COURSE ON INTELLECTUAL PROPERTY LAW

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COURSE ON

INTELLECTUAL PROPERTY
LAW



ICT International Doctorate School

Department of Information and Communication Technology


University of Trento

academic year 2005/2006


(Lecturer: avv. Maria Cristina Osele)

M.C. Osele
-

Course IP Law 2006

2

Course on Intellectual Property Law


Lecture no. 2


Copyright



september 21, 2006


from 4.00 p.m. to 6.00 p.m

M.C. Osele
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Course IP Law 2006

3

3. Intellectual Property Rights



1.
Copyright


1.1

Related rights for derivative works


1.2
Copyright protection of a web page


1.3

Digital Rights Management



2.
Patents


1.1

Inventions


1.2
Software


1.3
Business Method Patents



3.
Trade Secret


4.
Trademark


5.
Unfair Competition

M.C. Osele
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Course IP Law 2006

4

Copyright





Copyright is concerned with the protection of the work
of human intellect, literary and artistic works.





Copyright subject matter includes:


Computer software and architecture (code)


Movies, audiovisual works, including those on a Web site


Musical compositions, including the lyrics of the song


Novels, including e
-
books


Poetry


Literary works, including Web site content


Dramatic works


Sound recordings, including Web site audio trasmissions


Pantomimes and choreographic works


Sculptural works


Architectural works



M.C. Osele
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Course IP Law 2006

5

Copyright




The
Berne Convention
,

the oldest international convention
governing copyright, states the following in its
Article 2


Anyway…. Such a list is not exhaustive.



The expression “
such as..
” used in article 2 opens the door to new
creations than the ones set out in the list.




For instance court decisions in different countries have protected
with copyright material such as



Private letters


A divorce guide


A haircut


Examination papers




M.C. Osele
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Course IP Law 2006

6

Copyright




New Issues.. For new Technologies



Database and Compilation


Computer Programs


Command Codes


Menu



What is a Database?


A database is a collection or compilation of facts



When is a Database copyrightable?


If a database meets the originality requirement and protection
extends to those components that are original and defined under EU
Directive as a “substantial investment” embodied in a database and
under art. 1
Law 22.4.1941, n. 633

as an “… author’s intellectual
creation”

and under article 2, n. 9 “as a collection of works …”




M.C. Osele
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Course IP Law 2006

7

Copyright




New Issues.. For new Technologies


The copyright protection of database was denied in the famous Case Law



Feist Publications Inc. v. Rural Telephone Service Co. Inc.




Facts of the case:


1.
Feist copied information from Rural’s telephone listings to include
in its own, after Rural refused to license the information


2.
Rural sued Feist for copyright infringement


3.
The Court ruled that information contained in Rural’s phone
directory was not copyrightable and that there was no
infringement




M.C. Osele
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Course IP Law 2006

8

Copyright




New Issues.. For new Technologies

The copyright protection of database was denied in the famous Case Law



Feist Publications Inc. v. Rural Telephone Service Co. Inc.

Conclusion


4.
Under Copyright Law “information” is not copyrightable, anyway
“collections” of information can be


5.
The Court clarifies that the intent of copyright law was not to reward the
efforts and expenses of persons collecting information but, under
Constitution, “to promote the Progress of Science and useful Arts” and
encourage creative expression


6.
Collection copyrights apply to only the creative aspects of collection: the
creative choice of which data to include or exclude, the order and style in
which the information is written, and so on..


7.
The Court ruled that Rural’s directory was just an alphabetic list of all
subscribers to its service and that no creative expression was involved


8.
The money and time spent by Rural in order to collect the data was
irrelevant to copyright law and Rural’s copyright claim was dismissed






M.C. Osele
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Course IP Law 2006

9

Copyright


New Issues.. for new Technologies






Computer Programs


In U.S.A. (and now also in Europe..) there is a delicate
matter in the balance between



encouraging creative efforts by providing protection



preventing market
-
slowing monopolies by limiting
that protection















M.C. Osele
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Course IP Law 2006

10

Copyright


New Issues.. for new Technologies



Case Law
Computer Associates Int. v. Altai Ltd.



1.
Computer program are granted by copyright protection


2.
Computer Associates Int. developed a computer program, part of
which called “Adapter” that helped IBM mainframe computer
system schedule various jobs.


3.
In 1982 Altai began marketing a similar product called “Zeke”,
written by a programmer who copied about 30% of Adapter’s Code


4.
Computer Associates sued Altai and started litigation for
infringement of copyright


5.
The difficult issue for the Court was determining the “scope of
copyright protection that extends to a computer program’s non
-
literal structure” and the difference between copyrightable
expression and unprotectable idea












M.C. Osele
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Course IP Law 2006

11

Copyright


New Issues.. For new Technologies


Case Law
Computer Associates Int. v. Altai Ltd
.


6.
The Court explained that the ultimate function of a computer
program is a composite of interacting subroutines, each subroutine
is an individual sub
-
program with its own idea


7.
The Court presented a pratical “three
-
step” approach to determine
substantial similarity, which is known as



Abstraction


allegedly copied program must be broken down and each level of
abstraction isolated so that the court can find the idea at each level


Filtration



If the choises made by the programmer were necessary to
efficiently implement that part of the program, than the expression
has merged with the idea and is not protectable




Comparison Test


When found the copyrightable parts, the court must decide if any
aspect of the protected expression has been copied








M.C. Osele
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Course IP Law 2006

12

Copyright

New Issues.. For new Technologies


Case Law
Computer Associates Int. v. Altai

Ltd.



8.
The Court explained that:


Altai’s computer did not infringe Computer Associates’s
copyright


The scope of copyright protection was still “not completely
clear” and a sort of “relatively weak barrier”


Copyright law was not well
-
suited to the task


Patent law could be a better protection owing to its
requirements of novelty and useful application



Critique:



the decision has rejected the expansive protection of non
literal aspects of computer program found in other
important case Law as
Whelan Associates Inc. v. Jaslow
Dental Laboratory Inc. and Lotus development Corp. V.
Paperback Software Int.


M.C. Osele
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Course IP Law 2006

13

Copyright

New Issues.. For new Technologies


Case Law
Computer Associates Int. v. Altai Ltd.


Anyway…



9.
The Second Circuit’s test has been used frequently for
determining substantial similarity of computer software
programs


10.
In Lotus v. Borland the Altai’s Test was of little help
even if in the U.S. the three
-
prong test has received
much recognition…

M.C. Osele
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Course IP Law 2006

14

Copyright

New Issues.. For new Technologies




Menu and Command Codes



are protected by copyright only if filtered of
-

lack originality






Other significant Case Law




Lotus Dev. Corp. V. Orlane Intl’In




Mitek Holdings, Inc. v. Engineering Co.





M.C. Osele
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Course IP Law 2006

15

Copyright





The
article 2
of the
Berne Convention

protects also the
“derivative works”


Derivative works are derived from other, existing sources.


They are:


Translation of works into a different language


Adaptations of works (movies, novel, and so on)


Arrangements of music


Other transformation of works, such as an abridgement of a novel


Compilations, such as encyclopedias and anthologies



The duration

of protection of derivative works and related rights


as stated in the Rome Convention, the duration is 20 years from the
end of the year the recording is made, the performance took place,
the broadcast took place.

Important!


for a derivative work you
MUST

respect the right of the author of
the original work.


Without proper authorization you are exposed to the risk of being
sued for copyright infringement




M.C. Osele
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Course IP Law 2006

16

Copyright



Subject matter of copyrights and duration


In Europe and in other civil
-
law countries



-

creation equals protection, but it is necessary the fixation in “some
material form”




-

under
Berne Convention

the work is protected just
by the fact of
its creation




-

registration is not necessary but important as kind of proof in a
court in case of litigation for infringement



-

the work must be creative and must go beyond mere skill, labor or
judgement



-

the copyrights generally endure for a term consisting of the life of
the author, plus an additional 50 years after the author’s death. This
term has been prolonged by European Union countries (and now
also U.S.A.) to 70 years from the author’s death.








M.C. Osele
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Course IP Law 2006

17

Copyright



Subject matter of copyrights and duration



In U.S.A. and in other common
-
law countries



-

fixation is a requirement: a work must be written down or
recorded “..fixed in any tangible medium, of expression… for which
they can be perceived, reproduced, or otherwise communicated”



-

also U.S. Copyright Law protects the expression of an idea and not
the idea itself



-

subject matter is a closed list (not “.. such as ..”)



-

the work needs originality, an amount of skill, labor and judgement
in making it



-

in October 1998 the Sonny Bono Copyright Term Extension ACT
(CTEA) extends the terms of most copyrights by twenty years (see
the next slide). These change and others (moral rights, etc.)
harmonize U.S. law with European copyright laws.






M.C. Osele
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Course IP Law 2006

18

Copyright

Copyright duration in U.S.A.



Where the author of the work cannot be identified, the
protection period is 70 years following the date upon which the
work was first published.



Where the work has been created by a group of persons acting
in collaboration; joint authorship, the period of protection will
last for 70 years following the death of the last surviving author.



Computer generated works are protected for 50 years from the
date of creation. A work will be deemed to be computer
generated where there is no human author.



(Note: Where the computer system merely assists the creator of
the work in his or her endeavours, for instance the use of a word
processor package to create a briefing a paper, the period of
protection for this literary work is the standard 70 years following
the death of the author. A work will be considered to be
computer generated where the software has the effect of
reducing human input to the bare minimum.)




M.C. Osele
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Course IP Law 2006

19

Copyright

Copyright duration in U.S.A.



Sound Recordings
-

50 years from first recording or
publication.

Broadcasts and Cable Programmes
-

50 years from
date of first trasmission.



Films and Motion Pictures
-

70 years from the death of
the last survivor of the principle parties involved in
bringing the production into being; the principle
director(s), screen writers, etc. Note that separate
rights may also be present such as the actors
performance rights.



M.C. Osele
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Course IP Law 2006

20


Copyright




In U.S.A.




The works may be registered in the
U.S. Copyright Office

as a
copyright and the work must be



an original work of authorship fixed in any tangible medium
of expression from which they can be perceived,
reproduced, or otherwise communicated either directly or
with the aid of a machine or device”


This requirement may fit the application of the material found on
Web pages, allowing them to be federally registered with the
U.S.
Copyright Office




Under the
Copyright Act of 1976
a creative work is
fixed



“When its embodiment in a copy or phonorecord … is
sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of
more than transitory duration”





The Copyright Office issues a certificate of registration which is
prima facie

evidence of the validity of copyright and allows the owner to sue an
infringer in the federal court.









M.C. Osele
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Course IP Law 2006

21



Copyright



Criteria for copyright protection of a Web Page in U.S.A.




1.

Originality


-

the Web site may not copy a similar site




2.

Creativity



-

the Web site need not be novel, as in a patent requirement, but
should be an indipendent creation



3.

Fixed form



-

the application of the content to the Web site is sufficient to create
a fixed form for copyright protection






M.C. Osele
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Course IP Law 2006

22



Copyright



Criteria for copyright protection of a Web Page in U.S.A.



4.
Legal Strategy


-

register the copyright of the Web pages


-

include appropriate disclaimers in the Term of Use for copyright
infringement by linked companies


-

monitor bullettin boards and chat rooms for known copyright
infringements by third parties


5.
linking to a Web Site by listing its URL is not a “copying”


This position is based on the theory the going online creates an
implied license for anyone with a computer to view the Web site



6.
Databases

may be subject to copyright registration if the author
is creative in selecting and arranging the data and does not merely
display the data as facts.




M.C. Osele
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Course IP Law 2006

23

Copyright



Under copyright there are two types of right


1.
Economic Rights


which allow the owner of rights to derive financial reward from the
use of his work by other


2.
Moral Rights
(limited in U.S.A.)


which allow the author to take actions to preserve the personal
link between himself and the work. The author can oppose to the
work being distorted or used in contexts which might be prejudicial
to his/her honour and literary


artistic reputation.


M.C. Osele
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Course IP Law 2006

24


Copyright





Economic rights are governed by the
Berne Convention

(minimum
rights) and by national law (further protection).



What rights does a copyright holder have?


1.
The right of reproduction


(cover the printing of books, photocopying, tape recording, copying
of tape recordings, storage of works in computer memories, copying
of computer programs)


2.
The right of distribution


(selling, reselling, renting, or leasing copies)


3.
The right to prepare Derivative Works


(performance, broadcasting and Communication to the public,
translation, adaptation)


4.
The right to perform and display Publicly a Copyright Work

M.C. Osele
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Course IP Law 2006

25








Copyright




Transfer of Copyright




Innovation in general requires financial investment and
professional skill



-

for the production of creative works protected by IPR (copyright,
patents, ..)



-

for further dissemination and mass distribution



Activities covered by copyright (book publishing, sound
recording, film producing) are usually undertaken by
specialized business organizations or companies



Authors and creators usually transfer their rights to specialized
companies by way of:



-

a contractual agreement (usually is required a written assignment,
proper in case of litigation)


-

in exchange of a proper compensation for the assignment or partial
assignment










M.C. Osele
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Course IP Law 2006

26








Copyright




Transfer of Copyright





The compensation for the assignment may be done:



-

as lump sum payments



-

as royalties based on a percentage of revenues generated by the
activity



-

as shares of the company



The transfer/assignment may be granted on negotiations
between assignor/assignee



-

worldwide or for a limited area/country



-

for the duration of copyright









M.C. Osele
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Course IP Law 2006

27


Copyright


Some important articles of the italian

Law 22.4.1941, n. 633



Art.68 : limitation in copy of part of a book


FAQ

about the matter



Art. 171 bis e 171 ter

M.C. Osele
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Course IP Law 2006

28


Copyright




Case Law



Right to reproduce the Work



Apple computer v. Formula International, 594



MAI Systems Corp. v. Peak Computer, Inc. 1991



Right of distribution



Marobie
-
Fl., Inc. v. National Ass.’n of Fire Equip.




Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc.



Right to prepare Derivative works



Lewis Gallo Toys, Inc. v. Nintendo, Inc.




Copyright in Cyberspace



Religious Technology Center v. Netcom On
-
line Communications Services, Inc.







M.C. Osele
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Course IP Law 2006

29


Copyright




Limitation on Copyright Owner’s Exclusive Rights



Fair Use doctrine

(e.g. material used in a college
classroom)


Case Law


Princeton University Press Macmillan, Inc. v. Michigan Document
Services, Inc.



First sale doctrine

(the sell of the book, but not of a
computer program)



Public Domain



-

e.g. works of the Government (Free uses)


-

e.g. works whose copyright term has expired




M.C. Osele
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Course IP Law 2006

30


Copyright


Enforcement of Rights



Conservatory or provisional measures


Civil remedies


Criminal sanctions

U.S.A


Theories of Liability for Copyright Infringment



Direct Infringement


the direct actor, with or without specific intent, is the primary part that
violates one of the copyright owner’s exclusive statutory rights


Contributory Infringement


Is the tort (civil wrong not based on contract) of contributing to the
direct infringement of another


Vicarious Infringement


It occurs when a company receives direct financial benefit form the
infringement by another party and had the right and ability to
supervise the infringement activity