A design patent protects only the appearance of the article and not its structural or utilitarian features: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 171. The period of protection is 14 years. Designs for jewelry, clothing, furniture, a beverage container are examples. Instead of utility, a design patent must possess ornamentality, as well as novelty and non-obviousness. Novelty is determined by using an ordinary person standard while non-obviousness uses an ordinary designer standard, i.e. one with ordinary skill in the art, though some courts have used a lower ordinary intelligent person. While the utility patent protects the way an article is used and works, a design patent protects the way an article looks. In other words, design patents are intended to protect the unique look of a functional item.
Federal law governs in the area of utility patents (Duration is 20 years): “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. A process is a way of doing something but if it is a patentable process it must be a new, useful and non-obvious way of doing something. A chemical process is a typical form of process patent. A machine, a manufacture and a composition of matter are all things. A machine is an inventive thing that does something. A manufacture is a human-made thing and a composition is a thing made from existing materials or substances. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.
“Thus a person infringes by actively and knowingly aiding and abetting another’s direct infringement.” Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir. 1988). Requires knowledge of both the patent and the infringement.
Actual knowledge or willful blindness: “It is also said that persons who know enough to blind themselves to direct proof of critical facts in effect have actual knowledge of those facts.” Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060, 2069 (2011). “While the Courts of Appeals articulate the doctrine of willful blindness in slightly different ways, all appear to agree on two basic requirements: (1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact. We think these requirements give willful blindness an appropriately limited scope that surpasses recklessness and negligence.” Id. at 270 (footnote omitted). “Under this formulation, a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts… By contrast, a reckless defendant is one who merely knows of a substantial and unjustified risk of such wrongdoing…and a negligent defendant is one who should have known of a similar risk but, in fact, did not,.” Id. at 270-271.”
Secondary (distribution/contributory): “one who sells an article must know that the article is to be used ‘in an infringement of such patent’ and that it is ‘especially made or especially adapted’ for that purpose.” Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 525 (1964). Contributory liability requires three elements then: “(1) An offer to sell, a sale, or importation into the United States, (2) Of a material component of a patented invention and (3) With knowledge that such component has been especially made for use in an infringement of such invention.” JOHN GLADSTONE MILLS III, ET AL., 6 PATENT LAW FUNDAMENTALS § 20:7 (Indirect infringement—Contributory infringement) (2d ed.) (Database updated May 2015).
IP Law: Know or reason to know standard vs. should know (tort law).
A bailor is not expunged from liability for defective equipment simply because the equipment “loaned” is free. However the bailor must know or have reason to know that the equipment provided is dangerous when used for the purpose for which it is intended. A “gratuitous bailor may be liable for physical harm caused by the use of his chattel when he knows or has reason to know that the chattel is or is likely to be dangerous when put to the use for which it is supplied; has no reason to believe that those for whose use the chattel is supplied will realize its dangerous condition; and fails to exercise reasonable care to inform the user of its dangerous condition or of the facts which make it likely to be dangerous.” Pagano v. Occidental Chemical Corporation, 257 Ill.App.3d 905, 913; 629 N.E.2d 569, 575 (Ill. App. 1 Dist., 1994) (and adopting the rule of the Restatement (Second) of Torts § 388 (Chattel Known to be Dangerous for Intended Use), comment c, Persons included as “suppliers.” (1965) (Database updated October 2014) (“These rules, therefore, apply to sellers, lessors, donors, or lenders, irrespective of whether the chattel is made by them or by a third person. They apply to all kinds of bailors, irrespective of whether the bailment is for a reward or gratuitous, and irrespective of whether the bailment is for use, transportation, safekeeping, or repair.”).
See also, Restatement (Third) of Torts § 18 (Negligent Failure to Warn) (2010) (“A defendant whose conduct creates a risk of physical or emotional harm can fail to exercise reasonable care by failing to warn of the danger if: the defendant knows or has reason to know: of that risk; and that those encountering the risk will be unaware of it; and a warning might be effective in reducing the risk of harm.”) (Database updated October 2014).
Wis Stat. § 893.80(4): “No suit may be brought against any volunteer fire company organized under ch. 213, political corporation, governmental subdivision or any agency thereof for the intentional torts of its officers, officials, agents or employees nor may any suit be brought against such corporation, subdivision or agency or volunteer fire company or against its officers, officials, agents or employees for acts done in the exercise of legislative, quasi-legislative, judicial or quasi-judicial functions.” Coffey v. City of Milwaukee, 74 Wis.2d 526, 541 (1976): “Thus this court has held that even where the chain of causation is complete and direct, recovery may sometimes be denied on grounds of public policy because: (1) The injury is too remote from the negligence; or (2) the injury is too wholly out of proportion to the culpability of the negligent tort-feasor; or (3) in retrospect it appears too highly extraordinary that the negligence should have brought about the harm; or (4) because allowance of recovery would place too unreasonable a burden on the negligent tort-feasor; or (5) because allowance of recovery would be too likely to open the way for fraudulent claims; or (6) allowance of recovery would enter a field that has no sensible or just stopping point.”
“Policy decisions are those decisions that require the municipality to balance competing interests and to make a judgment call as to which solution will best serve each of those interests.” Capps v. Belleville School Dist. No. 201, 313 Ill. App.3d 710, 715; 730 N.E.2d 81, 86 (5 Dist. 2000) (citations omitted). “[D]iscretionary acts are those which are unique to a particular public office, while ministerial acts are those which a person performs on a given state of facts in a prescribed manner, in obedience to the mandate of legal authority, and without reference to the official’s discretion as to the propriety of the act.” Snyder v. Curran Township, 167 Ill.2d 466, 474, 212 Ill. Dec. 643, 657 N.E.2d 988 (1995). “The first line of cases … maintains that when a municipal employee is deciding whether and how to implement a program of maintenance and improvements, that employee is ‘determining policy’ and ‘exercising discretion’ as required by section 2–201. [citations omitted] But once the employee is carrying out that maintenance or improvement program, the employee's actions are ministerial and do not give rise to discretionary immunity.” Gustein v. City of Evanston, 402 Ill.App.3d 610, 623; 929 N.E.2d 680, 693 (1 Dist. 2010). 745 ILCS § 10/2/210 (Negligent misrepresentation; provision of information): “A public employee acting in the scope of his employment is not liable for an injury caused by his negligent misrepresentation or the provision of information either orally, in writing, by computer or any other electronic transmission, or in a book or other form of library material.” Statute (Indiana): “A governmental entity or an employee acting within the scope of the employee’s employment is not liable if a loss results from the following: The performance of a discretionary function.” Indiana Code § 34-13-3-3(7) (Immunity of governmental entity or employee). “[T]he general purpose of ITCA’s [Indiana Tort Claims Act ]immunity provisions is to permit public employees to exercise the independent judgment necessary to carry out their duties without the threat of harassment by litigation or threats of litigation over decisions made in the scope of their employment. Waldrip v. Waldrip, 976 N.E.2d 102, 117 (Ind. App., 2012). Indiana applies the planning/operational standard of public functions. “In determining whether governmental acts are discretionary, Indiana applies the ‘planning-operational’ standard. Planning functions are discretionary and are therefore shielded by immunity, while operational functions are not. Planning functions involve the formulation of basic policy characterized by official judgment, discretion, weighing of alternatives, and public policy choices. Operational functions are characterized by the execution or implementation of previously formulated policy.” Lake County Juvenile Court v. Swanson, 671 N.E.2d 429, 439 (Ind. App., 1996) (citations omitted).
“An exculpatory agreement constitutes an express assumption of risk wherein one party consents to relieve another party of a particular obligation.” Platt v. Gateway International Motorsports Corp., 351 Ill.App.3d 326, 330, 813 N.E.2d 279,283 (2005) (citation omitted).
“[W]hile the majority rule is that parents may not bind their children to preinjury liability waivers, many states recognize an exception to this rule where the liability waiver is in the context of nonprofit activities sponsored by, for example, schools, volunteers, or community organizations; and it has been noted that the only published decisions from other jurisdictions that have bound children to preinjury releases executed by a parent or guardian on the child’s behalf have done so in the context of a minor's participation in school-run or community-sponsored activities.” George L. Blum, Release or Compromise or Waiver by Parent of Cause of Action for Injuries to Child as Affecting Right of Child, 75 A.L.R.6th 1 (Originally published in 2012) (no pagination in Westlaw, updated weekly).
“[I]ndemnity agreements are ‘closely akin’ to releases… although there is a distinction in definition between exculpatory clauses and indemnity clauses, in these settings they both attempt to shift ultimate responsibility for negligence and so are generally construed by the same principles of law. An exculpatory clause purports to deny an injured party the right to recover damages from the person negligently causing the injury. An indemnification clause attempts to shift responsibility for the payment of damages to someone other than the negligent party, usually back to the injured party, thus likely producing the same result as an exculpatory clause.” Scott By and Through Scott v. Pacific West Mountain Resort, 119 Wash.2d 484, 491, 834 P.2d 6, 10 (Wash., 1992) (citation omitted).
(1) who bears responsibility for the costs of maintenance and repairs, (2) insurance and liability, (3) staffing and communications, and (4) conflict resolution
Makerspaces: Library's Legal Answers Workshop
Some Ground Rules!
•Anything said here is not to be taken
as legal advice, if you have a legal
issue, please consult appropriate
•In return, it is assumed that all
questions posed are hypothetical and
reflect only the musings of an
informed and curious mind and not the
actual problem you might have.
About this workshop
• We applaud makerspace pioneers in libraries!
• Librarians often over-estimate legal risk in any given situation
• Our goals today:
• Help you understand actual risk
• Suggest strategies for minimizing risk
One more thing…
• If license does not address particular situation, then turn to law.
• So read what you agree to…
• … and understand what you agree to
Makerspaces: The Library's Legal Answers
• Copyright – Gretchen
One page form to file with copyright office – Mary
• Patent – Tom
• Defects (Tort) - Tom
Key clauses in waivers and partnership agreements
• Waivers – Tom
• Partnership agreements – Mary
Building Codes and Disability Compliance – Mary
Free Speech and Privacy – Mary
Makerspaces: The Library's Legal Answers
• Defects (Tort)
Key clauses in waivers and partnership agreements
Building Codes and Disability Compliance
Free Speech and Privacy
What’s protectable by copyright?
• Work is automatically protected if and when:
Original work of authorship
With a modicum of creativity
Fixed in a tangible medium of expression
Copyright Owner’s Rights
• Reproduce the work
• Make derivatives
• Distribute copies to the public
• Display and perform in public
How might library infringe copyright
• Direct infringement: You did it
• Indirect infringement: You were accomplice to the one who did it
• Copying of protectable expression
• Standard: substantial similarity
• Modified copies can infringe!
• Medium/format does not matter: a copy is a copy is a copy
Direct Infringement: Other Rights
• Create a derivative
• (If you had protectable content, it’s a derivative; might also be
infringement of reproduction right.)
• Distribute unlawfully made copies to the public
• Perform or display in public
• Vicarious liability:
• Right and ability to control infringing activity + direct financial interest
• Contributory liability:
• Knowingly induce, cause, or contribute to third party’s infringement
• Distribution of a device with the object of promoting its use to infringe
copyright, as shown by clear expression or other affirmative steps
taken to foster infringement
Limitations on Owner Rights
• Unsupervised copying by users:
• Section 108
• Users uploading infringing material:
• DMCA “safe harbor” for “online service providers” (§512)
• Other things, maybe:
• Fair use
• No liability for copyright infringement upon a library or
archives or its employees
• for the unsupervised use by other
• of reproducing equipment located on its premises
• IF such equipment displays a notice that the making of
a copy may be subject to the copyright law
17 U.S.C. Sect. 108(f)
Application of Section 108
• Post notices!
• Don’t “push the button”
• “Unsupervised” has gray area
• But remember: 108 doesn’t require you to post notices and not
supervise copying, just relieves of liability IF you do…
• … and IF user infringes
Patron uses library’s online space to upload someone else’s song
Protect the library ahead of time with two steps
1. REGISTER AGENT WITH U.S. COPYRIGHT OFFICE
Are you already registered?
Is your library or parent organization already registered?
Example: MIT Museum Copyright Agent on file with
U.S. Copyright Office
Amend if your designated
2. ON YOUR SITE: INFORM PUBLIC HOW TO CONTACT AGENT,
Example: Columbia University
• Determined on case-by-case basis
• Based on four factors
• Purpose and character of use
• Nature of work infringed
• Amount and substantiality of portion used
• Effect on potential marketability of work
• Reminder: Talking about library’s actions as fair use
• In what type of situations would you need to rely on fair use for
• What do your policies & procedures say?
• How do you address fair use in other situations?
What is a trademark?
• Anything used to identify source/origin of product or service in
mind of consumer
• Words, images, names, even sounds and smells!
• Even if you don’t know who actual source/origin is
• E.g., each time you see “OREO,” you know those cookies came
from same source as last time you bought Oreos, even if you
don’t know source is Nabisco
Purpose of trademark law
• To protect consumers from confusion as to source of products
• So they can rely on brand consistency
What constitutes trademark infringement?
• Using a mark in way likely to cause consumer confusion as to
connection between your product or service and that of another
• Mark does not have to be exact
How might makerspaces infringe trademark
• Using trademark in way that might imply non-existing association
• Making item containing infringing mark
• Making item that is itself trademarked, e.g., character
About “maker” words…
• “Makerspace” is generic word so cannot be protected by
• BUT “MAKER FAIRE” is registered trademark
Risk of Patent Liability
• Example: Reproducing a work or component of a work protected by
• Example: Reproducing an object protected by a design patent.
• Primary/Direct: Non-existent if library does no printing.
• Inducement: Secondary. Non-existent at present under 35 U.S.C.A.
§ 271(b) if the library does not induce the patron to infringe a
patent. BENIGN INSTRUCTION of Patrons!
• Avoid knowledge and willful blindness standards of Global-Tech
Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060, 2069 (2011).
• Elements: 1) High probability (subjective belief) and 2) deliberate avoidance.
• Distribution/Contributory: Secondary. Non-existent at present
under 35 U.S.C. § 271(c) (3D printer is a device capable of
“substantial noninfringing uses”).
• Especially made/adapted standard of Aro Mfg. Co. v. Convertible Top
Replacement Co., 377 U.S. 476, 525 (1964), is absent.
Risk of Defect or other Harm (Tort) Liability
• Example: Device (3D Printer) is defective.
• Example: Reproducing an object that does not function.
• Example: Providing faulty design instructions.
• Example: The object functions but is used to harm another.
• Printer Defect: the library as gratuitous bailor of the printer:
• Restatement (Second) of Torts § 388 (1965): know or reason to know and a failure
to warn: of a dangerous condition or of facts likely to make it dangerous. Printer not
working properly: sprays molten compound. Warning: blade is very sharp!
• Product defect: Liability unlikely under product (strict) liability standard.
Patron made object is not “manufactured”:
• “engaged in the business of selling or otherwise distributing products.”
RESTATEMENT (THIRD) OF TORTS: PRODUCTS LIABILITY § 1 (1998),
• See also, RESTATEMENT (SECOND) OF TORTS § 402A, comment f (1965)
(“The rule does not apply to the housewife who, on one occasion, sells to her
neighbor a jar of jam or a pound of sugar.”).
• Instructions: Liability unlikely under product liability law. Aetna
Casualty & Surety Co. v. Jeppesen & Co., 642 F.2d 339, 341-343 (9th Cir.
1981) (liability limited to navigational and aeronautical charts).
Risk of Defect or other Harm, continued
• Instructions: Liability unlikely under negligence.
• Source: Library (“cheat sheet”). “publisher… has no duty to …independently
investigate the accuracy of the text. ” Winter v. G.P. Putnam’s Sons, 938 F.2d 1033, 1037-
38 (9th Cir. 1991).
• “warning is unnecessary… no publisher has a duty as a guarantor.” Id.
• Reasonableness of reliance on gratuitous information. RESTATEMENT (SECOND) OF
TORTS § 311, comment c (1965).
• Source: Third Party. Immunity: content obtained online. 47 U.S.C. § 230.
• Product defect or harm to another: Negligence unlikely. Duty of
care standard. Foreseeability. Proximate cause. Superseding cause.
Public policy considerations.
• Statutory Immunity: Wis. Stat. § 893.80(4).
• “A discretionary act is one that involves the exercise of discretion or judgment in
determining the policy to be carried out or the rule to be followed [and] the exercise
of discretion and judgment in the application of a rule to specific facts. A non-
immune ministerial’ act, on the other hand, is one where the duty is absolute, certain
and imperative, involving merely the performance of a specific task when the law
imposes, prescribes, and defines the time, mode and occasion for its performance
with such certainty that nothing remains for the exercise of judgment or discretion.”
Willow Creek Ranch, LLC v. Town of Shelby, 224 Wis.2d 269, 281-282 (Ct. App.
1998) (citations omitted), review granted 228 Wis.2d167 (1999), affirmed 235
Wis.2d 409 (2000), reconsideration denied 239 Wis.2d 314 (2000).
Key Clauses in Waivers
and Partnership Agreements
Risk of Defect or other Harms, Waivers
• Exculpatory Agreements: called waivers, operate as release
from liability, a contractual promise not to sue for negligent but
not reckless or intentional conduct.
• Clear title and labels (Assumption of Risk, Release of Liability, etc.).
• Singular purpose, e.g., do not combine with general registration.
• Articulate the possible equipment, e.g., solvents, metal working tools,
etc., dangers, e.g., fumes, sharp objects, etc., and harms, e.g., cuts,
• Exculpatory provision in bold or caps: conspicuous!
• Some states require the ability to bargain; present a choice: service is
free if you sign, if you choose not to sign you pay a fee.
• Minors: Contracts are voidable; exception: voluntary, noncommercial.
• Indemnification: a promise to make another whole, i.e., to
cover the expenses associated with a harm suffered including
legal expenses and damages.
• Fault of the library; fault of the patron (in harming another patron).
• CLARITY, CLARITY, CLARITY
Define makerspace, access, hosting, staffing, communication,
programs, facilities including parking, fees (collecting and using)
• Confidentiality – patron information, agreement itself
• Decision-making. Who decides what? Unanimous decisions?
• Capital Contribution. Initially? Maintenance? Expansion?
• Insurance. Who carries policy? Additional insured?
• Dissolution. Exit strategies. Better: six month agreements.
TekVenture Inc. and Allen County Public Library agreement at
New space, not a quiet reading space
Users may be expected to talk
Boisterous? Foul Language?
Creating embarassing 3D prints?
Free Speech and Library’s Makerspace (physical)
Government libraries bound by
FIRST AMENDMENT .. Can do:
Too loud (may enforce)
Not bad words (trickier)
Check with lawyer before removing
someone for bad language
Makerspace Policies ... and Free Speech
Define purpose of the space
Hanging out, messing around, geeking out (Chicago Public Library)
Ask for civility in general (but don’t kick out)
Personal attacks – consult library conduct policy
Warning: difficult to rise to level of direct threat
Obvious “hyperbole” is free speech
See Henry Cohen, (16 October 2009). "Freedom of
Speech and Press: Exceptions to the First Amendment”
Defamation, False Information, Negligence
… You’re not responsible, even if you host (almost always)
No provider or user of an interactive computer service shall be treated as the publisher or speaker of
any information provided by another information content provider. 47 USC§ 230(c)
Matchmaker.com immune when user posted false profile for Star Trek
actress – stalking
Carafano v. Metrosplash.com, Inc., 339 F.3d 1119 (9th Cir. 2003)
Sect. 230 broad protection – from false information, negligence,
sexually explicit content, discrimination BUT NOT COPYRIGHT
Free Speech and Library’s Makerspace (online)
Today’s legal environment
Don’t “co-produce” bad content
Internet roommate locator service
Required users to use pull-down menus:
age, gender, sexual orientation, children
No immunity as co-producer of content
But OK to let users write free text "Additional Comments”
even gross discrimination
Fair Housing Council of San Fernando Valley v. Roommates.com, 521 F.3d 1127 (9th Cir.
Privacy and Makerspaces
no expectation of privacy in public places
but Electronic Privacy Communications Act
(ECPA) protects stored electronic data
State Law – varies
*Most protect personal information
in library records
*Some (e.g. Arizona) protect personal
information when “using the library”
Privacy and Collecting Information from Children
Federal law requires parental consent for
children under 13 for online comments
at commercial websites
Don’t collect/keep what you don’t need
Children's Online Privacy Protection Act
If you have a commercial partner, subject to COPPA
Notice to parents about information practices
Verifiable parental consent before collecting
Parents must have access to child’s info
Confidentiality, security and integrity of child’s personal info
Federal Trade Commission (FTC)
Privacy and Sharing Children’s Information
Great to cooperate with schools or others
Warning: Get parental permission before
sharing personal information
American Library Association. Progress in the Making: 3D Printing Policy Considerations through the Library
Lens by Charlie Wapner
California State Library Infopeople project. Makerspaces in Libraries: Legal Considerations July 22, 2014 (thanks
to Infopeople for some content in this presentation)