Property

Chapter 1(D)
Acquisition by Creation
 Roadmap
Acquisition by Creation: Intro to Intellectual Property
• Three non-traditional/quasi-IP interests:
– Misappropriation – INS v. AP
– Right of Publicity – White v. Samsung
– Property in one's person – Moore v. UC Regents
• Three Core IP interests
– Patents – Diamond v. Chakrabarty
– Copyright (CR) – Feist v. Rural Telephone Co.
– Trademark (TM) – In Re Cordua Restaurants
 Intellectual Property
IP grants a monopoly right to the creator.
• Why?
– Promotion of “science and useful arts” (U.S. Const.)
– Creator invested labor, granting monopoly right incentivizes
him or her to invest
• Any problems with monopoly protection for IP?
– Monopoly is not good for competition
– If monopoly lasts too long, society may lose out on future
innovation
• We therefore see tension in IP law between innovation
and competition
 Common law quasi-IP protection
• International News Service (INS) v. Associated Press (AP) (1918)
– Facts?
– Cause of Action?
• NOT copyright claim
• Common law misappropriation and unfair competition
– Arguments?
• INS?
• AP?
– Holding
• Finds that AP has a quasi-property right in the gathering of news (“hot
news”) not with respect to the public in general but as against a
competitor like INS
• Issues injunction against INS against engaging in the activity until the
“hot news” no longer commercial value
• Note: INS holding is limited (i.e., hot news), has not been extended to provide
CL IP protection to other arenas (see, e.g., Cheney Bros. v. Dorris Silk Corp. (2d
Cir. 1929))
Right of Publicity
 Right of Publicity
White v. Samsung
• Trial court’s formulation of the elements of CL right
of publicity:
1. D’s use of the P’s identity
2. The appropriation of P’s name or likeness to D’s
advantage, commercially or otherwise
3. Lack of consent by P
4. Resulting injury to P
• What was the problem with P’s claim, according to
the trial court?
 Right of Publicity
White v. Samsung
How does appellate court reformulate the
requirements for a right of publicity claim?
1. D’s use of the P’s identity (which is a broader
concept than merely just name or likeness of
P) to the D’s advantage, commercially of
otherwise
2. Lack of consent by P
3. Resulting injury to P
 Property in one’s body
Moore v. UC Regents
• Conversion
– Tort of wrongful exercise of ownership rights over
someone else’s property
– Elements:
1. ownership or right of possession in the thing that was
converted
2. Interference with that ownership or right of
possession
 To recognize or not to recognize property
interests
Should courts recognize ambiguous/new
property interests (White) or not (Moore)?

• Tends to be easier for a legislature to pass a

new law than to repeal existing one
(entitlement effect)
• 5th amendment may require compensation if
property interest created by court, then later
taken away by legislature
 Three core IP interests

• Copyright – federal law (Copyright Act)

• Patent – federal law (Patent Act)
• Trademark – federal law (Lanham Act) & state law
 Patent
Diamond v. Chakrabarty (U.S. 1980)
• Federal patent act §101 – what is patentable
matter?
– “Any new and useful art, machine, manufacture, or
composition of matter, or any new or useful
improvement thereof.”
• Court engages in statutory interpretation: is
Chakrabarty’s bacterium a patentable
“manufacture” or “composition of matter” within
meaning of federal patent act or an unpatentable
natural phenomenon?
– What about the fact it is a living organism?
 To recognize or not to recognize property
interests
Should courts recognize ambiguous/new property
interests (Chakrabarty) or not (Moore)?
• Tends to be easier for a legislature to pass a new
law than to repeal existing one (entitlement
effect)
• 5th amendment may require compensation if
property interest created by court, then later
taken away by legislature
 Copyright
• Feist v. Rural Telephone (U.S. 1980)
– Cause of Action: copyright infringement
• 3 elements: (1) P is holder of a valid copyright; (2) D copied the
work; and (3) the copying was an “improper appropriation.”
– Issue: Did P have a copyright in the material?
– Holding: No valid copyright – why?
• Originality requirement not satisfied
• Facts/idea dichotomy – facts cannot be copyrighted, although
compilations of facts can be if they meet the minimum
threshhold of originality
• Here, that minimum was not satisfied
– If no valid CR, therefore no infringement by D since P
didn’t have valid CR that could be infringed on.
 Trademark
• IP protection like CR and patent, but goals of TM
differ from goals of CR patent
– Prevention of consumer confusion & unfair competition
 Trademark
• In re Cordua Restaurants (Fed. App. 2016)
– Cause of Action: Applicant appeals from decision of
PTO Board rejecting its TM application
– Issue: Does the Lanham Act bar registration of the
applicant’s proposed mark (stylized form of
CHURRASCOS) on the basis it is generic?
– Holding: Affirms decision of PTO
• Rule: generic terms are not TM-able and
applicant’s proposed mark here is generic – WHY?