Intellectual Property

Contact: James Grimmelmann

This section takes up intellectual property: rights governing the ownership of information. There is no one distinctive set of doctrines governing all intellectual property in the same way that the law of finders applies to all (well, most) personal property or the law of trespass applies to all (well, most) real property. Instead, the name “intellectual property” is a catch-all used to group several related sets of legal rights, each of which gives the rightsholder an exclusive right to use certain information in certain ways. A defendant who uses that information in that way without the rightsholder permission is said to be an infringer.

It is common, and in some respects accurate, to describe the rightsholder as the “owner” of the information, but keep in mind that only certain specified uses count as infringement. There is no body of intellectual property law that prohibits possessing or thinking about information, for example. Instead, different bodies of intellectual property law restrict different kinds of uses. In each case, the scope of the owner’s rights is closely tied to what kinds of information that body of law protects and to the rules governing when someone becomes a rightsholder. The latter is a familiar question: just as first possession gives initial title to personal property, and conquest is at the root of title to real property, creation can provide intellectual property rights. But the former is a new kind of question; we have taken it largely for granted that land is proper subject matter for real property and other tangible things are proper subject matter for personal property. Intellectual property is different, because not every kind of information qualifies. In copyright, for example, processes are not proper subject matter: as a consequence, the list of ingredients in a recipe and the steps for combining them are not copyrightable – even if they meet all of copyright law’s other requirements.

Learning a body of intellectual property law, therefore, requires learning its subject matter, its rules of initial ownership, and its rules of infringement. In this section, we will study three such bodies from the federal level: copyrights, patents, and trademarks. We will study copyright in more detail as an example, and then examine patents and trademarks to see how they are both similar to and different from copyright’s model But there are other systems of intellectual property law as well. Here are a few of the most important ones:

Federal copyright law protects “original works of authorship,” like novels, biographies, songs, screenplays, paintings, blueprints, and sculptures. Copyright law has a very low threshold for protection: a work must merely display a “modicum of creativity” and have been written down (“fixed in a tangible medium of expression”).  The copyright so obtained is valid during its author’s lifetime, and for the next seventy years after that. It gives copyright owners the exclusive right to reproduce their works, to make adaptations of them, to distribute them to the public, and to perform or display them publicly – but this right only applies against people who copy from the owner. Someone who independently and coincidentally comes up with similar expression is an author in her own right, not an infringer. Below, for example, are two photographs of the same icerberg, taken by different photographers from nearby locations at almost exactly the same time. Neither infringes on the other.

Left: Sarah Scurr.  Right: Marisol Ortiz Elfeldt

Federal patent law protects “any new and useful process, machine, manufacture, or composition of matter.” Examples include mechanical devices like tractor plows and can openers, chemical processes used to refine oil, pharmaceutical products like anti-HIV drugs, and, a little infamously, a “Method and apparatus for automatically exercising a curious animal” by encouraging it to chase a laser pointer. See U.S. Pat. No. 6,701,872. To obtain a patent, an inventor must go through a detailed and expensive application process, which involves convincing the U.S. Patent and Trademark Office (USPTO) that her invention is genuinely new (“novel”), that it represents a sufficient advance on previous inventions (that it be “nonobvious”), and that it has some practical use in the world, however slight (“utility”). She must also disclose to the public, in detail, how her invention works and how best to use it. Once the USPTO issues a patent, it gives the owner the exclusive right for twenty years (from the date she filed her application with the USPTO) to make, use, offer to sell, or sell the invention. (This means that anyone is free to copy or to study the patent on a new kind of steering wheel, but they cannot make, use, or sell steering wheels as described in the patent.)

Trademark law, which is a hybrid of state and federal rights. Its basis for protection is a little different. A trademark is a word or symbol, like NIKE or the “swoosh” logo that distinguishes goods or services in the marketplace. One gains trademark rights by using a mark on goods so that consumers associate the mark with a particular source – i.e., they know that NIKE shoes come from one company (Nike) and not another (Adidas or Reebok). These associations are called “goodwill” and it is common to say that what a trademark owner owns is the goodwill (even though it exists only in consumers’ minds). These rights exist under state common law as soon as the goodwill exists; trademark owners can also register their marks with the USPTO, which gives nationwide and not just local rights. Trademark law gives a trademark owner the right to prevent uses of the mark that cause “consumer confusion” about the source of goods: a consumer who sees non-Nike shoes falsely labeled NIKE and who mistakenly believes they come from Nike has been confused about the origin of the goods, and Nike can sue the company slapping its trademark on ersatz shoes.

State-created rights of publicity, discussed in more detail in the section on property in people, protect against the commercial use of one’s name, picture, voice, or other indicia  of identity without permission. For example, photoshopping a celebrity’s face onto a model wearing one of your company’s sweaters and using the photograph in an ad for those sweaters is likely to trigger the right of publicity. Some states require that one’s identity have “commercial value” to bring a right of publicity suit, others do not. (How would one build up commercial value in one’s identity? It is something one can do deliberately, or does it just happen to some people and not others?) The federal trademark law, the Lanham Act, provides a closely related cause of action for false claims about endorsement: quoting a person as saying “I always shop at Acme Hardware” is actionable if the person didn’t say it and you don’t have their permission to quote them as saying it.

Trade secret lawwas previously almost entirely a matter of common law, but now almost all states have adopted a version of the Uniform Trade Secrets Act, and the federal Defend Trade Secrets Act of 2016 substantially incorporates the UTSA’s definitions. To be protected as a trade secret, information must be valuable because it is secret. Canonical examples of trade secrets include chain restaurants’ secret sauces, customer lists, business plans, manufacturing designs, information on the location of valuable resources like shipwrecks and oil fields, and inventions in the development stage before they are ready to be patented. (Because obtaining a patent involves extensive disclosure, it is impossible to have a patent and a trade secret on exactly the same information; one of the major stragegic decisions inventors must make when they apply for a patent is how much to include in the application to obtain a stronger or broader patent, and how much to try to hold back as a trade secret.) In general, a defendant is liable only for obtaining a trade secret through “improper means.” Breach of a duty of confidentiality is far and away the most common such means – such as when employees take company documents stamped “CONFIDENTIAL” with them to their new jobs at a competitor. More colorfully, industrial espionage, such as breaking into labs or hacking into computers, is also improper means. Note that trade secret law, like copyright law, protects only against infringers who obtain the secret information, directly or indirectly, from the owner: independent rediscovery of the same information is a complete defense. So is reverse engineering, in which a defendant takes publicly available information (including legally obtained copies of the owner’s goods containing or made using with the trade secret) and studies it to understand how the secret works.

In addition to the patents discussed above (technically, “utility patents”), the federal government also issues design patents on “any new, original, and ornamental design for an article of manufacture” and plant patents for “any distinct and new variety of plant.” Design patents have become big business, particularly in the technology world where the shape of a device and its user interface are crucial aspects in selling it to consumers. Apple, for example, has sued Samsung for infringing several design patents on elements of the iPhone design; the saga of this litigation is ongoing, but as of now, Apple is defending a $400 million damage award on appeal.

Despite the name, it is highly controversial whether intellectual property should be considered a species of “property” at all. As you read the cases in this section, consider why advocates might want to embrace or deny that label, and what if anything is at stake. Also, pay close attention to the distinction between the intellectual property rights in an object and property rights in the object itself. (In copyright terms, this is the distinction between a “work” and a “copy” of the work.) These rights can overlap or conflict, and some of the most important doctrines of intellectual property law are devoted to sorting out these issues. Finally, consider the extent to which the fact that intellectual property rights deal with information raises distinctive free expression concerns. Are they different in kinds from the free expression concerns in a case like Shack?