copyright Law in the Digital Age • 1993 – Playboy Enterprises Inc. v. Frena The Florida Northern District Court held that Frena, an electronic bulletin board operator, had violated Playboy’s copyright when one of their photographs was digitized and placed on the bulletin board system by one subscriber and downloaded by another subscriber. According to the decision, “it does not matter that Defendant Frena may have been unaware of the copyright infringement. Intent to infringe is not needed to find copyright infringement. Intent or knowledge is not an element of infringement, and thus even an innocent infringer is liable for infringement; rather innocence is significant to a trial court when it fixes statutory damages, which is a remedy equitable in nature. ”

Copyright Law in the Digital Age • 1998 – Sonny Bono Copyright Term Extension Act • Extended protection to life of the author plus 70 years (95 years for works for hire) • Applied to current as well as future copyrighted materials • 1 -15 -03 Supreme Court upheld law • 1998 – Digital Millennium Copyright Act (DMCA) • Implemented WIPO Internet Treaties • Facilitated Internet Broadcasting • Section 1201 “prohibits gaining unauthorized access to a work by circumventing a technological protection measure put in place by the copyright owner where such protection measure otherwise effectively controls access to a copyrighted work”

Copyright Law in the Digital Age • 2000 – Recording Industry Association of America v. Napster • 1998 – 19 year old Shawn Fanning (nickname Napster), a college student at Northeastern University, developed a software application to search for MP 3 files on line. • MP 3’s – greatly compressed file size (12: 1) and high sound quality, made them the preferred means to digitally transmit music files over internet • His peer-to-peer (P 2 P) file sharing technology allowed users to connect with each other and share individual files stored on their individual hard drives (without regard to copyright) • June 12, 2000 – RIAA files lawsuit against Napster for copyright infringement • February 12, 2001 – 9 th Circuit Court of Appeals ruled Napster liable for both contributory and vicarious copyright infringement

Copyright Law in the Digital Age • 2001 – Russian Programmer Arrested for Copyright Circumvention • Dmitri Sklyarov, a Russian programmer accused of circumventing copyright protections in Adobe Systems’ e. Book Reader while working for a Russian software firm, Elcom. Soft. Sklyarov was arrested in July 2001. Elcom. Soft was charged with one count of conspiracy and four counts of trafficking in technology used to circumvent copyright protections. • Elcom. Soft’s attorneys argued that the actions at issue in the case occurred outside of the U. S. , and that the law banned tools that consumers could use for legitimate purposes, such as blind people converting e-books to audio files to be read aloud by their computers. Finally the attorneys argued that computer code is speech and is therefore protected under the first amendment to the U. S. Constitution. • Elcom. Soft verdict: Not guilty (12 -17 -02) • Jury found there was insufficient evidence to prove Elcom. Soft acted “willfully” and knew their actions were intended to violate the law.

Copyright Law in the Digital Age • 2001 – Greenberg v. National Geographic Society • Two photographers claimed that inclusion of their photographs in the NGS’s CD-ROM version violated their copyrights. • NGS argued that Section 201 (c) of the Copyright Act permits the owner of copyright in a collective work, such as a magazine or encyclopedia, to reproduce and distribute an individual author’s freelance contribution “as part of that particular collective work, any revision to that collective work, and any later collective work in the same series. ” • Furthermore, NGS argued that since the CD-ROM included every magazine published between 1888 -1996, it would be impossible to locate every freelance photographer who owns copyrighted pictures. • Greenberg argued that the copyright law prohibits new uses for existing photographs without negotiated royalty payments. • 11 th Circuit Court agreed with Greenburg and Supreme Court refused to hear the case, thus upholding lower court decision which found for Greenburg.

Parody: Fair Use or Copyright Infringement • A parody, because it is a method of criticism, must inevitably make use of another creative work. This inherently creates a conflict between the creator of the work that is being parodied (as no one likes to be criticized, made fun of or ridiculed) and the creator of the parody. It is also highly unlikely that a copyright owner will grant permission or a license to a parodist to use their copyright protected work in creating a parody.

Parody: Fair Use or Copyright Infringement • A parody, because it is a method of criticism, must inevitably make use of another creative work. This inherently creates a conflict between the creator of the work that is being parodied (as no one likes to be criticized, made fun of or ridiculed) and the creator of the parody. It is also highly unlikely that a copyright owner will grant permission or a license to a parodist to use their copyright protected work in creating a parody. • Since copyright law prohibits the substantial use of a copyrighted work without permission of the copyright owner, and because such permission is highly unlikely when the use is to create a parody, it may be necessary for the parodist to rely on the fair-use defense to forestall any liability for copyright infringement. • Another defense – first amendment right of free speech!

Parody: Fair Use or Copyright Infringement • 1994 – Campbell v. Acuff-Rose Music Inc. The Supreme Court ruled that 2 Live Crew’s parody of Roy Orbison’s song, “Pretty Woman, ” was a fair use. The court found that a commercial use could be a fair use especially when the markets for an original work and a transformative work are different.

Copyright Law What is a copyright? A right that the government gives an author of any original work of expression to exclude others from copying or commercially using the work without approval. What does a copyright cover? • Literary/dramatic/musical/artistic works • Software • Any work of authorship COMP 290 -083

Copyright Law When does a copyright go into effect? • Common – at moment of creation • Registered – with U. S. Copyright Office (USCO) • Helps to prove “first to create” in infringement suits (also can collect damages plus legal fees) • Copyright Notice – Copyright Ó 2003 Timothy L. Quigg All Rights Reserved COMP 290 -083

“[TITLE of SOFTWARE]” Copyright © [DATE], The University of North Carolina at Chapel Hill All rights reserved. No part of this software may be sold or distributed in any form or by any means without the prior written permission of the Department of Computer Science, University of North Carolina at Chapel Hill. Distribution and use of this software is subject to the Software License Agreement [ incorporated in this software][set forth below]. By having, retaining or using a copy of this software, you agree to be subject to the terms of the Software License Agreement. ******* Software License Agreement Permission is given to copy [“Name of Software”], and its files (“the Software”) and to use them locally, as long as foregoing Copyright Notice is not removed and the Software name is retained unaltered. By opening, possessing, retaining, using, or having a copy of the Software, you are deemed to have agreed to the terms of this Software License Agreement. The Software is provided strictly on an "as is" basis without warranty of any kind. Neither the University of North Carolina at Chapel Hill, its faculty, staff or students, nor anyone else who has been involved in the creation, production or delivery of the Software shall be liable for any direct, indirect, consequential or incidental damages arising out of the use or inability to use the Software even if such entities or persons may be advised of the possibility of such damages. No part of this software may be sold or distributed in any form or by any means without the prior written permission of the Department of Computer Science, University of North Carolina at Chapel Hill. Your use of the Software is limited to non-commercial, not-for-profit uses and activities. To secure permission to make any other use of the Software, you should contact the person named below. Contact person: _______, University of North Carolina at Chapel Hill email: @cs. unc. edu phone: fax:

Copyright Law How long does a copyright last? Life of author + 70 years What constitutes a copyright infringement? • Directly copying or commercially using the particular arrangement of words in a published work • You can use the ideas/concepts if expressed in your own words COMP 290 -083

Computer Software: Where Patents and Copyrights Overlap Software as a creative work of expression - copyright Software as a set of instructions that make a machine operate in a certain way - patent COMP 290 -083

Computer Software Advantages to patent protection: • 20 years, broad protection Disadvantages to patent protection: • > 2 years to issue (may not be valuable) • Cost COMP 290 -083

Computer Software Advantages to copyright protection: • Inexpensive • Immediate protection • Life of author + 70 years Disadvantages to copyright protection: • Copyright only covers the way program is written, not what it does (all word processors do the same things) • Easy to “design around” COMP 290 -083

Comparison of Design Patent with Copyright Design Patent Copyright • Aesthetic Aspects of Manufactured Articles • Literary/Artistic Works • Broad Rights • Expensive Filing/Prosecution with PTO COMP 290 -083 • Narrow Rights Against Copiers, Not Against Independent Creators • Small Filing Fee

Trademark Law What is a trademark? • Any word or symbol that is consistently attached to a product to identify and distinguish it from others in the marketplace, e. g. , a brand name • Often used with patents for extra protection • Xerox has patents on photocopiers and the Xerox trademark name • If patent expires, trademark still offers some protection • Also used with products that are not patent protected (Hula Hoop, Crock Pot) COMP 290 -083

Trademark Law Other protected words/symbols include: • Service Marks (Blue Cross/Blue Shield Emblem) • Certification Marks (Good Housekeeping Seal of Approval) • Collective Marks (FDIC Symbol) • Trade Name (Proctor & Gamble is trade name - Ivory is trademark) COMP 290 -083

Trademark Law • So, you need a Band-Aid (sterile bandage strip) and some aspirin (acetylsalicylic acid), because while you were in the park roller-blading (in-line skating) and rocking out to your Walkman (portable stereo device), a Frisbee (plastic flying disk toy) clocked you on the noggin (head).

Trademark Law • So, you need a Band-Aid (sterile bandage strip) and some aspirin (acetylsalicylic acid), because while you were in the park roller-blading (in-line skating) and rocking out to your Walkman (portable stereo device), a Frisbee (plastic flying disk toy) clocked you on the noggin (head). • The word “aspirin” is a trademarked brand owned by the German company Bayer AG. Only Bayer may legally use that word everywhere in the world, with the United States being the lone exception. That’s a legacy of World War II. • Trademark laws are specific per country. Some countries don’t even have trademark laws.

Trademark Law • June, 2002 Austria’s Supreme Court ruled that Sony can no longer claim exclusive trademark rights for the name “walkman, ” the hand-held portable tape player it introduced in 1979. The court reasoned that the word had passed into common usage once it had been defined in a German dictionary as any portable stereo player. In the United States, however, the Walkman – name and product – remains solely under Sony’s ownership, and will probably remain so for the foreseeable future.

Trademark Law Victoria’s Secret v. Victor’s Secret • January, 2003 – the case involved a Kentucky mom-and-pop business called Victor’s Secret that sells “adult novelty” and “wild outfits. ” The claimed the name was inspired by Victor Moseley’s desire to keep the business secret from a former employer. The lingerie manufacturer Victoria’s Secret, which has held the trademark on its name since 1981, claimed unfair competition, trademark infringement, and sued him. • At issue for the Supreme Court was whether Victoria’s Secret had to show its trademark was “diluted, ” or whethere was merely the likelihood of economic harm if the store was allowed to keep the name. • A unanimous court ruled that while Victoria’s Secret unquestionably has an interest in protecting its famous name, federal trademark law requires more evidence that a competitor actually caused harm by using a sound-alike or knockoff name. Ruling for Victor’s Secret.

Trademark Law Matel v. MCA Records and Aqua • January, 2003 – The Supreme Court declined without comment to hear a rancorous appeal from Mattel in a trademark battle over the right to parody Barbie in song. Mattel sued after Aqua, a Danish band, called Barbie a “blond bimbo” in their smash 1997 dance single “Barbie Girl. ” • The 9 th Circuit ruled last summer that Aqua’s free-speech rights in their parody outweighed Mattel’s right to see its trademark untarnished and undiluted by Aqua’s mean lyrics. • Barbie broke her silence today to speak out about the lawsuit, issuing the following press release from the steps of her Barbie Dreamhouse in Malibu:

Trademark Law Barbie’s Response Ladies and Gentlemen: It is with a heavy chest that I learned of the Supreme Court’s decision this week not to hear the appeal of my case against Aqua. I want to say for the record that I believe strongly in free speech and that for only $1. 99 I will phone you or your child at home and speak freely to them about all things Barbie TM. So call now. I also want to add that as a feminist, an international spokesmodel, and an artist, I respect the court’s decision about the right of everyone to capitalize on and exploit me and not just the people at Mattel. Finally, I want to express my deep regret about the court’s decision to hear Mickey Mouse’s intellectual property lawsuit earlier this year, while refusing to hear mine. It’s hard to believe that the Supreme Court would be more interested in the fate of that tired little Disney rodent than they would be in mine, but I guess that just goes to show you that sexism is still alive and well in America. Maybe someday when everyone on the Supreme Court looks like and/or Ann Coulter, women, feminists, and America’s downtrodden will finally be treated equally in the eyes of the law. Thank you. Disclaimer: The above material is intended purely as a parody of Barbie and in no way reflects an attempt by Slate to capitalize on Barbie’s name, likeness, or image. Any references herein to “Barbie” are purely coincidental.

Trademark Law Offensive rights for trademark protection: • Arbitrary (Apple Computers), fanciful (Double Rainbow Ice Cream), or coined terms (Intel) are strongest terms • Generic (“The Pill” for birth control pills) or descriptive (“Electric Fork”) are weak and yield little offensive rights • Don’t select a mark already in use (or close enough to cause customer confusion, mistake or deception) • Use the name or file an intent-to-use (ITU) • Register with PTO

Trade Secret Law What is a trade secret? Any information, design, devise, process, composition, technique, or formula that is not known generally and that affords its owner a competitive business advantage • Examples • Formula for paper used to make U. S. currency • Chemical recipes for soft drinks, cosmetics, etc. • Manufacturing process forming eyes in needles COMP 290 -083

Trade Secret Law Trade secrets may also take the form of “Business Information. ” • Customer lists • Names of suppliers • Pricing data Both technical and business information trade secrets can be protected! COMP 290 -083

Trade Secret Law The law affords protection for trade secrets: 1. Proportional to their business value and 2. Based upon how well the business protected the secret The courts have rejected requests for relief if company had sloppy procedures for protecting secrets! COMP 290 -083

Relationship of Patents To Trade Secrets • Pending patent applications are confidential, thus the information can be protected as a trade secret • Rejected patent applications remain confidential, thus the information can be protected as a trade secret • Even if a decision is made by PTO to grant a patent, it can be rejected COMP 290 -083

Relationship of Patents To Trade Secrets Why would an owner choose to reject patent protection in favor of protection under trade secret law? • Perpetual protection is possible • Cost • Confidentiality makes it hard to “design around” • Inventors aren’t named in trade secret rights • Trade secret rights are obtained immediately COMP 290 -083

Relationship of Patents To Trade Secrets Why would an owner choose patent protection over trade secret law? • Reverse engineering is possible with trade secrets. • Patents are presumed valid by the court, trade secrets must be proven to exist before the suit may proceed. • Trade secrets discovered by legitimate means may be patented by others (if an invention is protected under trade secret law and put to commercial use, a patent must be filed within one year or any subsequently issued patent may be invalided). COMP 290 -083

Important Inventors should consider the relative advantages/disadvantages available for protecting their creations under U. S. intellectual property law! COMP 290 -083