Dispelling legal myths
Things OSS developers get wrong
about the law

Preliminaries
- Who am I
- Why are we here
- This talk is U.S. law specific
- What I won’t cover (here)
- I put “ask an IP lawyer” on the BOF board for 7:30pm
tonight.

Things you need to know, generally
- The law is not logical
- Lawyers rarely argue about facts in copyright cases
- Lawyers argue about absolutely everything in patent cases
- 99.97% of lawyers give the other 0.03% of us a bad name

The Federal Legal System
- All of these topics have exclusive Federal jurisdiction
- Most precedent comes from Federal appeals courts and the
Supreme Court
- Appeals courts divided into circuits
- 12 geographic circuits (3-4 states each)
- One circuit court that handles all patent appeals
- No circuit court decision is binding on any
other circuit’s courts

Copyright
- Notion of attribution has been around forever
- Notion of exclusive control has not

What is covered
- “Copyright protection subsists, ..., in original works of authorship fixed in
any tangible medium of expression, now known or later developed, from
which they can be perceived, reproduced, or otherwise communicated,
either directly or with the aid of a machine or device.”

Originality
- Must have some amount of originality (creativity) to be
copyrightable
- Complex != copyrightable
- Took a lot of work != copyrightable

What is not covered
- “In no case does copyright protection for an original work of
authorship extend to any idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form in
which it is described, explained, illustrated, or embodied in such work.”

Exclusive rights
- To reproduce the copyrighted work in copies or
phonorecords;
- To prepare derivative works based upon the copyrighted
work;
- To distribute copies or phonorecords of the copyrighted
work to the public by sale or other transfer of ownership, or
by rental, lease, or lending;

Derivative Works
- “A “derivative work” is a work based upon one or more
preexisting works, such as a translation, musical
arrangement, dramatization, fictionalization, motion picture
version, sound recording, art reproduction, abridgment,
condensation, or any other form in which a work may be
recast, transformed, or adapted. A work consisting of
editorial revisions, annotations, elaborations, or other
modifications which, as a whole, represent an original work
of authorship, is a “derivative work”.”

Infringement generally
- Exclude uncopyrightable elements
- Scenes a faire
- Public domain works
- Methods, processes, other things not copyrightable
- See what is left
- Infringement exists where there is substantial similarity of
protectable elements.

Abstraction filtration
- Imagine a 60 year old judge applying this test
- Three steps
- View program at different levels of abstraction
- Control structure
- Data structure
- Textual organization
- Filter non-copyrightable elements at each level
- See if anything left is substantially similar

Other tests
- Elimination of methods of operation
- Analytic Dissection
- Consider similarities
- See if the similarities are protectable

Fair use
- Plenty of everyday things would be infringement if not for fair
use
- Four factors
- Purpose and character of use
- Nature of copyrighted work
- Amount used of copyrighted work
- Effect on potential market/value of work
- There are no bright lines in fair use

Copyright Notice
- Point of having notice
- Proper form of notice
- © (not (C)), Copyright, Copr.
- Year of first publication
- Name of owner
- Nothing else is proper notice

Patents
- Everybody’s favorite bitch
- Big business
- PTO generates > 6 billion dollars a year just from fees
- Insanely complex legal state driven mostly by appeals court
decisions
- The right to prevent others from making a device/performing
a process.
- Patents last 20 years from date of filing

Patent examination
- Examiners have a fixed number of hours to spend per
application
- Unrelated to number of claims in application
- Varies depending on the “art unit” (IE computer security vs
gardening tools)
- Office actions that either reject patents for reasons, or allow
the patent.
- Likelihood of being issued as a patent increases with the
number of “actions” an application goes through.

Patent examination
- You file application
- While (!given patent && !outofmoney)
- Examiner rejects some of your claims
- You argue with all his rejections
- He rejects some of your claims again
- You pay more money to argue more
- Things are changing a bit

Patents - subject matter
- Any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof
- “a process claim that applies a mathematical algorithm to
\"produce a useful, concrete, tangible result without pre-
empting other uses of the mathematical principle, on its face
comfortably falls within the scope of [patentable subject
matter]”
- For all practical purposes, almost anything is patentable right
now.

Patents - prior art
- Phrased in terms of “you get a patent unless”
- Known or used before you “invented” it
- Lots of other forms of “You didn’t invent it”
- Printed publication anywhere > 1 year prior to filing
- In public use or on sale in the US > 1 year prior to filing
- The above all require an exact match between the patent
and the publications

Obviousness
- Obviousness is not the same as prior art
- Everyone thinks everything is obvious
- The standard is “person with ordinary skill in the art”
- Combining prior art
- Used to be almost impossible
- Supreme Court decision this year changed this
- Combination patents now being struck down

Other misc requirements
- Enablement
- Adequate written description

Reading a patent
- Patents cover what their claims say, not what the specification
or title say
- Claims language is like any programming language. It is very
precise and different words have different legal meaning
- Most claims are impossible to understand because the
attorney is either a horrible writer, or is trying to be as
ambiguous as possible
- The MPEP has details on how the PTO reads claims

Patent Litigation
- Costs lots and lots of money
- Average case costs 1-3 million
- Even though the majority of cases are settled!
- Takes lots and lots of time
- 3-7 years

Infringement
- Element by element comparison
- Accused process/method must meet every limitation of the
claims
- Doctrine of equivalents
- Performs substantially the same function
- in substantially the same way
- IE completely insubstantial change in way performed
- to yield substantially the same result

Remedies
- Injunctions
- Damages
- Generally calculated as some reasonable royalty rate
- Triple damages for willful infringement
- Killing of first born

Trademarks
- I have never been involve in a trademark case, but I aspire to
someday infringe your trademarks (if you know what i mean,
wink wink, nod nod)
- Really four types of marks, but we only care about one
- Purpose of trademarks is to identify the source of goods.
Nothing more, nothing less.
- A trademark is a Word, name, symbol or device

Trademark level of protection
- Marks are categorized by distinctiveness
- Arbitrary and fanciful
- Suggestive
- Descriptive
- Generic

Registration of marks
- Not required to register have a trademark or protect it
- Helps a lot though
- Registration is usually achieved through filing a “Use
application” with the PTO
- Need to prove that you used it in “interstate commerce”

Infringement of trademarks
- “Likely to cause an appreciable number of consumers to be
confused about the source, affiliation, or sponsorship of goods
or services”
- Tests are based on similarity
- Appearance, sound,meaning
- Purchasers, marketing channels
- Disclaimers do not generally help you.
- Do not need evidence of actual confusion, only likelihood

Trademark dilution
- Odd set of laws to try to protect the “value” of trademarks
- Original statute effectively made useless by a Supreme
Court case in 2003.
- Reworded and repassed in 2006 to overrule case.
- Blurring
- Trying to make marks less distinctive
- Tarnishment
- Associating marks with things that will cause harm to
reputation of the mark

Fair use - Cont.
- There is no sure fire fair use arguments
- Factors 1 and 4 are statistically the most important for
winning/losing
- Courts rarely consider other factors, even though the factors
are simply illustrative, not limitative.
- See “An Empirical Study of U.S. Copyright Fair Use Opinions,
1978-2005” by Barton Beebe for more statistics than you
could ever want.