There have been a number of important developments in U.S. intellectual property law since the th... more There have been a number of important developments in U.S. intellectual property law since the third edition of Understanding Intellectual Property Law was published. Congress enacted the Defend Trade Secrets Act of 2016 to provide a federal civil cause of action for misappropriation of trade secrets for the first time. It also enacted the Music Modernization Act of 2018, which extends the compulsory license for musical works by creating a blanket license for digital music providers and provides federal protection to sound recordings fixed before February 15, 1972. And, of course, courts continue to work through the implications of earlier statutory revisions, such as the landmark America Invents Act of 2011. The Supreme Court has remained active in reviewing intellectual property cases during the past four years, deciding eighteen patent cases, four copyright cases, and five trademark cases. In addition, the federal Courts of Appeals decided more than 1000 patent cases, 230 copyright cases, and nearly 300 trademark and false advertising cases during that time. Having been updated to reflect this new material, the fourth edition of Understanding Intellectual Property Law covers all of the intellectual property areas and issues likely to be addressed in an intellectual property survey course.https://scholarcommons.scu.edu/faculty_books/1454/thumbnail.jp
As a reawakened Rip Van Winkle might remind us from his knowledge of U.S. history, copyright’s lo... more As a reawakened Rip Van Winkle might remind us from his knowledge of U.S. history, copyright’s long record of carefully calibrated encouragement for learning requires no resort to jingoism to justify its continuance. American copyright law, whatever its failings, has played an indisputably central role in making the United States today the world’s preeminent creator and exporter of intangible information products. We would suggest that copyright has been able to play this role precisely because of, rather than in spite of, its doctrinal and theoretical peculiarities—and, specifically, because of its success over time in balancing proprietary rights and public access. Through the process of successive approximation which is the special genius of a common law system, the United States has managed to negotiate a course between overprotection and underprotection, and to strike at least a rough balance between the social interest in securing capital investment, on the one hand, and encou...
The eleventh edition of Copyright Law includes significant updates reflecting recent legislation,... more The eleventh edition of Copyright Law includes significant updates reflecting recent legislation, new judicial precedents, and updates to Copyright Office rules. Major changes include revision of the useful articles section in the wake of Star Athletica, revisions of the sections on music to reflect the Music Modernization Act, and updates throughout the book to reflect significant federal appellate decisions. Some illustrations have been updated or supplemented to reflect these changes in the law.https://scholarcommons.scu.edu/faculty_books/1455/thumbnail.jp
It is hornbook law that U.S. copyright law is not "extraterritorial," i.e., that it does not appl... more It is hornbook law that U.S. copyright law is not "extraterritorial," i.e., that it does not apply to conduct occurring in other countries. However, a distinction must be drawn between purely extraterritorial conduct, which is nonactionable, and conduct that crosses borders, so that at least a part of the offense takes place within the United States. Despite the nominal rule against extraterritoriality, U.S. courts have applied U.S. copyright law to a wide range of multi-territorial infringement claims. Both importation and exportation of infringing copies or phonorecords are prohibited by statute, and the distribution right has been interpreted broadly to apply to a foreign seller who ships infringing goods into the United States. Although mere "authorisation" in the United States that contributes to infringement occurring entirely in another country is not actionable, if there is a "predicate act" of infringement in the United States, courts are willing to award the defendant's profits resulting from that infringement, even if those profits were earned overseas. Acts in another country that contribute to infringement in the United States are actionable under U.S. law. And finally, although courts are split over whether transmissions originating in the United States must be received here to be actionable, courts agree that transmissions originating in another country that are received in the United States are
TO SUBCRIBE TO THE PACIFIC LAW JOURNAL: Contact the Pacific Law Journal, 3200 Fifth Ave., Sacrame... more TO SUBCRIBE TO THE PACIFIC LAW JOURNAL: Contact the Pacific Law Journal, 3200 Fifth Ave., Sacramento, CA 95817. Although statutes of limitation are an important feature of virtually every country's legal system, the policies upon which limitation of actions is based have rarely been the object of serious study. A limitation system is the product of the interplay between two competing sets of policies: those supporting the extinguishment of untimely claims, and those encouraging the resolution of all claims on their substantive merits. In this article, the authors identify seven policies favoring limitation of actions and two policies disfavoring limitation of actions, and analyze whether and to what extent each of those policies is served by a typical limitation system in the United States.
In this article, we first will review the general principles applicable to classification of clai... more In this article, we first will review the general principles applicable to classification of claims for limitation purposes and the various statutes which could be applied to breach of the implied covenant of good faith and fair dealing. We then will examine cases in which the statute of limitation for breach of the implied covenant of good faith and fair dealing was at issue and analyze what limitation period, rules of accrual and tolling doctrines are appropriate in the absence of contractual modification. Finally, we will analyze the extent to which contractual modification of the limitation period, rules of accrual and tolling doctrines has been permitted, and analyze what limits, if any, should be placed on such modifications.
The Copyright Act gives a copyright owner the exclusive right "to prepare derivative works b... more The Copyright Act gives a copyright owner the exclusive right "to prepare derivative works based on the copyrighted work." Does the Copyright Act require that a derivative work be "fixed in a tangible medium of expression" in order to be infringing? Existing case law is contradictory, stating both that a derivative work does not need to be "fixed" but that it does need to be embodied in some "concrete or permanent form." This contradiction stems from the fact that although the statutory language does not appear to require fixation, reading the statutory language literally would render illegal merely imagining a modified version of a copyrighted work. This contradiction can be eliminated by recognizing that what Congress intended was to prohibit the public performance of an unfixed derivative work, as well as the reproduction, public distribution, public performance or public display of a fixed derivative work. Congress' intent can be fully...
One of the goals of the UNESCO Convention on the Protection of Underwater Cultural Heritage is to... more One of the goals of the UNESCO Convention on the Protection of Underwater Cultural Heritage is to encourage preservation of underwater cultural heritage in situ, in its original location on the ocean floor. 1 There is an obvious conflict between this goal and the traditional admiralty-law principles of the law of salvage and the law of finds, 2 both of which have the effect of encouraging the removal and disposition of valuable cultural artifacts from the ocean floor. 3 Indeed, expeditions to locate historical shipwrecks
The use of college athletes’ likenesses in sports simulation videogames, such as Electronic Arts’... more The use of college athletes’ likenesses in sports simulation videogames, such as Electronic Arts’ NCAA Football series, has spawned a number of lawsuits alleging that such use violates the athletes’ rights of publicity. (These actions have been brought by retired college athletes, as the NCAA prohibits college athletes from commercially exploiting their rights of publicity while in college, as a condition of maintaining their “amateur” status.) Two federal Courts of Appeals have now held 2-1 that the First Amendment does not protect Electronic Arts’ depiction of actual college players, so that EA may be held liable under state right of publicity laws. The agreement between the two courts makes it considerably less likely that the Supreme Court will review either one of the cases when it resumes sitting in October.
The British experience with patents and copyrights prior to 1787 is instructive as to the context... more The British experience with patents and copyrights prior to 1787 is instructive as to the context within which the Framers drafted the Patent and Copyright Clause. The 1624 Statute of Monopolies, intended to curb royal abuse of monopoly privileges, restricted patents for new inventions to a specified term of years. The Stationers' Company, a Crown-chartered guild of London booksellers, continued to hold a monopoly on publishing, and to enforce censorship laws, until 1695. During this time, individual titles were treated as perpetual properties held by booksellers. In 1710, however, the Statute of Anne broke up these monopolies by imposing strict term limits on copyright, and in the 1730s Parliament twice rejected booksellers' attempts to preserve their monopolies by extending the copyright term. Failing to achieve their ends through legislation, the booksellers sought to circumvent Parliament by arguing that the Statute of Anne was only supplementary to an underlying common-...
One of the principal goals of the 1909 Copyright Act was to simplify and streamline the formaliti... more One of the principal goals of the 1909 Copyright Act was to simplify and streamline the formalities required to obtain copyright protection. Before the 1909 Copyright Act, authors had to register their works before publication in order to be eligible for copyright protection; and notice of the registration had to be included on all copies published in the United States. If a work was published anywhere in the world before registration, or if the notice was omitted when the work was published domestically, the work went into the public domain. Under the 1909 Act, however, authors only had to publish their works with proper copyright notice in order to be eligible for copyright protection.This change introduced an ambiguity with regard to works first published outside the Untied States. If a work had to be published with proper notice to receive copyright protection, but notice was required only on copies published in the United States, what was the effect if a work was first publishe...
The public domain may be defined as that body of literary and artistic works (or other informatio... more The public domain may be defined as that body of literary and artistic works (or other information) that is not subject to any copyright (or other intellectual property right), and which therefore may be freely used by any member of the general public. This concept is implicit in the Patent and Copyright Clause of the Constitution, which stipulates that patents and copyrights may only be granted “to promote the Progress of Science and useful Arts,” and only “for limited Times.” The “limited Times” restriction implies that patents and copyrights must expire at some point, and the “Progress” limitation implies that patents and copyright can only be granted for new works, not for pre-existing ones. Thus, once a previously granted copyright on a work has expired, the general public has a “federal right to copy and to use” the work without attribution.
The U.S. Constitution provides that patents and copyrights may only be granted "for limited ... more The U.S. Constitution provides that patents and copyrights may only be granted "for limited Times." This article analyzes the constitutionality of the Sonny Bono Copyright Term Extension Act of 1998 (CTEA) in light of the long history of congressional extensions of patents and copyrights.
In May 2004, news media around the world buzzed after learning that Arnold Schwarzenegger, movie-... more In May 2004, news media around the world buzzed after learning that Arnold Schwarzenegger, movie-star-turned-Governor of California, had filed a lawsuit against an Ohio manufacturer of bobblehead dolls bearing his name and likeness. The case presented a seemingly stark choice between the right of a celebrity-politician to protect his image against commercial appropriation and the First Amendment rights of the public to lampoon that image, and commentators hoped that the case would set a precedent regarding how those rights should be balanced. Just three months later, however, before any court ruling had been made, the parties announced that they had reached a settlement, leaving that important legal issue unresolved.
This article surveys the history and development of the public domain in intellectual property la... more This article surveys the history and development of the public domain in intellectual property law. The public domain has existed since time immemorial, and was first recognized in the Statute of Monopolies and the Statute of Anne, which placed time limits on patents and copyrights, after which the invention or work could be copied freely by anyone. The concept was enshrined in the U.S. Constitution and reflected in American patent and copyright laws. Before 1896, courts referred to matter not protected by patent or copyright law as "public property" or "common property." In 1896, the U.S. Supreme Court imported the term "public domain" from French law, and it was popularized by Learned Hand in the first decades of the 20th Century. Since 1960, the U.S. Supreme Court has repeatedly emphasized the Constitutional dimensions of the public domain. Those dimensions include two important principles that have been obscured in recent years: public ownership of ...
This article will examine the issue of criminal liability for necrophilia. Part II will address n... more This article will examine the issue of criminal liability for necrophilia. Part II will address necrophilia in general and will discuss briefly why society finds such acts reprehensible. Part III will discuss existing criminal prohibitions against necrophilia in California and other states. Part IV will discuss the evidentiary use of necrophilia in proving other crimes. Finally, Part V will evaluate proposed legislation outlawing necrophilia.
There have been a number of important developments in U.S. intellectual property law since the th... more There have been a number of important developments in U.S. intellectual property law since the third edition of Understanding Intellectual Property Law was published. Congress enacted the Defend Trade Secrets Act of 2016 to provide a federal civil cause of action for misappropriation of trade secrets for the first time. It also enacted the Music Modernization Act of 2018, which extends the compulsory license for musical works by creating a blanket license for digital music providers and provides federal protection to sound recordings fixed before February 15, 1972. And, of course, courts continue to work through the implications of earlier statutory revisions, such as the landmark America Invents Act of 2011. The Supreme Court has remained active in reviewing intellectual property cases during the past four years, deciding eighteen patent cases, four copyright cases, and five trademark cases. In addition, the federal Courts of Appeals decided more than 1000 patent cases, 230 copyright cases, and nearly 300 trademark and false advertising cases during that time. Having been updated to reflect this new material, the fourth edition of Understanding Intellectual Property Law covers all of the intellectual property areas and issues likely to be addressed in an intellectual property survey course.https://scholarcommons.scu.edu/faculty_books/1454/thumbnail.jp
As a reawakened Rip Van Winkle might remind us from his knowledge of U.S. history, copyright’s lo... more As a reawakened Rip Van Winkle might remind us from his knowledge of U.S. history, copyright’s long record of carefully calibrated encouragement for learning requires no resort to jingoism to justify its continuance. American copyright law, whatever its failings, has played an indisputably central role in making the United States today the world’s preeminent creator and exporter of intangible information products. We would suggest that copyright has been able to play this role precisely because of, rather than in spite of, its doctrinal and theoretical peculiarities—and, specifically, because of its success over time in balancing proprietary rights and public access. Through the process of successive approximation which is the special genius of a common law system, the United States has managed to negotiate a course between overprotection and underprotection, and to strike at least a rough balance between the social interest in securing capital investment, on the one hand, and encou...
The eleventh edition of Copyright Law includes significant updates reflecting recent legislation,... more The eleventh edition of Copyright Law includes significant updates reflecting recent legislation, new judicial precedents, and updates to Copyright Office rules. Major changes include revision of the useful articles section in the wake of Star Athletica, revisions of the sections on music to reflect the Music Modernization Act, and updates throughout the book to reflect significant federal appellate decisions. Some illustrations have been updated or supplemented to reflect these changes in the law.https://scholarcommons.scu.edu/faculty_books/1455/thumbnail.jp
It is hornbook law that U.S. copyright law is not "extraterritorial," i.e., that it does not appl... more It is hornbook law that U.S. copyright law is not "extraterritorial," i.e., that it does not apply to conduct occurring in other countries. However, a distinction must be drawn between purely extraterritorial conduct, which is nonactionable, and conduct that crosses borders, so that at least a part of the offense takes place within the United States. Despite the nominal rule against extraterritoriality, U.S. courts have applied U.S. copyright law to a wide range of multi-territorial infringement claims. Both importation and exportation of infringing copies or phonorecords are prohibited by statute, and the distribution right has been interpreted broadly to apply to a foreign seller who ships infringing goods into the United States. Although mere "authorisation" in the United States that contributes to infringement occurring entirely in another country is not actionable, if there is a "predicate act" of infringement in the United States, courts are willing to award the defendant's profits resulting from that infringement, even if those profits were earned overseas. Acts in another country that contribute to infringement in the United States are actionable under U.S. law. And finally, although courts are split over whether transmissions originating in the United States must be received here to be actionable, courts agree that transmissions originating in another country that are received in the United States are
TO SUBCRIBE TO THE PACIFIC LAW JOURNAL: Contact the Pacific Law Journal, 3200 Fifth Ave., Sacrame... more TO SUBCRIBE TO THE PACIFIC LAW JOURNAL: Contact the Pacific Law Journal, 3200 Fifth Ave., Sacramento, CA 95817. Although statutes of limitation are an important feature of virtually every country's legal system, the policies upon which limitation of actions is based have rarely been the object of serious study. A limitation system is the product of the interplay between two competing sets of policies: those supporting the extinguishment of untimely claims, and those encouraging the resolution of all claims on their substantive merits. In this article, the authors identify seven policies favoring limitation of actions and two policies disfavoring limitation of actions, and analyze whether and to what extent each of those policies is served by a typical limitation system in the United States.
In this article, we first will review the general principles applicable to classification of clai... more In this article, we first will review the general principles applicable to classification of claims for limitation purposes and the various statutes which could be applied to breach of the implied covenant of good faith and fair dealing. We then will examine cases in which the statute of limitation for breach of the implied covenant of good faith and fair dealing was at issue and analyze what limitation period, rules of accrual and tolling doctrines are appropriate in the absence of contractual modification. Finally, we will analyze the extent to which contractual modification of the limitation period, rules of accrual and tolling doctrines has been permitted, and analyze what limits, if any, should be placed on such modifications.
The Copyright Act gives a copyright owner the exclusive right "to prepare derivative works b... more The Copyright Act gives a copyright owner the exclusive right "to prepare derivative works based on the copyrighted work." Does the Copyright Act require that a derivative work be "fixed in a tangible medium of expression" in order to be infringing? Existing case law is contradictory, stating both that a derivative work does not need to be "fixed" but that it does need to be embodied in some "concrete or permanent form." This contradiction stems from the fact that although the statutory language does not appear to require fixation, reading the statutory language literally would render illegal merely imagining a modified version of a copyrighted work. This contradiction can be eliminated by recognizing that what Congress intended was to prohibit the public performance of an unfixed derivative work, as well as the reproduction, public distribution, public performance or public display of a fixed derivative work. Congress' intent can be fully...
One of the goals of the UNESCO Convention on the Protection of Underwater Cultural Heritage is to... more One of the goals of the UNESCO Convention on the Protection of Underwater Cultural Heritage is to encourage preservation of underwater cultural heritage in situ, in its original location on the ocean floor. 1 There is an obvious conflict between this goal and the traditional admiralty-law principles of the law of salvage and the law of finds, 2 both of which have the effect of encouraging the removal and disposition of valuable cultural artifacts from the ocean floor. 3 Indeed, expeditions to locate historical shipwrecks
The use of college athletes’ likenesses in sports simulation videogames, such as Electronic Arts’... more The use of college athletes’ likenesses in sports simulation videogames, such as Electronic Arts’ NCAA Football series, has spawned a number of lawsuits alleging that such use violates the athletes’ rights of publicity. (These actions have been brought by retired college athletes, as the NCAA prohibits college athletes from commercially exploiting their rights of publicity while in college, as a condition of maintaining their “amateur” status.) Two federal Courts of Appeals have now held 2-1 that the First Amendment does not protect Electronic Arts’ depiction of actual college players, so that EA may be held liable under state right of publicity laws. The agreement between the two courts makes it considerably less likely that the Supreme Court will review either one of the cases when it resumes sitting in October.
The British experience with patents and copyrights prior to 1787 is instructive as to the context... more The British experience with patents and copyrights prior to 1787 is instructive as to the context within which the Framers drafted the Patent and Copyright Clause. The 1624 Statute of Monopolies, intended to curb royal abuse of monopoly privileges, restricted patents for new inventions to a specified term of years. The Stationers' Company, a Crown-chartered guild of London booksellers, continued to hold a monopoly on publishing, and to enforce censorship laws, until 1695. During this time, individual titles were treated as perpetual properties held by booksellers. In 1710, however, the Statute of Anne broke up these monopolies by imposing strict term limits on copyright, and in the 1730s Parliament twice rejected booksellers' attempts to preserve their monopolies by extending the copyright term. Failing to achieve their ends through legislation, the booksellers sought to circumvent Parliament by arguing that the Statute of Anne was only supplementary to an underlying common-...
One of the principal goals of the 1909 Copyright Act was to simplify and streamline the formaliti... more One of the principal goals of the 1909 Copyright Act was to simplify and streamline the formalities required to obtain copyright protection. Before the 1909 Copyright Act, authors had to register their works before publication in order to be eligible for copyright protection; and notice of the registration had to be included on all copies published in the United States. If a work was published anywhere in the world before registration, or if the notice was omitted when the work was published domestically, the work went into the public domain. Under the 1909 Act, however, authors only had to publish their works with proper copyright notice in order to be eligible for copyright protection.This change introduced an ambiguity with regard to works first published outside the Untied States. If a work had to be published with proper notice to receive copyright protection, but notice was required only on copies published in the United States, what was the effect if a work was first publishe...
The public domain may be defined as that body of literary and artistic works (or other informatio... more The public domain may be defined as that body of literary and artistic works (or other information) that is not subject to any copyright (or other intellectual property right), and which therefore may be freely used by any member of the general public. This concept is implicit in the Patent and Copyright Clause of the Constitution, which stipulates that patents and copyrights may only be granted “to promote the Progress of Science and useful Arts,” and only “for limited Times.” The “limited Times” restriction implies that patents and copyrights must expire at some point, and the “Progress” limitation implies that patents and copyright can only be granted for new works, not for pre-existing ones. Thus, once a previously granted copyright on a work has expired, the general public has a “federal right to copy and to use” the work without attribution.
The U.S. Constitution provides that patents and copyrights may only be granted "for limited ... more The U.S. Constitution provides that patents and copyrights may only be granted "for limited Times." This article analyzes the constitutionality of the Sonny Bono Copyright Term Extension Act of 1998 (CTEA) in light of the long history of congressional extensions of patents and copyrights.
In May 2004, news media around the world buzzed after learning that Arnold Schwarzenegger, movie-... more In May 2004, news media around the world buzzed after learning that Arnold Schwarzenegger, movie-star-turned-Governor of California, had filed a lawsuit against an Ohio manufacturer of bobblehead dolls bearing his name and likeness. The case presented a seemingly stark choice between the right of a celebrity-politician to protect his image against commercial appropriation and the First Amendment rights of the public to lampoon that image, and commentators hoped that the case would set a precedent regarding how those rights should be balanced. Just three months later, however, before any court ruling had been made, the parties announced that they had reached a settlement, leaving that important legal issue unresolved.
This article surveys the history and development of the public domain in intellectual property la... more This article surveys the history and development of the public domain in intellectual property law. The public domain has existed since time immemorial, and was first recognized in the Statute of Monopolies and the Statute of Anne, which placed time limits on patents and copyrights, after which the invention or work could be copied freely by anyone. The concept was enshrined in the U.S. Constitution and reflected in American patent and copyright laws. Before 1896, courts referred to matter not protected by patent or copyright law as "public property" or "common property." In 1896, the U.S. Supreme Court imported the term "public domain" from French law, and it was popularized by Learned Hand in the first decades of the 20th Century. Since 1960, the U.S. Supreme Court has repeatedly emphasized the Constitutional dimensions of the public domain. Those dimensions include two important principles that have been obscured in recent years: public ownership of ...
This article will examine the issue of criminal liability for necrophilia. Part II will address n... more This article will examine the issue of criminal liability for necrophilia. Part II will address necrophilia in general and will discuss briefly why society finds such acts reprehensible. Part III will discuss existing criminal prohibitions against necrophilia in California and other states. Part IV will discuss the evidentiary use of necrophilia in proving other crimes. Finally, Part V will evaluate proposed legislation outlawing necrophilia.
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