Intellectual Property Law: A Practical Guide to Copyrights,
Patents, Trademarks and Trade Secrets
(C) 2011 Victor D. Lopez, J.D., Esq.
Associate Professor of Legal Studies in Business
Hofstra University, Frank G. Zarb School of Business
Chapter 1: A Brief Introduction to U.S. Law
Before delving into the various aspects of intellectual property law that are the focus of this book, it would be useful to briefly explore some general background information about the unique nature of law in the United States that must be kept in mind by any lay person trying to obtain information about any substantive or procedural area of law. The Common Law and Civil Law Traditions
In order to understand our system of law and some of the unique challenges it presents for anyone seeking to acquire functional legal literacy, we should begin by understanding what makes our legal system different and more complex than that of most other nations. A good place to begin is with a brief introduction into the two major competing systems of law around the world, the civil law and common law systems.The Civil Law Tradition
The oldest and overwhelmingly prevalent system of law is the civil law system that dates back more than four thousand years. Under the civil law system, law is passed down from the lawgiver (the king, or a legislative body) to the people and is strictly enforced by judges whose job it is to enforce the law. Traditionally under civil law systems, judges act as finders of fact and apply the law as written in deciding cases before them. They have little power to question, reverse, expand or define the law as they decide cases as that function is reserved to the lawgiver (e.g., the ruler or a legislative body appointed by the ruler to oversee that function).
Traditionally, the civil law system required laws to be written down in a public place in clear language so that they could be understood by the common citizenry. The most famous comprehensive codification of law under this legal tradition dates back to the Code of Hammurabi, an ancient Babylonian king who ruled from approximately 1792 B.C. to 1750 B.C. in ancient Babylonia (modern day Iran). The Code of Hammurabi was chiseled on a massive cylindrical stone more than seven feet in height and contained 282 laws covering a variety of subjects. The Code was also available on clay tablets, some fragments of which also survived to this day. The stele containing the Code of Hammurabi or clay tablets containing the Code would have been available in strategic locations for public viewing so that Hammurabi’s subjects could know the law and be held accountable for its breach. The concept of chiseling the law onto stone is also a good metaphor for the permanence and immutable nature of law, which for Hammurabi was divinely inspired and intended to reflect universal, permanent ideals of justice.
The same tradition of writing down the law and making it accessible to the people who were expected to abide by it continued under the Twelve Tables of Roman law where, in 450 B.C., twelve bronze tablets specifying a code of law applicable in the Roman Empire were attached to the orator's platform on the Roman Forum in an attempt to make the law accessible to all Roman citizens. These bronze tablets would have been found around the orator’s platforms in any Roman city where the citizens of Rome could presumably consult the law throughout the empire. And the tradition was continued by the Byzantine Emperor Justinian I who in 533 A.D. integrated 1000 years of Roman law into a single code that he called Corpus Juris Civilis--the body of civil law—and is now commonly referred to as the Justinian Code. The most notable attempt in modern times to codify the law into a comprehensive civil code was carried out by a commission appointed by Napoleon Bonaparte in 1800 that resulted in the 1804 Code Civil, more commonly referred to as the Napoleonic Code.
The common thread that binds the civil law tradition from its earliest roots through the modern day is the idea that the law must be written down and made available to the people in language that they can understand. Although much has changed since Hammurabi’s time, and the law has grown increasingly complex in civil law jurisdictions as well as common law jurisdictions, as a general rule, law still changes slowly over time in civil law jurisdictions, is more accessible, predictable and easier to understand in civil law jurisdictions than in common law jurisdictions. And as a rule, making law is still in the hands of legislators, not judges.The Common Law Tradition
The civil law tradition never took hold in England. Whether because of its status as an island nation or lack of strong unifying kings before being incorporated into the Roman Empire, law in England was regional in nature, changing from location to location in keeping with the local customs, traditions and wishes of the local rulers. After the fall of the Roman Empire, England returned to its common law roots. When William I (William the Conqueror) completed the Norman conquest of England in 1066, he found a country without a centralized system of law and set about to consolidate English law into a unified body of law that could be applied throughout the realm. He established the King's Court (Curia Regis) as an advisory body to the barons. The court had both legislative and judicial powers that eventually led to the development of Parliament and the English court system. He also created the first circuit court system, where royal judges traveled from district to district on a set route to hear cases in local courts. These circuit judges first began writing down their decisions to serve as guidelines for local magistrates and themselves in future cases. This tradition of writing down decisions to serve as guidelines, or precedent, for deciding future cases formed the basis for our modern common law system. Unlike civil law systems in which judges apply the law to cases before them, judges in common law systems make law as they decide cases, defining, creating and changing the common law in the course of handing down decisions that become precedent for other future cases.
The English common law system was exported to the former British colonies, including The United States. While the rest of the world largely follows the civil law system, The United States and the former colonies of Great Britain generally follow the common law system. Also unlike judges in most civil law jurisdictions who generally have little power or discretion to interpret or nullify laws passed by legislative bodies, judges in the United States have a great deal of power to reinterpret or nullify the laws passed by federal and state legislative bodies based on their interpretation of the U.S. Constitution and the state constitutions.The Complexity of U.S. Law
There is not a single legal system in the United States or a unified law. Rather, we have fifty states and a handful of other jurisdictions (e.g., the District of Columbia, Puerto Rico, the U.S. Virgin Islands, Guam, etc.) along with a federal system made up of 11 federal districts each with some significant differences in the decisions handed down by their respective courts and the Federal Circuit that handles a variety of specialized issues. And even at the state level, there can be some significant differences in the law even within each state at the county and local levels. Unlike most civil law jurisdictions where a reasonably intelligent person can conduct some simple research and obtain a fairly accurate understanding of the law, our system makes it difficult for non lawyers (and, too often, for lawyers as well) to fully understand the law for two basic reasons. First, judges write their opinions for other judges and lawyers, not for common persons to understand, and legislators are likewise under no obligation to make the laws they write easy for a common citizen to understand or apply. Second, even if a law is clear on its face, there is no guarantee that it will be upheld if challenged in court or interpreted in accordance with its apparent import. In other words, to know what the law is, you need to know what a statute says, how it has been interpreted by the courts at the state and federal levels in the past, and how it is likely to be interpreted in the future. Use Available Resources Wisely
Protecting intellectual property rights requires planning, time and in many cases a significant expense for filing fees, legal fees and related services. Protecting trade secrets, filing for copyright, patent or trademark protection can be complicated processes. In the chapters that follow, I will help you to understand the applicable law and provide you with the necessary resources to better navigate the process for creating and protecting intellectual property rights. I will attempt to explain the law in as straight forward a manner as possible, and will provide additional useful materials in the various appendices including the most relevant sections of the applicable codes, sample forms and links to additional information and resources that are available from a variety of sources free of charge. It is my hope that this book will become a useful resource that makes difficult concepts accessible and provides you with the information you need to better understand and discuss strategies for protecting your intellectual property rights with your attorney.
Chapter 2: General Introduction to Copyright LawIntroduction
The U.S. Constitution gives Congress 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.” Congress exercised this right in passing the Copyright Act of 1790 which was signed into law by President George Washington on May 31, 1790. The Act was brief; it fit on a half page of a newspaper. It provided citizens of the United States copyright protection for the maps, charts, and books they authored for a period of 14 years and allowed copyright protection to be extended for an additional 14-year period. The Copyright Act has been amended numerous times in the intervening years and grown in both complexity and size. The current version of the Act as of this writing is 266 pages not counting 12 appendices.
Although the law has grown in complexity since the first Copyright Act, the core concepts relating to copyright are still relatively simple to understand. In this chapter, we will examine the essential elements of the law and the specific types of intellectual property it is intended to protect.Subject Matter of Copyright
The subject matter covered by the law of copyright is rather broad and includes “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Works of authorship include the following categories:
musical works, including any accompanying words;
dramatic works, including any accompanying music;
pantomimes and choreographic works;
pictorial, graphic, and sculptural works;
motion pictures and other audiovisual works;
sound recordings; and
Copyright protection attaches to original works of authorship fixed in a permanent medium. Note that an original work of authorship is not protected as soon as it is created; rather protection attaches when it is fixed onto a permanent medium so that it can be reproduced and perceived by others at a later time. It is not the act of creation but rather the act of saving or archiving one’s creation in a tangible medium that grants copyright protection to the creator. For example, if a poet constructs a new poem and speaks it aloud, no copyright attaches to this new creation. Copyright attaches only when the work is fixed in an existing or yet to be invented “tangible medium of expression” that allows it to be reproduced and perceived by others later. Writing the poem on paper with a pen or pencil will suffice, as would recording a reading of the poem on tape or in digital form saved as an audio or video file on a computer, compact disk, DVD or some future medium of storage not yet in existence. Likewise, a new dance that is created by a choreographer is not copyrighted until it is “saved” in some form such as by being videotaped or by the choreographer writing down the steps in the dance on paper or some other permanent form through which the dance steps could later be communicated by others. Thus, a photographer who snaps a photograph automatically obtains a copyright to it when the image is captured on film or saved in digital form to the camera’s internal memory, or in an external SD card or other removable storage. And a writer’s words are copyrighted as soon as they are transferred to paper by a pen or other writing implement, or saved onto a computer’s hard disk or removable storage (e.g., burned onto a CD or DVD or saved onto a USB thumb drive or other removable storage media).
Exclusive Rights in Copyrighted Works
The owner of a copyright has the exclusive right to do (and to authorize others to do) all of the following with regard to the work protected by the copyright:
(1) To reproduce the copyrighted work in copies or phonorecords;
(2) To prepare derivative works based upon the copyrighted work;
(3) To distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) In the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copy-righted work publicly; and
(6) In the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
The exclusive nature of the enumerated rights means that no one other than the owner of a copyright (and those acting with his or her consent) may copy, distribute, publicly display, publicly perform or create derivative works based on the copyrighted work. Unauthorized use of copyrighted materials can lead to civil and criminal sanctions that will be discussed later in this chapter. It is important to note that civil and criminal copyright infringement can occur even when unauthorized use of copyrighted work is made that does not bring any material benefit to the copyright infringer. Thus, while making unauthorized copies of a copyrighted book, music CD or of a video DVD for sale clearly involve both criminal and civil violations of copyright law, so does copying a rented movie to keep for personal use, copying an audio book borrowed from the library, or burning a CD of one’s favorite music to give to a friend. By purchasing a legal copy of a copyrighted work such as a book, magazine, or legally downloaded MP3 music files, the user generally obtains the right to use those files for personal use only, and not to copy or redistribute them. Thus you may watch a rented or purchased movie at home, and show it to guests in your home for non-commercial purposes (e.g., without charging them a fee). However, you cannot show the movie in a setting that is open to the public (e.g., on a projection system in your back yard where everyone is welcomed to view the movie). Moreover, the same is true for copyrighted work that is non-commercial in nature. The performance of an amateur rock band in someone’s garage cannot be taped without the band’s consent; and if consent is given to tape the performance, copies of the performance cannot be made without the express consent of the band, nor can the taped performance be posted online, broadcast or played at a public venue without the band’s consent. And the same is true for a dance routine, short story, poem, drawing, painting, sculpture or any other subject matter protected by copyright.