Intellectual Property Law: Commercial, Creative and Industrial Property

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Jay Dratler, Jr., Stephen McJohn

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This four-volume treatise covers all major fields of intellectual property: patents, process patents, trade secrets, copyright, technological protection of copyrighted works under the Digital Millennium Copyright Act, online copyright and trademark liability, semiconductor chip protection, import exclusion, database protection, software protection, Web publishing, trademarks, trade dress, Internet domain names, parallel imports and “gray goods,” and unfair competition. Intellectual Property Law: Commercial, Creative, and Industrial Property also discusses the TRIPs Agreement, the Madrid Protocol and other international conventions, and compares the basic principles of U.S. law with those of Asian and European law.

An introductory chapter outlines and compares the various fields of intellectual property law, analyzing their purposes, underlying policies and important differences, as well as their treatment by the courts. Separate sections for each type of intellectual property examine what can be protected, the requirements for protection, the intellectual property owner's rights, limitations on those rights and the standards for establishing infringement.

Concluding chapters provide detailed comparisons of the remedies available under the various intellectual property statutes and at common law, including monetary relief, preliminary and permanent injunctive relief, augmented and punitive damages, import exclusion, attorneys' fees and criminal sanctions. Extensive treatment of legislative and regulatory, judicial and international developments is incorporated throughout.

Book #00615; looseleaf, four volumes, 3,346 pages; published in 1991, updated as needed; no additional charge for updates during your subscription. Looseleaf print subscribers receive supplements. The online edition is updated automatically. ISBN: 978-1-58852-054-8

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  • Availability: Available
  • Brand: Law Journal Press
  • Product Type: Books
  • Edition: 0
  • Page Count: 3346
  • ISBN: 978-1-58852-054-8
  • Pub#/SKU#: 615
  • Volume(s): 4

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  • Jay Dratler, Jr.

Professor Jay Dratler, Jr. brings to this book the unique perspective of a scientist, engineer, lawyer and law professor. After receiving his doctorate degree in physics from the University of California in San Diego in 1971, he spent four years working as a scientist and engineer. His work included eighteen months managing the electronics laboratory of a start-up, high-technology company.

Professor Dratler completed his legal education at Harvard Law School, where he graduated magna cum laude in 1978 after serving as Articles Editor of the Harvard Law Review. He practiced law for more than eight years, first with Morrison & Foerster in San Francisco, then in Californias Silicon Valley with Fenwick, Davis & West (now Fenwick & West). In 2010, Dr. Dratler retired as the Goodyear Professor of Intellectual Property, Emeritus at the University of Akron School of Law, in Akron, Ohio. There he taught Computer Law, Copyright, Cyberlaw, Introduction to Intellectual Property, Licensing and Trade Secrets, and Patent Law and Policy.

He is the principal author (with Professor Stephen McJohn) of a four-volume treatise on intellectual property, a one-volume treatise on cyberlaw and a two-volume treatise on licensing. Professor Dratler still teaches special courses in the US and Australia, consults on IP licensing and strategy and is a member of the American Bar Association, the American Intellectual Property Law Association and the American Law Institute.

Also by Jay Dratler, Jr.:
Licensing of Intellectual Property
Cyberlaw: Intellectual Property in the Digital Millennium

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  • Stephen McJohn
Professor Stephen McJohn is a professor at Suffolk University Law School in Boston, Massachusetts where he teaches in the areas of intellectual property and commercial law. His scholarly interests lie in areas touching on law and technology, such as intellectual property, computer law, artificial intelligence and legal reasoning, and economic analysis. Professor McJohn received his B.A. in Computer Studies and his J.D., magna cum laude, from Northwestern University. After studying law in Germany and completing a federal appellate clerkship, he practiced law in the Chicago office of Latham and Watkins and taught at the IIT Chicago-Kent School of Law.

Also by Stephen McJohn:
Licensing of Intellectual Property
Cyberlaw: Intellectual Property in the Digital Millennium

Volume 1

Overview of Intellectual Property

§ 1.01 What Is Intellectual Property?
[1] Distinctive Aspects of Intellectual Property
[2] Subfields of Intellectual Property
[3] Emergence of Intellectual Property as a Single Field of Law
[4] Comparing the Forms of Intellectual Property
§ 1.02 Protected Subject Matter
[1] Patents
[2] Copyrights
[3] Semiconductor Chip Protection
[4] Trade Secrets
[5] Trademarks and Related Property
[6] Exploiting the Overlap
§ 1.03 Strength of Protection
[1] Patents
[2] Copyrights
[3] Semiconductor Chip Protection
[4] Trade Secrets
[5] Trademarks
§ 1.04 Duration of Protection
§ 1.05 Requirements for Protection
[1] Patents
[2] Copyrights
[3] Semiconductor Chip Protection
[4] Trade Secrets
[5] Trademarks and Related Property
§ 1.06 Procedure for Protection
[1] Patents
[2] Copyrights
[3] Mask Works
[4] Trade Secrets
[5] Trademarks and Related Property
§ 1.07 Infringement
[1] Infringing Activities
[2] Standards of Infringement
§ 1.08 Two Paradigms of Intellectual Property Law
[1] The Constitutional Paradigm: “Strong” Protection for a Limited Time
[2] The Interstate Commerce Paradigm: “Weak” Protection for Potentially Unlimited Time
[3] Federal Preemption
§ 1.09 International Protection of Intellectual Property
[1] Territoriality
[2] Treaties and International Conventions
[3] Effects and Problems of International Conventions
§ 1.10 Intellectual Property as Collateral
[1] Security Interests in Trademarks
[2] Security Interests in Copyrights
[3] Security Interests in Patents

The TRIPS Agreement and the GATT Uruguay Round

§ 1A.01 Introduction: The Importance of the Uruguay Round Agreements
§ 1A.02 Impact of the Uruguay Round Agreements
[1] The GATT 1947 and the GATT 1994
[2] Breakthroughs of the Uruguay Round Agreements
§ 1A.03 The Uruguay Round Agreements and the World Trade Organization
[1] The World Trade Organization (WTO)
[2] The Multilateral Trade Agreements (Including the TRIPS Agreement)
[3] The Plurilateral Trade Agreements
§ 1A.04 Effect of the Uruguay Round Agreements on Domestic Law
§ 1A.05 Effective Date of the WTO and TRIPS Agreements and Transition Rules
[1] Entry into Force
[2] Transition Rules
[3] Table of Transition Rules
§ 1A.06 Substantive Requirements of the TRIPS Agreement
[1] General Requirements
[2] Specific Requirements for Patents
[3] Specific Requirements for “Undisclosed Information” (Trade Secrets)
[4] Specific Requirements for Copyrights
[5] Specific Requirements for Semiconductor Chip Protection
[6] Specific Requirements for Trademark Protection
[7] Specific Requirements for Geographical Indications
[8] Specific Requirements for Industrial Designs
[9] Protection of Existing Matter
§ 1A.07 Remedial Requirements of the TRIPS Agreement
[1] Mandatory Remedies
[2] Optional Remedies
[3] The “Escape Clause”
§ 1A.08 Requirements for Legal and Administrative Procedure
[1] General Requirements
[2] Rights of Appeal
[3] Transparency
§ 1A.09 Conforming Changes in United States Law
[1] Legislative Changes Under the Uruguay Round Agreements Act
[2] Changes Not Made

Obtaining Patent Rights

§ 2.01 Introduction
§ 2.02 Patentable Subject Matter—Types of Patents
[1] Utility Patents
[2] Design Patents
[3] Plant Patents
§ 2.03 Problematic Subject Matter
[1] Introduction
[2] Fundamental Scientific Principles and Natural Phenomena
[3] Mathematical Formulas and Algorithms
[4] Business Ideas
[5] The Limited Exception for Medical and Surgical Procedures
§ 2.04 The Novelty Requirement
[1] The First-to- Invent Rule (1952 Act) and First-to-File Rule (2011 Act)
[2] The One-Year Statutory Bar
[3] Priority of Invention
[4] Other Aspects of the Novelty Requirement
[5] Novelty under the 2011 Act’s Unified First-to-File Rules
§ 2.05 The Utility Requirement
§ 2.06 The Nonobviousness Requirement
[1] The Three-Part Test for Nonobviousness
[2] Objective Factors or “Secondary Considerations”
[3] “Combination” Patents
[4] Novelty and Nonobviousness: The Synergy of Sections 102 and 103
[5] “Obvious to Try”: A Bogus Standard
[6] The Federal Circuit’s “Suggestion” Test
[7] New Uses for Old Products and Processes
§ 2.07 Patent Disclosure Requirements: Enablement, Definiteness, Best Mode, and Written
[1] Enablement
[2] Definiteness of Patent Claims
[3] Relationship of Disclosure and Definiteness to the “Obvious to Try” Doctrine
[4] Best Mode
[5] Enablement Through Deposit of Biological Materials
[6] Written Description
§ 2.08 The Patent Applicant’s Duty of Candor and Inequitable Conduct in Patent Prosecution
[1] The Duty of Candor and Included Duty to Disclose
[2] Inequitable Conduct (Formerly “Fraud on the Patent Office”)
§ 2.09 Other Technical Requirements for Valid Patents
[1] Double Patenting
[2] Inventorship
§ 2.10 The Presumption of Patent Validity

Volume 2

Scope of Patent Rights

§ 2A.01 Nature of Exclusive Rights
[1] The Power to Exclude and Its Strength
[2] The Elusive “Experimental Use” Exception
[3] Patent Suppression and Refusal to License
§ 2A.02 Duration of Exclusive Rights
[1] Basic Rules for Computing the Patent Term
[2] Patent Term Adjustment and Extension
[3] Effective Dates and Transition Rules
§ 2A.03 Scope of Exclusive Rights
[1] Claim Interpretation and “Literal” Infringement
[2] The Doctrine of Equivalents
[3] Means-Plus-Function Claims
§ 2A.04 Statutory Extensions of Exclusive Rights
[1] Sale of Components, Material or Apparatus
[2] Foreign Assembly
[3] Process Patents
[4] Provisional Rights
§ 2A.05 Limitations on Exclusive Rights
[1] The First-Sale or Exhaustion Doctrine
[2] Prosecution History Estoppel or “File Wrapper” Estoppel
[3] Reverse Doctrine of Equivalents
[4] Patent Misuse
[5] The Repair Doctrine
[6] Elimination of Licensee Estoppel: The Licensee’s Right to Challenge Patent Validity
[7] Regulatory Testing of Health Care Products
[8] Defense to Infringement Based on Prior Commercial Use
§ 2A.06 Some International Aspects of Patent Protection
[1] International Protection in General
[2] Some General Principles of Patent Statutes Abroad
§ 2A.07 The Patent Cooperation Treaty
§ 2A.08 Foreign Filing Licenses and Secrecy Orders
[1] Invention Screening and “Foreign Filing Licenses”
[2] Secrecy Orders

Products of Patented Processes

§ 3.01 Processes and Their Products
§ 3.02 Products Not Covered
[1] The “Material Change” Exemption
[2] The “Trivial and Nonessential Component” Exemption
[3] Coverage or Protection Limited to Products of Manufacturing Processes
§ 3.03 Liability of Retailers and Noncommercial Users
§ 3.04 The Inventory Rule
[1] Inventory Covered and “Notice of Infringement”
[2] Does “Knowledge” Override the Limitation of Remedies?
[3] Permissible Quantity
[4] Full Liability for Those Who Practice the Patented Process and Their Control Persons; Patent Marking
§ 3.05 Patent Disclosure and Notification of Infringement
[1] Requests for Disclosure
[2] Responses to Requests for Disclosure
[3] Written Notification of Infringement
§ 3.06 Presumption of Use of Patented Process
[1] Substantial Likelihood of Use
[2] Reasonable Effort to Determine Process Used
§ 3.07 Effective Date and “Grandfather” Clause

Trade Secrets

§ 4.01 Overview of Trade Secrets
[1] Unusual Features of Trade Secrets
[2] Underlying Policies
[3] Sources of Law
§ 4.02 The Subject Matter of Trade Secret Protection
[1] The Definition of “Trade Secret”
[2] The Rejected Exceptions for Transitory and Negative Information
[3] Examples of Trade Secrets
[4] Employees and Public Policy
[5] Customer Lists
§ 4.03 The Fundamental Requirements for a Trade Secret: Limited Availability, Economic Value, and Relative Secrecy
[1] Limited Availability
[2] Economic Value
[3] The Requirement for Reasonable Efforts
[4] The First Restatement’s Six Factors
[5] Practical Evidentiary Factors
§ 4.04 “Exclusive” Rights in Trade Secrets and Misappropriation
[1] Duration of Legal Protection
[2] Misappropriation and Improper Means
[3] Product Modification and Improvement: Determining Whether a Trade Secret Has Been Used
[4] Availability Through Proper Means: The “Could Have” Defense
[5] Indirect and Accidental Misappropriation
[6] Are Trade Secrets “Property”?
[7] Relief from Misappropriation and the “Head Start” Period
§ 4.05 Trade Secrets and Contracts
[1] The Effect of Tort Law and Confidential Relationships
[2] Contractual Protection of Confidential Information
[3] The Practical Value of Nondisclosure Covenants
[4] Nondisclosure and Noncompetition Covenants
§ 4.06 Trade Secrets and Patents
[1] The Election Between Patent and Trade Secret Protection
[2] “Hybrid” Licensing Agreements
§ 4.07 International Aspects of Trade Secret Protection
[1] The Weakness of Trade Secret Protection Abroad
[2] The Value of Practical Measures Abroad
§ 4.08 Disclosure of Trade Secrets to and by the Government
[1] Government Contracts: Protection of Technical Data and Computer Software
[2] Governmental Use or Disclosure of Information
[3] Compensation for Disclosure or Use by the Government

What Is Copyrighted?

§ 5.01 Subject Matter of Copyright
[1] General Scope of Subject Matter
[2] The Idea/Expression Dichotomy
[3] Assessing Infringement: Access and Substantial Similarity
§ 5.02 Problematic Categories of Copyrighted Subject Matter
[1] Computer Programs
[2] Compilations and Databases
[3] Useful Articles
[4] Architecture
[5] The Law
§ 5.03 Prerequisites for Copyright Protection: Fixation, Originality, and Creativity
[1] Fixation
[2] Originality
[3] Creativity
[4] What Copyright Does Not Require

Technological Protection for Copyrighted Works

§ 5A.01 Introduction
§ 5A.02 The Anti-Circumvention Rule
[1] Definitions Under the Anti-Circumvention Rule
[2] The Anti-Circumvention Rule’s Legal and Practical Impact
[3] The Exemptions Promulgated by the Library of Congress
§ 5A.03 The Two Anti-Trafficking Rules
[1] The Anti- Trafficking Rule for Means to Defeat Access Controls
[2] The Anti-Trafficking Rule for Means to Defeat Use Controls
[3] The Three Conditions for Anti-Trafficking Liability
[4] Anti-Trafficking Liability and the First Amendment
§ 5A.04 Exceptions to Anti-Circumvention and Anti-Trafficking Rules
[1] Subject-Matter Classification
[2] The “Target Rules” of the Exceptions
[3] Two Examples: Encryption Research and Reverse Engineering
§ 5A.05 Rules Protecting Copyright Management Information
[1] What Is CMI?
[2] The Basic Rules Protecting CMI
[3] Exceptions and Limitations on Liability
§ 5A.06 Civil Remedies and Criminal Sanctions
[1] Civil Remedies
[2] Criminal Sanctions

Volume 3

The Nature of Copyright Protection

§ 6.01 The Copyright Owner’s Exclusive Rights and Moral Rights
[1] The Reproduction Right
[2] The Derivative Work (Adaptation) Right
[3] The Distribution Right
[4] The Rights of Public Performance and Public Display
[5] The Special Regime for Sound Recordings and Phonorecords
[6] Moral Rights
[7] Performers’ Rights
[8] Fair Use
§ 6.02 Ownership of Copyright
[1] Copyright and Copy Distinguished
[2] The Divisibility of Copyright
[3] Who Owns the Copyright?
[4] Open Source
§ 6.03 Transfer of Copyright
[1] Transfers Permissible
[2] Expropriation
[3] Requirements to Effect a Transfer
§ 6.04 Duration of Copyright
[1] Term of Copyright: Works Created on or After January 1, 1978
[2] Works Created Before January 1, 1978
[3] Restoration of Copyright in Certain Works of Foreign Origin
§ 6.04A Statutory Termination of Copyright Transfers and Licenses
[1] The Evolution of the Termination Right and the Four Kinds of “New Estates”
[2] What Grants Are Terminable?
[3] Termination of Pre-1978 Grants
[4] Termination of Post-1977 Grants
[5] Statutory Protection of the Termination Right
[6] Effect of Termination on Contractual Provisions
§ 6.05 Copyright Misuse

Copyright Formalities: Notice, Registration and Deposit

§ 7.01 Introduction: The International Copyright Conventions and United States Copyright Formalities
§ 7.02 Copyright Notice
[1] The 1909 Act Regime
[2] The Pre-Berne 1976 Act Regime
[3] The Post-Berne 1976 Act Regime
§ 7.03 Registration
[1] Overview of Registration
[2] Effects of Registration
[3] The Mechanics of Registration
§ 7.04 The Deposit Requirements
[1] “Mandatory” Deposit
[2] Registration Deposit

Semiconductor Chip Protection

§ 8.01 Technical Background
[1] Semiconductor Chip Products
[2] Chip Fabrication
[3] The Manufacturing Process
[4] Chip Design
[5] Economics of Semiconductor Chip Production
§ 8.02 Legislative History of the Chip Act
[1] Need for the Chip Act
[2] Outline of Legislative History
[3] The Switch from Copyright to Sui Generis Protection
§ 8.03 Protected Subject Matter
[1] The Nature of Protected Designs
[2] Fixation
[3] Originality
[4] Idea/Layout Dichotomy
§ 8.04 Exclusive Rights in Mask Works
[1] The Reproduction Right
[2] The Distribution Right
[3] The Importation Right
[4] Contributory Infringement
§ 8.05 Limitations on Exclusive Rights
[1] Reverse Engineering
[2] The Innocent Purchaser Exception
[3] First-Sale Doctrine
§ 8.06 Term and Nature of Protection
[1] Term of Protection
[2] Commercial Exploitation
[3] Retroactivity
[4] Constitutional Authority
[5] Effect on Other Laws
§ 8.07 Mask Work Registration, Notice, Ownership, and Transfer
[1] Registration of Mask Works
[2] Ownership of Mask Works
[3] Transfer and Licensing of Mask Works
[4] Standing to Sue for Infringement
[5] Mask Work Notice
§ 8.08 International Considerations
[1] Requirements for Protection of Foreign Mask Works
[2] Statutory Incentives for Reciprocity
[3] International Treaties

Trademarks and Unfair Competition: What Qualifies for Protection

§ 9.01 Trade Symbols: The Subject Matter of Protection Under Trademark Principles
[1] Technical Trademarks
[2] Trade Dress
[3] Titles and Characters
[4] Trade Names
[5] Service Marks
[6] Geographic Trademarks
[7] Internet Domain Names
§ 9.02 Trademark Policies and Requirements for Protection
[1] Trademark Policies
[2] Distinctiveness
[3] Secondary Meaning
[4] Nonfunctionality
[5] Other Statutory Restrictions

Volume 4

Scope of Legal Protection of Trademarks and Other Trade Symbols

§ 10.01 The Standard for Infringement: Likelihood of Confusion
[1] The Nature of “Likelihood of Confusion”
[2] Considering All the Circumstances
[3] Applying the “Likelihood of Confusion” Standard
§ 10.02 Strength and Duration of Trade Symbol Protection
[1] Use and Registration
[2] Abandonment
§ 10.03 Trademark Dilution
[1] Sources of Trademark Dilution Law
[2] What Is Dilution?
[3] The Requirement of Distinctiveness
[4] Other Requirements for Protection
[5] A Multifactor Test for Dilution?
[6] Federal Preemption
§ 10.04 Trademark Fair Use
[1] The Descriptiveness Branch of Fair Use
[2] The Comparison Branch of Fair Use

Protecting and Transferring Trade Symbols: Use, Registration, Assignment, Licensing, and Counterfeiting

§ 11.01 Perfecting Protection by Use or Registration
§ 11.02 Protection Through Use
[1] The Common-Law Rule
[2] Nature of Use
[3] Sources of Common Law
[4] Geographic Extent of Priority
§ 11.03 Federal Registration
[1] Requirements for Federal Registration
[2] Advantages of Federal Registration on the Principal Register
[3] Import Exclusion, Parallel Imports, and Gray Goods
[4] The “Limited Area” Defense
[5] Concurrent Use
[6] Registration on the Supplemental Register
§ 11.04 State Registration
§ 11.05 International Protection
[1] International Conventions and Priority
[2] Protection Against Unfair Competition Abroad
[3] International Registration under the Madrid Protocol
§ 11.06 Trademarks and Goodwill
[1] Goodwill
[2] The Lanham Act’s Abandonment and “Related Company” Rules
§ 11.07 Assignment and Transfer of Trademarks
[1] The Rule Against Assignments in Gross (Without Goodwill)
[2] Statute of Frauds and Recordation
§ 11.08 Trademark Licensing
§ 11.09 Trademark Counterfeiting
[1] Congressional Aims and Purposes
[2] Marks Protected Against Counterfeiting
[3] Definition of “Counterfeit”
[4] State of Mind Requirements
[5] Extenuating Circumstances

Monetary Remedies

§ 12.01 Introduction
§ 12.02 Actual Damages
[1] Causation
[2] Patent and Trademark Marking
[3] Amount of Damages
§ 12.03 Reasonable Royalties and Statutory Damages
[1] Reasonable Royalty
[2] Statutory Damages
§ 12.04 The Infringer’s Profits
[1] Apportionment of Profits
[2] Deductions from Gross Revenue
[3] Double Counting
[4] The Exception for Utility and Plant Patents
[5] The Lanham Act’s Equitable Overlay
§ 12.05 Augmented and Punitive Damages
[1] Augmented Damages for “Willful” Infringement
[2] Punitive Damages
§ 12.06 Attorneys’ Fees
[1] The Fogerty Decision and the Demise of the Double Standard
[2] The District Courts’ Discretion
[3] How Discretion is Exercised
[4] Semiconductor Chip Protection
[5] Trade Secret Cases
[6] Prevailing Party
[7] Relationship between Attorneys’ Fees and Augmented or Punitive Damages
[8] The Effect of Fee-Award Statutes on Rule 68 Settlement Offers
§ 12.07 Interest
[1] Prejudgment Interest
[2] Postjudgment Interest

Nonmonetary Relief

§ 13.01 Injunctive Relief
[1] Preliminary Injunctions
[2] Permanent Injunctions
[3] The Scope of Injunctive Relief
§ 13.02 Exclusion from Importation
[1] Statutory Exclusion by the Customs Service
[2] Tariff Act Exclusion: Section 337
§ 13.03 Impoundment and Destruction
[1] Impoundment and Destruction in General
[2] Seizure in Trademark Counterfeiting Cases
§ 13.04 Criminal Sanctions
[1] Criminal Sanctions for Copyright Infringement
[1A] Criminal Sanctions for Violation of Performers’ Rights
[2] Criminal Sanctions for Trademark Offenses
[3] Criminal Offenses Relating to Trade Secrets