1 of 28 Lecture 9 INTELLECTUAL PROPERTY Topics covered: The Creation of Intellectual Property Rights International Intellectual Property Organizations Intellectual Property Treaties The International Transfer of Intellectual Property

2 of 28 OUTLINE 1.Introduction to Intellectual Property a. Defined: an ownership interest in useful information or knowledge. b. Role of municipal law: 1)Creates intellectual property rights. 2)Establishes rules for transferring intellectual property rights. c. Role of international law: 1)Establishes guidelines for the uniform definition and protection of intellectual property. 2)Makes it easier for owners to acquire rights in different countries.

A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS Copyrights – Defined: rights in original intellectual creations in the fields of art, literature, music or science that have been fixed in a tangible medium for the purpose of communication. "Original intellectual creations" (or "works") that the author has "infused with creativity."

4 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 1. Copyrights (continued) a. Defined : (cont.) 2)Works in the "fields of art, literature, music or science," such as: a)Literary, dramatic, musical and artistic works. b)Sound recordings. c)Films. d)Radio and television broadcasts. e)Computer programs (in some countries). 3)Works "fixed in a tangible medium of expression" for the purpose of being communicated.

5 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 1.Copyrights (continued) b. No formalities are required to establish a copyright 1)No requirement to use © or the word copyright 2)No requirement to disclose the copyright owner 3)No requirement to state the date when the work was first published 4)No requirement to register 2. Duration: a copyright lasts for 50 years following the author's death (Berne Convention) –Can be longer if members laws allow so. America has extended it for and additional 25 years (total now 75). Upheld by US Sct. In 2003.

6 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 1.Copyrights (continued) d. Scope of rights: copyright holder may only restrict the use of the work itself. 1)May not prevent others from using the idea or the knowledge contained in the copyrighted work.

7 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 1.Copyrights (continued) e. Pecuniary Rights (i.e., to exploit a work for economic gain): 1)Right to reproduce. 2)Right to distribute. a)Exhaustion of Rights: once a work has been distributed to the public, the right to control its distribution comes to an end. 3)Right of performance.

8 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 1.Copyrights (continued) f. Moral Rights (i.e., to prohibit others from tampering with a work). 1)These include: a)Right to object to distortion, mutilation or modification. b)Right to be recognized as the author. c)Right to control public access to the work. d)Right to correct or retract a work.

9 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 1.Copyrights (continued) f. Moral Rights (continued) 2)The World Trade Organization's Agreement on Trade- Related Aspects of Intellectual Property Rights: requires WTO member states to comply with the provisions of the Berne Convention. a)Caveat: Does not require WTO member states to comply with the Berne Convention provisions granting moral rights to authors.

10 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 1.Copyrights (continued) g. Uses that do not constitute an infringement of a copyright (commonly are): 1)Use in a court or administrative proceeding 2)Use by the police if the material (such as a portrait) is needed to maintain public safety 3)Use for instructional purposes in schools

11 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 1.Copyrights (continued) g. Uses that do not constitute an infringement of a copyright (commonly are): 4)Use for a purely private purpose 5)Use in brief quotations in scholarly or literary works, or in reviews 6)Use in extended quotations of newsworthy speeches or political commentaries

JUDGE JUDY READY TO RULE-- Case: Quality King Distributors v. L’anza Research International: +Court+Facts+Legal Significance +Parties+Rational +Issue+Result

13 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 2.Patents a. Defined: rights in new, non- obvious, and useful machines, articles of manufacture, compositions of matter, or processes.

14 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 2.Patents (continued) a. To obtain a patent an inventor must show that the invention is: 1)“New”: that no other inventor can have obtained a patent for the same invention. 2)“Non-obvious”: that the “subject matter” of an invention was not “obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 3)“Useful”: that the machine, product, or process is one that can be used in industry or commerce.

15 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 2.Patents (continued) c. Inventions Excluded from Patent Protection: 1)The WTO's Agreement on Trade- Related Aspects of Intellectual Property Rights allows a WTO member state to deny patents: a)To protect the ordre public or morality.

16 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 2.Patents (continued) c. Inventions Excluded from Patent Protection: 1)The WTO's Agreement on Trade- Related Aspects of Intellectual Property Rights allows a WTO member state to deny patents: b)If the inventions involve: i.Diagnostic, therapeutic, and surgical methods for the treatment of humans or animals. ii.Plants and animals other than microorganisms. a] Caveat: states must provide protection for plant varieties. iii.Essentially biological processes for the production of plants or animals.

17 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 2.Patents (continued) d. Duration of Patents: The WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights requires that term of a patent be no less than 20 years. e. National Character of Patents: a patent is only valid within the territory of the state granting it. 1)States cannot prevent the use of patented technology outside their territory. 2)States will stop the importation of goods from third countries that infringe a patent.

A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS Trademarks – Defined: any word, name, symbol, or device that merchants and others use to identify themselves and their products – Acquiring Trademarks By use By registration –Not available in a few countries Note: famous foreign trademarks will be protected to prevent confusion of local consumers

19 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 3.Trademarks (continued) c. Term of Registered Trademarks: the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights sets the minimum term at 7 years. 1)Registration may be renewed indefinitely.

JUDGE JUDY READY TO RULE-- Case: Experience Hendrix v. Hammerton: +Court+Facts+Legal Significance +Parties+Rational +Issue+Result

21 of 28 A. THE CREATION OF INTELLECTUAL PROPERTY RIGHTS 4.Know-How a. Defined: the practical expertise acquired from study, training and experience b. Laws protecting know-how: 1)No specific statutory enactments 2)General basis of protection: a)Contract and tort b)Trade secrecy laws if the know-how is kept secret

22 of 28 B. INTERNATIONAL INTELLECTUAL PROPERTY ORGANIZATIONS 1.World Intellectual Property Organization (WIPO) a. Responsible for: 1)Administering the Paris and Berne Unions and other intellectual property conventions. 2)Sponsoring and hosting conferences for the development of new intellectual property rights agreements. 3)Promoting the modernization of national intellectual property laws.

23 of 28 B. INTERNATIONAL INTELLECTUAL PROPERTY ORGANIZATIONS 2.Council for Trade-Related Aspects of Intellectual Property Rights (Council for TRIPS) a. Responsible for overseeing the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (Agreement on TRIPS). 1)Council monitors WTO member state compliance with the Agreement on TRIPS. 2)Consults with WIPO and cooperates with WIPO’s constituent bodies.

24 of 28 C. INTELLECTUAL PROPERTY TREATIES 1. Agreement on TRIPS (World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights). a.All WTO member states are automatically parties. b.Purpose: to create a multilateral and comprehensive set of rights and obligations governing the international trade in intellectual property.

25 of 28 C. INTELLECTUAL PROPERTY TREATIES 1. Agreement on TRIPS (continued) c.A common minimum of protection is established for intellectual property rights. 1)WTO member state must observe the substantive provisions of the Paris, Berne, Rome and IPAC conventions 2)The Agreement on TRIPS provides rules to fill gaps in the above treaties (e.g., it specifies the term of a patent). 3)The basic principles of the General Agreement on Tariffs and Trade are extended to the field intellectual property rights (i.e., nondiscrimination, national treatment, transparency and simplification).

26 of 28 C. INTELLECTUAL PROPERTY TREATIES 2.Agreements Establishing Common Minimum Standards for Granting Intellectual Property Rights a. Berne Convention: The International Union for the Protection of Literary and Artistic Property of b. Paris Convention: The International Union for Protection of Industrial Property of 1883.

27 of 28 C. INTELLECTUAL PROPERTY TREATIES 2.Agreements Establishing Common Minimum Standards for Granting Intellectual Property Rights (continued) c. Rome Convention: The International Convention for the Protection of Performers, Producers of Phonograms, and Broadcasting Organization of d. IPIC Convention: Treaty on Intellectual Property Rights in Respect of Integrated Circuits of 1989.

28 of 28 D. THE INTERNATIONAL TRANSFER OF INTELLECTUAL PROPERTY 1.Ways to transfer intellectual property rights internationally: a.The owner may work the property rights abroad. b.The owner may transfer the rights to another. c.The owner may license another to work them. d.A government may grant a compulsory license so that a third party may exploit them.

29 of 28 D. THE INTERNATIONAL TRANSFER OF INTELLECTUAL PROPERTY 2.License a. Defined: a non-exclusive revocable privilege that allows a licensee to use a licensor's property. b. Created by contract. 1)Standard contractual rules are used to interpret licenses. 2)Unfair competition laws regulate the scope of licenses.

30 of 28 D. THE INTERNATIONAL TRANSFER OF INTELLECTUAL PROPERTY 3.Compulsory License a. Available if the owner of intellectual property (e.g., a patent or a copyright) refuses to work the property in the country within a certain period of time. 1)A third party may apply for a compulsory license. 2)Issued by the government without the consent of the owner. b. Not subject to the same rules that apply to licenses.

Successors & Assigns Clause