Notes on Intellectual Property

Winter 2017

note that Wikipedia is a good source for a quick overview

Copyright:

in 1994 Berne Convention (dating to 1886) rolled into WTO TRIPS (Trade Related aspects of Intellectual Property Rights). The US didn’t sign the Berne Convention until 1989. from 2002 it is a party to two extensions plus the WTO itself for example for digital databases, even when the original entries in the database (e.g. bibliographic citations) are not themselves copyrighted. likewise, it makes breaking the codes of software protection illegal. as an international convention it effectively means an automatic world copyright, with local variations.

by rolling BC into the WTO TRIPS, China and others now are signatories; it’s a benefit of broad trade agreements as they probably would not have signed on their own. in the old days, for example, Taiwan refused to sign on and freely printed pirated editions of US textbooks. as a result, in the 1970s US Customs Agents on occasion were known to go through the luggage of students (US or otherwise) coming from Taiwan looking for books! [friends’ experiences]

at one time authors were required to explicitly claim copyright, and to register a work; now copyright is automatic, though it helps to assert a copyright claim.

basic term is author’s lifetime plus 50 years. in 1976 this was extended to 75 yrs for “corporate authorship” just in time to cover the 1928 Disney short Steamboat Willie). it now includes computer software.

the “Sonny Bono Copyright Term Extension Act of 1998” (the Mickey Mouse Act) unilaterally extended US copyright by 20 years to 70 years for a regular work and an incredible 120 years for a corporate work, effective retroactively (works out of copyright because they had already passed the 50 year threshold could be re-registered as though they had never expired). the US Constitution specifies that copyrights and patents must last for a “limited time” but without further detail, leaving Congress free to set very long but still finite limits. the Mickey Mouse Act clarified that unpublished works enter the public domain after 25 years, so if you write the Great American Novel, don’t wait too long to get it published (or self published in a limited edition, sending one copy to the Library of Congress to validate the claim that it really is a publication).

this is not part of the WTO – in countries that follow the WTO minimum standards Mickey Mouse is now in their public domain. you can create or rebroadcast old Walt Disney films and use their storylines to create remakes. don’t try that in the US, and don’t dangle Disney character figures when entering US customs. Disney employs lots of lawyers and prosecutes aggressively. note that it’s illegal to watch such Russian creations inside the US, however hard it may be to enforce.

the Mickey Mouse character itself is a trademark, which lasts as long as the owner of the trademark continues to use it. so don’t paint MM on your daycare center wall without buying a license from Disney … and this is not a hypothetical example.

“fair use” is allowed but needs to be constrained; specific rules vary a fair amount from country to country, an issue with international interlibrary loan. Japan informally interprets fair use as copying “no more than 50%” which is awkward when articles are less than 2 pages … are libraries obliged to black out half??

Patents:

US had first patent law in 1790, following clause in the US Constitution, though building on British and Articles of Confederation state-level precedents. Jefferson was the first patent office, he did it personally while President. (as might be surmised, there were very few applications!)

went global under the Paris Convention of 1883, and now WTO TRIPS. previously US patent law was idiosyncratic in terms and manner of issue; now it is uniform with the WTO as 20 years from filing. at one time a patent application had to be accompanied by a working model; now a description sufficient for an appropriate specialist to make it is deemed adequate, but which does not require the details to be spelled out, leaving room for trade secrets, such as the tweaks to a production process that permit high-speed, low-cost production with high quality.

patents only issued to persons, but they are free to assign their rights to (for example) their employer, and may be required to do so as a condition of employment.

mandatory licensing: social benefits of innovation come from use, but strategic private benefits may come from blocking use. tension between patent length and benefits to society relative to the benefits to invent and patent. in theory we would like to have length set industry by industry as a function of how hard or costly something is to bring to the point of patent, and on the other side the social benefits. in practice the law presumes one size fits all.

note “disclosure” is part of a patent: they are not secret. this also stimulates attempts to design around patents, which can be excessive relative to benefits (excess R&D) but do stimulate technical advance and (more important) changes that enhance commercialization and the development of markets. in some fields, cross-licensing is pervasive

patent races also occur, when for example there is a new biochemical discovery that all of pharma seeks to build upon. only the first firm to file receive a patent. so there can be too much R&D. that means in certain industries the patent system generates too much R&D, everyone works on a potential new pharmaceutical, but only the first to the patent office can monetize their up-front investment.

utility models: US does not have a “minor patent” system. those are found in many other countries, typically narrower, with lower standards and shorter timeframes, aimed for example at production methods, eg, a better configuration of machines in a way that is a non-trivial improvement but doesn’t have the “new machine” aspect expected in a regular patent. that makes a naive comparison of the number of patents across countries not very meaningful

patent breadth issues: US is “broad” most others are “narrow.” that lies behind patent trolls

variations on disclosure: some systems have relicensing of patents that are in effect “use it or lose it”. annual fees to keep a patent registered, particularly if they rise over time, encourages companies to place patents they are not actively using into the public domain

propensity to patent: varies widely across industries, again making empirical work tricky

trade secrets: not everything that can be patented is…firms often prefer not to disclose new ideas. but if those ideas get out they have no recourse, unless the context was old-school theft. that though is a matter of criminal law, not intellectual property law

Fair Use (drawing from the relevant Wikipedia entry, edited for brevity with my elaborations): Copyright does not prohibit all replication. In the US, the fair use doctrine permits some copying and distribution without permission of the copyright holder. The statute gives four non-exclusive factors:

1. the purpose and character of your use

2. the nature of the copyrighted work

3. what amount and proportion of the whole work was taken, and

4. the effect of the use upon the potential market for or value of the copyrighted work.

In the United Kingdom and other Commonwealth countries, there is a similar notion of fair dealing. The concept is not well uniform; in Canada, private copying for personal use has been expressly permitted by statute since 1999. In Australia, the fair dealing exceptions under the Copyright Act 1968 are more limited. Fair dealing uses are research and study; review and critique; news reportage and the giving of professional advice (ie legal advice). Under current Australian law it is still a breach of copyright to copy, reproduce or adapt copyright material for personal or private use without permission from the copyright owner. Other technical exemptions from infringement may also apply, such as the temporary reproduction of a work in machine readable form for a computer.

Current US copyright law specifies no general rule on multiple copies (is making 10+ copies for one-time use in a class commercial, or “fair use”?). Making one complete copy of a work (book!) or using an extended portion for commercial purposes is not fair use. The Digital Millennium Copyright Act makes devices intended to bypass copy control or eBook access control illegal.