SKETCHES FOR THE

INTEGRAL PROTECTION

OF INTELLECTUAL PROPERTY

by by MLADEN VUKMIR

T ABLE O F C ONTENTS

I NTRODUCTION

The objective of this article is to explore some central issues of

intellectual property rights protection. It is focused on the examination of the position

and the role of property rights as the legal basis of intellectual property. The

examination will be generally done by comparing assorted rights of property law, so

as to see how they developed in the civil law systems and common law systems

respectively.

In order to accomplish this task fully it is necessary to understand the

origins of a particular legal right from the time of the early societies until present

time. It will be shown, arguably, that history is determinative of development of all

property law institutes. The broader historical context of intellectual property will be

briefly presented. We intend to show that sources indicate that certain ancient

civilizations recognized the importance of creativity and tried to encourage it. Our

further intention here is to show that the relations between people over their

creations were legally recognized already in some ancient societies, including,

arguably, the Roman Empire.

by © Mladen Vukmir, 1990. All rights reserved.

The next part of our discussion is devoted to the invisible link

between the common and civil law systems, in which we will present the opinions and

conclusions of distinguished scholars who have devoted their careers to this study.

Space does not permit us to conduct analysis of the legal institutes as original sources

and there would be no particular reasons to do so, as the time which has lapsed since

their research was conducted has not changed the results. We note the conclusions of

others telling how and why the link became invisible. This argument will be

undertaken in order to elicit analogies between property rights from both the civil and

common law and those in the law of intellectual property. For the purpose of such

analogy we must understand a common ground, which is to be found in the Roman

law.

Accordingly, a separate chapter is devoted to the examination of the

meaning of the element of property in the idiom intellectual property. The focus of

the analysis will be to compare traditional property rights with the property rights in

intellectual creations. At this stage of our research we will compare the property rights

across the network of the civil, common, Roman and intellectual property rights.

Presumably, some differences between the law of real property, where the res is the

land, and property of chattels, where the res is a movable object, could be explained

by analyzing the difference between the nature of land and of movable things as the

objects of property. If it is so, we will apply the same approach to define the

differences between the objects of intellectual property and those of the traditional

forms of the property. Once we establish common points between the characteristics

of some elementary institutes, we will compare the results with the situation in the

law of intellectual property. Such analysis leads, as will be shown, to a final

conclusion that property is the common element of the law of all systems of

intellectual property protection today, and that the same general principles could be

analogized once the object (thing, res) of intellectual property is determined. The

Word institute, as it will be used in this essay denotes an established legal principle, or a legal concept. It is common legal term in the civil law doctrine, in the same sense, and it should not be mixed with the Institutes, in the sense of the legal compendia, such as written by Gaius, Iustinian, or Coke. Certainly, the meaning of the titles of this compendia does denote the same concepts e have in mind when we use the term. Although the use in such meaning is not common in common law, some authors, as Posner, “The Economics of Justice,” (1981), use the term institution in the same manner as we use institute. See e.g., at page 20: “[Blackstone] traced the articulation of the concept in specific rules and institutions of the legal systems of his time.” (Emphasis added.) Finally, “The Random House Dictionary of English Language,” (2d Ed.) defines an institute as: “10. an established principle, law, custom or organization,” and “Webster’s Third New International Dictionary” defines it as: “something that is instituted: as an elementary principle: a precept of rule recognized as authoritative.”

object of intellectual property is not like any object which traditional property law

theory recognizes; and as we will see, that decisively determines the characteristics of

the law which regulates it, as different from traditional property. Nevertheless, even

inasmuch differences may be inevitable, certain principles of property law remain no

less applicable.

The examination of the content and meaning of the element of the term

intellectual in the idiom intellectual property will be conducted in the separate

chapter. It will be there that the information will be offered as a possible common

object of intellectual property rights. In that sense it is not a separate study from the

one which is conducted in the previous chapter devoted to the meaning of the term of

“property” in intellectual property. In order to understand fully the conclusions about

the nature of intellectual property which will be drawn, we will at that point examine

other possible legal rights under which intellectual property may circulate. The legal

regime of the gift will be examined in particular. Closely related to this is the question

of the role of copying in modern societies which will also be examined in this

chapter.

In order to demonstrate the assumption that the property right is the

underlying common element to all of the forms of intellectual property, the role of the

interfaces between particular existing systems of protection will be examined.

Presumably, corresponding legal principles should be found in all of forms of

intellectual property protection. In particular, the similarities should become visible

at the moment at which new technologies emerge. The social context in which

intellectual property law has developed since the printing press was invented, is

radically changing upon the impact of computing technology, which is not merely a

new technology, but has the potential to reshape modern societies as much as the

printing press itself did. Therefore, the quality of the computing technology is its

ability to change, and it will not only change our understanding of how computer

technology is protected itself, but also how to understand protection of creativity in

general.

A Hypothesis

In order to achieve such results we believe that confronting the

traditional understanding of the basis for present intellectual property protection

system with the juxtaposed work hypothesis is necessary. Such juxtaposing appeared

as unavoidable upon examination of the present intellectual property institutes as

interpreted by the trends of the judicial opinions, and in later instance, fruitful

regarding their re interpretation.

There is only one creativity. There is no difference between the forms

of creativity of an inventor and that of an artist. Creativity is the expression of the

human effort to understand and control the material reality by which he is surrounded.

A dichotomy with protection of the industrial property as one pole of intellectual

property law and the copyright protection is a matter of legal systematization derived

from related dichotomies incorporated deep in Western civilization. The dichotomy of

the body and the soul is probably most dominant. Others, like thinking and feeling,

science and art and labor and leisure are closely related. But, mind is the part of our

body no less than the hand or the stomach. When we are hungry we know it by our

mind, and we move our hand to feed ourselves by our mind too. However, the

formation of the present law is derived from relations which coincide with the cultural

conditions of the industrial age. Intellectual property law is historically organized on

principles stemming out of such a perception of reality. The industrial age is at its end

and the civilization of the post-industrial age need not distinguish in such a manner.

Existing law needs to be re interpreted to fit more adequately the conditions of post-

industrial society.

The advent of the post-industrial age is something upon which many authors agree. So R. Grant Hammond in “Quantum Physics. Econometric Models and Property Rights to Information,” 27 McGill Law Journal 45, (1981),: “It has been suggested that some of the western high-technology countries, having passed through agricultural and industrial revolutions, are now entering into a post-industrial state typified by information-based economies.” In the footnote 3 Hammond refers to D.Bell, “The Coming of Post-Industrial Society,” (1973),: “In pre-industrial societies-still the condition of most of the world today...life is primarily the game against the nature. [In] industrial societies...life is a game against fabricated nature... .A post-industrial society is based on services. What counts is not raw muscle power, or energy, but information.” He provides us with further references: D. Bell, The Winding Passage,” (1980); F.Machlup, “The Production and Distribution of Knowledge in the United States,” (1972); Parker, “Social Implications of Computer/Telecoms Systems,” 1 Telecommunications Policy 3, (1976); Pamela Samuelsen, in her article, or note (#), supra, refers to E. Ploman & L Hamilton, “Copyright: Intellectual Property in the Information Age,” (1980); Branscomb, “Who Owns Information,” (Gannet Center for Media Studies, Columbia University, Occasional Paper No.2, 1986). Probably the most important works in understanding the entirety of the changes are Marshall McLuhan, “Understanding Media; The Extensions of Man,” (1964), and “The Gutenberg Galaxy,” (19**).

Article 1, Section 8, Clause 8 of U.S. Const. reads: “The Congress shall have Power...To Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Nothing on the face of the Constitutional provision suggests that the rights have to be secured by the patents or by copyrights solely. The Constitution simply stated the fact that the rights of creators over their

Of course, an imposing legal structure of intellectual property

protection has been developed over time and we are not proposing that it should be

entirely dismantled, however non systematic, sometimes even unfortunate, its

development may have been. We are trying to offer an alternative understanding of

the existing law, and we believe that there is room for improvement of the existing

doctrines in the light of better understanding of the legal nature of its object, which is

creation.

Obviously the differences between the divided systems are not illusory,

and we attribute their existence as related to the exploitation of creation, rather than to

creation itself. Instead of the dichotomy based on the body and soul antinomy in the

matter of creation, there is the corresponding cultural dichotomy of the separated

industrial and artistic consumption of the creations. So asserted, the exploitation

dichotomy points out the same cultural secularization we regard as overcome by the

post-industrial revolution. We believe that this dichotomy is simply not viable in the

future for understanding the integrality of reality, but its present existence will

probably successfully serve as a means of interpreting of the existing protection

systems in a transitional period towards integral protection. That is to say that post-

industrial society based on creativity as its main resource will not distinguish so

sharply between leisure time and labor time, but rather recognize creation in both

fields. We believe that a fresh approach would fulfill the spirit of the presently

proclaimed goals of intellectual property protection better than the present system

does.

creations shall be legally recognized. Layman Ray Patterson, “The Statute of Anne: Copyright Misconstrued”, 3

Harvard Journal on Legislation, 223, (1965-1966), at 224-225, provides a typical example. After quoting the words of Lord Mansfield from Millar v. Taylor, 4 Burr. 2396, Eng. Rep. at 252, in which Chief Justice defines the rights analogous to those which would in civil law system be known as the right of the author to prevent mutilation of his work, (i.e., one of the moral rights), Patterson states that: “[i]t is one of the unrecognized ironies of legal history that the case from which this perceptive statement of the author’s creative interest is taken is probably a major reason the common law does not today recognize the author’s creative interest as such.”

It was Oliver Wendell Holmes who made a remark that “the law is behind the times.” O.W. Holmes, “Law and the Courts,” in Collected Legal Papers, (1920), at 294.

See Justin Hughes, “The Philosophy of Intellectual Property,” 77 The Georgetown Law Journal 287, (1988), at 302-310, and Lewis Hyde, The Gift; Imagination and the Erotic Life of Property, (1979, 1983), at 50-51.

See John Gleick, Chaos; Making A New Science, (1987), at ?. The “ABC News Tonight with Peter Jennings,” on Thursday, April 19, 1990 in “American Agenda” devoted to the 20th Anniversary of the Earth Day repeatedly used the word “interconnected” in describing the true state of nature, and the attempts of the elementary schools in the United States to bring to youngest students more

The Increasing Importance of Intellectual Property

Before closing this opening statement, let us emphasize the curious

phenomenon of the increasing importance of intellectual property law. In order to

explain it we have to turn to the res, to the object of the property to which intellectual

property law grants its protection. We know that the history of its development began

early in human history, but our opinion is that it has been neither systematic, nor

legally consistent. Western civilization seems to be now at the end of the period often

described as the industrial age. This was the age that brought the understanding of the

proprietary possibilities over the creation. The post-industrial age and the new

technologies which brought about changes make us realize the proprietary nature of

information. The change from the industrial to post-industrial society changes cultural

contexts and social environments in great measure. The relations between people, and

between people regarding things, are caused by a transition in cultural contexts, which

then enables us to realize the superficiality of the dichotomies such as the above.

Mankind is facing the possibility that many traditional resources will become

exhausted simultaneously as it is growing in awareness of how its exploitation is

polluting the environment, thus destroying other present resources. Therefore, the

possibility of owning external resources is shrinking.1 As the consequence the

importance of the object of intellectual property is gaining recognition in modern

societies. This remark is easy reminiscent of the concept of the common, as John

Locke conceived it,2 Stuart Mill took the concept over.3 The modern authors

consider it, like Becker does when he talks about “exhaustibility” of resources.4

Whether ownership is through the creation of the means for exploiting

existing resources more thoroughly, through the means for discovering the new

understanding of “interconnectedness” through the improved curricula.

1 Vilmos Csanyi, “Evolutionary Systems of Society,” (1989), at 193-200, devoted the closing chapter of his book, entitled “The Problems of a Finite Earth,” to the problem and its recognition through the process of cultural evolution. “The biosphere is not the environment of society but is an integral part of society.” (Emphasis in original.) See the relation between the exhaustibility of the environment, at page 194, and the artifacts produced by the cultural machines, at page 198, as an epitome of the relation between the environmental law and intellectual property law.

2 See Hughes, id., at 296-330; Lawrence C. Becker, Property Rights; Philosophic Foundations, (1977), at 32-48; John Locke, Two Treatises of Government, (3ed. 1698, rev.ed. 1963).

3 Becker, id., at 41-48; J.S. Mill, Principles of Political Economy in the Collected Works of John Stuart Mill, ( London, Routlege & Kegan, 1965)

4 Becker, id., at 109-110, 118;

resources, or through means for creating entirely new resources is of vital significance

to societies. Eventually, new resources can be created only by creating information.5

Therefore, the law of intellectual property, being the law which regulates the central

field of the development of societies - the production of the resources - consequently,

will gain a more central position within the body of legal systems as the role of the

object of its protection becomes more important. There is no doubt that the role of

information will expand in the foreseeable future, and with it, the role of the law

which protects the relations arising in the connection with the information.

Besides its obvious and important relation to the environmental law,

which is the law that protects aspects of our environment from the aspects of

resources, in which it is similar to intellectual property law, which by protecting

creativity is also protecting resources. This highly controversial issue will be

examined in chapter four. Here we want to point another branch of law related to the

another object of intellectual property, the information. Intangibility of information is

one of most distinctive characteristics of the object of intellectual property. But, the

law of corporations is also, by its definition dealing with the intangibles. It is branch

of the law that regulates the life of the legal creations. The creation of law here is a

legal person, and as such not a creation in the strict sense of intellectual property law.

Nevertheless, legal person is a creation which instrumentalizes an idea. This

difference will be examined more in detail, also in the chapter four. But the fact that

the creation of legal person may not be creation in the sense of intellectual property,

does not make it less an idea. Corporation is the idea materialized, or embodied,6 to

serve as the tool in achieving certain social goals. As such it is an excellent example

of the incredible material power the ideas have.

Terminology

The terminology used in this essay is standard legal terminology.

When there is deviation it will be pointed out. The term property will always mean

the legal right on the object, and never the object of the right itself.7 The idiom

intellectual property will be discussed in detail later in the course of the argument.

5 Pamela Samuelsen, “Information As Property: Do Ruckelhaus and Carpenter Signal a Changing Direction in Intellectual Property Law,” 38 Catholic Law University 365 (1989), at 367, where she also points to the works of E. Faigenbaum & P. McCorduck, The Fifth Generation: Artificial Intelligence and Japan’s Computer Challenge to the World, 14 (1983); D. Brandin & M. Harrison, The Technology War, (1987).

6 The term incorporation is a Latin word which when translated in English means literally embodiment. The concept of corporation is a valuable example of the legal recognition of intangibles.

The meaning of both of the terms included in the idiom will be examined in separate

respective chapters. It could be said that intellectual property is the form of legal

recognition of the rights the creator acquires over the information he creates.

The term creator will be used to denote an individual involved in

creative activity, as stripped of its mystified, romanticized meaning associated with

unique talent, in the United States legally sometimes expressed as the “flash of

genius.”8 This is not to say that we do not recognize the value of the gift of an

individual creator. Precisely to the contrary, we believe that a gift rests in each

individual.9 Our belief is that creativity is one of the basic human abilities regarding

human capability to interact with the environment, and that its results should be

protected by the law, just as the creation of “new” material objects to which

protection is traditionally granted. That means that the term creator comprises both

the “inventor” and “author” as traditionally used in relation to the scientific inventions

and the artistic works respectively.

7 See C.Rainold Noyes, The Institution of Property; A Study of Development, Substance and Arrangement of the System of Property in Modern Anglo-American Law, (1936), at 356-358. Noyes displays a variety of approaches to this matter which are often extending beyond the terminological choice.

8 The oldest case we detected that mentions this concept of creativity as legally relevant is Boyce et al. v. Taft -Buick Corporation, 36 F.2d 357, (D.C.E.D,N.Y., 1929) where Galston, J., said: “I think it required the inventive flash to conceive of a trouble indicator, even though in the state of art it required no mechanical genius to adapt the means which the art furnished to the particular conception.” The original meaning was far, as we can see, from the meaning it acquired in the Supreme Court decision Cuno Engineering Corp.v. Automatic Devices Corp., 62 S.Ct. 37, 41, 314 U.S. 84, 91, 86 L.Ed. 58 (1941), where it was stated by Justice Douglas that “[t]he new device, however useful it may be, must reveal the flash of the creative genius, not merely the skill of the calling.” By reversing its Cuno decision in the Graham v. John Deere Co. of Kansas City, 86 S.Ct. 684, 383 U.S. 1, 15 L.Ed.2d 545, 148 USPQ 459, the Court actually acknowledged the cultural concept which accepted the creative gift as a common individual ability, as a legal standard for patent protection. Such recognition had wide effect on the whole of intellectual property law. For more opinions on the issue if the “flash of genius” see footnote 7 in Deere, supra, and footnote 1 of the decision in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162. See also Hyde, id., at 52-54. “The ‘cult of genius’ which we have seen in this century has nothing to do with the ancient cult. The public adoration of genius turns man and woman into celebrities and cuts off all commerce with the guardian spirits. We should not speak of another’s genius; this is a private affair.,” at 53. (Italics in original.)

9 George Nelson, Problems of Design, (1957), in the excerpt reprinted in Modern Culture and the Arts J.B.Hall & B. Ulanov ( ed.), (1967), at 487, said: “When Santayana said that the artist was not a special kind of man, but that every man was a special kind of artist, he was not announcing a discovery, but a re-discovery.” The cited anthology of essays will in further text be referred to simply as Modern Culture.

The term creations, in singular or plural, will be used for the results

originating from the creative activity. It will be explained and defined in the heading

devoted to information. Here, it will suffice to say that creation in that sense are a

cluster, a set of particular information, or the choices made by the creator. Creations,

in this sense, should be distinguished from an artifact, or a embodiment of a creation,

such as a particular technology10 may be. An artifact is a tangible embodiment of a

creation, while a creation is the result of the process of choosing the solution to a

problem, what some authors call an idea.11 12

As such, creations should not be mixed with the creativity. Creativity,

or creative activity is the activity of choosing, from which the creations originate.

Creativity is a human activity of choosing the questions in effort to understand,

explain and act in concord with the environment. It is the activity of choosing the

questions primarily, and the answers only secondarily. Concord in this sense, is

subject to the re interpretation of every particular society at every point in its history.

In order to achieve such concord individuals are making choices and decisions upon

them, thus producing certain information. Clearly, if understood in this way, there is a

relationship between communication and creation, and it will be examined.

10 We accepted the term technology in its broad meaning derived from its etymological roots; the Greek word “techne” meaning art, and “logos” as science. Therefore, the term technology siginifes properly the result of creative activity encompassing an integral effect which such results have on our society. See also George Parkin Grant, English-Speaking Justice, 1974, 1985, at 1: “The word ‘technology’ is new, and its unique bringing together of and shows that what is common around the world is this novel interpretation of arts and sciences. As in all marriages, this new union of making and knowing has changed both parties, so that when we speak ‘technology’ we are speaking a new activity which western Europeans brought into the world, and which has given them their universalising and homogenising influence.”

11 Hughes, id., at 294. In an attempt to define the res of intellectual property he concludes: “Some people disfavor describing such efforts as ‘ideas,’ but I will use ‘idea’ to refer to this broad notion of the res, understanding ‘idea’ to be shorthand for the unique product of cognitive effort.”

12 A dichotomy, similar to the one we propose, is to be found in Wassily Kandinsky, “Concerning the Spiritual in Art,” reprinted in Modern Culture, at 168, where he in the footnote, analyzing the structure of a creation states: “The inner element determines the form of the work of art. In order that the inner element, which at first exists only as emotion, may develop into a work of art, the second element, i.e., the outer, is used as an embodiment. Emotion is always seeking means of expression, a material form, a form that is able to stir the senses. The determining and vital element is the inner one, which controls the outer form, just as an idea in the mind determines the words we use, and not vice versa.” We will return to the other parts of this footnote in the part of the third chapter devoted to the analysis of creation and communication.

The term exploitation is the cultural and economic aspect of the life of

creations among people, and the law recognizes certain rights of the creator in it, and

therefore grants protection. Exploitation, when used related to creations, will denote

the rights which statutory language in many countries often enumerates in such terms

as to “make, use and sell” for industrial, or to “reproduce, prepare derivative works,

distribute, perform, and display” for artistic creations. Exploitation is hardly a less

important part of the life of the information, but too often only the economic aspect

has been taken in account, while the legal basis for the right upon which the creations

were exploited tended to be overlooked. This is to say that although effects of the

protection will touch the sphere of economy, in order to improve its functioning more

attention has first to be paid to the legal content and to its nature. In discussing

intellectual property protection it is unavoidable, and pointless to avoid the economic

aspect which the protection plays in the life of creation. We will, therefore, readily

discuss this aspects, however, with the emphasis on its broader, integral cultural

context.

The legal content of creation will be called information, and will be

defined in a separate heading. Here we shall say only that it will be used in a meaning

analogous to that used in the theory of communication.13 The thesis which will be

argued, is that the term information in this specialized meaning for the purposes of the

theory of communication is apt to be used in law that regulate the rights over creation.

Presently, the term is not used in this sense; and when used it denotes “semantic

content” of creations. In other words, strong link between creations and

communication will be shown. The term will not be used to denote the semantic value

of the information, as meaning something synonymous to “news” on one side, or

“information industry,” (as recently associated with computer related industry), or

consulting services on the other. Information is the particle of new value created

through the creative process, which is usually called a creative result or a creation. A

creation is a cluster, or a set of information.

Goals

The purpose of this essay is to add another possible way of

understanding intellectual property to the body of the existing interpretations. It

should not be regarded as a proposal for the changes in the body of the existing law,

13 Claude E. Shannon and Warren Weaver, “The Mathematical Theory of Communication,” (1963), at 8: “In particular, information must not be confused with meaning.” (Italics in original.) Also, Umberto Eco “Information, Communication, Culture????,” (???).

because it is not. It is “descriptive” rather than “prescriptive,” at least at this stage of

the research. Some solutions, on the broadest conceptual level are unavoidable, and

they will be presented in a separate chapter. However, we do not believe that changes

in law by the means of sudden reformulations contribute in a true sense to the

development of society. Changes are taking place of themselves constantly, and we

cannot stop them by any effort. We certainly do hope, that in that sense this article

does contribute to changes in better understanding of the appropriate protection of

intellectual property, both in society and in law, as they are mutually conditioned.

In doing so, our aim is not to create an exclusively property based

theory of intellectual property protection. We are aware that manifestations of life are

always elusive in relation to legal concepts, and we do not believe that such

manifestations should be reduced in order to square with legal concepts. At the same

time, we believe that the law is but one of such manifestations, and understanding its

structure facilitates its operation. Even when it would appear that the law prefers

applying concepts not based on property, such as those based on a duty, in our

opinion the duty also relates to property in certain way.14 If we would live in a

society which would not have law in order to protect such relation, of course, there

would be no property right we could enforce. But the psychological relation between

the man and the thing he physically occupies would exist nevertheless, regardless of

the law. That relation certainly belongs to the bundle of rights that constitute freedom,

whose protection, in general, is the ultimate reason why societies introduced the legal

regulation of the rights of individual, provided through the integral legal concepts,

such as property law.

14 William E.Hearn, The Theory of Legal Duties and Rights, (1883), at 153, as quoted by C. Reinold Noyes, The Institution of Property; A Study of the Development, Substance and Arrangement of the System of Property in Modern Anglo-American Law, (1936), at 289, : “Thus a right has no independent existence. It denotes merely a certain course of proceeding taken by its donee upon the breach of certain species of duty. When, therefore, we speak of the violation of the right or of its infringement, we really mean the violation or the infringement of a duty in respect of which a [relative] right exists, so far as such violation or infringement affects the donee of the right.” Noyes adds that: “[i]n essence it is this concept of ‘duty,’ as the correlative of ‘a right,’ which represents the modern view.” The United States Supreme Court decision in Beech-Nut Packing Co. v. P. Lorillard Co., 273 U.S. 629 (1926), written by Justice Holmes, provides an illustrative example of such understanding of the relation between right and duty: “Apart from nice and exceptional cases, and within the limits of our jurisdiction, a trade-mark and business may start together, and in a qualified sense the mark is property, protected and alienable, although as with the other property its outline is shown only by the law of torts, of which the right is a prophetic summary.”

Before we start our discussion, let us remind ourselves that the duty

itself, related to the property, is nothing but a reflection of a proprietors right. A right

recognized by law imposes a duty on others to respect it. The question which has to

be answered is whether other duties which are imposed by the societies via the law

relate to the principal general social values, such as freedom, equity, or property. We

are answering in affirmative, although we are aware that it would require a separate

treatise to discuss that issue.

If we presume that the duty of a person to keep a secret is imposed, in

the last analysis, not only to protect the confidential behavior in the situations where it

could be inferred that it is expected, as in fiduciary relationships, but also as related to

the human feeling toward the relation of belonging over certain information, which

law may recognize as ownership, denoted by the legal institute of the property which

might protect the secret if society recognizes the right. It appears that the duty is just

another possible legal approach to protect the relation an individual might have

regarding his environment. In other words, there are some relations which societies

recognize integrally per se, and create legal institutes such as property to protect in all

of its aspects. Duties are particular, or fragmentary norms of behavior not always

related to such major concepts as property, freedom, or equality. One possible

question which should be asked is why, then, is there no freedom law, as there is

property law? In such context we will return to property as the possible basis for

enforcing rights over information. Thus, it has to be said that the same social value

might be protected through any number of legal institutes created to protect a

particular aspect of its manifestation, or by such institute which, by virtue of the legal

doctrinal systematization, pertains to the “law of property,” as to an integrated

institute. In this scheme another level belongs to obligations, where individuals are

permitted by law to create acceptable behavior according to their expectations, within

the norms set by the law. That is to say that any possible aspect which may be

protected by the broad, integral institute, or by the particular duty, can also

simultaneously protected by agreement.

In this essay, by demonstrating that intellectual property has necessary

proprietary justification to be granted concomitant property protection, we are not

trying to limit possibility of regulating certain aspects of the relations between the

creator, his creation and third persons on the basis of tort, contract, or any suitable

legal instrument. A whole row of further questions opens at this point in practice, like

whether in such cases society has interest to prohibit contractual exclusion of

discoveries, principles of nature and similar, from the access by others... We will try

to answer some.

A Work-in-Progress

Before we do so, one last explanation regarding the nature of our

study. This essay is a part of an broader ongoing research of the structure of

intellectual property law. Accordingly, this essay is conceived as a work-in-progress

whose intention, at this point, is to determine the general scope of the intellectual

property law, the object of its protection, and its most basic structure. The readers will

note that, as such, it is not occupied with the issues of the neighboring rights. In the

first place, the relation of the performing artists and their creations, to creators whose

rights in their creations is recognized as “proprietary” should be examined in under

the above hypothesis. Also, the possibility of the expression through the sport, and the

rights of the sportsmen in their performance will be left for another research.

It is also not occupied with the issues of the transfer of the intellectual

property, which is probably one of the most challenging parts of the research to be

done. Importance of the law regulating transfer springs, in the first place because the

law of intellectual property is the law whose largest part overlaps with the rules of the

law of contracts, under which it is free for the owners of the rights to dispose with

them. However, some parts of the transfer is not subject to the dispositive rules, and it

has to be determined which part is or should be regulated by cognitive law. Thus, an

analysis of the regimes of inheritance and contractual transfer appear as the logical

and necessary step of any further research of intellectual property law.

C HAPTER O NE

A BRIEF HISTORY OF TIMES

Recognition

Before Roentgen discovered the wavelength known as the X-rays

public was ignorant of its existence. It was not possible to hear it, or to see it,

therefore mankind was unaware of it. Indisputably, its existence was much longer

than our knowledge of it is. Our ignorance did not diminish the fact of its existence, or

its impact, at any moment. Very much the same situation occurred regarding the ultra-

violet and infrared parts of spectrum, whose wavelengths were also discovered only

lately. We were simply not aware of the ultra-violet markers on the flower petals

which lead bees to the pollen, just as the beams of light and radio signals lead pilot of

an airplane toward the runaway. For the bees the markers are clearly visible, and for

people they are not, even for those which know that the invisible spots are on the

petals. The invention of special optic devices and cameras helped us to actually see

these spots and we are aware of their existence although we can not see them. Similar

devices help us to see the heat as infrared waves, or to use infrared light to see in the

dark. Such was also the history of the discovery of bacteria, whose existence many

practicing doctors distrusted, by Louis Pasteur, as the newly discovered cause of the

illnesses was not visible without the microscope.

The process of discovering enables us to see “reality” different after

every new “discovery.”15 The process of human acknowledging the reality of nature

we call discovering. It is regarded as a revolutionizing activity, essential for the

progress of any society. At the same time, a similar process in the social environment,

the discovering of the social reality, is not so clearly distinguishable. What is truly

15 John Gleick, “Chaos; Making A New Science,” (1987), at 81-118. A chapter entitled “The Geometry of Nature” is an easily accessible introduction to understanding the far-reaching eye-opening impact of any new discovery. At 115, in the context of the principle of self-similarity he maintains: “The myth [of the earlier naive ideas of self-similarity] died hard as the human vision was extended by telescopes and microscopes. The first discoveries were realizations that the each change of scale brought new phenomena and new kinds of behavior.”

important to understand is that this two processes are substantially the same one,

appearing as different reflections on every particular social phenomenon.16 The

process within the judicial system of every society which is performing the similar

function is called recognizing, and its function is to “discover” the rights when they

are asked for in the courts.

There is no device invented thus far that helps us to actually see the

relations among people. Of course, there is also no device to see the relations between

people and things, or between people regarding things. But, it never meant that they

do not exist for us. Debtors had to pay the creditor, and if debtor did not, all societies

we know of provided some form of sanction. The principle is the same regardless of

the sanction or the punishment particular society chose to impose for not obeying the

imposed rule. The rule may provide for cutting-off the hand, slavery, a prison

sentence, a fine, or civil liability for the debtor who disobeyed the rule by not paying

the creditor. Society provides means of enforcing the rights it recognizes by the law.

The rights it recognizes are related to the cultural context in which it developed. Law

is just reflection of that context.

The Cultural Context of Law

The ideas have double function in relation to the law. The ability to

have ideas and the fact that an individual can express, or communicate them to the

others, made the entire social structure possible. Part of such social structure is law.

From the very early days individuals tended to protect the ideas they would generate,

eventually employing law in the task of such protection. Csanyi, without explicitly

16 See Gleick, id., at 5, where in explaining how the mathematical theory of chaos has the potential to influence the society as a whole, he states that “[n]o matter what the medium, the behavior obeys the same newly discovered laws. That realization has begun to change the way business executives make decisions about insurance, the way astronomers look at the solar system, the way political theorists talk about stress leading to armed conflict.” In that respect it is no coincidence that Cezanne and Poincare were contemporaries at the end of last century, as Einstein and Picasso were at the beginning of this. Same stands for the activity of Marshall McLuhan and Edward Lorenz in the sixties. Once reality is comprehended by civilization in a certain way, the ideas which result from that process acquire tremendous strength. And indeed, the political theorist begun to change the way they talk about conflict. See, e.g., Francis Fukuyama, “The End of History,” The National Interest, (Summer 1989), who in interpreting Hegel’s idealism stresses “our tendency to retreat into materialist or utilitarian explanations of political or historical phenomena, and our disciplination to believe in the autonomous power of ideas.” The whole second heading of his article, entitled (?), at 5-8, is in a way, an attempt to establish material presence and the power of ideas. This article is, in the above sense, not a casual coincidence with Gleick’s book.

mentioning law, holds that “[t]he ‘rights’ of a biologically determined superior - his

potential scope of action - are determined by biological relationships, while the scope

of action of a culturally superior is governed by traditions, customs, ideas, i.e., the

culture of the group. Therefore, the phenomena of the social sphere are always doubly

determined: their basis and limits are prescribed by biological factors, whereas their

contents, manifestations, and interactions are directed by cultural factors - ideas.”17

In some form, the law of intellectual property protection was known to

many cultures before ours, and we can today still trace early attempts to enhance or to

protect the right of the creator over his creation. We can not precisely detect how

much did they identified that right with the property right, or ownership as compared

to the period of our civilization after the invention of the printing press in the fifteenth

century, and the beginning if the industrial production of textiles in the next. This is

no coincidence. The technology of the printing press conditioned the way Western

culture perceived its own social environment and how it reproduced its social

patterns, and the machines that followed were the first visible results of the emerging

new culture, and at the same time the ground for further cultural changes. That is the

time which lead our civilization to the stage of the industrialized society, and

obviously it brought about such new relations which were in the need of law to

protect them.

For the purposes of this essay we will present a brief history of

intellectual property law in different societies in order to show that its legal roots are

deep, and that we may understand its development better if we compare among

various present systems, as well with the past legal systems.18 We will try to present

17 Csanyi, id., at 174. (Italics in original.) He explains, id., that “[i]n exclusively noncultural group of animals the function of a dominant ‘superior’ is largely determined biologically and depends on the individual’s condition, experience, and previous conflicts. The culturally developed idea of a ‘superior,’ however, is interpreted only in terms of cultural traits. The person embodying it will not necessarily acquire this position by virtue of his biological qualities.”

18 Frank D. Prager, “The Early Growth and Influence of Intellectual Property”, 34 Journal of the Patent Office Societies 106, (1952), at 106. “It is usually assumed that the modern system of patents and copyrights was developed from so-called medieval privileges, by the exercise of royal, economic statesmanship. The present essay proposes to show that this accepted view is incomplete, and that the system has a second historic root in the ancient and eternal idea of intellectual property.” This is opening statement from the article which is essential for those with the ambition to understand the true history of intellectual property law. (To this article we will refer as to idem, whether to others we will refer to with the first words of its respective title.) The quoted article is one in the whole series Frank Prager wrote on the history of the intellectual property protection, and to which we will repeatedly refer in this brief survey of history, namely: “A History of Intellectual Property From 1545 to 1787,” 26 JPOS 711 (1944); “Brunelleschi’s

the possibility that recognition of intellectual property is virtually as old as the first

cultures are, before the cultures which introduced literacy, thus prehistoric societies.

Also, that societies which we consider not to recognize protection of intellectual

property legally, actually did so. The reason why we do not realize this is because we

consider the form of rewarding the creator as being out of the legal system of

particular societies. That is so because of our misunderstanding the legal systems of

different societies through the history due to expectations set by modern standards.19

In doing so we have to be aware of the two distinguished historical concepts of

stimulating intellectual property. One is by the system of awarding the creators, the

other by recognizing their rights to exploit the creation.20

Time of Magical Property Rights

The magical property rights, or as some authors call it - natural,21 are form of

the protection of the intellectual property outside of the legal system. It it is hard to

argue that a system of protection is less a protection for the fact that it is not a legal

protection. We will try to show by analyzing non-legal systems of protection that,

besides the fact that intellectual property was recognized as such even without judicial

Patent,” 28 JPOS 109 (1946); “Proposals for the Patent Act of 1790,” 36 JPOS 157 (1954); “The Steamboat Pioneers Before the Founding Fathers,” 37 JPOS 486 (1955); “The Steamboat Interferences 1787-1793,” 40 JPOS 611 (1958); “The Changing Views of Justice Story on the Construction of Patents,” 4 The American Journal of Legal History 1 (1960); “Trends and Developments in American Patent Law from Jefferson to Clifford (1790-1870),” 6 The American Journal of Legal History 45 (1962); “An Award and a Law Obtained by Caron de Beaumarchais,” 44 JPOS 147 (1962); and “Examination of Inventions from Middle Ages to 1836,” 46 JPOS 268 (1964). These articles are best source of the history of intellectual property protection we found in American literature. Besides the fact that he is providing us with numerous references, Prager’s position is close to ours also in respect to the role of property as central common element of intellectual property protection. See introduction to the first article referred to in this footnote.

19 Mark C. Suchman, “Invention and Ritual: Notes on the Interrelation of Magic and Intellectual Property in Preliterate Societies,” 89 Columbia Law Review 1264 (1989), at 1264: “Failing to distinguish intellectual property, in itself, from the document-intensive, governmentally administered, dynamic regime of the West, legal scholars have often assumed that the more static, ‘primitive’ cultures lack analogous mechanisms for the protection of ideas.” (Footnote omitted.)

20 Fritz Machlup, “An Economic Review of the Patent System; Study of the Subcommittee on Patents, Trademarks, and Copyrights of the Committee on the Judiciary; Study No.15”, at 15-16 (1958). Machlup presents history of the of arguments in favor of the award, which he had historically traced as rival during the whole history of the patent system. At the page 15 he states that even James Madison was proponent of the premium and bonuses concept.

21 Suchman uses the term magical intellectual property in the quoted article. He is quoting in that Adelstein & Peretz, “The Competition of Technologies in Markets for Ideas: Copyright and Fair Use in Evolutionary Perspective,” 5 Int’l Rev.L.&Econ.209 (1985), at 217-222.

recognition, it is possible to determine mechanisms which in our societies still provide

extra-legal protection, parallel to the legal instruments introduced since fifteenth

century. Let us present an example from Suchman’s article which clearly

demonstrates one typical instrument of magical protection of intellectual property in

order to clarify our aim.

To illustrate this point, let us imagine a hypothetical preliterate “inventor” who, through diligence or good fortune, discovers that her maize crop is larger when she “plants” a small fish next to each kernel of corn than when she plants the corn alone, unfertilized. Clearly, this technique has economic value and could garner its creator material and social rewards if she could monopolize it and license it for a fee. Unfortunately, the odds of keeping such a discovery secret are slight, particularly once an outstandingly large crops piques the tribe’s interest. Further, the methodology itself is so simple that even a casual observer could replicate the process every bit as effectively as the inventor. Magic, however, provides a way out of this dilemma. By claiming, for example, that the power of the fish is activated by a talisman that she alone possesses, the inventor can remove her idea from the public domain.22

Pre-Classical Times

In the earliest times of written history during which some form of

recognition was given to the creators, it was not in the form of recognizing their legal

rights in the shape of exclusive powers similar to the ownership, but rather in the form

of the other concept historically concurrent with the patent - a concept of awards.

Quoting numerous authorities, including sources as Aristoxenus and Teophrastus,

Suleiman The Merchant and others in original, as well as contemporary legal

historians, Frank Prager informs us in his series of articles on the development of the

intellectual property protection that in ancient Asian societies “periodic prize awards

were given for unusual performance in the arts and crafts. Among others, the early

arts of Persian rugs and Chinese silk were cultivated by such awards.”23 Prager does

distinguishes various categories of the awards, but the space here does not permit us

to go in further detail. We would only like to point here out that it is probably not

mere coincidence that the awards were granted for the achievements in the field of

textile, as they gave big push to the early European concept of patent, namely in

connection with the silk factories of Lyon.24 We are alluding to the fact that certain

22 Suchman, id., at 1274. For the economic aspect of such protection, see immediately following text.

23 Prager, id., at 111. Similar is true also for the ceramic industry, and the stage repeated in Venice, in France, and elsewhere.

24 So in Prager, “A History of Intellectual Property From 1545 to 1787”, 26 Journal of the Patent Office Society, 711, (No. 11, 1944), at 722 et seq.

forms of industrial, or industrious activities at the certain level of organization

uncover the relations of the individual to his creation also to the other members of the

society.

Chinese recognition of the intellectual property in silk design was not

the only field that this ancient culture knew. The earliest known trademark system

was also born in China as early as 2698 B.C. during the period of Emperor Hoang-

To.25 As the mater of fact, as soon as then new technology of pottery was discovered

its producers started using the marks of origin. Actually, two types of marks were

used, according to the Greenberg, from the beginning of the introduction of the new

technology, which is recorded in the official records of the Empire. The first species

of mark was denoting the period in which the object was manufactured, by reference

to the contemporary Emperor. The second, done in designs in color, or in engraved

names of men or of establishments were indicating the artisan, the destination or the

palace of manufacture.26

Greenberg article provides many further examples of the use of

trademarks in other Minor-Asian , Indian and Mediterranean cultures. He is providing

us with the analysis of the use of the symbols of authenticity, or branding of the

animals, and of origin in the Old Testament. Further, he points to the use of the marks

found on the bricks of the ruins of the Egyptian temples of Nineveh. In describing the

marks used by Hindus in the period of 1200-1300 B.C. he states: “What were these

marks like? The symbol of the craft was most usually employed. Thus, the ironsmith

would use the picture of a pair of pincers; the carpenter would employ a gimlet; the

maker of musical instruments used a lyre or a pipe or a trumpet.”27 He also refers to

the excavations of Assyirian pottery which reveals that the molds with the engraved

marks were used in their manufacture.

Greek Times

The ancient Greece also knew a system of of recognizing the designing

achievements based on the awards. Prager attempted to locate the reasons why the

25 Abraham S. Greenberg, “The Ancient Lineage of Trade-Marks,” 33 Journal of the Patent Office Society, 876, (No. 12, 1951), at 877.

26 See Greenberg, id., at 878. He concludes by stating: “We feel humble when we realize that current branding practice simulates the style and mode of displaying marks on articles made long before the Christian Era. For example, a factory mark was found stamped on a piece of pure white china of great antiquity.”

27 Greenberg, id., at 877.

protection system did not develop in a more consistent way. Among other reasons he

considers the slavery system, where predominantly manual labor was entirely done by

the slaves.28 The result may have been that the slave-owners owned all of the results

of slave labor anyway, and were disinterested in recognizing any contribution that has

been made by the slaves themselves. We will see that this analysis may be sustained

be the writing or certain researchers which found that in the ancient Rome judicial

enforcement of the trade-secret rights by the slave-owner was possible against the

person who may have bribed his slave in order to entice him in disclosing the secret.

Other authors point out the development of the trademarks for pottery

products.29 Verona refers to the excavations of Thessaloniki which reveal that

besides the manufacturer’s sign which is to be found on almost every object,

designer’s sign is often added. The third mark to be found is purchaser’s sign.

Greenberg, fascinated by the variety of Greek trademarks describes a few which are to

be found on lamps, vases, cups, amphora in a shape of a cock, a hand, a flowers, a

cow’s head, a crab, an anchor, a lyre, a mask. he is particularly impressed by a

collection of the earthenware lamps from Cyprus, dated in the period from 100 B.C.

to 200 A.C. which he saw exhibited in the Metropolitan Museum of Art in New York.

For our purposes the crux of his remarks is the fact that the lamps carry more than one

mark on their undersurface. One of the marks refers most often to the potter’s name,

by initials. The other, says Greenberg confirming Verona’s statement, is employed by

the Greek sculptor, “to identify his creation.” He continues:

It seems logical at this point to refer to the difference between the ancient personal mark of the artist or skilled artisan, and the true trade-mark of the producer of goods for trade. The Greek sculptor placed his private and personal mark, usually his name, on his creation, whereas the maker of articles for sale in commerce used a symbol to indicate the source of the articles regardless of where they went.30

While the use of the mark to indicate the origin of manufacture seems

somehow expectable in light of the amount of commerce, in which classical Greek

societies were involved, the use of the designers mark is actually exciting. To us, that

seems an upright evidence of the recognition of artistic creativity. We understand the

28 Verona, “Pravo industrijskog vlasnistva,” (1978), at 6, quoting Hubman, “Geverblicher Rechtsshutz,” (1926).

29 Verona, id., at 11, refers to the excavations of Thessaloniki which reveal that besides the producers sign which is to be found on almost every object, designers sign is often added. Third mark to be found is sometimes a purchaser’s sign.

30 Greenberg, id., at 879.

use of the mark to denote the creator of the design of an object similar to the role of

the copyright notice on the modern copyrighted objects. It is both recognition of the

personal achievement and warning of belonging that serves as a fence. And indeed,

Rogers provides us with further examples, as well as with the doubt of the possible

infringement. We will quote the pertinent portion of his text in full:

The Greeks marked their works of art with the name of the sculptor. Greek pottery from the earliest times has borne inscriptions, usually the name of the maker and on decorated pieces the name of the decorator. The cup handles from the Ceramicus of Athens beside the maker’s name often bore real trade marks such as figures of Mercury staffs, oil jugs, bees, lion’s heads, and the like. Greek inscriptions have been found on Etruscan vases dated from 800 to 400 B.C. This has suggested the question whether these vases were truly a Greek product, or whether the Etruscan potter had copied the trade mark of some celebrated Greek maker, as the Roman engravers and sculptors were in habit of doing in later times.31

In further examination of the possibilities for any legal protection, or

any traces of the attempt to introduce the legal protection Prager extrapolates a few

names. Especially prominent is Hippodamus of Miletus, a contemporary of Pericles,

who wrote an general outline of the law of his time, where he insisted on

reinforcement of the rights of creators, proposing that “those who discovered anything

for the good of the state should be honored.”32 Although it never took the shape of the

law, in Prager’s opinion due to the philosophical and economical reasons, there were

many occasions in which we would suggest there were some forms of recognition of

intellectual property rights. The grant of the monopolies was not unknown activity,

and Aristotle is quoted saying that their creation is “an art often practiced by cities

when they are in want of money.”33 It would appear that such monopolies were

similar to the early middle age European privileges.

* One fact which Prager was not aware of is the THE BAKERY

PATENT granted in the Greek colony on Sicily.

Roman Times

31 Edward S. Rogers, “Some Historical Matter Concerning Trade Marks,” 9 University of Michigan Law Review 29, (1910), at 30. Rogers references are to: Kohler. Das Recht des Markenshutzes, Wurzburg 1884; Perrot & Chipiez, Art in Primitive Greece, Vol. I, p. 442; history of Art in Persia, p. 70 n. Birch Ancient Pottery, 322, 335, and 10 Encyclopedia Britannica, 140.

32 As in Aristotle, Politica II, 8,1267 b. Aristotle was criticizing this idea.33 Aristotle, Politica, I 11,1259 a.

The authors do not agree whether Roman law did explicitly recognize

the rights over creations. We will try to present here an incredible variety of Roman

trademarks, the numerous known complaints of the authors over the conditions of the

exploitation of their creation, and the amazing complexity of Roman economy and its

law. We will leave to the future researchers the chance to discover new authentic

evidence of the existence of the structure of the intellectual property system. Our

opinion is that present knowledge allows us to infer that fragments of such systems

existed notwithstanding any reported cases. In the first palace, that may be, as it was

sometimes suggested, because the middle age European reporters tended to skip any

related matter simply because the European economy of that time was less complex.34

Secondly, the research of the sources of Roman law was never done with specific

institutes of legal protection of intellectual property as first objective. If such research

would be conducted by an intellectual property lawyer, it would probably relieve the

extent of protection higher than we are aware of today. Good example for such

approach is Schiller’s article on the protection of trade secrets, which will be

discussed below. Finally, the texts and cases granting protection to certain rights

which today would be considered as the intellectual property rights were under cloak

of the different social context. Who could guess that the trade secret protection was

sought under the action against the corrupt slaves, like the Schiller proved. However,

it seems that the protection was not extensively granted despite the developed

economic stage which the Empire reached. The development was more in the field of

trade than the manufacture. Roman society was not industrialized, and authors doubt

“whether this institution of commerce [trademarks] ever became a system of

established law, and whether it did not rely upon commercial honesty and integrity

rather than upon the law.”35

34 Rogers, id., at 41, quotes Kohler, see our footnote (#), supra, speculating: “That no trace of such an action is found in the commentaries of the Roman jurists is not surprising considering the fragmentary condition of those commentaries at present, especially as it is certain, from existing writings and inscriptions, that there were many legal institutions of the Roman Empire, concerning which we have no juridic commentaries. Jurists and schools of jurists have their prejudices, and there are institutions which have been favored or neglected in juridic commentaries, from purely artificial reasons. A nation is always richer in legal institutions than is indicated by its legal and judicial writings, however full and complete they may be. It would not be less certain, that there existed manufacturers’ marks and a system for their protection in Rome, if we had the originals of the Roman jurists’ writings before us, instead of the compilers’ extracts of them, and if we found nothing on the subject in them.”

35 Kohler, id., at 39, see footnote (#), supra.

Nevertheless, it is worth to provide some insight in the richness of the

known Roman trademarks, as it would give us better feeling of the level of

complexity Roman commerce has reached. Greenberg states that more than six

thousand marks have been identified on the pottery alone. Further, trademarks were

found on the loafs of the bread excavated from the sites in Pompei. “Eye selves, made

and dispensed by Roman oculist, were widely distributed in special containers

throughout the Roman world, and these containers displayed physician’s name and

formula. Metal goods, vases, pottery, glassware, leaden ware, bronzes, gold, and

silverware bore trade-marks. (* * *) In addition, the vintners, oculists and

cheesemongers have been shown to have used identifying marks on their products.”36

The marks used in the Roman trade were fanciful, besides the drawings of particular

objects like animal figures, flowers, or wreaths, also employing the geometric

abstractions like cross, star, crescent or circle, and combining them with various

background designs and pictorial marks. Drawings of human bodies, faces, or

representations of divinities.

Specially interesting is use of the marks on Roman tiles. The potter’s

name appeared in connection with the circular symbol, the place of manufacture, the

clay source and sometimes the consulate year.37 Rogers refers to the same system of

marking the bricks, and distinguish them between the early republican, which are

short, composed only from the date and sometimes the name of the potter and the

initials of the consul. Those from the times of the Empire correspond to the system of

marking tiles described by Greenberg. Rogers further suggests that “in addition to

performing the function of a trademark these names and devices indicate a

governmental or official regulation.”38 He offers the explanation for such a regulation

in the fact that it was of the utmost importance for the quality of the brick when

during the year they were sun-dried. Only in the spring and in the autumn would the

interior of the brick dry evenly, providing the structure of brick with the necessary

strength. In addition, Roman architects’ writings show that it was considered

recommendable to use the bricks two to five years old. In some cities the attest by the

magistrate that the bricks have been molded for more than the five years was

necessary in order to build them in a building. To the modern reader, the striking

resemblance is unavoidable with the use of the trademarks in conjunction with the, for

instance, Food and Drug Administration approval.

36 Greenberg, id., at 879.37 Greenberg, id., at 879, and in continuation: “These trade symbols followed

the Roman banners and arms, for the trade-marked articles of ceramics, wine casks and oculist salve boxes found in England, along the Rhine, in French towns and in Spain.”

38 Rogers, id., at 29.

As we have said, some authors argue that certain legal institutes had

the clear function of protection of intellectual property.39 So Bowker, who points out

that the relations in the field of Roman literature were protected by the law, and

organized on market principles. He makes four serious assertions in that direction:

first, that the sale of playwrights was made by dramatic authors, such as Terence;

second, that the booksellers sold copies of poems written by slaves,40 the copies

being protected by certain kind of “courtesy of trade,” according to Martial, who

listed particular booksellers which were keeping specific works of his for sale41; third,

that Cicero in his letters indicated existence of of certain kinds of literary property,

including the mechanisms of remuneration to authors. Finally, that the rule is to be

found in Gaius, which held “that where an artist had painted upon tabula his was the

superior right.” Bowker estimates that the rule developed before second century, the

time when is believed that Gaius lived. Bowker immediately states that “this opinion

was adopted by Tribonian, chief editor of the code of Justinian, in the sixth century,

and was applied in modern question in respect to John Leech’s drawing upon

wood.”42 Ladas, not specifying the time he considers, states that “[i]t seems strange

that the idea of property in literary work, as distinguished from that in manuscript, had

not been developed at the time.”43 According to his pertinent footnote the rule

Bowker ascribes to Gaius was a reversal of an earlier rule which secured the owner of

the embodiment the rights in creation; “And therefore if Titius has written a poem, a

history or an oration, on your paper or parchment, you, and not Titius, are the owner

of the written paper.” Clearly, Romans in the time before second century were not

39 E.g., Bowker, id., at 8; Hughes, id., at 291, quoting UNESCO, “The ABC of Copyright,” 12 (1981); also see footnote (#), infra.

40 Stephen P. Ladas, The International Protection of Literary and Artistic Property, (1938), Vol. I, at 13, also states that “[t]he Roman booksellers did a flourishing business, and slave labor was employed to furnish copies promptly, cheaply, and on a large scale.” For this he refers to Friedlander, Roman Life and manners under the Empire, III, 36.

41 Ladas, id., , at 13. Although Ladas briefly reports on the history of legal protection under Roman law, in the footnote 2 he cites sources for his opinion that the plagiarism “was undoubtedly condemned by public opinion, between them also Martial, Epigrams to Fidentinus (Book I, LIII, LXII, LXVI), and Cicero, who according to Snyder, The World Machine, at 134, complained that Epicurus borrowed bodily all his physical theories, his philosophy as well, spoiled what he borrowed and gave no credit at all. He also cites Renouard, Traite des droits d’auteurs (1838), at 16 in stating that the term in Roman law “ was derived from plagium -the crime of stealing a human being.”

42 Bowker, id., at 8. Even extensive research both on WESTLAW system, and in English reports did not reveal which “John Leech” case Bowker refers to. Bowker does not provide conventional footnotes to his assertions, but instead an extensive case index and a chapter devoted to bibliography. In both, he does not indicate the source.

43 Ladas, id., , at 13.

distinguishing the right of ownership in a creation from a right of ownership in a

thing. We will later see that it was so consistent to the early idea of Roman property

law that the dominium, or ownership, is the same and one with the right. In later

times, however, the Roman concept of property developed in the direction ultimately

similar to modern notion of property. It is no wonder, then, that Gaius states: “It

seems to us better opinion that the tablet should accede to the picture, for it is

ridiculous that a painting of Appelles or Parrhadius should be but the accessory of

thoroughly worthless tablet.”44

It was not just copyright law that is to be found in Justinian’s

codification. Arguably, an action to be found in the text of Digesta45 under the name

actio servi corrupti, was an action whose purpose was the remedy of the slave owner

against the person who enticed his slave to steal some proprietary information and

surrender it to the competitor for exchange of the money.46 Arthur Schiller considers

the existence of the action, among the five groups of cases which were designed to

protect the trade secrets.47 He further discusses damages available, as well as criminal

responsibility in certain cases. Certainly this is legal recognition of the rights, and as

such is distinguished from the system of the awards present in other ancient societies.

Undoubtedly this legal action protected some of the rights which we consider

nowadays as a intellectual property, but it was not founded in the property laws.

Schiller concludes:

It has been purpose of this article to show that at least this element of modern unfair competition, enticing a slave-employee to divulge business secrets, was ably handled in Roman Law by the actio servi corrupti, an action undoubtedly originally conceived with no commercial aspects in mind. That the other employees were subject to similar condition is shown by the mention of the filius, son, a type of free employee, in this connection. This leads one to believe that the further aspects of trade regulations were part and parcel of Roman and private civil law, for example, the field of trade-marks. Factory marks and firm names were exceedingly common, especially in pottery, bronze and lead; labels for drugs and wine bottles were known. Was the owner of a mark of firm legally protected against unfair usage of the mark or name by a

44 According to Ladas, id., , at 13, Gaius, The Institutes, Book 2, Title I, Sections 33 and 34.

45 Justinian, Digesta 11.3., actio ser.corr.46 A.Arthur Schiller, “Trade Secrets and the Roman Law; Actio Servi Corrupti”,

30 Columbia Law Review, 837, (1930). Also E. Kintner / J. Lahr, An Intellectual Property Primer (1987), at 129.

47 Schiller systematizes the trade secrets within the unfair competition law. Later on we will consider existing legal doctrines and confront the property based doctrines from the others related to the trade secrets. See, art TS*

competitor? The writer believes this question is to be answered in the affirmative for the classical period. 48 (Footnotes omitted.)

Generally, Roman law regarding the idea that monopolies are harmful

was based on the idea that they are “inequitable.”49 Later on, the idea became strong

enough that it was codified by Emperor Zeno, about 480 AD proclaimed the law

providing: “[n]o one shall exercise a monopoly over any...material, whatever by his

own authority or under that of an imperial rescript heretofore or hereafter

promulgated...”50

Medieval Times

Earliest intellectual property case of post Roman times in Europe we

have found to be mentioned in literature is Finnian v. Columba, from 567, a decision

of King Dermott or Diarmed, in the Halls of Tara. “To every cow her calf, and

accordingly to every book its copy,” was the rule under which was decided that the

author’s rights are stronger.51 The case was over the dispute in the context of copying

books in the monasteries, and the Columba involved is later promulgated in the St.

Columba. Bowker, despite stating that some authors have reservations regarding the

case, concludes that “[t]he phrase gives the pith of the common law doctrine of

literary property and indicates that in those early centuries there was a sense of

copyright.” 52

48 Schiller, id., at 844-845.49 3 Inst. 181.50 Cod.IV 59, according to Prager, id., 115. It is interesting in the light in our

following argument of the link between the Roman end common law that provisions of this statute were enacted often in medieval Europe, so Prager at 122, and in note 35 gives example of England, where it was re-enacted: 6 Henry III; 25 Edward III; 13 Richard II; 5/6 Edward IV; also 21 Jac. l, the “Statute of Monopolies.” Several of these are cited for instance in Standard Oil v. U.S. 1.

51 Philip Wittenberg, The Protection and Marketing of Literary Property, 1937, at 17. The book in question was a copy of Abbot Finian’s “Psalter,” which Saint Columba furtively reproduced. The abbot brought than his protest up to the king which ruled in his favor. Wittenberg provides us with the information on Augustine Birell’s skepticism regarding such outcome of the case. Birell, however, does not dispute the existence of the copy of the “Psalter” “in Saint Columba’s well-known hand-writing.”

52 Bowker, id., at 9. Bowker is reporting from Montalambert, Monks of the West.that the case was chronicled by Adamnan fifty years later. Bowker also provides historic context, and portrays the process through which the texts were selected, compared, standardized, copied and exchanged in the monasteries. In that he refers to George Haven Putnam, Books in the Middle Ages.” He also states that certain authors keep reservations regarding the case, but does not inform us in which respect.

Recognition of some right of the creator over other types of creation in

medieval Europe was granted only if the creation was still protected by the “secret” at

the time of the infringement. “Secret” was obviously at the time only perceptible form

of possession of the object. The secret has remained an element of the utmost

importance for the judicial recognition of the right over a creation until modern times.

E.g., in the trade secrets law, there will be no misappropriation in the case the creation

was not kept in secret. We will spend some time later with this issue.

The development of the protection was gradual throughout thirteenth

and fourteenth centuries, very much like the right granted by the ancient monopolies,

sometimes known as the privileges, or mercantilistic privileges. The examples given

by Prager and Verona include the privileges in Netherlands (about 1275),

Czechoslovakia (1315), Venice (about 1320), and England (about 1337).53

Time of the Feudal Privileges

Historically, divergence of the copyright and patent systems came later

than the protection of intellectual property in general. Analysis the texts of the first so

called patents reveals* The history of intellectual property is more easy to reconstruct

from the time the printing press was created. It not only caused the law for the

protection of the creation to develop, but also caused the history of that development

to be preserved and multiplied. Therefore, the history of that period of the

development of the intellectual property is covered thoroughly in many treatises, and

our approach will be sketchy, attempting only to highlight the moments of the

importance in our understanding of that history. We will try to show how unclear was

the line between the protection granted to industry from that from the art. We want to

show that it is not important whether the work is created for the consumption by the

soul, or for the consumption by the body, if such difference is possible to make, but

rather by the quantity of information invested in its creation.

Time of the Printing Press

Copyright protection developed as a protection granted to the

publishers against copying from the competing printers almost as soon as the new

technology of duplication was introduced in the last half of 15th century. In that sense

53 Prager, id., at 119, and Verona, id., at 6-7.

it was not a protection of the creation granted to the authors,54 but rather the

protection of the industrial interest which the stationers and publisher had. The

technology of producing the books was indeed expensive and complicated enough

that the interest of the industry in producing the books seriously diminished if

competitors had the right to copy. One has to be aware that the beginning of the

copyright protection does not at all signify the beginning of the recognition of the

creators right. The rights and interests which were protected by the first privileges and

monopolies were publishers industrial rights. Thus, argument cannot be made that the

immediate beginning of the modern intellectual property protection system signified

also the beginning of the full protection of the author’s rights. We will soon see that

full extent of the protection of creator is still not available, at least through the

copyright law, in developed countries, even in the United States.55 The protection

was overlapping. Printers were initially granted both patent and copyright protection

as in Italy,56 Germany,57 France,58 and in England.59 While later development of the

Venetian intellectual property protection system lead to the continental systems

which, in present form recognize the property nature over the creation, as well as the

moral rights author his over it, we turn to the development of the copyright law in

England, which was more determinative in forming U.S. copyright. “The printing

press was introduced into England in 1476 by William Claxton, allowing large scale

reproduction of books for the first time. This new technology enriched publishers and

threatened the Crown. Publishers, called Stationers, were making money by obtaining

exclusive rights to an author’s work, while the Crown shuddered at the thought of

54 Earliest known privilege granted to the author was on September 1, 1486 in Venice to Sabellico. Bowker, id, at 10, Prager id., at The first grant was to the German printer Johan Speyer in 1469.

55 Copyright law of the United Kingdom, which was traditionally source of “copyright protection,” was changed by the new act, in 1989.

56 Prager, id., 126-135, and “History of Intellectual Property From 1545 to 1787,” 26 Journal of the Patent Office Society 711, (1944), at 711-720.

57 Bowker, id, at 10-12, “The first recorded privilege in Germany was issued by Imperial Aulic Council in 1501, to the Rhenish Celtic Sodalitas for the printing of dramas of nun-poet, Hroswitha, who had been dead for 600 years, as prepared by Celtes of Nuremberg.” In big detail Bowker describes further how this grant covered only the imperial domain, and how in the same year Celtes obtained a similar privilege from the magistracy of Frankfurt, “the the seat of a book-fair.”

58 In France, the continuation of the privileges to the libraries**59 According to Bowker, id., at 13, England granted the first privilege in

1518. First Royal Printer was appointed in 1504, and his successor Richard Pynson obtained the said privilege in the duration of two year prohibition towards the third persons. Soon, many privileges were issued lasting, most often seven years. However, according to Wittenberg, id. at 18 and 19, first restrictions of the import of the books, both copied and printed, were made in 1483, under Richard III, to be changed in 1533 under Henry VIII. Wittenberg is clear on the point that these acts merged political interest to control the content of the copied material with the economic monopoly over their dissemination, at 18.

these works advocating Protestant religious heresy and political upheaval. The

Crown’s solution to the problem was a system of regulation designed to control this

‘dangerous art.’”60 This aspect of of the impact as the source of the copyright requires

the examination of the nature of the “monopoly,” or the right which was granted from

the King to the owners of the copyrights in question. We can’t fail to conclude that in

part it was actually a form of censorship,61 or control over the dissemination of the

information through, then new media of printing. Some authors go so far to assert that

the access to the printing press had role in the colonization of American continent.62

Although modified by the Statute of Anne in 1710, which recognized “for the first

time the rights of authors to their work.”63 In spite of that it seems that the eternal

struggle between negating full ownership rights over an author’s creation, and

certainly inconsistency towards the rights of the owner of the material embodiment of

the creation doomed common law copyright.64 Besides the purely legal aspects, to

have the source in the censorship certainly can not be best start for protection of

creativity.

Modern history of law obviously tends to interpret the forms of

protection narrower than it practically was applied by excluding the forms of

protection that were not administered by the legal systems in modern sense. A

60 Leaffer, id., at 2-3. Wittenberg, id., at 18 determines the year when Caxton established his printing operation in England as 1474. The names differ in cvarious sources from Caxton to Claxton.

61 Benjamin Kaplan, “An Unhurried View of the Copyright”, (1967), Foreword, at vii. “Copyright protection became necessary with the invention of the printing press and had its early beginnings in the British censorship laws.” It appears specially meaningful if interpreted in accord with the ideas of Marshall McLuhan, to whom Kaplan was referring to in the quoted work at 118.

62 Barbara Ringer, “Two Hundred Years of American Copyright Law”, 200 Years of English & American Patent, Trademark & Copyright Law, Bicentennial Symposium, Atlanta, Georgia, (1976), at 120. “It is important to recall that the one of the primary motivations of the earliest settlers of New England was their desire for access to the printing press. When the English presses were closed to their works, they had them printed in Holland, and they soon emigrated there. When the English Crown exerted diplomatic pressure on the Dutch to close these presses to the emigres, the pilgrims undertook their legendary voyage to the new world.” See also C. Ver Steeg, “The Formative Years, 1607-1763, at 96-97 (1964), and L. Wroth, The Colonial Printer (1938), at 19.

63 M. Leaffer, § 1.2, at 3. See also article by Lyman Ray Patterson, “The Statute of Anne: Copyright Misconstrued”, 3 Harvard Journal on Legislation 223, (1965-1966). Patterson takes 1709 as the year of the enactment.

64 Kaplan, id., at vii-viii, “The fortunes of the law of copyright have always been closely connected with freedom of expression, on the one hand, and with technological improvements in means of dissemination, on the other. Successive ages have drawn different balances among the interest of the writer in the control and exploitation of his intellectual property, the related interest of the publisher, and the competing interest in society in the untrammeled dissemination of ideas.”

distorted picture, which is the result of such interpretation excludes the forms of

protection realized out of the scope of the judicial, adversarial system, excludes many

forms of the protection. However, some forms of protection, even out of the scope of

any forms of legal protection are no less indicative for the issue of determining the

property basis of creativity. Dr. Lawrence M. Principe, from John Hopkins University

developed an interesting idea during his research of the work of the alchemist, or

natural philosopher, Robert Boyle (1627 - 1691). Boyle was contemporary of John

Locke and Isaac Newton, who himself, devoted literally half of his work to alchemy --

a fact which tended to be omitted after the victory of science over alchemy during the

industrial period.65 Besides the fact that the article is indicative our distorted

understanding of our own history, it reinforces the view that post-industrial society is

ready for total reinterpretation of understanding of the meaning of the industrial age’s

social values, including such sacrosanct concepts as science and rationalism.66 The

article attributes our inability to understand the alchemists’ writings partially to their

virtual unreadability - their authors were using their own codes to transform the Latin

words standing for chemical elements, so that they appear as coined nonsense. Dr.

Principe described Boyle’s system of substituting letters with their Latin alphabet

follow-ups, and how he discovered it, and concludes that Boyle’s secrecy was typical

of alchemical practices in his period. For our purposes it is important because: “rivals

had stolen some of Boyle’s secrets and the great scientist may have been exercising a

kind of patent protection.” Probably it would be far fetched to conclude that only the

need to protect their research led alchemists to encode their writing, but it is

interesting that in the absence of the legal protection of scientific work, researchers

themselves kept their work secret. It is known that many alchemists kept it secret also

because they considered their work considered dangerous for layman.

Time of the Revolution

The French contribution in the early years of intellectual property

protection ought to be noted, as after variable success it resulted in important concepts

around the time of the Revolution of 1789. Prager points out that development started

as early as in the fifteenth century, almost simultaneously with the Venetian system

65 Malcolm W. Browne, “In Alchemists’ Notes, Clues to modern Chemistry,” New York Times, Tuesday, April 10, 1990, referring to the book by Dr. Betty Jo Teeter Dobbs Alchemical Death and Resurrection: Alchemy in the Age of Newton.

66 Marshall McLuhan, Understanding Media; The Extensions of Man, (1964), at 30: “‘Rational,’ of course, has for the West long meant ‘uniform and continuous and sequential.’ In other words, we have confused reason with literacy, and rationalism with single technology. Thus in electric age man seems to conventional West to become irrational.”

and developed gradually until the night of the St. Bartholomew in 1572, which

marked the beginning of the period of a intolerance and terror. the fact that the

restrictions of expression destimulate creativity will repeat in different societies in

history, and will remain an important societal context to intellectual property law.

However, the early beginnings in fifteenth century were linked to attempts to develop

a textile industry in Lyon. The municipal government of the city, with the approval of

the King finally granted a monopoly-patent to Piedmontese Ettienne Turquetti in

1536.67 According to Prager, the guilds played an important role in the development

of the patent system as we know it. The guilds had enough power to fight, and finally

fight out for regular acres to earlier mercantilistic privileges. The grants which were

fought over resembled in scope modern patent rights. The system developed through

introduction of examination by the Crown in 1563, what lasted for approximately

hundred years, until the period when Academies of Sciences emerged in many

European states. The French Academy was founded by Colbert in 1966, which started

advising competent bodies in examination procedures. In France in 1699 first law

ever on examination procedure was introduced, by the decree of King on basis of

advisory, rather than obligatory examination.68 At that time duration of the patent was

between five and thirty years, and by the statute in 1762, determined as fifteen years.

Patents were issued on the basis of novelty and utility.69

Later period of the early protection system, after the Revolution was

modeled principally after the Diderot’s ideas on authors’ property over his creation. In

many respects it is very modern concept as it recognized full the proprietary nature of

the right as the basis for the protection. French Constitutional assembly adopted it as

the right equal to the other rights of men. That is something what even the property

minded United States missed to do, so the rights of the creator are not included in the

Bill of Rights. We will show later how close was the thinking of the United States

close to today’s position of the developing countries, the position understandable

under the circumstances of being newly independent, developing country, which the

Union was at that stage of its history. It will be also pointed out that in many aspect

such thinking remained official policy of the United States, and that its intellectual

property law is still hesitant to recognize explicitly the property protection which it

actually grants to the creators.

67 Prager, “A History ...,” at 722. Prager is comparing the rights granted, as well as the inventive degree of the “invention” between the Speyer’s Venetian patent and Turquetti’s Lyon patent and concludes that they are substantially the same type, Turquetti’s being somewhat “less complete.”

68 Prager, id., at 725, also citing sources on Italian and English Academies.69 Prager, id., at 726.

[2.11] All of the cited authors point out the simultaneous, and sudden

development of a modern patent. German monopoly-patent in 1545. England started

granting privileges*** , which developed from earlier import patents granted to guilds

as collective privileges. In 1559 “Giacomo Aconico, a fortifications engineer from

Trent better known as a humanist and fighter for tolerance” revealed his knowledge

of Venetian patent system to Englishman.70

Time of the Rising Sun

At first, it may appear as a curious fact that Japan in eighteenth century

forbade manufacture and sale of new products, actually aiming to stop the inventions

altogether, as well with the changes that the inventions bring. It was still a feudal

period in Japan. The Tokugawa shogunate government issued an ordinance called

Shinkihatto in 1721, prohibiting the manufacture of textile goods and other articles.71

The ban on inventions came as a result of successful policies attempting to close the

island, after the initial period of open policies towards European missionaries and

traders in seventeenth century. Looking from the economic and political aspects, it is

clear that some degree of protectionism was leading Japan to denying protection to

intellectual property. Doi notes that despite this attempts, one hundred years later, in

1868, Japan’s Emperor Meiji abolished its traditional feudal system and introduced

certain aspects of modern government.72 Almost immediately after these changes,

Japan started introducing copyright protection, by Ordinances: Publishing Ordinance

of 1869, amended 1875 and revised in 1887. The modern copyright system was

introduced in 1899.73 The patent system was also developed through a similar two-

step regulation, first through the Summary rules of Monopoly in 1871, and later by

the Patent Ordinances of 1885 and 1888, and finally by the Patent Law of 1899. This

development reminds us vaguely of the European development where privileges

preceded monopolies, which then developed in the modern patent system. Without

inferring too far in connection with the mentioned prohibition of innovation and

destimulation of inventions, we would like to recall how modern protectionist

policies, especially in advanced developing countries in the seventies, and in

developed European countries in the period after the war, lead to a reduction of

70 So Prager, id., at 723, quoting D.S. Davis, 50 L.Q.R., at 99, and E. Hassinger, “Studien zu James Acontius,” (1934), at 1-20.

71 Teruo Doi, The Intellectual Property Law of Japan, (1980), at 2, citing Tokkyocho (Patent Office), ed., Tokkyoseido 70 Nenshi (70 Years’ History of the patent System) 36 (1955), and Tsushosangyosho (MITI), ed., Shokoseisakushi (History of commerce and industry), vol. 14 Tokkyo (Patent) 558 (1964).

72 Doi, id., at 2 and 201.73 Doi, id., at 201-202.

patentable subject matter to which the protection is granted. The example of

Shinkihato Ordinance shows clearly that the refusal to grant protection was caused by

a sudden policy decision to close the country to foreign penetration. We have to be

aware that the societies faced with the penetration of the Western civilization will

often find their traditional order well justified above the new culture. Some authors

suggest that economic reasons govern such decisions, and that under certain

circumstances societies may find it both economically unaffordable and socially risky

to bear the changes which are brought by emerging technologies.74 We believe that

similar reasons lay behind the said policies of the developing countries, both in the

field of protection of creation, as well as in the issue of the free flow of information,

i.e., communication. In the later chapters we will undertake to explain the relation

between the two. The words of Marshall McLuhan further illustrate this hypothesis

quite precisely, especially regarding the described situation in Japan: “Even slightest

changes in the environment of the very well adjusted find them without any resource

to meet new challenge. Such is the plight of the representatives of ‘conventional

wisdom’ in any society. Their entire stake of security and status is in a single form of

acquired knowledge, so that innovation is for them not novelty but annihilation.”75

After the Independence

The idiom intellectual property was used in the United States first time

in the case before the Circuit Court for the District of Massachusetts, in October

Term, 1845 by Woodbury, C.J.76 The Court recognized that: “[o]nly thus can be

ingenuity and preservance be encouraged to exert themselves in this way usefully to

the community; and only in this way can we protect intellectual property, the labors

of the mind, productions and interests as much a man’s own, and as much the fruit of

his honest industry, as the wheat he cultivates, or the flock he rears.”

74 So Suchman, id., at 1293. Although he is speaking about preliterate societies, in our opinion the model he creates could be applicable to all non-industrial societies. Actually, he implies that when he says that “it is also important to note that the extensive innovation that the industrial societies value so highly may have little utility in nonliterate settings. Innovation imposes substantial dangers on societies characterized by high information costs, minimal record keeping and subsistence economics. A subsistence economy can rarely afford to embrace a new technology that disrupts the social order, or that interferes, even temporarily, with established methods of production.” In pertaining footnote Suchman quotes Wharton, “Risk, Uncertainty, and the Subsistence Farmer; Technological Innovation and Resistance to Change in the Context of Survival,” in Studies in Economic Anthropology, 151, at 170, (1971).

75 McLuhan, id., at 74.76 Davoll et al. v. Brown, 7 F.Cas.197, (D.Mass.No. 3662, 1 Woodb. & M.53,

1845)

The Supreme Court mentioned the idiom first in a case in 1873, but not

by its own words, but by quoting a letter from the French attorney to the plaintiff

reporting on the infringement of his client’s rights in following words: “I must be

content with wishing that Mr. Tilghman should have the courage to defend his

intellectual property, that is to say, his honor. Your very devoted, Monyer.”77 Until

late in the twentieth century did not the Supreme Court repeat the idiom again.

But the term property was used on its own even earlier, the oldest we

could trace in connection to the intellectual creations are for the Supreme Court in

1832,78 and**

Lacking the legal history of the Constitution itself we turn to the other

sources in order to find the legal structure its Framers were following. One of the

Framers of the Constitution, presumed author of clause 8 of section 8, James

Madison, in a letter to his friend Thomas Jefferson, then Ambassador to France wrote

a reply to Jefferson’s letter which expressed some skepticism about the longevity of a

Constitution, or any other Law as well. Jefferson actually wrote: “The earth always

belongs to the living generation...Every constitution, then every law naturally expires

at the end of 19 years. If it be enforced longer, it is an act of force and not of right.”

We cannot but notice that the analogy he is making is one with ownership, with

property rights, however unusual his opinion on property may have been - specially

for a politician whose country promoted the role of property into the rank of the rights

of man. We will see soon that he extended such views in even more radical form to

the protection of intellectual property too. It is in our opinion the understanding of

right of property which was formative to the American intellectual property. The

Framers did not think unanimously they are granting monopoly to the owner.

Madison may have believed it, but Jefferson who later became the Commissioner of

the patents, thought that the monopoly is granted to the non-owner,he even thought

that duration of property is limited by natural law.

Madison’s reply is interesting: “If the earth be the gift of the nature to

the living their title can extend to the earth in its natural state only. The improvements

made by the dead form a debt against the living who take the benefit of them. This

debt cannot be otherwise discharged than by a proportionate obedience to the will of

77 Mitchell v. Tilghman, 86 U.S. 287, 19 Wall. 287, L.Ed. 125, (October Term 1873).

78 Grant and others v. E. and H. Raymond, 31 U.S. 218, 6 Pet. 218, 8 L.Ed.376,( January Term1832).

the authors of the improvements.”79 It does not seem to be construing a meaning not

contained in the discussion of two authors of intellectual property law to conclude that

Madison's reply gives us the answer how he understood difference between real

property and intellectual property. Real property is set of rights over the objects,

things (res), which are part of the “natural state.” A creator-producer of a new thing

acquires the ownership, the same rights over his production, as the owner whose

property is given upon legally satisfying establishment of possession of the thing. The

case with intellectual property is much the same. Jefferson believed that property

expired after 19 years. He even believed that it is natural law which it is not, as it

may be only natural need made law. Madison did not think so. Moreover, Madison

distinguished between the ownership over objects from ownership over the

“improvements of [earth’s] natural state”, i.e. creations of a reality yet to be. So far as

the law, it is essential. But, Jefferson may have been right to some extent too. After

all, he started quoted paragraph with the idea that: “[i]t may be proved that no society

can make a perpetual constitution, or even a perpetual law.” His skepticism is well

founded.

Jefferson was the first Commissioner of the Patents in the United

States. That much his radical opinions and serious doubts on the property based

intellectual property law deserves another close look at. His letter to Isaac McPherson

from 1813 sounds like a third world country’s declaration aimed at free access to

intellectual property. “That the ideas should freely spread from one to another over

the globe, for the moral and mutual instruction of man, and improvement of his

conditions, seems to have been peculiarly and benevolently designed by nature. [* *

*] Inventions than cannot in nature be a subject of property.”80 If a developing

country nowadays introduce legislation based on such statement the United States

would nowadays launch a political crusade against the government that made it. It is

clear that the developing countries, certainly including the United States at the

beginning of the nineteenth century, regard free access to every else’s proprietary

information as essential for its well being. It is interesting to see how this position

changed.

But even in the first hundred years of the American independence the

courts considered the creation a property of its creators, despite the Constitutional

provision which recognized only a benefit of “securing” undefined “rights.”

Interesting examples of solving said dilemmas are to be found in the early American

79 Quoted according to: Dennis R. McGrath, “The Constitution According to Madison: A Guide for Twentieth-Century Americans,” at 12, and Baltimore Sun???

80 Prager, “A History of...”, id., at 760.

patent cases, in the age before intellectual property was the name of a branch of the

law. In a case reversed by the Supreme Court for entirely remote reasons, which were

closer to the agricultural than legal, Circuit Court for the District of Maine, Clifford,

J., stated:

Inventions lawfully secured by letters patent are the property of the inventors, and as such the franchises and the patented product are as much entitled to legal protection as any other species of property, real or personal. They are indeed property, even before they are patented, and continue to be such, even without that protection, until the inventor abandons the same to the public, unless he suffers the patented product to be in public use or on sale, with his consent or allowance, for more than two years before he files his application for a patent.”81

This opinion is close to the our opinion that the grant of the patent is

merely a administrative recognition of the property right. The grant would have only a

declarative role, if it did not attach the will of the state to provide judicial enforcement

to its moment. But, this still does not amount to the constitutive power. We will

discuss this issue in greater detail in third chapter. here it will suffice to say, that the

recognition of the creator’s right over his creation is entirely cultural issue. In the

periods when the political will did not mount to recognize that right, legislature, legal

doctrine and judiciary all considered the right existent only upon the registration.

With the more sophisticated cultural stages which the Western civilization has

reached more recently, the existence of the author’s right is not anymore tied to the

moment of its registration. the example of the changes of the United States copyright

law in 1976 are illustrative in that aspect.82

Nevertheless, the judicial system in the United States did feel

compelled to recognize the right of the author in its broader extent from the early days

on. A case which goes even further in this direction and has never been reversed is

another patent infringement case, Singer et al. v. Walmsley.83 The case is explicit in

81 Jones et al. v. Sewall, 13 F.Cas.1017, No. 7.495, (C.C.Me.,1873), reversed by Sewall v. Jones 91 U.S. 171, 1 Otto 171, 23 L.Ed.275, (1875). Reversal is probably the most passionate treatise on the food processing that ever came out of the Supreme Court, in which Justice Hunt finds that remaining patents are invalid, and Justice Clifford dissents in a opinion worthy of a cookbook anthology. Opinion of the district court which we quoted was not disputed as the matter of law.

82 With this changes previous requirements of the formal registration as the prerequisite for the recognition of the right were substituted with the right whose beginning “follows the pencil,” as it is often symbolically expressed.

83 Singer et al. v. Walmsley, 22 F.Cas. 207, # 12,900, 1 Fish.Pat.Cas.558, (C.C.Md., 1860).

recognizing the proprietary nature of patentee’s right. As it is also explicit in

determining the content of the right as property, at the same time it excludes the

possibility that it is a monopoly in the sense of the exclusion of the previously

existing value from the public domain. The case stresses the fact that that the

monopoly granted by the patent right is closer to the proprietary monopoly, i.e., the

right to exclude others, than to the monopoly in the sense of the anti-trust, or

competition law. Therefore, we will cite it in the third chapter, in the discussion of the

relation of the property to the monopoly in intellectual property law.

Similar situation is with the copyright law. However, it will be

appropriate to discuss here another aspect of the proprietary dilemma in that field of

intellectual property. Although the proprietary nature of the copyright may have been

recognized judicially to a certain extent, in some aspects the full protection of the

creator by copyright was denied in the United States, and it remained so until today.

We have seen that the United States hesitated in recognizing the full and complete

proprietary nature of the intellectual property, and instead guaranteed the “exclusive

right” over the creations for “limited times” to their creators. Such amorphous right

have been interpreted variously, as we have also seen sometimes understood as the

property right of an individual, while sometimes it was reduced to the mere monopoly

of the grantee, as the tendency was only twenty years ago. (These two poles of

interpretation will be discussed in the third third chapter.) Nevertheless, maybe is very

amorphousness served the United States well enough to build remarkable body of the

law which predominantly provided sufficient protection to the creators in the harsh

competitive market environment. But, the copyright protection in the United States

stopped short of providing the full protection, and if the intellectual property

protection in this country started as a limited type of protection not unlike modern

developing countries maintain, as we have suggested earlier, it has never reached the

point of complete protection, in the first place regarding the moral rights of the

creator.

The issue of the absence of the moral rights protection from the United

States law will be dealt with on the several occasions in the further text, especially in

the chapter five. Let us here only add few general words. In denying the moral rights

protection to the creators, the United States, in the eyes of the most countries which

do protect moral rights, act still like a developing country trying to protect the

interests of its industries on the expense of the interests of the authors. The United

States most often refute such opinions, primarily by trying to point out that the

protection of moral rights is not an economic issue, thus irrelevant to the scope of the

protection. We will discuss later, in the chapter four, in favor of the opposite opinion.

We consider the protection of moral rights essential to the protection of the higher

forms of creativity, such as the artistic creativity, or pure scientific (basic research)

creativity. Such forms of creativity, it will be argued, depend also on the personality

recognition incentive and protection, rather than only on the monetary incentive and

protection. The United States law provides only the second. We believe that the

artistic creativity (in the sense of the fine arts) is absolutely essential means of the

self-interpretation and understanding of any society, crucial to its well being and

sound development. Denying full protection to the artistic creativity is analogous to

denying full protection to basic scientific research, and would undeniably lead to the

decay, or at least to the slowing down of the development of any society. Hesitation

in recognizing the moral rights as the central issue of protection for the higher forms

of creativity, both scientific and artistic, equals the official destimulation of such

forms of human activities, and undoubtedly leads into the social decay. We doubt that

anyone would seriously argue that this aspect of denying full moral rights protection

would not have economic importance for a given society.

Time for a Conclusion

We will finish our brief review here with the observation that although

awareness of the importance of creativity was reflected in different civilizations

throughout the history of Mankind, legal protection was not the always primary

instrument of its enhancement. The reason that legal rights of the creator over his

creation were recognized in so few instances is that the elusive nature of the object of

the creator’s right was not culturally accessible to the ancient societies. When we say

this we mean in the first place that their cultural, (i.e.in this case economic)

institutions did not allow proprietary relations to develop fully. A caveat has to be

made before concluding this point. The fact that there was no clear judicial protection

to be found in most of the past societies does not mean that the legal recognition of

the creativity did not exist. The system of awards was, in fact, legal recognition of

intellectual property. Such recognition may not have been adversarial, or through the

judicial system, but the fact that the awards were officially administered in certain

societies meant that the recognition was well within the existing legal system. And we

will try to show that it was commensurate in some respects to the development of the

market economies in particular societies. By that we mean to say, that although the

transfer of intellectual property may not have been in the regime of the money

exchange, or trade, it was still within the realms of law. Suchman points out that the

researches modern societies undertook in order to understand better the role of the

patent systems were all directed to limited time periods and rather small differences

between their existing systems of protection, and concludes that: “Failing to

distinguish intellectual property, in itself, from the document intensive,

governmentally administered, dynamic regime of the West, legal scholars have often

assumed that more static, ‘primitive’ cultures lacks analogous mechanisms for the

protection of ideas.”84

Our proposal is that it was in the legal regime of gift. Gift is certainly

one of most ancient legal regimes, in most societies preceding the law as the form of

exchange. Culturally, its meaning is much more complexly structured than the

significance of sale. In other words, the ancient societies did legally recognize

intellectual property in accordance with the relations that existed among their people,

and their people exerted the property rights over the creations in the regime of gift

rather than of trade. As gift has to be exchange to stay viable, system of awards was

introduced, and its value is recognized until today despite the heyday of industrial

economy we went through. It exists parallel to the money exchange, and the best

protection would be given under the both systems. In the further chapters the role of

the gift in the life of the creation as property will be examined in detail. Paradoxically,

for the common law lawyer even as the gift, the traffic of creations would stay out of

the realms of law. This issue will be discussed in the third chapter.

We saw that the societies which approached closer more complicated

social structures also approached closer the legal protection of some forms of

intellectual property, like trademarks and trade secrets, and sometimes secrecy of the

authors work in Rome. But none of the societies that preceded ours until recently

were oriented to this extent to the exploitation of the creative resources as confronted

with the possibility of the exhaustion of the external resources. This phenomenon will

be fully explained in an future chapter devoted to the deep structural change Western

civilization underwent in the twentieth century. That, however does not mean that our

past determines us less. We have yet to determine the extent in which we still do

protect creation be extra-legal means, and how this system intertwines with the legal

84 Suchman, id., at 1264. He makes a very interesting point in the later part of his article at the page 1292, by concluding that: “[i]n short, rather than being too weak, the non-governmental intellectual property rights embodied in magic may actually bee too strong, protecting existing technologies even to the point of denying crucial information to would-be inventors.”

protection.85 Therefore, we will for an instant continue our examination of the past in

order to understand present more thoroughly.

85 Suchman, id., at 1283, is suggesting that “magical property rights draw strength from more elaborate cultural constructs as well. in particular a ‘mythology of risk” chills infringement of magic in much the same way that the threat of litigation chills infringement of Western intellectual property rights. Through folk tales of great magicians and bumbling imitators, preliterate culture depicts magic as risky and complex, creating a negative expected value of would-be infringers. The largely mythical quality of these risks does not necessarily diminish their deterrent value. Western culture portrays patent litigation as similarly risky and complex - and the fact that the federal courts [in the U.S.A.] uphold only a small fraction of all contested patents is no more conclusive than the fact that the earth rarely opens to swallow inept magicians.” (Footnotes omitted.) Although this contention may not be true after the Court of the Appeals for the Federal Circuit started its mission, the tales about the risks of the patent validity challenges did not diminish a bit.

C HAPTER T WO

THE MISSING LINK

Discussion to follow is undertaken in order to provide the ground for

the comparative analysis of the property institutes conducted further on. In the next

chapter we will be analogizing between the traditional property rights in the Roman

property law, civil law property, common law property, and intellectual property law.

Our opinion is that the existing differences between the legal systems are often

exaggerated, and that the property institutes in these legal systems should be sensibly

comparable. In order to prove that, we will try to emphasize here the views of the

various researchers of the area of the legal history in which legal systems overlap. It is

almost surprising to find to which extent the belief in the separate history of the legal

systems suddenly becomes uncertain between comparativists, and how the fields of

mutual influences become visible and self explanatory.86 We have found it surprising

in light of the dominant beliefs in the separate nature, and accordingly, the unrelated

history of the legal systems.

86 In that respect, without trying to prove that particular rules were copied from the Roman law, or even that they were always consciously shaped after certain Roman corresponding rule we will try to prove, with different result, what Alan Watson in introduction to his “The Making of the Civil Law,” (1981), at vii-viii defined in following words: The central issue can be easily stated. The legal elements, such as Roman law, Germanic customs, canon law, and feudal law, which historically have gone into the makeup of modern Western systems are everywhere the same. Yet most modern Western systems of law can be divided into civil law and common law systems, from which it follows that any civil law system is more like another than it is like any common law system.This division of legal systems, however is not paralleled by social, economic, or political conditions in the countries in which the legal system operate. Civil law and common law countries alike may have experienced the same extreme economic and social circumstances, such as the Industrial Revolution, that have bypassed other civil law countries. And the nature of government, whether democratic or tyrannous, does not affect the classification of the legal system.” In addition to Watson, we believe that such historical processes as Industrial Revolution, namely nationalism later (as the result of it), or the religious intolerances before, are also determining legal history, as a mere part of integral history. Therefore, we are inclined to See the reflections of the general historical processes as common, where others would tend to See it as specific legal developments of particular legal system.

ROMAN LAW

Almost opposite to the proportion of the belief that the body of the

common law developed entirely separate from the Roman law in its medieval form

research will show that it is not so, as it will explain how and why this illusory gap

developed. It is important to notice at this point that all of the authors rarely stopped

at the similarities which they have found between the legal principles of the Roman

and the common law, but in many cases went further and pointed out the similarities

which both systems share with the civil law. It will be sometimes hard to distinguish

points on which certain author addresses particularly only relation of the common and

Roman law, but proceeds to discover broader common ground which they share with

the civil law.

In order to avoid misunderstanding, we feel that it is important to

clarify our approach to the matter even in further detail. Most of the practicing

lawyers would understand the comparative approach to the legal systems as

comparing the rules, that constitute the positive law of the moment, or any moment in

history of particular systems. What we will do in the following analysis is different -

we will not compare the rules, but institutes and principles under which the rules are

created. We will try to see whether the common legal principles, which are further

operationalized in the form of legal institutes and doctrines, are ultimately

determinative for shaping up the rules, which in the final outcome may, or may be not

same or similar.87 Because, if one stays on the level of comparing the rules no legal

system would be comparable to the other. Consequently, even the legal system of one

country would not be comparable to the system of the same country at the different

points of time. That approach could lock us into the conclusion that the system of e.g.,

United States in eighteenth century is not the same law which this country has today,

just because the old common law rules of the contract for the work for hire presumed

one year duration of the agreement, and later on changed considerably into the

presumption of hiring at will.

87 In his letter to Chancellor Kent Justice Story wrote: “I could not well See how I could avoid it [Civil law] without leaving future accounts in ignorance of important sources of information, and even without bringing it up the knowledge of the learned in the Common law some views of principles which had carried continental jurists in an opposite light...” Joseph Story to Chancellor Kent (May 17, 1834)(Story .Mass.Hist.Soc.27), quoted in Dowd, “Justice Joseph Story: A Study of the Legal Philosophy of a Jeffersonian Judge”, 18 Vand.L.Rev.643, 649 (1965).

It also has to be stressed that, although studying the Roman law as far

as their rules go became predominantly the branch of the historical studies,

understanding of the influence of the Roman law to the Western culture did not loose

an iota of its importance.88 So it is perfectly logical for those who believe that the

Classical culture, of which the Law of Rome is only a part, holds significant formative

role to our societies as they are now, to turn to Roman institutes in order to see how

new legal and social phenomena, such as intellectual property rights, relate to the

traditional forms of property which our societies developed in relation with the

Roman property law.

Hypothesis

Most of the authors of the big number of the articles and treatises agree

that there is more a link than mere cultural roots of the Western civilization to the

relation of the common and Roman law. They do believe that the essential legal

principles are the same. In tracing the development, it is crucial to point out that

although the English law did not had the reception of the Roman law in the extent

some other countries which developed in the civil law systems had, much of the legal

principles of the Roman law were incorporated in the common law in the time the

system of stare decisis was in its very beginning.89 Of course, once relying on the

existing precedents the courts did not need specific reception of the Roman law as the

other countries did. In other words, Roman law was already incorporated in the

common law and bound to be perpetuated through the strings of precedents through

the time up to our days. This happened under the belief that common law developed

completely originally, by the lawyers practicing it totally ignorant of the fact that

almost, we would say, all of fundamental principles were if not taken from, than

corresponding to those established primarily by the Roman law.90 Much more than

88 W.W. Buckland, “Equity in Roman Law”, (1911), at 117 et seq.: “Even in Germany [* * *] the Roman Law [* * *] has become a branch of historical study. With us it has always been so, and not altogether a branch of the study of our own history, for the direct influence of the Roman Law on our own system, though it has, no doubt, been considerable, is not kept mainly in view in view in our Law Schools.”

89 Arthur R. Hogue, “Origins of the Common Law”, (1966), at 22, states: “[t]he possibility of a medieval “reception” of Roman law or of canon law in England is so obvious that the legal historians have sought to determine precisely the extent of Roman influence.”

90 Charles P. Sherman, one of the prominent American Romanists argued in a lecture entitled “Roman Law as a World Law” that the Roman law itself already incorporated legal rules and principles of the cultures that preceded its time. He pointed that the Greek, Chaldean and Babylonian laws are sources of the Roman law, and it is known that many of the most outstanding Roman jurists were of Greek, Syrian, Oriental, or African origin. See Sherman, Lecture Notes, footnote #

the rules itself is this true for the concept of systematization of law which came

through the Bracton’s influential “De legibus et consuetudinibus Angliae.”91

Nevertheless, on a few occasions even the authors for which it could

not be said that they propagated higher extent of influence between Roman and

common law had to admit certain similarities. Oliver Wendell Holmes wrote in

connection with the easements: “The English law of the subject is found on

examination to be the same as the Roman in extent, reason and expression. it is indeed

largely copied from that source. For servitudes, such as rights of way, light, and the

like, form the chief class of prescriptive rights, and our law of servitudes is mainly

Roman.”92

Common Law Scholars

Obviously to show that the link between the two systems exists we

have to turn to history, as it is the only authority which can justify the assumption.

The origin of our beliefs is founded on the historical political or religious movements

which effected our perception of mutual influences between the European medieval

states. In that respect the examples of quick spreading of intellectual property laws all

over Europe in only fifty years, presented in previous chapter, is an excellent

example. Here, we will try to show that there should be no reason to believe that for

previous four centuries England was developing more isolated. We find professor

William Burdick's in his “Principles of the Roman Law and their Relation to Modern

Law” saying:

The fact that many principles of English law are similar to or identical with principles found in Roman (or Civil) Law, does not convince all writers that the English Law in such instances was borrowed or copied from the Roman Law, since, it is asserted, such likeness may be merely accidental analogies originating from entirely independent sources. The great conservativism of some English writers, also pride in the alleged indigenous laws of their own country, and prejudice, perhaps, against foreign influence, have, in all probability, affected some of their conclusions upon this subject.

80, M.H.Hoeflich, 1984 U.Ill.L.R. 719. also W.W. Buckland, “Equity in Roman Law”, 1911, at p. 117-118.

91 W. S. Holdsworth, “Sources and literature of English Law,” at 29, argues that although the rules were set forth on the body of already existing English law, the arrangement under headings such as persons, things and actions are taken from Iustinian’s Institutes.

92 Oliver Wendell Holmes, The Common Law, (ed. Mark DeWolfe Howe, 1963), at 285-286. We are mentioning this here also in light of our discussion of the comparison of the doctrine of the fair use to servitudes in the chapter three.

Blackstone in his first lecture as Vinerian professor at Oxford, published later as an introduction to his Commentaries, speaks with courteous diplomacy of the Civil law, but emphasizes the greater importance of the Common Law of England, and attributes the continued teaching, in his day, of the Civil Law in the English universities to the influence of “the popish clergy.” He also ascribes the revival of the study of the Civil Law to the long ago exploded story that the Civil Law had become obsolete and forgotten upon the Continent when an accidental finding of a copy of the Digest of Justinian, at Amalfi, in 1135, again brought it into vogue all over the west of Europe. Blackstone’s views were influenced, doubtless, by his political and ecclesiastical environment. Due to the fact that the law of the Church of Rome (the Canon Law) was drawn largely from Civil Law sources, there grew up in English Protestant circles a conviction, or at last a fixed impression, that the Civil Law, in which the clergy of Rome were more or less versed, was in some occult or insidious way, being used to propagate popish doctrines. The very term “Roman” Law seemed to connect it with the Church of Rome, and probably many zealous adherents of the English Church believed they were prompting a righteous cause by discouraging the spread, or even the retention, of Civil law doctrines.93

Other authors reached very much the same conclusions. For example,

Holdsworth in the “History of English Law” gives to this process even further

reaching significance:

It would not be true to say that the English law owes nothing to Roman law. At different periods in English history the development of our laws has been materially helped by its contact with Roman Law. In the age of Bracton, Roman Law taught the fathers of the Common Law the way to construct an intelligent legal system. In the sixteenth century it helped to make English law sufficient for the needs of a modern state. In the eighteenth century it helped Lord Mansfield to found our modern system of mercantile law. We have received it in small homeopathic doses, at different periods, and as and when required.”94

Of course, complete history of English law could be found in the

numerous treatises and we will not be able to review it here however interesting it

may be, neither is such review necessary for our purposes. But, in order to show that

the ties and bindings between civil and common law system are not just conceptual,

or substantially similar only on the level of the legal principles, we will highlight few

characteristic points in history and particular consequences they left on the body of

the law. Discussion of such similarities will be presented in the next chapter, when we

93 William L. Burdick, “The Principles of The Roman Law And Their Relation To Modern Law”, (1938), at 56-57.

94 Sir William Holdsworth, “History of English Law,” Vol. 4, (18??), at 292-293.

will actually analyze particular rights and show that they are comparable because of

the fact that they share same roots, roots from the Roman law. Here we will continue

to highlight general historical influences as they reflected in the history of common

law.

The influence of the Roman law began very early, as a matter of fact,

at the moment which is often regarded as the breaking point in which the common

law started its independent life. Burdick disagrees that the Norman invasion was the

point from which the English common law started its separate history by pointing out

that there are reasons to presume that it actually brought common law in further

contact with the Roman law. He considers that among other factors one could have

been strongly determinative:

One of the most significant things in connection with the influence

of the Roman law upon the English law during this period is the fact that William’s prime minister and chief adviser was Lanfranc, the distinguished Italian scholar. He was the adviser of the William in Normandy, and later became his chief minister in England. In 1070, William appointed him Archbishop of Canterbury. He was learned in the law as well as in theology, having studied Roman Law at Pavia, his birthplace in Italy. He is said to have been a lawyer of world-wide fame. [* * *] The very fact that such a celebrated Civil Law scholar was the chief adviser of the king is in itself sufficient to cause one to believe that many principles of Roman Law must have been injected into English law at this period.95

For the extent of the relations and connections between the various

geographic parts of the European continent, among the best analysis is to be found in

professor Berman’s “Law and Revolution.”96 Through the familial relationships

enhanced through marital alliances a fine network of influences and interests

developed. Such situation lead to the today hardly imaginable mobility of officials

and priests. Unfortunately, limitations of space do not allow us to study here this

network through which peoples and ideas were fluently exchanged between areas

very much unrelated in modern European constellation. For our purpose, and we have

to stress that, the Norman Kingdoms of England and of Sicily were the parts of the

same Norman State. Altogether, with the ties with the French territory, the ties

between these today hardly related territories were in much closer connections then

modern national perspective allows us to recognize.

95 Burdick, id., at 65.96 Harold J. Berman, Law and Revolution; The Formation of the Western Legal

Tradition, (1983). In the chapters 13 and 14, at 404-519, author provides detail historic overview with commentaries on the significance of particular phenomena.

Henricus de Bracton

In the history of the doctrine and systematization of the common law

one individual had unavoidably distinguished position. Henricus de Bracton, a lawyer

who lived in 13th century in England, and in the time of the reign of Henry III wrote a

book entitled “Henrici de Bracton de Legibus et Consuetudinibus Angliae Libri

quinque, in varios tractatus distincti”. We will for the moment turn to the

interpretation of his work, firstly, as it is of importance because of it influence on the

formation of the common law, and secondly because well known treatise on his work

is written by an civil law lawyer, which will benefit us with the view of an civil law

scholar on the issues we are dealing with in this chapter.97 Karl Gueterbock was

Professor of Law at the University of Koenigsberg in the middle of last century when

he published his well known treatise. Its introduction, among other things reads:

The influence of the Roman upon the English law has generally been underrated. Our increased familiarity in Germany with the English law has indeed led us to abandon the opinion that it can be regarded as the successful growth of a law purely Germanic in its origin and formation, and that we can find in England that unobstructed development of our Germanic law which has been impeded in our own country. But notwithstanding the abandonment of this error, the equally mistaken view is still prevalent that the development of the English law has been entirely uninfluenced by the Roman, and that it should be considered merely the natural indigenous product of the English soil. This latter opinion was for a long time adopted in England. The Roman law, like everything which came from, was considered by English as hostile to their national institutions. Certain politically offensive maxims (e.g. quod principi placuit, legis habet vigorem) were, indeed, considered special reasons for such an opinion. English judges and lawyers avoided having anything to do with the Roman law, and were not ashamed to boast of their ignorance of it, and to show aversion and even contempt for it. So much was the nation imbued with these feelings we find them expressed even in acts of state.

Such opinion are, however, no longer held in England. A scientific attention has long since been again turned to the Roman law. Judges and legislators have long acknowledged that the Corpus Juris is an authority which is useful, or rather indispensable, for the English law. The investigation of the legal history, and especially the closer study of the medieval law books, have produced the conviction that the Roman law, without indeed any formal reception, had at certain times not only been held in esteem, but also had enjoyed a practical authority and a partial validity in England. The same studies have also established the fact that

97 For civilistic approach See also Leonhard, “The Vocation of America for the Science of Roman Law,” 26 Harvard Law Review 389, (1913).

the part of the Roman law in the development and formation of the English had been no inconsiderable one, and one certainly greater than had usually been attributed to it; and that many legal principles and even whole heads of the English law had been derived from the Roman, or had been fundamentally influenced by Roman views. The Roman law can therefore justly be regarded by the English as one of the sources of their Common law. The Civil and the canon laws have, indeed, always had a special sphere of application over matters which the Common law did not take cognizance of.98 (Footnotes omitted.)

After giving the history of the Roman law in England, and noticing the

important fact that the Roman law “nevertheless, gained ground in the ecclesiastical

courts, and in the Equity system under pretor-chancellors”, the fact to which we will

turn to in the next sub-heading, Gueterbock concludes his introduction:

If the materials for the history of the Roman law in England were brought together, the hundred and fifty years lying between the middle of the twelfth and the end of the thirteenth century would be found to be a most productive period. During that period, while the amalgamation of various Saxon, Danish, and Norman elements were struggling to develop a uniform domestic law. Marks of the gradual success of this spontaneous effort are seen in the creation of those peculiar legal institutions and characteristics which distinguish the English law from that of the other peoples. At this very time the English law was brought into immediate and intimate contact with the Roman law, which was just then one of the principal and most successful objects of the intellectual culture of the middle ages. A new element was thus introduced into the formation of the English law, whose influence was so great and the results of which were so important, that the whole of that part of English legal history is very properly styled by Biener its Roman epoch.99

For our present purposes it is telling enough, but we would like to

point here , in light of our forthcoming discussion that it is of utmost importance that

the influence of the Roman law, as it will be seen, was remarkably stronger in equity,

as equity is the body in which intellectual property in the United States is developing.

Gueterbock does not stop here, and it comes as no surprise when later in his work he

states that the influence of Bracton spread further through the admiration and respect

of the later scholars, in which he also includes, justifiable in our opinion, Blackstone.

He also points out the influence Bracton's clear systematizations had on the judges.100

98 Carl Gueterbock, “Bracton and His Relation To the Roman Law,” Amer.ed., (1866, 1979), at 13-14.

99 Id., at 16-17.100 Id., at 74, “The legal historians such as Reeves and Spence, and

commentators like Blackstone, Stephens and others alike, esteem him as the leading authority for the older Common law. They regard Bracton’s work as the source from which a large number of general truths, which are now existing law,

The Medieval Influences

Even such authors which are known to be more inclined to think of the

common law as an cultural entity of separate history, like Maitland, are found to

recognize the early links:

We have yet to speak of the most distinctively English trait of our medieval law, its “formulary system” of actions. We call it distinctively English; but it is also, in a certain sense, very Roman. While the other nations of western Europe were beginning to adopt as their own ultimate results of Roman legal history, England was unconsciously reproducing that history; it was developing a formulary system which in the ages that were coming would be the strongest bulwark against Romanism and sever our English law from all their sisters.

The phenomenon that is before us cannot be traced to any exceptional formalism in the procedure which prevailed in the England of the eleventh century. [* * *] No, the English peculiarity is this, that in the middle of the twelfth century, the old oral and traditional formalism is in part supplanted and in part reinforced by a new written and authoritative formalism for the like of which we shall look in vain elsewhere, unless we go back to a remote stage of a Roman history. Our legis actiones give way to a formulary system. Our law passes under the dominion of a system of writs which flow from the royal chancery.101

We can see that even while expressing suspicion, Maitland found hard

to avoid discussion of the influence of the Roman law. Talking about the same period

of time Burdick points out:

The 12th and 13th centuries have been called the “Roman epoch of English legal history.”51 The writings of this period both lay and professional show that the spirit of Roman Law prevailed almost everywhere. The courts cited it with the approval52 and it was taught in the schools of learning, beginning with the lectures of Vacarius at Oxford in 1143. There is also a tradition that in the following century the son of the great Accursius of Bologna was brought to England by Edward I for the purpose of teaching Roman Law at the same university.53 During all this period Roman Law authorities “were habitually cited in the common law courts, and relied upon by legal writers, not as illustrative and secondary testimonies as at present, but as primary and as practically conclusive.”54 It is also said by a very conservative writer upon the history of English Law55

derive their origin or their first confirmation. Even at the present day, after a lapse of six hungered years, judges occasionally go back to Bracton, and apply his opinions as existing law.” (Footnote omitted.)

101 Pollock & Maitland, “History of English Law”, bk. II, chap. 9. Cited according to Roscoe Pound and Theodore F.T. Plucknett, “Readings on the History and System of the Common Law,” (1927), at 398.

that, during this period of the twelfth and thirteenth centuries, the Civil and Canon Law were perhaps the most important of all the external influences which have shaped the English Law. [* * *]

In the 14th century, after the times of Edward I, a reaction against Roman Law set in, and its influence upon English law began to decline. There was no succeeding period that was visibly marked with additional Roman law principles, and there were sporadic cases of open opposition to the reception of Roman Law doctrines in certain matters, but the Roman Law already incorporated within or adopted by English law still remained.102

(Footnotes: 51 Gueterbock, Bracton and his relation to the Roman Law (Coxe, Eng. Transl.), p.16. 52 Selden, c. 8, p.1, et seq. 53 Sweetland v. Curtiss Airports Corp., 41 F.2d 929. 54 Amos, Roman Civil Law, p. 450. 55

Holdsworth, II, 109.)

Discussion of the equity follows in the next subheading, so here we

will pass to the further analysis or the relation between the Roman, civil, and common

law. Of course, in some areas, like the Maritime Law the influenced continued, or

even grew bigger.103 But as admiralty is not a part of the common law we will not

discuss the repercussions of the influence of the Roman law upon it. Three

discussions above are of utmost importance for our argument. They are showing that

the introduction of the Roman principles into the common law came sufficiently early

to be incorporated in the body of law, and through the precedent system be firmly

established in the main body of the law, thus making the link invisible, but for the

researcher of the history of the law. The fact that the connection appears to be hidden

is due to several reasons. In the chronological order we will mark some of them.

It is often pointed out that major role in the formation of the common

law played ancient gential Anglo-Saxon law.104 The influence of the own gential laws

certainly is not something specific to common law, as all other civil law systems were

heavily founded on their own respective gential laws which were already codified at

the time the reception of the Roman law begun.105 Thus, the civil law systems are

also determined by their own historical roots which was later to certain amount

102 Burdick, id., at 74-75.103 Id., at 75.104 For the selection of the excerpts of various authors on the Anglo-Saxon law

before the Conquest See Pound and Plucknett, “Readings on the History and System of the Common Law” (1927), at 43-55, with further references.

105 For the history of the German and French legal systems See, e.g., Konrad Zweigert and Hein Koetz, “Introduction to Comparative Law,” (1987), Vol. 1, at 76-137 for Romanistic legal family, and at 138-186, for Germanic legal family. Although they are closer to Maitland's standpoint, they are presenting the possible influences on pages 201-204.

influenced by the Roman law. None of the civil systems today can claim to be an

direct extension of the Roman law either. The secularization of the church of England

from the Rome, which as an political decision, shed the light strongly unfavorable to

whatever links there may have been between the legal system of England with those

of Roman Empire which was in the light of the political fever associated with the

Church of Rome. Later on, in the light of the development of the national awareness

in eighteenth century, in which England found itself involved very much the same as

the rest of the continental Europe, every nation favored its particular elements of

history as important constitutive element of the nation, and emphasized them strongly.

Common law certainly was such an element, but in that process whatever relation in

its history existed with Roman law, gradually faded.

Burdick’s study provide us with a panorama of opposing opinions on

the origin of the English Law, citing on its way American and English Justices and

scholars such as William Wirt Howe, Lord Campbell, Lord Mansfield106, Holdsworth,

Welsby etc. Lord Holt, Chief Justice of King’s Bench in one case concluded: “It must

be owned that the principles of our law are borrowed from the Civil Law.”107 It is

true, however that some authors insist on the origin of the Common Law in the usages

and primitive customs which preceded the influx of fidelity. It is instructive also to

consult other numerous books on this subject which reached same conclusion.108

Before we continue, let us acknowledge Welsby’s opinion on Lord Mansfield:

The Civil Law - that splendid monument of human wisdom was to him a well-filled storehouse of reasoning, from which a ready supply of principles and of rules might always be drawn, to guide him in the decision of cases unprovided for by our own jurisprudence. There are very few departments of our own law on which some light may not be thrown by it

106 English Chief Justice of the Court of King’s Bench, Lord Mansfield’s influence is present most strongly in commercial law. His effort to bring civil law ideas into the common law was concentrated in introducing the principles of causa and promise instead of the common law concept of the consideration. He took part also in the decision of the leading copyright case Millar v. Taylor, 4 Burr. 2396, and described the right involved as an “incorporeal right.” His definition is still used and we will discuss it in the later chapter devoted to the determination of the intellectual.

107 English case Lane v. Cotton, 12 Mod. 482.108 Henry Sumner Maine, “Ancient law,” (1888); Kenelm Digby, “Introduction

to the Law of Real Property”, (1876); Pringsheim, “The Inner Relationship between English and Roman Law,” 5 Camb. L.J. 352, (1935); Roscoe Pound, “The Formative Era of the American Law,” (1938); Re, “The Roman Contribution to the Common Law,” 29 Fordham Law Review, 447, (1961); Peter Stein, “Roman Law and English Jurisprudence Yesterday and Today,” (1969) “Continental Influences of English Thought 1600-1900,” 3 La Formazione Storica Del Dirito Moderno in Europa, 1105-1125, (1977); “Logic and Experience in Roman and Common Law,” 59 Boston University Law Review 433, (1979).

in the way of analogic illustration, and with respect to very many, as he has frequently had occasion to show, it is of more direct application, being in fact the source from which they have been either partially or entirely deduced.109

as well as those of Lord Campbell in his “Lives of the Chief Justices”:

Lord Mansfield had only to consider what was just, expedient and sanctioned by the experience of nations further advanced in the science of jurisprudence. His plan seems to have been, to avail himself, as often as opportunity admitted, of his ample stores of knowledge acquired from his study of the Roman Civil Law, and of the juridical writers produced in modern times, by France, Germany, Holland, and Italy - not only in doing justice to the parties litigating before him, but in settling with precision and upon sound principles a general rule, afterwards to be quoted and recognized as governing all similar cases.110

Even Blackstone

One of the strongest links between American and English common law

is the teaching of Sir William Blackstone.111 It comes as the surprise that even in the

Blackstone’s “Commentaries” upon thorough reading, the notion springs out that he

was deeply aware of the numerous links. For national, or nationalistic reasons which

started emerging in all of European countries at the he time he was writing, he may

simplified the history of the common law in his first book, thus leaving the impression

that it was lesser than it actually was.112 It appears as paradoxical that Blackstone in

109 George Shearswood, “Lectures Introductory to the Study of the Law”, (1870), at 153.

110 Lord Campbell, “Lives of the Chief Justices”, 3 ed., III, (Life of Lord Mansfield), at 274.

111 Famous is Chancellor James Kent admittance in his “Commentaries on American law” (the title itself is an homage to Blackstone’s ‘Commentaries on English Law’) that he “owed his reputation to the fact when studying law [* * *] he had but one book, Blackstone’s Commentaries, but that one book he mastered.” Quoted in Daniel Boorstin, “The Mysterious Science of the Law,” (1958), at 3. However, one has to keep in mind other Kent’s famous admittance, the one in which he points the advantages he had over the opposing attorneys, because of his later knowledge of the civil law. (See Hoeflich, U.Ill.L.Rev., at ) F.H. Lawson, “Roman Law as an Organizing Instrument”, 46 Boston University Law Review 181, (1966), at 197.“But even the literary genius of Blackstone cannot disguise the incomplete and unbalanced character of eighteenth century English law; and it was in that state that the Americans had inherited it by the time they came to draft their Constitution.”

112 Thomas E. Scrutton, “The Influence of the Roman Law on the Law of England,” (1885), at 149, gives over forty examples where Blackstone refers to the Roman or civil law. In the conclusion he states: “While Blackstone therefore utterly repudiates any authority of the civil laws in themselves in this kingdom, except in particular courts; and only allows them in those, so far as they have

emphasizing the independent development of the common law was not at the same

time in favor of the system of judicial precedent. To the contrary, and in the true spirit

of his time, he believed in the supreme role of the Parliament as the legislator.113

Interesting approach to Blackstone is provided by professor Berman in his

Introductory Remarks delivered at the Annual Meeting of the American Society for

Legal History in October 1982. He said: “Blackstone, more than a century before

Maitland, recognized that the English law had many features that were “very

comparable” with features of other European legal systems, and further, that England

was itself governed, in part, by some of the same bodies of law that prevailed

elsewhere in Europe.”114

The Harvard Series

Despite the strong influence that Blackstone’s teaching had on the

formation of the U.S. jurisprudence and judicature, many of the most influential

individual lawyers, such as Justice Joseph Story of the Supreme Court of the United

States, or Dean Roscoe Pound of the Harvard Law School were intensely aware of the

important role of the Roman law regarding the common law. The proponents of the

theory of Roman influence played a much more prominent role than today,

approximately until the time of the last war. Throughout the first half of this century a

been adopted by the English courts and have derived their authority from the English Crown, he yet recognizes that large portions of the Roman law have been incorporated by Bracton and later authorities into the Law of England. But he bases the authority of these parts, not on their incorporation by text writers, but on their recognition by the judges of the realm. (Emphasis original.)

113 Arthur R. Hogue, id., at 244, is of the opinion that: “[f]or Blackstone the competence of the Parliament was so great that he knew ‘of no power in the ordinary forms of the constitution that is vested with authority to control it.’ However unreasonable a statute might be, Blackstone saw no means of avoiding it; certainly no judge was at liberty to reject a statute, for, in Blackstone’s opinion, setting the judicial above the legislative authority would be subversive of all government.” See also Blackstone, “Commentaries,” Intro., Section III, and I, 69. Also See in Posner, id., at 25-27.

114 Harald J. Berman, “Introductory Remarks: Why the History of Western Civilization Is Not Written?” 1984 University of Illinois Law Review 511, at 512. This is highly inspiring piece of writing recommendable to anyone, not only lawyers, who has interest of the historic development of Western civilization. Professor Berman continues later on the same page: “Notwithstanding his conservativism, Blackstone saw England as a part of a larger world. He saw that the law merchant, although traditionally not part of the of the English common law, was nevertheless part of English law as a whole, as it was part of French and German and Italian law. It was European law. Similarly, the cannon law of the Church of Rome prior to the Reformation was as much English law as it was Italian or German or French law. Canon law was no more foreign to England than the Internal Revenue Code of the United States is foreign to Massachusetts or Missouri.”

steady stream of some twenty articles on various aspects of the relation of common to

Roman and civil law were published in Harvard Law Review.115 One of the best

known excerpts is in may respects typical. In concluding his article entitled aptly

enough “The Roman Law And The Civil Law In America,” William Wirt Howe

stated:

And we will find that, after all, the difference between the civil law and the common law is by no means so great as some persons imagine. About a year ago in reply to some questions by Professor Maitland, submitted to me by our lamented friend Professor Thayer, I tried to express this idea in these words:-

“If you eliminate from the English law the peculiarities of the tenure and transmission of the real estate which are largely feudal or social in origin; if you further eliminate, as they are doing in England, the technicalities of common law pleading; if you leave some rules of evidence, which, as you well know, have grown up around the practice before the English common jury, - the rest of English common law will be found not to differ very much from the civil law in those elementary principles which are essential to the administration of justice between man and man. There are differences in terminology, which to some, seem strange and alien, but when they are once understood, the leading doctrines are found to be much the same. And to me it is very interesting to notice how the English judges continually fall back on the Roman and civil law as a ground of refuge in time of mental perplexity. You will doubtless recall the case of Bercherveise v. Lewis, L.R. 7 Common Pleas, where neither counsel nor court could find any English precedent in point, and the decision was finally made on the authority of a text in the Pandects. We might inquire why the court should cite the Pandects unless in some perhaps subconscious way the doctrines of the classical jurists underlie even English law.”116

This conclusion could be expanded, for the reasons for it are well

founded and not at all subconscious. Or, it should be not unconscious, for the law

which was built according to the principles of the Roman law, should in the moment

when there is no precedent to reach into one of its own sources. Because, even factual

discrepancy would not hide the consistency of the legal principles to be applied, and

which could be found at the source. More on this phenomenon we find in Burdick’s

“Principles...”

115 M.H. Hoeflich, “Roman and Civil Law in American Legal Education and Research Prior to 1930: A Preliminary Survey,” 1984 University of Illinois Law Review 3, 719, at 733 devotes an entire fourth heading of his article under the title “Roman and Civil Law in Harvard Law Review 1887-1930.” The text itself, as the footnotes to it, are abundant with references.

116 William Wirt Howe, “The Roman Law And The Civil Law In America”, 16 Harvard Law Review 342, (1902), at 357-358.

One must consider the influence of the Civil Law in general upon our law. For more than a century American law has been gradually and imperceptibly moulded by Civil law doctrines. the English feudal law has been changed by such doctrines in every one of our states. Our law of inheritance is based upon the subject of mortgages, and it is also the parent of very many of our principles of Equity. Amid the recorded dicta of the English Chancery judges “we often,” says Maine, “find entire texts from the Corpus Juris Civilis embedded with their terms unaltered, though their origin is never acknowledged.” The Civil Law is also springhead of much of our law of bailments, guardian and ward, wills, contracts, easements, corporations, admiralty, and other special topics. In addition to all this, many of our statutes that have modified or completely changed our Common Law have modified or completely changed our Common Law have but merely incorporated Civil Law principles.

It should, in contemplation of these facts, be apparent that the Civil Law is a subject of special value to all Americans who are interested not only in the history of our law but also in a better understanding of its doctrines. (Footnotes omitted.)117

Certain Points of Perception of the

Relation between Common and Civil Law

Here, consciously or unconsciously Howe touches central, or at least

most obvious misperception common lawyers have developed towards the civil law.

By far, it is understood that by exercising its legislative authority legislative bodies

exercise some kind of “evil” power over the citizens, by imposing unnatural and

burdensome rules over the everyday life and deeds. Probably not very much

American lawyers would disagree with this broad generalization. It is nicely summed

up in following words of another American scholar:

A prejudice has arisen in Anglo-Saxon countries against the civil law because it is declared in Justinian’s Digest that the will of the prince has the force of the law, quod principi placuit legis habet vigorem, - a maxim which could not arise among the liberty-loving English. So far as the private rights are concerned, that part of the law which is contained within the modern civil codes, this prejudice is without foundation. The civil law prevails in Louisiana, and no one will think of the people of that state as having less freedom than elsewhere in America. The civil law has been received in Germany, and, whatever may be taught of recent German methods, this reception was by people of the same stock as the Anglo-Saxons and has not interfered with the construction of an admirable body of private law. No less a pro-Saxon than Frederic W. Maitland praises the

117 Burdick, id., at 54-55.

German Civil Code of 1900 as one of the great achievements of history. (Footnotes omitted.)118

But it has to be said regarding this misconception, that, in our opinion,

the laws enacted express and embody general principles of the law, and it is very

much the same law, as the precedents in the common law. The difference is that in the

civil systems, during their histories the rules were abstracted to the much higher level

than the rules established by cases. In a way, understandable to an American lawyer,

they were restated. These abstractions, sometimes as rules, sometimes as principles

were codified and enacted into statutes. In that way statutes appear to be

incorporations of the abstracted rules that have been developing over few thousand

years, including the Roman law. This times were sufficient enough for this type of the

abstractions to crystallize, as well as for the general principles to become the

fundamental ground of Western societies. In that aspect the role of the law, both in the

civil and common law systems plays similar role in the Western civilization, as well

as in the societies which developed on such broader cultural patterns, and the

differences in the technicalities do not appear determinative in substance - the

principles of the law are shared throughout the modern civilization.

The other probably equally deformed view on the dissimilarities of the

two legal systems is common belief that the doctrine of the civil law system is based

on the natural law doctrine. There can not be much discussion on this issue, because it

simply is not true. While it is true that civil law always, in the Roman tradition had

tendency to systematize its rules on the abstract level, and in organized system,119

historically there were many different legal doctrines dominant in their respective

time periods. Doctrine of the natural law was contemporary to the age of European

age of reason, when Grotius and Stair published their books (1631 and 1681,

respectively) which incorporated Roman law systematizations. But the over-

rationalized character of the natural law system was abandoned in most countries

which had developed legal systems by the beginning of the nineteenth century, like in

Germany under Savigny’s Historical School. Similar movements of thought paralleled

this one in France. Since then there were several influential schools of legal taught,

including famous normativistic lead by Kelsen, in this century.

118 Peter J. Hamilton, “The Civil Law And The Common Law”, 36 Harvard Law Review 180, (1923), at 180-181.

119 Frederick H. Lawson, “Roman Law as an Organizing Instrument”, 46 Boston University Law Review 181, (1966), at 189. “It is clear, however, that the Roman jurists regarded the law as systematic, that is to say , as having an ordered pattern or design. That is most obvious in certain elementary works written for the use of students; [* * *] But it can be brought to the surface of the larger compilations of a type not unlike that of the American digests.”

It is likely that the impressions among American lawyers spring out of

the static nature of common law doctrine, which in America still relies heavily on

Blackstone’s “Commentaries on Laws of England”. It was published in 1756, less

than a century after the “Jurisprudence of Holland” by Grotius. Although Blackstone

makes references to the natural law only in the introduction, he does quote Grotius

later, and it may be concluded that he was, if not influenced directly by other great

systematizations of his time, he was by the spirit of the age of reason.120 So, to many

American lawyers, because of repetitive nature of the common law, the doctrine of

the natural law appears to some extent synonymous with the civil law, although civil

law abandoned it as a leading doctrine long time ago.

Thirdly, an misunderstanding of the nature of the Civil Code type of

the statutes in the mind of a common law lawyer emerges from unawareness of the

nature of the principles which are underlying the civil statutory law. Civil statutes are

in their nature, in their biggest parts ius dispositivum, what is to say that their

provisions will be applied only absent of the agreement of the parties to the contrary.

That means that the courts will not impose the statutory provisions to the agreements

of the parties unless specifically provided so by the statute. It is the main principle of

the civil law on the obligations. A common law lawyer probably associates the idea of

the statute with the ius cogens, which would apply only to certain aspects of a

contract, like the provisions that the certain types of contracts have to be made in

writing, similar to the Statute of Frauds. For example, the time or place of delivery is

left to the disposition of the parties and statutory provisions will be applied only if

parties did not establish their will. Of course, the provisions related to the property

law are more cognitive in their nature. However, the law of the obligation in the civil

law systems, to which the law of the contracts adhere is dispositive law, and the

parties are free to agree regardless of the content of the statutory provisions, if it is not

expressly prohibited which is reserved to the rare situations. Related questions will be

addressed additionally in respect to the discussion on equity.

We may try to revert the analysis and attempt to locate the differences.

Probably the most obvious difference between the legal systems is the matter of the

120 See in Lawson, id., at 197. Interesting discussion on the theories of direct influence of the natural law theory on Blackstone is to be found in an article by Paul Lucas, “Ex parte Sir William Blackstone, ‘Plagiarist’: A Note on Blackstone and the Natural Law,” 7 The American Journal of Legal History 142, (1963). At 143 Lucas points that some previous defenses of Blackstone’s use of Burlamaqui are based on the presumption of the cultural standards of the age of enlightment which did not consider use of literary property as a piracy.

priority of the sources in applying the law to the facts. Although it is happening on the

level of comparing separate from the one on which we are conducting our research, its

role is determinative to the extent that it can not be simply disregarded. It is the

difference of the priority of the precedents in common law systems over the codified

law, as opposed to the priority role of statutes over the case law in civil law systems.

Assumption of our research is that the hierarchy of the sources (not historical in this

context), is not determinative to the law itself when the principles which lay above, or

behind the rules which are being applied are similar. Still, for those who insist on this

difference we have to point that we are not negating emphasized role of the judiciary

in the common law as evident, neither are we negating its law making role and

exemplary independence. We leave this undisputed while pointing out that not the

priority of the sources, but the legal principles after which the rules are modeled is

what matters.

The other closely related obvious difference is the institution of the

jury. The history of the development of the jury from the body of persons giving the

testimony to the courts to its modern role is an autohtonous element of the common

law systems as much as the system of following the precedents. Undisputably, the

autonomy of the jury played an important role in providing the autonomy of a

particular court when making decision under the external pressure of political will. As

a final result it relieved the judicial branch from the pressures, and helped establishing

judicial system as truly independent. As such it served its function fully and provided

the autonomy of courts which is easy to envy. But that does not mean that the legal

principles of the common and civil law are not same to the extent to be fruitfully

compared.

This difference is also related to the role of the judge in judicial

process, and has to analyzed in that context. The civil law courts

historically,diminishing the element of the inquisitory proceeding in its role, have

introduced the form of the judge-juror as a participant in the proceedings. In our

opinion this process corresponds to the development of the equity jurisdiction as the

means of overriding the harshness of the common law courts, and we will discus id in

next heading. Let us say here that judges-jurors are layman which sits with the court

and participates in the deciding the case. Certainly, it is not such a strong guarantor of

autonomy as twelve member jury. That problem the countries having civil legal

systems tended to solve through the legislature. The conceptual division of the three

branches of power in separate legislative, executive and judicial branches was

operationalized for the first time in a civil law country by the French revolution. That

concept was characteristic for the thought of the end of eighteenth century and was

adopted at that time in than revolutionary United States as and in the revolutionary

France. Since then gradually division of the branches of power has been adopted in

virtually all of the countries having civil legal systems and modern constitutions, and

it could be said, in all of the countries adopting constitutions in general.

The Happy Few

However, the view of the entirely distinct nature of the common law

remained the general point of perception, and the incompatibility of the two system

was taken for granted even without studying the problem. There is no doubt that such

situation was due to the political reasons. As Grant is suggesting, the fact that that the

liberal idea embodied in the societies based on the parliamentary democracy was

working successfuly, reduced the interest for intellectual reexamination of its, or any

other concept drastically. Common law lawyer rarely questions the legal system in

which he is functioning, and never attempts to reach any conclusions about other legal

systems. Thinking in the terms of comparative advantages of the both systems is a

heresy. Concluding his book Grant refers to such contentions of his in the following

words:

In the task of lightening the darkness which surrounds justice in our era, we of the English-speaking world have one advantage and one great disadvantage. The advantage is practical: the old and settled legal institutions which still bring forth loyalty from many of the best practical people. The disadvantage is that we have been so long disinterested or even contemptuous of that very thought about the whole which is now required. No other great western tradition has shown such lack of interest in thought, and in the institutions necessary to its possibility. We now pay the price for our long tradition of taking the goods of practical confidence and competence as self-sufficiently the highest goods.121

Let us return to the statements of the common lawyers who found

enough interest to plunge into, for some, mysterious waters of the Roman law. Many,

once they have studied the subject, found that common law is related closely or rooted

in the Roman law. We see that the conclusion is often similar; almost all found such

result and pleaded for deeper studying and better understanding of the phenomena.

How and why did interest of the common lawyers for the Roman law in general

stopped during the last war could also be field of separate research, but the fact is that

121 Grant , id., at 89.

teaching of the Roman law almost stopped after the second world war.122 As the

consequence American lawyers today are much less aware of the common grounds of

the civil and common law than their British contemporaries, or much less than civil

law lawyers. This is not to say that civil law lawyers are not also often taught at their

universities that the two systems substantially differ. They are, but civil lawyers still

do study Roman law, and have the opportunity to draw conclusions for themselves.

Many who started studying the differences comes to the conclusion that they rather

technical than substantial, and that is often valid also for the American scholars which

started comparative research. We will continue showing a gamut of such conclusions,

as much as the space will permit, and even these are almost randomly chosen among

many others.

In an article entitled “The Civil Law And The Common Law” Peter J.

Hamilton envisioned possibility that the systems may converge in the future on an

unrealistic premise that some country will adopt a newly created mixture of the two.

Although he based his conclusions in part on the assumptions inferred on the climatic

and mentality of the particular nations some of his observations are very sharp.

Seventy years later we can with more confidence conclude that the convergence is

taking place in the countries which belong to any particular system. Specially we have

in mind the emergence of the new law of the European Economic Community which

is created in an environment of statutory provisions and stare decisis interpretation

through the opinions of the European Court of Justice. It should not be overlooked to

which extent traditional common law countries introduced statutes or semi-codified

rules of procedure into their systems, neither the trend in the civil law countries to

publish court decisions and consult them in addressing the court. However, as obvious

it may be, it would be good to document it, but not under the auspices of this essay.

Returning to the mentioned article we will notice that the author starts his comparison

by turning to the historic position of the Roman law as the source to both of the

systems:

Perhaps some day there will be a union of the two in some favored land now on the firing line of the Saxon and Latin civilizations; certainly there are modifications of the one by the other in progressive countries even now; nevertheless, for the present we must think of them as different if not opposing systems.

122 On the history of the teaching of the Roman Law in America See articles by M.H. Hoeflich, “Roman and Civil Law in American legal Education and research Prior to 1930: A Preliminary Survey,” 1984 University of Illinois Law Review 719, and Lewis C. Cassidy, “The Teaching and Study of Roman Law in the United States,” 9 Georgetown Law Journal 297, (1930-1931).

It is, however, not easy to define their differences. Every system of law must cover substantially the same subjects, although in the different way. Certain it is that these two systems of law both originated in the Aryan stock, and that the early Roman law, from which the civil law is derived, presents strong analogies to the primitive Germanic customs from which the common law is descended. There is one striking difference in the original elements to which less attention is paid than is deserved. The Roman law, like the Greek before it, in its origin is based upon the gens system, that is upon the system of kindred groups which have expanded beyond the immediate family, while on the other hand the German races when they come within the ken of history have groups of kindred, to be sure, but kindred which does not make up any closed gens. In other words, at the formative period, when it settled in its historic home, the Latin stock was still based upon the gentile system, while the Germanic, probably on account of more extensive wanderings, was passing from the kindred group to the group based upon locality. Particularly was this true in England, probably because the appropriation of Britain by the Anglo-Saxons was more gradual than is recognized in the legend of Hengist and Horsa.123

However idealistic Hamilton’s opinion regarding the Utopia where the

legal systems will blend may have been in the time when the article was written,

nowadays the blending of the systems within the European Economic Community

seems most natural and smooth process. As it may have been hard for Hamilton hard

to envision that any country would launch in the reform of its legal system by

adopting the elements of the other legal systems and incorporating them in the body

of its own law, it showed how far the genius of prediction can go if based on the

understanding of the advantages of diversity.

Roman Law in the United States

Roman Law, of course had less direct impact on the legal history of the

United States, where it chiefly came through the impact of the work of distinguished

legal scholars. The other source through which the link exists is the presence of the

Roman and civil law principles to the extent in which they were incorporated in the

English common law in early days of its development. But it would be wrong to

consider that such incorporation processes ceased in the United States. To the

contrary, first states that formed Union did not always hesitate to consult principles of

civil or Roman law.124 Illustrative in that respect is Bryson’s article “The Use of

Roman Law in Virginia Courts” whose conclusion illustrates the principle on which

limited reception of the civil and Roman law took place in the United States:

123 Hamilton, id., at 180-181.124 E.g., Davis v. Rowe, 27 Va. (6 Rand.) 355, 370 and 374, (1828).

As the quantity of Virginia precedents increased, it became less necessary and then unnecessary to cite English cases, to rely on first principles, or to argue from the civil law of Imperial Rome. The rules of the civil law, however, are reasonable and respectable, as George Wythe pointed out, even if they do not have for Virginia the same authority as the English common law. During the first fifty years or so of republican Virginia, many Roman law concepts have became incorporated into the body of Virginia case law, as we have seen , and in this limited form the Roman law survives today in Virginia.125

Regarding the use of the classics in the Supreme Court decisions it has

to be noted that the research reveals plenty cases coming from the Jurisdictions of the

District Court for the District of Puerto Rico, and former District Court of Philippines

discussing various aspects of the civil law which was applied by the lower courts. We

found in depth analysis of the early Supreme Court decisions in an article by

Hoffman:

While classics are not used as extensively by the Supreme Court as

they are by the High Court of Chancery, their presence is noteworthy. Twelve

classical references are made in five cases by four Supreme Court justices, one

Attorney General, and several lawyers arguing before the court. In spite of fact that

this number seems small, two points should be made. First, in this period, the case

load of the Supreme Court was not great. Nevertheless, classical references appear in

almost one-fifth of the cases heard, the same percentage as found in Wythe. Second,

the most controversial case in this period was Chisholm v. Georgia (1793), and it is in

this case that the greatest number of classical references occurs.126

Justice Joseph Story

History of the legal development of the United States recognizes

several distinguished individuals which were aware of the role of the Roman Law

125 W. Hamilton Bryson, “The Use of Roman Law in Virginia Courts,” 28 The American Journal of Legal History 135, (1984). Same standpoint takes also Hoffman, “Classics in the Courts of the United States, 1790-1800,” See footnote 73, infra. Hoffman is also presenting the manner in which the Supreme Court introduced some principles even without making any references to Roman law. Another article on the subject is Stein, “The Attraction of the Civil Law in Post-Revolutionary America”, 52 Virginia Law Review, 403 (1966), at 403-404. We will not cite here the U.S. cases which as the authority refer to the civil law, as they may be found in the footnotes of cited articles.

126 Richard J. Hoffman, “Classics in the Courts of the United States, 1790-1800,” 22 The American Journal of Legal History 55, (1978), at 58.

even in modern society. Doubtless, one of the most prominent were Joseph Story,

Associate Justice of the Supreme Court,127 and Dane Professor at the Harvard Law

School. Born in Massachusetts in 1779, and graduated from Harvard College in 1798,

Story has studied for the Bar in the law offices of Samuel Sewall. As a student he was

never trained in Roman or civil law. It is possible that he was influenced through

discovering importance of the Roman law on the Lord Mansfield and Sir William

Jones, whose work he was studying and appreciated very much, specially during the

early years of his career when he worked in admiralty cases. A student of his works

states that his “knowledge of Roman law was derived from secondary rather than

primary sources, like Austin; his main reading and his main analysis centered upon

the civilian tradition rather than readings in Roman texts.”128 Approach he undertook

in his writing was compared to the one of the Lord Mansfield.

It is curious indeed that the the relation between two men was not

simply of admiration Story grew for his senior influence, but the fact that they have

both left in intellectual property some concepts which stayed very much relevant till

the present day. Lord Mansfiled’s contribution is the attempt to define intellectual

property as the right over intangibles, and it left a strong mark in the United States

law. We will discuss it in the later course of the essay. Story, on his behalf, left a

landmark doctrine of intellectual property law, the doctrine of the “fair use” as

formulated in the case Folsom v. Marsh,129 which we will also separately discuss

later. It could be hardly a coincidence that the two doctrines, which have not only left

viable legacy to the theory of intellectual property, but are still cornerstones of the

field, have been initially formulated by the lawyers which had Roman law

background.130

127 For more on various aspects of Story’s career and appointment to the Supreme Court, See R.Kent Newmyer, “Justice Joseph Story on Circuit And a Neglected Phase of American Legal History,” 14 The American Journal of Legal History 112, (1970), and “Justice Joseph Story, The Charles River Bridge Case and the Crisis of Republicanism,” 17 The American Journal of Legal History 232, (1973), Morgan D. Dowd, “Justice Joseph Story and the Politics of Appointment,” 9 The American Journal of Legal History 265, (1965), Gerald T. Dunne, “Joseph Story: The Lowering Storm,” 13 The American Journal of Legal History 1, (1969). Finally, Frank D. Prager, “The Changing Views of Justice Story on the Construction of Patents,” 4 The American Journal of Legal History 1, (1960).

128 M.H.Hoeflich, “John Austin and Joseph Story: Two Nineteenth Century Perspectives on the utility of the Civil Law for the Common Lawyer”, 29 The American Journal of Legal History 36, (1985), at 59. The article is masterly systematization of the types of the approach to the role of the Roman law in the development of the common law, as well as an example of an objective approach to the issue.

129 Folsom v. Marsh, 9 F.Cas. 342, 13 Copy.Dec. 991, 1000-1001, (1841).130 For the comparison between the two, with a lot of references to the

interpretation of their work, both from the civil and common lawyers, See

Dean Pound was also aware of integrating role of the Roman law. The

foreword he wrote to an historical and comparative article in Harvard Law Review on

the evaluation of the property in Roman law, shows that he was aware of the

significance of that kind of the approach. His sober analysis may also serve as an

appropriate sum up.

Comparative law took an important part in the constructive period of the American law. In the hands of Kent and Story and their contemporaries and immediate successors study of the Roman law and of the law of Continental Europe bore fruit in liberal development of common-law-doctrines, in intelligent filling of the gaps in the common-law system and in the reception and adaptation of a law merchant based to no small extent on the Continental commercial law. Later, when the building of an American common law had been achieved, the energies of jurists turned for a season to analytical and historical investigation of the common law, as received and adapted, in order to reach its fundamental ideas, develop them logically, and give the system form and internal coherence. The critical exposition of civil-law doctrines and institutions, in comparison with our own law, which had characterized the books of an earlier generation decayed into a brief prefatory statement or a few perfunctory historical references by way of introduction.

There is nothing peculiar to us in this phenomenon. In legal history periods of growth and expansion call for and rely upon philosophy and comparative law. Periods of stability, striving for perfection of the form of the law rather than for development of its substance, rely upon analysis and history. The scientific treatment of law begins in the taking of distinctions between cases which are superficially analogous and establishment of categories and “differences.” This simple form of analysis is appropriate to the stage of the strict law. Later the attempt to put principles behind distinctions and to generalize this comparison of rules within the subjects in other systems. This step is suggested by Cicero in the transition to a stage of growth in Roman law and by Fortescue near the end of a stage of the strict law in England. In the period of growth and expansion marked by the development of equity and reception of the law merchant it is marked. With the rise the analytical method in the nineteenth century it largely disappears. We may be confident, therefore, that the revival of serious use of comparative law in our legal literature is a significant sign of the times.131

But, surprisingly enough, that period did not come. Not because Dean

Pound’s estimation would be ill-founded, but rather because some factor occurred

which he could not predict. It is curious to note that the existing literature written on

Hoeflich, id., at 65.131 Roscoe Pound, Foreword to Nathan Mathews, “The Valuation of Property in

the Roman Law,” 34 Harvard Law Review 227, (1921), at 227-228. For equally balanced conclusion See article by Hoeflich, note (# ), supra.

the subject has been originally published before Second World War. Most precisely,

after the culmination in thirties there is no significant work published after the

beginning of the forties, besides the few articles devoted to the history of the teaching

of the Roman law in the United States. The conclusion of these was that it has mostly

went out of the curricula. It could be only inferred that it is not the mere coincidence

with the Second World War. If it is not, it could be further inferred that American

skepticism regarding studies of history and legal history of Europe grew into the

disinterest and temporary rejection. We are still prepared to expect the period he

predicted.

THE EQUITY

It is the equity that is most often pointed out as a factor whose

existence most outstandingly distinguishes common law from the civil law, and most

decisively divides them in the two separate systems of law. Once the fact is stressed

that the common law is divided in the two separate bodies of law, administered by

separate courts that apply the rules of equity, which although they are not to the

contrary of the rules of law, do produce different results, most people take the

difference for granted and quit trying to understand the reason behind the concept.

It was Aristotle who speaking about epeikeia articulated the problem

which is rooted under the concept of equity in the common law, and corresponding

systems in civil law. He described it as “the justice that goes beyond the written

law.”132 After his formulation of the problem became known to Roman jurists

through the great wave of the Greek influence in second century B.C. awareness of

the equitable approach in interpretation developed.That is the fact that the “legal rules

are necessarily general, while the circumstances of every case are particular.”133

There can be very little doubt that this problem is pertinent to each and every legal

system which ever existed. To the Romans all this was known, and we can find it in

Cicero who says that: “[i]njustice often arises by a certain chicanery, indeed, by an

132 Aristotle, “Rhet. 1.13.13 (1374a), and also in 1.13.17 (1374b): “[I]t is equitable to look not to the law but to the legislator, not to the letter of the law but to the intention of the legislator.” Also in “Eth.Nicom.” 5.10.6 (1137b): “[C]orrection of the law where the latter is defective by reason of its universality.”

133 Sir Paul Vinogradoff, “Common-Sense in Law”, (1918), at 209.

over-subtle even fraudulent interpretation of the law. From which arose the proverb,

‘the more law, the less justice’ (summum ius summa iniuria).”134

Justice Story declared that that the fundamental rule of the

interpretation of legal instruments is to construe them according to the meaning of the

terms and the intention of the parties.135 Equity is but the name for the mechanism

which common law developed in order to solve this general problem.136 But, the fact

that different systems solved this problem in different ways, does not make the

common law system unique in solving the problem. That is to say that other legal

systems also know mechanisms which absorb this imminent tension, but have

formulated it different - less obvious, as it is not separated from the law. Civil law

countries are solving it through the mechanisms incorporated in the body of the

statutory law.137 Among several mechanisms is interpretation. 138

A Comparison

Let us examine shortly this contention on the example of the positive

Yugoslav law which will serve here as a model of a civil law jurisdiction. Certain

134 Cicero, “De Off.” 1.10.33. For more on the issue See Stroux, “Summum Ius Summa Iniuria; Ein Kapitel aus der Geschihte der Intepretatio Juris,” (1926), and Jolwicz, 48 L. Q. Rev. 180-185, (1932), See footnotes 4 and 5 in the Schiller article, our footnote (#), supra.

135 Joseph Story, 1 “Commentaries on the Constitution, (1891), at 305.136 Stuart E. Prall, “The Development of Equity in Tudor England,” 8 The

American Journal of Legal History 1, (1964). Although his conclusion is not in accord with ours, Prall in describing this process notes the same. His distinction of the Greek Epeikeia and Roman Aequitas is particularly instructive in realizing how different concepts of equity may complement.

137 Vinogradoff, id., at 221. “But it would be wrong to conclude from this process that the sphere of legal rules is constantly growing at the expense of the discretionary justice. A movement in the opposite direction is also noticeable in all healthy communities possessed of a strong feeling for living law. Strict legal rules are supplemented by allowing a wide margin of discretion to the judges for their construction, development, adaptation to circumstances, and even for their gradual organic modification. Thus equity appears not only as the most ancient but also as the most modern form of legal action. The German Civil Code of 1900 very often employs general statements of various legal principles, with a view to their differentiation in practice. It commonly refers, for instance to good faith (Treu und Glauben), business practice, etc.”

138 Schiller, id., at 735. Distinguishing between broader and narrower meanings of the term interpretatio Schiller says: “Interpretatio in this sense is to be contrasted with enacted law, and though some features of this position have been disputed, there is no question but that interpretatio may denote the entire influence of the jurists upon the development of the law, in other words, all of the process that led to the formation of new law except that of legislation.” (Footnotes omitted.) On his opinion on the canons as the rules of the construction in the common law See id., at 764 et seq.

statutory provisions of the Code of Obligations, which contain provisions regarding

contractual relations, allow courts to apply the principles of so called “morality” in

specific cases.139 When provided so, it is not morality in the colloquial sense that is

applied, but the legal morality, corresponding to the legal principles of fairness found

in the common law. Fairness, to be precise, is very much an Anglo-Saxon cultural

concept, and as such does not appear in the other continental countries. The word

itself is also untranslatable in other European languages, except descriptive. Outside

of the law it is understood through the moral concepts of solidarity, or loyalty to the

principle of righteousness. In the law its presence is secured through the principle of

legal morality.

It is probably worth noting, that there are several layers through which

the presence of aequitas is secured in the civil law. The first layer in application of the

principles of fairness in the civil law will be by that courts applying extra-statutory

standards in interpreting the law - so called principles of law. That will be in the

situations when the statutes are conditioned negatively regarding the obligation - for

the event that the parties agree something which is both outside of the scope of the

statute and against morality.

In the other layer we will find explicit provisions, directing the court to

apply equitable principles. Even in the provisions regarding the real property, which

are more cognitive in their nature, we can find clear examples of equitable

adjudication. We will provide an example from the provisions regulating property

issue in the situation of building a house on somebody else's land. Theoretically, the

situation may be regarded as a specific version of acquiring of the property by

confusio of properties owned by different owners, as the Romans knew it. That is

provided by the statutory provisions.140 The Code provides that the court may, as

exception to the provision of the paragraph one of the Section 25, decide that the

building shall not be destroyed despite legally sound request of the land owner, if its

destroying would not be “socially justifiable “regarding the circumstances of the case,

and specially the value of the building, proprietary standing (?) of both, the land

owner and the builder, as well as their acts during the building.” Further, Section 26

of the same Code provides, that under given circumstances the court shall the building

and the land adjudicate to the land owner, or to the builder, “taking into the account

their needs, and specially their accommodation standing.” It has to be said that the

139 So in Yugoslav Code of Obligations, Sections, 10, 47, 49, 51, 75, 103, and 20, 51.

140 Yugoslav Code on Basic Property Right Relations, Sections 24-26.

standard for such provisions are secured by some kind the printed yearly digests the

appellate courts provide through the periodical meetings of the judges.

Further layer on which elements of the equitable interpretation of the

law is introduced through the statute is the principle of the free interpretation of

evidence in the provisions of the rules of the civil procedure. The courts have to take

every piece of evidence in the light of of totality of circumstances of particular

case.141 A common lawyer has to be reminded that this is not the type of the

interpretation which he would associate with the interpretation of the statute, like

through the legal history, but rather in the sense of “construing.”142

We see that it is the interplay of systems which provide equitable

application of legal norm in the civil law jurisdictions. Without getting involved

deeper in this issue, we can conclude that certain forms of equitable interpretation of

the law provide civil law judges with the instrument securing similar result to the one

common law judge achieves in the common law through separate set of rules, in the

situation when applying of the law appears to be harsh and unreasonable. In the civil

law these principles may be defined by the statute, or are built within the general

principles of the law, which are to be applied whenever not derogated by the lex

specialis. Even when the law is to be applied on its face, there still exists possibility

and duty of the court for the equitable interpretation of the evidence.

Finally, the presence of equity in civil law jurisdictions is not a recent

phenomenon. We have outlined our view in which there is no legal system that may

exist without equity. It is for the simple reason; never could those who make the rules

envision all of the factual circumstances which will arise to be solved under the rules.

The set of rules, which is a legal system, would just fall apart when confronted with

the patterns of life situations. Traditionally, majority of the European legal systems

have incorporated the principles of equity within the body of the law, since the early

stages of their development. Professor Berman realizes that when he states: “In other

European systems of royal law, however, and in England in the twelfth and thirteenth

centuries, ‘equity’ was not considered to be separate from ‘law’ but, on the contrary,

an integral part of it. As in canon law, the equity of royal courts was that aspect of law

141 So in Yugoslav Code of Civil Procedure, Section 8.142 A. Arthur Schiller, “Roman Interpretatio and Anglo-American Interpretation

and Construction”, 27 Virginia Law Review” No. 6, 733, (1941), at 745-746, also in his footnotes.

which gave it its capacity to adapt old rules to new (‘exceptional’) circumstances, in

order to do justice.”143

A Historical View

It would be hardly possible to draw any conclusion without turning

once again to the history of the English law. First, we will briefly turn to the article

called “Roman Interpretatio and Anglo-American Interpretation and Construction”,

which is unavoidably dealing with the issue of equity. It provides us with the

information of the rising role of aequitas, specially in post classical times when it

become superior to the role of the law.144 That reversal was by the process similar to

those which repeated several hundred years later in England - that the law became too

formalistic to provide justice. The article explores further how early “equity of a

statute” and “equitable interpretation” developed through the time of Plowden, and

how equity as interpretation turned into the equity of jurisdiction, and became

distorted through the polarity of the courts of law and those of chancery.145

It was the strict formalism of early English law that gave way to the

development of equity, but it does not mean that it is exclusively English in origin as

a legal concept. Equity as the separate body, as confronted to the law, as it is in

common law systems certainly is an English peculiarity. The concept of aequitas was

known in the early English law. Bracton defines it, as does Azo, but without

mentioning any equitable jurisdiction exercised by the separate court.146 During the

fourteenth century development of the common law, that far beneficial to the

development of England, was faced with the threat of being to formalistic to function.

It was necessary to develop other means in front of the unreasonably harsh and strict

rules of the law as it was applied by the Royal Courts. In 1285 by the Statute of

Westminster II the power was given to the Chancery (i.e., King’s Chancellor), to

frame the new writs in consimili casu. That power was “to meet new cases

sufficiently like those for which writs already exist, and new writs are time to time

framed.”147 But the principles on which it has been developed were taken partially

from the Roman law, and its most powerful legal instrument, the injunction is taken

143 Berman, id., at 519.144 Constantine, in C. 3.1.8 identifies aequitas and iustitia and levels them

above ius.145 Schiller, id., at 758-759.146 Bracton, “De legibus...” 2b.3., “[r]erum convenientia, quae in paribus

causis paria desiderat jura, et omnia bene coaequiparat,” Azo, Inst. I.1.f.240.147 W.M.Geldart, “Elements of English Law,” (????), at ??.

from the Canon law, which is of course, developed upon the principles of the Roman

law.

Support for such contentions we find, for example, in treatise

“Common-Sense in Law” by Sir Paul Vinogradoff in the chapter on equity:

Modern English equity is interesting for our purpose only in so far as its peculiar course has been shaped historically by the operation of principles distinct from ordinary legal rules. But it is in the earlier history of this branch of English law, in the period ranging roughly from the fourteenth to the eighteenth centuries, that we get the best material for a study of equity as a distinct principle. Roman history and the observation of the legal institutions of the Greeks, the Germans, and other nations also give excellent illustrations of the process under discussion.148

After all, it was Cicero who discussed the possibility of the formalistic

and equitable interpretation of the case between A. Caecina and L. Aebutius as an

conflict between the spirit and the letter of the law. Development of the Roman law as

the body of jus civile and jus gentium, one which applied to Roman citizens and other

to other subjects of the Empire, dictated some degree of uniformity in order to bring

the stability, what was achieved through the establishment of legal standards of equity

and utility (ex bono et aeqo). Vinogradoff is of the opinion that the analogous process

evolved in England during the reigns of Henry III and of Edward I, during which

earlier “splendid formalism” simply stopped serving the purpose of the law.149

Clear historic overview of the development of equity is provided by

Prall in his article “The Development of Equity in Tudor England.”150 He is

examining the extent of the possible Roman influence, in which he does not actually

believe more than traditional view of a common law historian would allow him, by

148 Vinogradoff, id., 209.149 Vinogradoff, id., 216, states: “It was at this critical period that the Court of

chancery came forward with some fresh impulses, under the influence of the foreign learning of canon and of Roman law, and supported by the recognition of conscience as one of the sources of legal action.”

150 Stuart E. Prall, “The Development of Equity in Tudor England,” 8 The American Journal of Legal History 1, (1964). Prall distinguishes Greek epeikeia from Roman aequitas in the sense that the former is detached from the law as an more philosophical than legal concept, while pointing out that later is more similar to the one English law developed. In doing so he seems to forget that the Roman concept was developed under the influence of the Greek philosophy. He displays distrust of the philosophical approach to the law characteristic for common lawyers. Such approach completely lacks understanding that the philosophical conceptualization is but conceptualization of reality, thus a necessary step in the operationalization of doing.

reviewing the lives of outstanding English lawyers. He points out the role of

Christopher Saint-Germain, and the influence of his “Doctor and Student.”151 It

appears almost inapprehensible to understand that his proposal of conscience as the

legal standard provoked such bitter attacks of common lawyers, when today equitable

principle are accepted as the fully recognized element of American common law.152

Even more so, in the times when equity sits side by side, tightly packed in the

statutory provisions, often providing equitable relief for legal offense. He is further

pointing the impact of his work on Cardinal Wolsey whose abuse of the power of the

Chancery angered his contemporaries. “He heard cases after judgments had been

rendered in the common law courts, and he was particularly biting in his personal

relations with those common lawyers who appeared before him in Chancery. It was

from all of this that the struggle over the prerogative courts broke out.”153 In the best

tradition of common law historian Prall, by the way, disqualifies Thomas Starkey, a

proponent of “the substitution of the Roman law for the English common law,” as

“probably not based on any sure knowledge of either system.”154 However, Prall’s

sketching of the period of reign of Henry VIII provides us with excellent insight on

the reality of the political struggle in which the choice between the common law and

equity, and between common and Roman law, was nothing else but the tip on the

balance. As such it may be paradigmatic for the whole early development of the

English law, and which very fact of this struggle provided national historians with the

evidence of the difference of the English legal system. We would here add,

undeniable difference, but not of the principles of law, but of its history. And the

difference in the history does not make the principles of law any more different, even

if the rules are. Limitation of such conclusion is conditioned by the spirit of other

times than the ones we are sharing now.

Another lawyer who attracts attention as influential proponent of

equity is Plowden.155 Prall contends that Plowden, who lived half a century later than

Saint-Germain, in the reign of Elizabeth I, was more concerned about the statutes, as

the statutes were at that time gaining more important role in English society. On the

151 Prall is referring to Christopher Saint-Germain, “Doctor and Student,” (18th ed., Dublin, 1792). His opinion is that Saint-Germain’s equity is closer to epeikeia.

152 The culmination of rejection of equitable principles is surely Selden's famous remark to the length of the Chancellor’s foot. See Prall, id., at 4.

153 Prall, id., at 7.154 Prall, id., at 7 and 8, respectively. We would agree in part, to the extent

that the knowledge and understanding of the civil law is not advantage of many common lawyers. Prall refers to Thomas Starkey, “Dialogue between Reginald Pole and Thomas Lupset,” (1948).

155 Edmund Plowden, “The Commentaries, or Reports of Edmund Plowden,” (1792), lived from 1518-1585, Inner Temple barrister and its treasurer.

relation between Saint-Germain and Plowden: “Both writers ultimately expected that

the conscience of the judge would follow the law; St. Germain seemed to mean the

common law in general, while Plowden meant statutes in particular.”156 He

complement himself little later: “If to Saint-Germain must go the credit for

introducing the concept of equity into modern England via his analysis of the nature

of law and the role of the Chancery, then Plowden must be credited with infusing the

new equitable principles into the common law tradition. It was once again going to be

respectable for the common law courts to admit that their decisions were based upon

something other than the strict letter of the law. [* * *] Thus a second great stride had

been taken on the road to the maturity of English law.”157 His opinion on their

ultimate influence on the courts corresponds to our in respect that it was the

formalism that gave way to the introduction of equity, thus resembling in a way

development of the civil law. And after more examination of the issue Prall concludes

is similar manner: “The issue was not one of common law versus equity, nor of

common law versus Roman law. the issue was the rule of law versus rule by

administrative fiat. As such it was to be a political dispute between the men who

staffed the common law benches and their brethren in the House of Commons versus

the crown and its agents in the prerogative courts.”158

Although the final conclusion he reaches gives impact on the common

law influences in the Tudor England on the expense of the possibility of the Roman

law influences, Prall stresses the earlier presence of the equity in common law.159

Some other authors have the opinion that may complement the past development.

Having in mind Maitland’s cautiousness towards the ideas of Roman influence on the

common law it is nonetheless interesting to see his cautious opinion on the early

development of English equity:

Nor do I believe that to any very large extent the Chancellors had borrowed from the Roman law - this is a disputed matter, Mr. Spence has argued for their Romanism, Mr. Justice Holmes against it. No doubt that through the medium of the canon law these great ecclesiastics were familiar with some of the great maxims which occur in the Institutes or the Digest. One of the parts of the Corpus Juris Canonici, the Liber Sextus, ends with a bouquet of these high-sounding maxims - Qui prior est tempore potior est jure, and so forth, maxims familiar to all readers of

156 Prall, id., at 12.157 Prall, id., at 14. It would be interesting to explore the relation of the strict

period of the formalism of the English law with the period of the inquisitory proceedings. Of course, the political context is different, but eventually, certain resemblances in the degree of formalism could be found.

158 Prall, id., at 19.159 Prall, id., at 19

equity reports. No doubt the early Chancellors knew these and valued them - but I do not believe that we ought to attribute to them too much knowledge of Roman law or any intention to Romanize the law of England.160

Even the Blackstone, otherwise opposed to the Roman influence

doctrines, in “Commentaries” recognizes the influence of the Canon law as far as the

jurisdiction of the ecclesiastical courts reaches.161 When talking about the

ecclesiastical courts, we have to be aware that these were not the courts of limited

jurisdiction. During the middle ages the church was not divided from the judicial or

any other power of the state. Accordingly, the jurisdiction of the ecclesiastical courts

was broad, and interfering in many, if no all aspects of everyday life. Berman points

out: “The institutional role of the ecclesiastical court - the bishop or his deputy - was

also [as the role of the priesthood] central. Executors and administrators were required

to render an account to the ecclesiastical court. Trustees for religious or charitable

purposes were under supervision of the ecclesiastical court. All disputes over

inheritance were subject to the jurisdiction of that court (although some of them were

also subject to the jurisdiction of the secular courts).”162 We have to keep in mind that

the ecclesiastical courts also held the jurisdiction over the property relations. It may

have been less extensive, but in Berman’s words “by no means meager, and out of it

came a substantial body of law.”163 However, as it was never thought that the

property would have sacramental character, the blending with the secular law was

much more thorough. The result of such development was not short of amazing

influence on certain property institutes. “In addition to developing the modern

concepts of corporate ownership, trust and foundations, the canonists also developed

modern concept of possessory remedies. In particular, they developed in the twelfth

century a legal action for the recovery of possession of land, goods, and incorporeal

rights, whereby a prior possessor who had been violently or fraudulently dispossessed

could recover against a present possessor merely by proof of the wrongful

dispossession and without the necessity of proving a better title.”164

Scrutton, who was not too convinced in the volume of the influence in

particular rules of law, but nevertheless was well aware of the breadth of the contacts

to which English law was exposed through the history in the opening of his chapter on

160 F.W. Maitland, “Equity - A Course of Lectures”, ed. by John Brunyate, (1936), at 8.

161 Blackstone, “Commentaries,” Intro., Sect. 3, at 82-84, and III, 429.162 Harold J. Berman, Law and Revolution; The formation of the Western

Legal Tradition, (1983), at 234.163 Id., at 237.164 For the background of the development see id., at 240.

Blackstone emphasized also this particular link as highly probable.165 This is also an

important point of our discussion, because in the cited sections of his text Blackstone

is clear that canon law, itself directly derived from Roman law, did shape body of

equity to a remarkable extent, indeed. Blackstone adds that the ecclesiastical courts,

as the other courts that administered canon law did fall under the final jurisdiction, or

“superintendency” of the common law courts, but does not provide his opinion on the

limits it left.

As many other authors allow influence of the Canon law on the

ecclesiastical courts in whose jurisdiction were equity proceedings, it would come as

no surprise than that Burdick strongly inclines in favor of the Roman origins of

equity, specially its most characteristic remedy - injunction.

It was, however, the rise and development of the court of Chancery that had more influence in shaping English and American Law by Roman Law principles than any other cause. For a long time in the history of the English Law, especially in the days following the Conquest, the rulers, the clergy, the courts, and the writers were friendly to, and inclined toward, continental influences. Without question or thought of “foreign” influence such principles of Roman Law as naturally and helpfully served to expand and perfect the somewhat limited and imperfect character of the native English Law were gladly “received.” It is true that in later times, after political and racial lines had become more distinct, and particularly after religious differences had separated the peoples, matters that were associated with the things either “foreign” or “Roman” were opposed by the English.166

Nevertheless, citing Pomeroy167, Burdick suggests that the competition

between the courts of law and the Chancery court after the bitter struggle during two

hundred years ended with the outcome in the favor of the latter.

165 Thomas E. Scrutton, “The Influence of the Roman Law on the Law of England,” (1885), at 143, states: “Another source of influence, indirectly Roman, which was at this time acting on our law, is seen in the citations from Grotius, Puffendorf, and those Dutch and German publicists, whose ethico-legal works had exercised and were still exercising great influence in England, especially in the Court of Chancery, and whose writings were much colored by, where they were not entirely composed of, Roman doctrines and conceptions.” (Footnotes omitted.)

166 Burdick, id., at 77.167 Pomeroy, “Eq.Juris.”, 3d ed., § 2: “In fact, the equity administered by the

early English chancellors, and the jurisdiction of their court, were confessedly borrowed from the aequitas and judicial powers of the Roman magistrates; and the one cannot be fully understood without some knowledge of the other.”

The Court of Chancery finally triumphed, however, in the reign of James I when the king upheld the contention of Lord Chancellor Ellesmere against Lord Chief Justice Coke, that Chancery could by injunction prevent the the enforcement of a judgment obtained in a Common Law Court. (Footnote referring to Blackstone, III, 54; Jenks, Hist.Eng.Law, 166) In the years that have since ensued the principles of equity as they have become more widely understood have been adopted in many courts of law since they have been found more just and practical than the rules of Common Law. Consequently, by such means Roman Law has, indirectly, had a great influence in moulding our law of the present time.168

The Concept of Equity

It is probably useful, before we conclude, to present briefly the system

of the conceptualization which Vinogradoff introduces in order to prove that all of the

legal systems recognize principles of equity and struggle to provide some instrument

through which it will become operational. First element of it is the adaptation of a

general rule to the particular circumstances. It has reached considerable development

in the Roman times.169 Second element is the role of the judge to apply the

mechanism of equity and justice when there are gaps in the law by filling them up by

the means of logically consistent extensions of the leading legal principles.170

Thirdly, such mechanism as equity serve to alter existing law which under present

circumstances appears to be unjust and unreasonable. Vinogradoff gives examples to

purport this element, both in Roman and in English law.171 He concludes his section

on equity with the conclusion: “[w]e may sum up by saying that the equity as a

method of judicial discretion is inseparable from a complex and efficient system of

law. It is not necessary that it should be exercised by special courts, and it does not

disappear when special tribunals of equity are merged by a comprehensive reform of

the Judicature. The method will retain its value and will have to be exercised in order

to supplement the rigidity of prospective general rules.”172

168 Burdick, id., at 80.169 Vinogradoff, id., at 222-226.170 See Blackstone, “Commentaries”, III, at 431-432, where he quotes Grotius

saying “lex non exacte definit, sed arbitrio boni viri permittit.” Blackstone further concludes further, that these principles are equally applied both in the courts of the common law as in the courts of equity: “[b]ut there is not a single rule of interpreting laws, whether equitably or strictly that is not equally used judges in the courts both of law and equity; the construction must in both be the same, or, if they differ, it is only as one court of law may also happen to differ from another.”

171 Vinogradoff, id., at 227-233. 172 Vinogradoff, id., at 233.

We would only like to add that in such form, as required by the

conclusion above, we can find some form of aequitas principle in all legal systems.

Before we conclude let us state some easily inferred conclusions. As we saw legal

concept in the background of the equity system in England was a difference of the

actions in rem from the actions in personam, where first were framed in the common

law, and the latter in equity. Clearly, this was taken from Roman law, and it served

England fine. It is also logical that it was so, as the tradition of the law knows this

shift as one of its constants. It is not less reasonable to conclude that once the political

reasons for the separate jurisdiction disappeared, there is no other legal reason but

tradition to keep the principles equity out of the body of the law, i.e. uncodified. In

part this theory was historically proven in the United States which abolished separate

jurisdiction, and continued to apply the principles of equity not a bit less successfully

without it. It could be said that at today’s level of development of judiciary, the

United States could afford to codify the principles of equity and apply them in the

future with much the same results.173 We will see later that the history of the

ownership made a similar turn, equivalent to the distinction of the actions in rem from

the actions in personam, which all of the civil law countries have made distancing

their law from its Roman origins.

[5.05] The purpose of this argument was not to show that the civil and the common

law are identical as a whole or in parts.174 Such an effort would be unreasonable and

useless because it is not possible to negate the differences which are normal to

develop within one legal system in the interpretation of its rules between the different

districts, as between the states that belong to the same legal system as the United

States and Great Britain, or Germany and France do, and specially the between the

systems that sometimes systematically and persistently tried to develop its own

173 There is no reason why, e.g., section 34 of the Lanham Act (15 U.S.C. 1116) Remedies, while providing that courts vested under appropriate jurisdiction under the Act “shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable,” would also not restate such principles, and at the same time include them in the statutory text.

174 We will use an simplification in order to further illustrate our standpoint. England is not only known to be specific for the peculiarities of its legal history, but also, among others, because the vehicles in traffic move on the left side of the street, while in most of the other countries is opposite. Although it is undeniably a major difference in the perception of the car if the steering wheel is on the opposite side of the car as well, nobody who is reasoning soundly would go so far to assert that that difference influence changes in the principles on which motor of the car works. So is, in our opinion also with the differences between the common and civil law. Other problem would be for any country to switch from driving on the left to the driving on the right side of the road, however the principle of the road may be similar all over the world. But, for individual drivers it is not a hardship to adjust to driving on the other side of the road. Those who have tried may have found the transition quite smooth.

identity. Our effort aimed at showing that there is enough similarity in order that

analogizing between certain institutes of the systems could be undertaken if the

reasons for the similarities are taken into the account. Specially in the situations where

the cause for present differences are to to be explaining by the different approach to

the initial similarities.

Therefore, we conclude that the existing legal system which are spread

in the most of the modern societies are based on the common source, and it is

justifiable to compare the legal institutes they developed in relation, regardless of

existing differences. The differences appear, paradoxically, to justify the theories

about the similarities, as they can be logically inferred from the facts that similarities

existed, even that they are caused by adjusting similar systems to the specific needs of

atomized societies of the past. Roman law is the common source to the common law

as it is to the civil law, and it is a link through which these legal systems are related.

The true picture is distorted due to the cultural, or political objectives of the past.

Specially it is due to the fact that the majority of the historical research was done

during the nationalistic weltanschaung of the nineteenth century.175 Because of that

majority of the texts in favor of strong national legal developments have to be taken

cum grano salis.

Specially important in the line of this argument is the fact that the body

of the commercial law and whole history of equity were exposed to the Roman

influences to even higher degree than the rest of the English common law. That is

important, of course, because the law of intellectual property found its place in the

mind of common law lawyer within the body of equity, rather than law. Further, it

means that the most of the cases related to intellectual property issues will fall within

the domain of the common law influenced to a certain extent by Roman law. And not

only is it so in the common law countries, but in the civil law countries as well.

Especially regarding the remedies. The civil law equivalents of the preliminary

injunction and the injunction are the principal remedy in the civil law intellectual

property systems as much as they are in common law. In our understanding, the

similarities which are to be found are related through the history of law as they are

175 Berman, id., at 512. “It is the tragedy of ‘scientific’ history that it was invented in nineteenth century, in the heyday of nationalism. From Ranke on, history was to be an objective study of ‘how things actually happened.’ It was simply taken for granted, however, that ‘what happened’ was chiefly what happened in, or to, the nation. History was to be primarily national history, and more than that, it was to emphasize those elements that distinguish the nation’s history from that of other nations. This was a hidden ideological bias of scientific history, which had important repercussions on the study of law.”

through the common societal requirements due to the universal nature of creativity

and its commercial exploitation in modern societies. It is no wonder than, that the

common source of the western legal systems could serve as the starting point of their

comparative analysis. With this notion we will concentrate on another level of the

research.

C HAPTER T HREE

THE PROPERTY

IN INTELLECTUAL PROPERTY LAW

THE THING

The main obstacle to any betterment of the intellectual property

protection systems is the undetermined nature, and undefined legal characteristics of

the object of intellectual property right. We have already stated, and will additionally

argue in favor of such contention, that the common object of all intellectual property

is the creativity. Human creativity is the activity of an individual in which he relates

to the social and natural environment. It is central field of the relation of an individual

with the society and nature, and its protection is of the utmost importance for the well-

being of individual. In relation to society its position is two-fold; first, by protecting it

society ensures a segment of freedoms each individual needs in order to consider the

society worth living in, and second, the society benefits from the contributions of

content individuals it consists of. As the essential resource and generator of the

societal well-being, the appropriate protection of intellectual property amounts to a

role of the cornerstone of the modern, post-industrial societies.

In our opinion, redefinition of the existing understanding of its

protection is necessary in the cultural situation where the understanding of the

intellectual property as integral, and interrelated is increasing. In modern societies the

protection of intellectual property is in bigger part operated through the legal system.

However, the main instruments of that system are improved versions of the

instruments suited to protect the creativity in an antiquated shape, defined initially in

the period even preceding the industrialisation of Western Societies. Post-industrial

societies, characterized in the first place by the dominant role of information

processing abilities, do not understand the creativity as secularized scientific, and

artistic creativity. From the legal standpoint, the changing means of the embodiment

of the creative ideas presents a major change. Legal system faced the societal changes

with the mixed results, trying to catch up with the fast pace of changes. The slow and

complicated adaptation of the legal systems to the fast pace of the changes in modern

society is, at least in the field of the intellectual property law, due to the legally

undefined characteristics of its central object; the creativity.

Therefore, in this chapter we will start the discussion by attempting to

define the object all to often defined as “elusive.” The importance of defining the

object is not a regular objective of the property law science. It is often presumed that

the object is known, and the the scientific explorations are the rights over the

objects.176 When we are talking about the protection of creativity we have to keep in

mind, that the law provides in the first place the protection to the creative results as

they are embodied, to the artifacts. However, due to the electronic media, the

understanding of the embodiment, copies and all other well accepted terms simply

have changed. We will try to capture the essence of these changes and to explain

their meaning in light of law in the next chapter. Here, we will argue that the focus of

the protection should be pointed at protection of the creativity itself. By this, we are

not suggesting that present system protect only the artifacts, and not the creativity

itself. To the contrary, as the two were never clearly distinguished, the system was

employed indiscriminately, sometimes giving the protection to the creativity of the

creator, sometimes more to the economic exploitation of his or her artifact. Once the

object of the property right will be sufficiently defined, it will be clearer which of the

existing legal instruments could be applied best for the purposes of the intellectual

property protection, and which changes have to be made in order to function

successfully. In our opinion the property system, elaborated through the years of the

cultural experiences of many societies, in its various historic forms can serve as a well

from which best legal solutions for the protection of the creativity could be drawn out.

We will try to show how in many societies the creativity is encompassed in the notion

of property, and that the legal systems recognize it as such. Also, we will show that

even more elements of law of property have been employed, although under specific

176 C. Reinold Noyes, The Institution of Property; A Study of the Development, Substance and Arrangement of the System of Property in Modern Anglo-American Law, (1936), at 437. “The law of property is concerned almost exclusively with defining and dealing with these rights and the bundles of them (interests), and not with their objects. In one respect, however, the law must deal with material objects. For it is customary for mature societies to define under what circumstances, and what categories of, objects may be brought within that form of control called property; to define of what each particular object consists; and generally to prescribe the permissions and the limited protections, with reference to the physical use of material objects, which compose the interests having any degree of the quality of possession.”

new names, as the doctrines of intellectual property law. For example, the doctrine of

the fair use can in some of its aspects be compared to the easements (servitudes), or

compulsory licensing to the eminent domain (expropriation). After the definition of

the object of intellectual property will be attempted, the existing differences will

appear even smaller then they initially do.

In following pages we will try to determine the object of intellectual

property right starting from the idea that the creativity is a creative activity. This

activity, in our opinion, consists of the simple choices an individual faces when he or

she tries to articulate his or her rapport to the environment. The answers, are not

object of the property of the creator, except the particular answers which he or she

gave to the questions he or she created. The creative activity encompasses the

questions opened, the artifacts are results, comprising the answers as well. The

subsequent artifacts, those which are comprising only the new answers to the existing

questions, present the example of the creative activity which is hierarchically

positioned lower, than, for instance, artistic creativity, or pure scientific research

which is on the top of human creative ability. The question opened, or the choice to be

made will be called information. In later course of the argument, we will offer

elaboration of this hypothesis, built over the existing structure of the mathematical

theory of information, in particular, on the Shannon-Weaver model of

communication.

The Res

After this brief introduction to the problem, we can clearly see that

determination of the res, the thing, or the object of ownership is central problem in

discussing intellectual property. There is little doubt that all misinterpretation and lack

of the understanding of intellectual property law comes from this black hole not yet

fully comprehended and less determined. Its nature has been described as elusive,

even nebulous, its characteristic to be present at the same time on two places has

caused confusion. And indeed, it is strange that something stolen may be with the

thief as well as with the robbed. There is no doubt that it requires specific solutions

for the law to be successful in regulating the relations upon it, and the traditional

property law can only be basis for such solutions, and not the solution itself. But, even

to be basis, the object of the required modified property has to be determined in full,

in order to give successful results.

To start discussion we will try to sharpen up the picture by presenting

an obvious mistake in legal reasoning and misunderstanding of the legal reasoning

repeated several times by the opinions of the United States courts. Of course, by the

repetitive nature of the stare decisis it spread around, and as consequence law became

paradoxically unclear and vague. The mistake is done by confusing the nature of the

object with the the nature of the right itself. In short, in some copyright related cases

the courts stated that “copyright is an intangible right.”177 Even the Supreme Court

was not prone of this mistake, and described the copyright as “this intangible

right.”178 It is nonsense on the two levels. In the first place, on the linguistic level, it

is paradoxical to distinguish a right on the basis of its intangibility, because there is no

such right that would be tangible. It is not only in the common law; there is no

tangible rights in any legal system. On more serious, legal level, the definition also

does not make sense. We have to explain this historically.

It can be presumed that the definition was taken by the lower courts

from the Black’s Law Dictionary which defines copyright, among other, as: [a]n

intangible, incorporeal right granted by statute to the author or originator...” Further, it

could be inferred that the definition was shaped on the same source on which the

Supreme Court rallied in its definitions of the right - on Lord Mansfield’s famous

opinion in Millar v. Taylor where he defined the copyright as

The property in the copy, thus abridged, is equally an incorporeal right to print a set of intellectual ideas or modes of thinking, communicated in a set of words or sentences and modes of expression. It is equally detached from the manuscript or any other physical existence whatsoever.179

177 It is not often that common law courts discuss the legal nature of an institute, but the issue is often arise when National Stolen Property Act, 18 U.S.C.A. § 2314 is to be applied. “A ‘copyright’ which is an incorporeal, intangible right or privilege existing of both its physical manifestation and the very thing copyrighted is not a ‘good, ware, (or) merchandise’ such as the felony provisions of the National Stolen Property Act are implicated.” United States v. Smith, 686 F.2d 234, 239 et seq., (1983). Sometimes, courts use proper expression as ?th Circuit did in describing plaintiff’s claims: “infringement of its copyrights in the fifteen scripts and conversion of its intangible property rights.” Lone Ranger Television, Inc. v.Program Radio Corp., 740 F.2d 718, at 720, (1984). Clearly, the property concerned is intangible and if the court related to the intangibility of the property instead of the right, the use is proper.

178 So, e.g. Justice Day in Werckmeister case, note (#), supra, stated: “...the statute must be read in the light of the intention of Congress to protect this intangible right as a reward of the inventive genius that has produced the work.” (Emphasis added.)

179 Millar v. Taylor, 4 Burr. 2303, at 2396 (1769), 98 Eng. Rep., at 253.

It would appear strange that Lord Mansfield would describe that

imprecisely the right he tried to determine.180 Obviously, Lord Mansfield was using

the term in the sense in which Roman lawyer would do it, by identifying the object of

ownership with the right over it.181 That use may appear as mistake from the modern

point of the civil law theory where the right of ownership is sharply distinguished

from the object itself. However, in the language of the common law the word

property is used even today to denote the object of the right.182 In doing so they are

actually closer to the old Roman conception of dominium, which signified the object

and the right over it, both. But, even if the Roman lawyers distinguished the rights

over incorporeal things, the term as Lord Mansfield used it, is unfortunately no less

wrong from the viewpoint of the modern theory of law. The use by the American

lawyers of the term “intangible rights” is even closer to the language of the Roman

jurists, because it is derived from the terms res quae tangi possunt (the tangible

things), and res quae tangi non possunt (the intangible things), which were parallely

used with the terms corporeal and incorporeal things. Anyhow, the modern usage is

wrong, because in the theory of the Roman law rights over things incorporeal rerum

incorporealia, still meant one and only one thing - right over rights.183 In other

180 See Noyes, id., at 306, for analysis of the use of the term incorporeal in English and Roman law. Noyes is pointing to John Austin, Lectures on Jurisprudence, (1832, 1869), vol. I, at 368, who traced the error in the related case, to the “jargon” of English law in which the term is used to denote the material object. And, in fact, that may be the clue to the seemingly imprecise words of lord Mansfield. He was likely trying to point the fact of the right in the material object, but did not distinguish it from the right in the creation which it was embodying. However, the use in the modern legal jargon is wrong, because we do distinguish the two.

181 Noyes, id., at 357, addresses the problem as follows: “In the most cases the American courts use the word ‘thing’ as a synonym for material object. Nevertheless, when the medieval term ‘incorporeal’ is used, the thing seems to be a non-possessory interest - or an interest less than dominium - in some material object. And, unfortunately the newer term ‘intangible’ is in process of being spoiled in the same way, referring not to immaterial wealth or services but to non-possessory interests, as if it were synonymous with the legal term ‘incorporeal.’”

182 According to Burdick, id., at 312, in the United States “at the present time, incorporeal rights are usually classified as consisting of easements, profits a prendre, rents and franchises.”In the same paragraph Burdick describes the ten incorporeal hereditaments from the Blacksotne’s clasification, and on the preceding page points out that Bracton followed Gaius and Roman law clasification. It is not strange than, that that usage remained in the later development of the common law, as many aspects of Bracton’s writing did.

183 Horvat, id., at 143, ascribes the distinction to the influence of the Greek dialectic philosophy. Further, the distinction as the matter of the legal differentiation are to be found first in Gaius, as to the res incorporales “quae tangi non possunt” as opposed to res corporales “quae tangi possunt.” At the same place he points that Romans considered only tangible things (corpora) as the possible objects of the rights, while the intangible things, (iura) “were commonly identified with the right itself.”

words, according to Gaius,184 incorporeals meant the rights as the object of the

property right, such as right of inheritance (hereditas), right of using somebody else’s

thing (usufructus), obligations (obligationes) and servitudes (iura praediorum). All

these rights are part of the property, but they are not object of property right.

Dominium, or the property right was not included in incorporeals because Roman

jurists were entirely identifying the right with the object.185 What Lord Mansfield

tried to determine is the most important characteristic of the intellectual property

rights - the incorporeal nature of the thing that is its object. But the fact that the object

is the peculiar thing incorporeal does not make it the right over the rights. However,

both of this possibilities will be discussed in an immediate argument below.

Explanation of this mistake brings us to the starting point in

determining the nature of the object of intellectual property. The theory of the

property in civil and Roman law distinguishes several main categories of the things,

according to the different aspects of their nature, we have discussed the categories of

the movable and immovable things, and now we will examine the difference between

the tangible (res corporalis) and intangible things (res incorporalis) - not rights.

Roman legal theory arrived to the res incorporalis category in the later stages of its

development, but neither then, nor in the history of the civil law did this category

denote an intangible object of the material world. The law was ignorant of such. The

term signified simply the rights, so the ownership over intangibles was simply legal

synonym for ownership of the rights on object like usufructus or the like. In our

opinion the ownership over an creation is not ownership of the right in that meaning,

although later we will explore semantic potential of this combination in order to see

why idiom “information is the power” may have certain legal significance. Of course,

if the power is understood as springing up from the legal rights of the owner over

lawfully acquired information, it is the fact that such rights provide the owner with a

power in relation to his fellows who may not have equivalent rights. It is also a

material recognition of the economical value of information, and the recognition of

the social power aggregated in the wealthy. Finally, information interpreted in the

meaning of “freedom of choice,” as it will be explained in the following paragraphs,

is certainly a kind of power in the sense in which any possibility of choice is situation

184 Gaius 2.14, Institutiones, 2.2.2, 13-14, (also in 3 and 4), according to Horvat, id., at 143. Buckland, Text-book id., at 187, describe the distinciton as: “Res incorporales were abstract conceptions, notional things, and, as res meant assets, res incorporales were rights.”

185 W.W. Buckland & A.D. McNair, Roman Law & Common Law; A Comparison in Outline, (1936), at 70-71, Horvat id. Buckland, id., at 187, explains: “Dominium was not res incorporalis. It was in fact treated as a res incorporealis, indeed the only res incorporalis.”

of power. That meaning points to the inherent democratic nature of creativity, which

by enabling any individual to make choices, puts all members of society into the

position of the freedom to choose. Of course, so long as the social environment does

not provide more equality, any possibility of the freedom through creativity will

remain only potential.

The Concept is a Thing

Word thing is the key to the meaning of the legal concept of property.

Two different authors encroached the relevant meaning of the legal term thing or res

by approaching various aspects of the concept.186 Salkowski defines it as follows:

“Thing in the juristic sense is, strictly, every portion of external nature which, limited

in space, and subject to the control of a Person, has a money value...”187 Austin said

that “[t]hings are such permanent objects, not being persons, as are sensible or

perceptible through senses.”188 Distinction from persons which Austin emphasized is

the other important element of distinction. That is why corporations, although

intangible, the ideas, are not object of the intellectual property.

In determining the object of the intellectual property we will turn to an

unlikely source - to the mathematical theory of communication. We will, even we are

only lawyers, do this even without an expert witness. But we will use help of a

scientist in order to interpret another scientist who expressed the idea in formulas.

Claude A. Shannon, in 1948 as the research mathematician in the Bell Telephone

Laboratories published an work exactly under the above title: “The Mathematical

Theory of Communication.” The work was reprinted in 1963, and complemented by

the paper entitled “Recent Contributions to the Mathematical Theory of

Communication,” by Warren Weaver. The book had significant impact during sixties,

when most of ambitious researches in semantics contained the well known graph of

the “communication system” provided in Shannon’s paper. By comparing the

information in the context of theory of communication with its possible role in

understanding creation we want only to provide an comparison which would stimulate

deeper analysis of creation. We do not propose any further application of the theory of

communication, because our apprehension of our own proposal is not fully

understandable, lest justifiable in its implications. However, the most important

186 See Noyes, id., Appendix I, at 571, regarding the etymology and historical development of related legal concept of the term thing..

187 Carl Salkowski, Institutes and History of Roman Private Law, (1868, Eng.transl. 1886), at 333.

188 Austin, id., at 368.

analogy for our purposes is the definition of information Shannon established and

Weaver explained and we will quote the part of the Weaver’s paper concerned with it.

The word information, in this theory, is used in a special sense that must not be confused with its ordinary usage. In particular, information must not be confused with meaning.

In fact, two messages, one of which is heavily loaded with meaning and the other of which is pure nonsense, can be exactly equivalent, from the present viewpoint, as regards information. [* * *]

To be sure, this word information in communication theory relates not so much to what you do say, as to what you could say. This is, information is a measure of one’s freedom of choice when one selects a message.189

We will stop here, briefly, in order to point out the basic similarity

between the process of communication, and the process of creation. We have in mind

another quality of fractal geometry which will prove the universal, or integral

properties of the fractal perception of reality. It has been noted that the elementary

geometric form of fractal geometry is bifurcation - from the mathematical notification

to the actual shapes of our blood vessels, goose-feathers, and trees the forms are

branching in two. In the realm of what we distinguish as social life the pattern repeats;

human hierarchy is organized on principles of branching, so is the reasoning, where a

particular type of the analysis is often described as the “tree-of-decisions.” We do not

see why this pattern would not continue further, in the realm of creation, according to

the pattern described above.

As the theory of communication is the mathematical system that deals

with the binary digits that represent always a choice between the two possibilities, its

189 Claude A. Shannon and Warren Weaver, The Mathematical Theory of Information, (1963), at 8-9. Gleick, id., at 255, when introducing his readers to a “piece of mathematics cum philosophy known as information theory,” says: “Information proved as good word as any, but people had to remember that they were using a specialized value-free term without the usual connotations of facts, learning, wisdom, understanding, enlightment.” For those of us who can distinguish the notion which Shannon named information on the level of their appearance as the mathematical equation, that symbol of the same notion is:

H = - [p1 log p1 + p2 log p 2 + . . . + pn log pn],

H = - ∑ pi log pi

where: “a set of n independent symbols, or set of n independent complete messages for that matter, whose probabilities of choice are p1, p2, . . .pn . [* * *] Where the symbol ∑ indicates, as is usual in mathematics, that one is to sum all terms like the typical one p1 log p1 written as a defining sample.” See id., at 14-15, for further explanation.

subject matter is shared with the understanding of the new geometry.190 The

possibility of such comparison is actually suggested by the Shannon himself when he

takes an example of Joyce’s “Finnegan Wake” in order to illustrate redundancy.191

Weaver goes much further, when at the very opening of his article defines

communication “in a very broad sense to include all of the procedures by which one

mind may affect another. This, of course, involves not only written and oral speech,

but also music, the pictorial arts, the theater, the ballet, and in fact all human

behavior.”192 And in such definition the emphasis should be on affecting another, as

Weaver himself returns to the definition in order to explain it stating that “[i]t may

seem at first glance undesirably narrow to imply that the purpose of of all

communication is to influence the conduct of the receiver. But with any reasonably

broad definition of conduct, it is clear that the communication either affects conduct

or is without any discernible and probable effect at all.”193 Due to this similarity, it is

that we may use the definition of information in later, and arguably, for the purples of

law regulating creation as well. It is the freedom of choice, that in the first place is

identical between the two. Creation is a sequence of choices made by the creator.

Second, its measurability, not necessarily in physical sense, is a quality that is suitable

for its legal application.

We will provide several examples in order to assist the reader in

understanding the appearance of the freedom of choice during the creativity analysis.

We will make a few examples, first in painting, than in other visual arts. When

painting a portrait, an artist is faced with almost innumerable choices. Choices start

from the technique between techniques available, from aquarel to acrylic. Others may

be concerning the brand of paint he will use, or the piece of canvas he will pick. His

decision regarding this questions would not be protectable as creative act because of

the low level of choices involved. Further, the artist may consider which kind of the

brush to use, or to use knife if he is painting with oil. His choice made regarding this

questions, in conjunction to the first choices, will probably have clearer impact on the

190 The field on which the paths of the theory of chaos and the information theory intersected is, according to Gleick, id., at 256, redundancy. “Redundancy is a predictable departure from the random.” At the same place he provides an example for redundancy in as the object of the information theory: “The famous advertisement for shorthand training -- if u cn rd ths msg...-- illustrated the point, and information theory allowed it to be measured.”

191 Shannon, id., at 56. “The Basic English vocabulary is limited to 850 words and the redundancy is very high. this is reflected in the expansion that occurs when a passage is translated into Basic English. Joyce on the other hand enlarges the vocabulary and is alleged to achieve a compression of semantic content.”

192 Weaver, id., at 3.193 Id., at 5.

creation and will amount to the protectable amount. The choice of the model may or

may not be of importance. All of said choices, already made may have impact on the

creation, and it is not possible to exclude them a priori as legally irrelevant. But the

choices which are more likely to be considered as legally relevant issues if author

seeks the protection from infringement, can be more easily shown on the examples

involving the forms of creativity which contain higher entropy, or the higher level of

information, i.e. which require of the creator more choices made and done. The higher

amount of choices opened by the creator, the higher level of creativity is involved in

creation. A simple portrait made on the street of summer resort will not require from

its creator to open more questions, because the customer will not want such open

choices, as usually he will not be able to stand the bareness of the unanswered

questions.194 It may be mentioned here that the “answer” to the questions by the

creator himself, in the sense that he made choice for himself, do not represent the

“answer” in the eyes of the recipient. The quality of the artistic creativity is that the

quest for the answers stays open for the longer time of cultural consumption. So,

when Matisse painted his painting known as “The Red Studio”195 he had in addition

to all of the choices which the other creators faced, made, or opened, the choices of

which most stunning was “will I paint the light in the room red?” That, simply is the

art; the creativity with more choices opened. When expressionist or fauvist painter

decides to paint the eye of the model in red or yellow, instead of blue or brown, they

had previously had to open the choice regarding this creative act, and they had to

commit an act in making the choice they have opened. The ability to open the choices

is the artistic creativity.

It is not different with the photography or film, or video. If we change

the angle from which we may make a photograph of a face the result will differ.

Lower angle will portray the person as more authoritative or strict, than a close-up. If

we place the camera on the floor of the warehouse and let it roll we will have a film

about mice as the result. But if we place it on the height of five inches we will have

the film about the workers. Same difference will occur with the careful use of lights,

194 Mondrian, id., at 51, puts it straightforwardly: “Art has shown that it is a question of determining the relations.” Felix Klee, “Paul Klee,” (1962), at 155, provides us with the words of the painter who formulated it as follows: “Creation cannot be done with undue haste. A thing must grow, must mature, and if time ever comes for the vast, all embracing work, so much the better. We must go on seeking. We have found parts of it, but not yet the whole.” (Emphasis added.)

195 The Red Studio, 1911, New York, Museum of Modern Art. Although this is not the place where we would start the discussion of the role of the color red for the painter, we are pointing out at least one other painting: Harmony in Red, 1908, Leningrad, Hermitage Museum. In many later paintings painter returned to red as the dominant color. He was using it consciously as a symbol.

or the type of the film. For picturing green meadows we may decide to use “Fuji®,”

but for catching the blue of the ocean we may use “Agfa®,” or “Kodak®.” But here

again, the more choices we plan to make, or more we decide to face, the more

information our creation will contain.

There is no human activity which does not require a certain level of

creativity. We should check the situation in the field of non-artistic creativity. The

question is when the amount raises to legal relevancy, or how much choices have to

be done in order to vest in the protection provided by the law.196 Good examples for

that, specially because they are within the copyright law which is in itself all too often

burdensome and unnecessarily identified with the protection of the artistic creativity,

are the “telephone directory” cases.197 The problem courts have to face is whether to

treat the choice made to include certain names selected under the criterion of the fact

of the telephone services subscribed as a one choice, or whether it is more just to treat

every name included as one choice, which will give the amount of choices high

enough to become legally relevant in terms of protection. Obviously, under the “sweat

of the brow” theory the courts recognized the laborious nature of the creativity in the

cases when a multitude of simple, non-artistic choices have to be made. The

protection was granted.

Needles to say, it is the same in sciences. The choices which the

inventor has to make regarding the material which he will use in conceiving the self-

locking nut molded in one piece of high-stripping torque resilient nylon or the like

material permitting multiple reuse without significant reduction in stripping torque,

shaped as wing nut, or as hexagonal nut, or acorn shaped, may not amount to

patentability. But the choices to provide the adhesive tape with the marginal fins

196 See Hughes, id., at 319-323. Thoughtful distinction Hughes made between “common, everyday” ideas, like walking the dog on the shorter leash, or adding paprika to a quiche, and “extraordinary” ideas, like heliocentric theory of a solar system, or use of the cylindrical column in architecture, to which private ownership is denied. He further divides “extraordinary” ideas in the group of those which are unprotectable because of their extraordinary importance, such like the Pythagorean theorem. second group consists of the ideas in the widespread public use, such like the architectural cylindrical column. On the other side are the ideas that can be privatized, and they are distinguished as such upon the criteria of “unique importance” of “extraordinary ideas.” Hughes, id., footnote 126, also refers to an unpublished address by Professor Frank Michelman, at American Association of Law Schools Meeting, (January 1985), copy on file at Georgetown Law Journal, where he thinks in terms of “a pure ‘social property.’” See also Giles S. Rich, “Escaping the Tyranny of the Words -- Is Evolution in Legal Thinking Impossible?” 60 JPOS 271, (No. 5, 1987).

197 E.g., Leon v. Pacific Telephone and Telegraph Co., 91 F.2d 484 (9th Cir.1937), or Hutchinson Telephone Company v. Fronteer Directory Company of Minnesota, Inc., 770 F.2d 128 (8th Cir. 1985).

shaped up in a retroflexed channel that forms a partially closed channel and two outer

surfaces which are thin in a certain proportion to the tape and highly elastic, may

amount to patentability when added to the choices previously made regarding the

material in which the core strip is made of.

We want to answer here the question that springs up in this context,

that is, first, is the invention form of expression, and if so, what are we expressing

through the scientific creativity, for example by invention of a valve for a motorcycle

engine.198 The answer is that we have to understand what the motorcycle is extension

of, regarding our body. It is in a way extension of our feet, as all of the other means of

transportation are. But even more, as many motorcycle fans would probably agree, it

is the extension of the wings that we do not have. The motorcycle is one of the

medium through which humans express their want to fly. It is not necessary that the

instability of the balance inherent to all two wheel vehicles provides us with the

substitute for the feeling of levitation of some kind. And the valve is just a step in that

expression, like the verse in the poem. The creative ability which we have is the

human means of the communication with its environment, meaning social and

physical environment as one.

It is necessary point further similarity between communication and

creation. One could even go that far to say that the creation and communication are

actually one. Because, what is the fact of choice for the purpose of creation but an

198 Harry A. Toulmin, Jr., Invention and The Law, (1936), did not have any doubts. he concluded, at 3, that: “Invention, being the result of imagination and intellect, is as much an art as painting, music, and sculpture. In addition, it is usually based on scientific knowledge.” This does not need any further comment, except that as often as the patented inventions are based on the scientific knowledge are the artistic creations based on the specific knowledge of technicalities of both, the methods and the instruments of expression. On the other side Joyce Cary, “The Artist and the World,” (1958), reprinted in Modern Culture and the Arts, at 243 uses word discovery when describing artistic creativity. “It is quite true that the artist, painter, writer or composer starts always with an experience that is a kind of discovery.” On the next page she concludes that “Monet has discover a truth about the actual world.” See, in relation to this, our footnote (#), and pertinent text. Piet Mondrian, “Plastic Art and Pure Plastic Art and Other Essays,” (1945), at 53 reaches the same conclusion: “Not only science, but art also, shows us that reality, at first incomprehensible, gradually reveals itself, by the mutual relations that are inherent at things. Pure science and pure art, disinterested and free, can lead the advance in the recognition of the laws which are based on these relationships. A great scholar has recently said that pure science achieves practical results for humanity. Similarly, one can say that pure art, even though it appear abstract, can be of direct utility for life.” There is nothing to added to such a clear statement, besides the fact that the thought contained in last two sentences should have always kept in mind when discussing “useful/useless” dichotomy in copyright law.

attempt to communicate certain sensibility, feeling, opinion in itself. We cannot see

sufficient difference between the two in order to keep their meaning, at least for the

purpose of this article, separated. Creation, therefore, is a communication, and the

information is the element to both.199 Then, the information is a fractal of creation

too. We will explain what is the meaning of this assertion in an instant, but let us first

return to the question Weaver made, in order to reinforce conclusion about the unity

of communication and creation through information, just stated:

Now, let us return to the idea of information. When we have an information source which is producing a message by successively selecting discrete symbols (letters, words, musical notes, spots of certain size, etc.), the probability of choice of the various symbols at one stage of the process being dependent on the information choices, [* * *], what about the information associated with this procedure?

Although, at this point the introduction of the concept of the entropy

follows, we will first ask ourselves another question: Does it not look like the

description of the first embodiment of the creation, the choice described above, as the

embodiment after which the law is practically able to grant the protection to the

creation. We feel that the answer to this is only in affirmative.

Fractals as a Legal Tool

Then, why fractal? Gleick talks about fractal as about element of

perceiving reality introduced by the theory of Chaos. He uses following words: 199 Wassily Kandinsky, Concerning the Spiritual in Art, (1947), at 23-24. See

his footnote 1, and the pertinent text in which he is setting up a structure for the analysis of the art. It is interesting that in doing so he starts from our initial hypothesis of the integrality of the body and the soul, which he states as: “Being connected with the body, the soul is affected through the medium of the senses--the felt.” We could, by analyzing more thoroughly this part of his text find much more significant resemblances to Shannon’s theory. In the first place the sequence of the creation as communication which strikingly resembles Shannon’s graph of communication.

Kandinsky’s sequence is:EMOTION (in the artist) > THE SENSED > THE ART-WORK > THE SENSED >

EMOTION (in the observer).Shannon’s sequence of the communication is:INFORMATION SOURCE > TRANSMITTER > SIGNAL > RECEIVER >

DESTINATION. Further, Kandinsky precedes to state something relevant to our present

discussion: “The two emotions will be like and equivalent to the extent that the work of art is successful. In this respect painting is in no way different from a song: each is a communication.” (Emphasis added.)

It is the pure coincidence that the two theories appear to be published the same year, as the footnote directs us that Kandinsky’s text was first published in 1913, in “Der Sturm.”

“Fractional dimension becomes a way of measuring the qualities that otherwise have

no clear definition,”200 and even more precise -- “[i]n the mind’s eye, a fractal is a

way of seeing infinity.”201 It is the most precise definition of the creativity we could

imagine to wish. It is also the answer to the quality of information to enlarge the

shrinking world by infinitely enlarging the common. And after all why not, as the law

itself provides that every creator can be its “own lexicographer.”202

But, for the above definition of “fractional dimension” a means for

measuring unclearly defined, Gleick provides few examples, like “the degree of

roughness, or brokenness or irregularity in an object.” And we ask ourselves, by the

way, if the information is fractal of creation, could it be measured in the similar way.

And indeed, Weaver asks the question “how does one measure amount of

information?” Shannon introduced notion of entropy as related to the second law of

thermodynamics, and Weaver interpreted in the words very similar to those Gleick

used couple of decades later. Gleick puts it straightforwardly: “Entropy is the name

for the quality of systems that increases under the Second Law -- mixing, disorder

randomness,”203 and later “[i]n the physical sciences, the entropy associated with a

200 Gleick, id., at 98.201 Id., at 98. For the implied universal quality of fractal see pages 107-110.202 Patent lawyers would immediately recognize this expression as coming

from the Autogiro Company of America v. The United States, 384 F.2d 391, 181 Ct.Cl. 55, 155 U.S.P.Q. 697 (Ct.Cl. 1967). The court quoted Justice Frankfurter, “Some Reflections on the Reading of Statutes,” 47 Col.L.Rev. 527, (1947), at 528, reflecting the inexacteness of words: “They are symbols of meaning. But unlike mathematical symbols, the phrasing of a document, especially in a complicated enactment, seldom attains more than approximate precision. If individual words are inexact symbols, with shifting variables, their configuration can hardly achieve invariant meaning or assured definiteness.” In fact, that decision itself refers to much earlier cases; Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812 (7th Cir. 1943); Stuart Oxygen Co. Ltd. v. Josephian, 162 F.2d 857 (9th Cir. 1947);Universal Oil Products Co. v. Globe Oil & Refining Co., 137 F.2d 3 (7th Cir. 1943) aff’d 322 U.S. 471, 64 S.Ct. 1110, 88 L.Ed. 1399 (1944). However, the research conducted on Westlaw system discovered many even older cases. The oldest of them, Advance Rumley Co. v. John Lauson Mfg. Co., 275 F.2d 249, points even further in the past: “this court has frequently and consistently recognized the patentee’s right to be his own lexicographer,...” Good example for this principle in the modern science is the theory of chaos itself. Gleick, id., at 4: “The new science has spawned its own language, an elegant shop talk of fractals and bifurcations, intermittencies and periodicities, folded-towel diffeomorphisms and smooth noodle maps.” (Italics in original.)

203 Gleick, id., at 257. Preceding explanation includes an accessible example of the Second Law: “The concept of entropy comes from thermodynamics, where it serves as an adjunct to the Second Law, the inexorable tendency of the universe, and any isolated system in it, to slide toward a state of increasing disorder. Divide the swimming pool in half with some barrier; fill one half with water and one with ink; wait for all to be still; lift the barrier; simply through the random motion of molecules, eventually the ink and water will mix. The mixing never reverses itself, even if you wait till the end of the universe, which is why the

situation is a measure of the degree of randomness, or of ‘shuffledness’ if you will, in

the situation; and the tendency of physical systems to become more and more

perfectly shuffled,...”204 As the entropy is measurable physical value Weaver

concludes “[t]hat information be measured by entropy is, after all, natural when we

remember that information, in communication theory, is associated with the amount

of freedom of choice we have in constructing messages.”205 The path to such answer

is contained in the explanation of the binary digit, or bit, as such information unit, or

the most basic choice is called. We will not here describe the principle of the binary

coding, which, since Shannon wrote his work, became part of our everyday life.

Probably, we should say almost, keeping in mind that most of the people still do not

understand how computers know which letter we want them to store while word

processing. Mathematical theory of communication reduces the pertinent definition as

follows: “Zero and one may be taken symbolically to represent any two choices, as

noted above; so that “binary digit” or “bit” is natural to associate with the two-choice

situation which has unit information.”206 But it is in defining redundancy when

Weaver finally employs the word from which few decades later word fractal was

developed. He defines redundancy as the one minus relative entropy (relative entropy

being ratio of the actual to the maximum entropy of the source), and as “the fraction

of the structure of the message which is determined not by the free choice of the

sender, but rather by the accepted statistical rules governing the use of the symbols in

question.”207

In that respect creativity is no different, as some of the fractions of the

structure of a creation are determined by the creator, while the other fractions of a

creation may be not determined consciously. We are pointing to the occasional

discoveries, in which an inventor in search for a presupposed goal understands that he

found something else, and the words that come to the poet seemingly not by his

choice. The mistake in lightning the set during the shooting of a movie may be

accepted by the director and add to the originality of the finished motion picture.

There is an endless number of hypothetical, as well as real situations in which

creativity crossed its way by internal or external noise.Internal relates here to the

amount to which a creator himself does not control outcome of mental part his

Second Law is so often said to be part of physics that make makes time one-way street.”

204 Shannon & Weaver, id., at 12. 205 Id ., at 13. 206 Id., at 9. 207 Id ., at 13. It is not strange that the word is employed here, as this

“statistical rule” is the field in which the theory of chaos found the interest in reexamining the communication theory. See Gleick, id., at ??.

creative process, while external relates to the interferences which are not of the mental

nature and still influence the creative result. We said in the introduction to this very

discussion that we will try not to analogize literally communication and creation too

far, as we cannot be aware of the implications regarding the exactness of the

mathematical side of the comparison. However, comparing something that seems to

correspond intensely is a temptation to compare further. As the message does not

become less message because of redundancy and noise, so does not creation. The the

feeling the creator has during creation, which Lewis Hyde describes as the gift,

quoting D.H. Lawrence, is an appropriately romantic verbalization of the noise in

creative channel: “As the artist works, some portion of his creation is bestowed upon

him. An idea pops into his head, a tune begins to play, a phrase comes to mind, a

color falls in place on the canvas. Usually, in fact, the artist does not find himself

engaged or exhilarated by the work, nor does it seem authentic, until the gratuitous

element has appeared, so that along with any true creation comes an uncanny sense

that ‘I,’ the artist, did not make the work. “Not I, not I, but the wind that blows

through me,...”208

But even as far as this speculation goes, we will find some support in

Weaver and Shannon. Besides the fact that they explicitly recognized certain art

forms as the examples for communication, an seemingly paradoxical phenomenon

which appears as the side-effect of the noise in the communication, certainly is

characteristic of creation in the sense as described in previous paragraph. Weaver

contends that: “[i]f noise is introduced, then the received message contains certain

distortions, certain errors, certain extraneous material, that would certainly lead one to

say that the received message exhibits, because of the effects of the noise, an

increased uncertainty. But if the uncertainty is increased, the information is increased

(i.e., freedom of choice), and this sounds as though the noise were beneficial!”

(Emphasis and the remark in the parenthesis ours.)209

[3.00] Let us address here, in short, another quality of fractal geometry which will

prove the universal, or integral properties of the fractal perception of reality. It has

been noted that the elementary geometric form of fractal geometry is bifurcation -

from the mathematical notification to the actual shapes of our blood vessels, goose-

feathers, and trees the forms are branching in two. In the realm of what we distinguish

as social life the pattern repeats; human hierarchy is organized on principles of

branching, so is the reasoning, where a particular type of the analysis is often

208 Gleick, id., at xii.209 Weaver, id., at 19.

described as the “tree-of-decisions.” We do not see why this pattern would not

continue further, in the realm of creation, according to the pattern described above.

As the Legal Articulation of Self-Interest,

the Property is the Expression of Hope

The history of property may stand as the epitome the history of the

human society. As Mankind is reaching different levels of organization more complex

forms of property emerge to serve interests of the society by protecting various forms

of property and reinterpreting previous concepts and applying them differently. This

concepts have been determinative to our perception of environment in a way enabling

Mankind to perceive the universe in a certain way, thus, regarding property, further

determining what we considered as possible to be owned in the environment. At the

same time they had ability to determine how we will act regarding the environment by

determining the rights we have to act. In that their characteristics were no different

than the other ideas which appeared to be shaping our perception of the universe and

human position within it, like right of freedom. Justin Hughes begins his article by

noticing that: “[a]s a slogan, ‘property’ does not have the siren’s call of words like

‘freedom,’ ‘equality,’ or ‘rights’”, and closes it by concluding that the theories that

might justify intellectual proprietary rights are to be reduced to the notions of the

rights to labor and rights to individual expression which “do have much more of a

siren’s call than property rights.”210 The fact that the property is an ideal concept, did

not diminish its power comparing to the power of materialized concepts, such as a

printing press whose role in the formation of the intellectual property law we have

demonstrated earlier. The concept of property is already an instrumentalization. It is

an expression of human feeling of hope, or ability to believe in betterment of the

conditions, “materialized” through law. The feeling of rightful and recognized having

of various objects is conceptualized as property right. As such its power was no less

than the power of the quest to freedom whose formative power was so often

recognized as driving force of history. Both, although immaterial, mere concepts, had

actually much stronger power than hard tools we used simultaneously in our relation

with the environment.

A Brief Etymology of the Property Terminology

210 Justin Hughes, “The Philosophy of Intellectual Property,” 77 The Georgetown Law Journal 287, at 288 and 366. The article is important for understanding the trends in modern American approach to intellectual property.

The very existence of two terms denoting ownership is in itself a proof

of the Roman influence upon the old English law. Term to own is in “Webster’s Third

New International Dictionary” originated through Middle and Old English, to Old

High German, and further to the Old Norse, clearly emphasizing the old Germanic

and Saxon origin of the English law.211 On the other side, term property is traced

back through Middle English and Middle French to Latin.212 Latin itself had two

meaning for the property, one is dominium, and dominus, meaning “absolute

ownership”, and “owner proprietor, possessor, master, ruler, lord,” the other proprius,

meaning “own, peculiar, particular; lasting permanent.”213 The verbal of the noun

property is to appropriate. The version propriety, or proprietary is a derivation under

stronger French influence. On the other side, the noun ownership is derived from the

verb to own. So we can say that we own a book, thus it is our property. We

appropriated it as our ownership. Further the property of the book is that its leafs are

made of the paper, what means that this characteristic is pertinent to the book.

Similar would be in Latin, where the book would be our dominium, but

in Americn legal parlance we do say that we have appropriated the book, while the

Romans would use the word vindicatio, they would vindicated the book. Word

proprietas would be used more in the meaning of the property pertinent to the book

itself. Characteristically enough, and important to our analysis word proprium in

Latin means possession. However, Romans were using two words to denominate what

we call ownership. First is dominium, and it could be best translated to today’s lawyer

as description of the main characteristic of ownership; the absolute right to exclude

others over the thing. The other is proprius which is best translated as ownership, or

ownness.214

It is interesting that the Webster's describes the entry property right as

“a right protected by the constitution to make contracts, conduct a business, labor, or

use, enjoy, and dispose of property”, thus clearly indicating that popular perception of

traditional property is only declared by the Constitution, not constituted or granted by

it. That is the closest to the legal definition that the Dictionary dared to go, and in

211 Selected meanings: owe,verb; owed, or archaic ought; [ME owe, ogh & oweth, OE ah, agan, akin to OHG eigun, possess, have, ON a, possess, have, am obliged.]: POSSESS, OWN, etc.

212 Selected meanings: property, [ME proprete, fr. MF propret, propriete,, fr. L proprietat-, proprietas, fr. proprie- [fr. proprius own, particular + -tat-, -tas- ty]

213 According to the Amsco New College Latin & English Dictionary, by John Traupman, (1966), used throughout the text.

214 For more detailed approach to the relation of “property” and “ownership” in modern American property law, see Noyes, id., at 358-359.

order to try to determine the legal nature of the traditional property right, i.e. legal

right, we will try to examine it as the part of the broader cultural structure. It is

necessary to do so as we are convinced that the law pertains to the cultural context in

which it exists. In other words we believe that every legal system has to be understood

and interpreted in the cultural context from which it emerged. The reason for that is

the fact that law is but one form of the culture. That, finally, gives the opportunity t

the one who is applying it to interpret it when the system seems to lack the coherence

in the light of a particular fact. Fairness, or legal morality is firm metha-legal

corrective which expresses the digest of the cultural standards formed within the same

cultural context with the law which it has to complement. Needles to say, the relation

of the culture and its law, as with all of the cultural phenomena, is in a feed back, thus

simultaneously mutually influential.

Another, non-legal definition of property is to be found in already cited

work by Lewis Hide where he without citing sources describes the property as a “right

of action.” “To possess, to enjoy, to use, to destroy, to sell, to rent, to give or

bequeath, to improve, to pollute. All of these are actions, and a thing (or a person)

becomes a ‘property’ whenever someone has ‘in it’ the right of any such action. There

is no property without an actor, then, and in this sense property is an expression of the

human will in things (and in other people).”215

Black’s Law Dictionary defines the property thoroughly, satisfactory

enough in our opinion to be cited extensively, as:

“[t]hat which is peculiar or proper to any person; that which belongs exclusively to one. In the strict legal sense, an aggregate of rights which are guaranteed and protected by the government. Fulton Light, Heat & Power Co. v. State, 65 Misc.Rep. 263, 121 N.Y.S. 536. The term is said to extend to every species of valuable right and interest. More specifically, ownership; the unrestricted and exclusive right to a thing; the right to dispose of a thing in every legal way, to possess it, to use it, and to exclude every one else from interfering with it. The exclusive right of possessing, enjoying, and disposing of a thing.(216) The highest right a man can have to anything; being used to refer to that right which one has to lands or tenements, goods or chattels, which no way depends on another man’s courtesy.

215 Lewis Hyde, The Gift; Imagination and the Erotic Life of Property, (1979-1983), at 94. Lewis is talking about the property in another people not in the context of slavery, but because this definition serves him as a vehicle to launch into the analysis of the Uniform Anatomical Gift Act, to which we will also turn to in the next chapter.

216 This corresponds to most common Roman definition of property as uti frui abut possidere Noyes***

The word is also commonly used to denote everything which is the subject of ownership, corporeal or incorporeal, tangible or intangible, visible or invisible, real or personal; everything that has an exchangeable value or which goes to make up wealth or estate. It extends to every species of valuable right and interest, and includes real and personal property, easements, franchises, and incorporeal hereditaments, and includes every invasion of one’s property rights by an actionable wrong. Labberton v. General Gas Co. of America, 53 Wash.2d 180, 332 P.2d 250, 252, 254.

Dismemberment of the definition to its parts would result in following

conclusion; first - “belonging” is the element that signifies here the human sentiment

regarding the relation between a subject (men) and an object (thing), culturally

accepted by the societal consent regarding the relation; second - “exclusivity” is the

element signifying the instrumentalization by which the individual vests the element

of “belonging” into the qualitatively different relation, he is the one that has the whole

belonging of the thing, and the society agrees that it is on the expense of the third

parties which may not have “belonging” anymore; third - “an aggregate of rights”

symbolizes the plurality of manifestations in which belonging may appear, the bundle

of rights consisting of the rights that represent the various shapes of “belonging,” not

a single right regarding the object; finally - “guaranteed and protected,” qualitatively

upgrades the common societal consent by the possibility of the legal enforcement. By

allowing the individual to vest in the legal protection a societies create property rights

from “belonging.” This definition successfully comprises both the historic dimension

and the structural dimension of the property right. Also, from this interpretation it is

clear that the traditional property right exists through the societal recognition, and not

through a grant by the government. Oliver Wendell Holmes wrote: “A legal right is

nothing but a permission to exercise certain natural powers, and upon certain

conditions to obtain protection, restitution, or compensation by the of the public

force.”217

The Kaleidoscopic Bundle of Rights

We will see that the above cited definition corresponds in many

aspects to the traditional Roman legal concept of property. Our task here is to

determine, as precisely as possible the rights in and over the thing. By the simple

overview we will try to present the changing concept and understanding of property

as the bundle of rights, from the period of Roman law till the modern times. One has

to be aware that the concept of property developed during the Roman times almost as

217 Oliver Wendell Holmes, The Common Law, (ed. Mark DeWolfe Howe, 1963), at 168.

much as it did since than. The concept of property changed tramenduously from the

time of the XII Tables, through republican times, to the end of its developement in

Empire. Traditional Roman division of the absolute and exclusive dominium over the

thing, which was the only form of ownership the Roman law recognized was a

threefold bundle. It comprised the right to use (usus), right to take its fruits

(usufructus), and right of disposal extending to the right to destroy the thing owned

(abusus).218 Some sources, by the times of Gaius, distinguish property right as

fourfold:

i having (habere),

ii possessing (possidere),

iii using (uti),

iv enjoying the fruits (frui).

Earlier, pre-Republican times knew only categories of mancipium, and

potestas. (meaning the “keep of the hand,” and “power,” respectively). It have had

also the meaning of the absolute power, denoting by the term that literally, the

possession was essential prerequisite of ownership. That time also used the words of

future bundle of rights as single names synonymous with property. As the social

structure of the Roman society grew, so the legal concept of the ownership was

getting more sophisticated. The end of the republican period understood the initial

“hands-on” ownership as little bit more sophisticated right and described it as

dominium, meaning dominion (?). The fact that it was absolute, however, did not

mean that certain limitations were not imposed in public interest. Such were, even

from the pre-Republican times, nuisances,219 space on the metes and bounds of real

property five feet wide,220 and similar. The time of Empire developed the institution

of eminent domain for public purposes, such as building of roads and acquaducts.221

Only the end of the classical period saw the use of the technical term proprietas,

218 Some Roman lawyers, like Ulpian, regarded the ownership as a single right, rejecting the concepts interpreting the ownership as the bundle of rights. See Dr. Marijan Horvat, Rimsko Pravo, (Roman Law), Vol. I, (1957), at 164.

219 Smoke, dust, steam, water, smell etc. However, even the earliest Roman law, the Twelve Tables provided an action called actio acquae pluviae arcendae , to the owner whose neighbor has set certain machines on his land causing water to overflow to lower property. The regulation of waters in the times of Iustinian were pretty sophisticated. Horvat, id., at 168.

220 Finis and ambitus, Horvat, id., at .221 Horvat is in favor of this theory, further adding the information on

provisions forbading destroying the houses in order to trade with the building material, regulations on maximum height of buildings, duty of the coastal owners to allow sailing needs, at 168. However, he is pointing out that some authors doubt the nature of any regulation as pure eminent domain, even in latest period.

meaning property, and denoting the legal concept of property similar to the elements

of the one we understand as property.222 Noyes is pointing out that it was only in the

Middle ages that the idea of the right developed in the sense as we understand it

today.223 In his understanding such legal concept was developed upon the Roman law

concept, but “being read into it rather than out of it.” He is distinguishing the modern

concept from the classical in the fact that it is the concept of negative right: “the

liberty or immunity gained by the individual through protection against the power of

his superiors and the interferences of his fellows.”224 He describes the effect as being

a right which is a protection rather than the power.

Holdsworth held that “[t]he Roman conception of ownership, as an

abstract right, was made familiar to English lawyers by the legal renaissance of the

twelfth and thirteenth centuries; and though, as we have seen, that conception has

never been completely acclimatized in the common law, yet the common law has

acquired a conception of ownership which is different from that better right to possess

which was dominant theory in the Middle Ages.”225 Noyes added to this very remark

“that the common law structure of estates has been modified by the Roman concept of

dominium.”226

Modern theory of property recognizes, or as one may say, in the

meantime we have discovered, much more components to the bundle.227 Becker is

citing Honore, presenting the bundle of eleven rights, comprising the “full liberal

notion of ownership.”228 We will reproduce this systematization in its entirety as it

will be used later on as the criterion for determining nature of the intellectual property

right:

i The right to posses -- that is, to exclusive physical control of the thing owned. Where the thing cannot be possessed physically, due, for example, to its ‘non-corporeal’ nature, ‘possession’ may be understood

222 We will not here present other Roman categorizations of the property, such as Iure Quiritium, In Bonis Habere, etc, which are important only for the history of the Roman law.

223 Noyes, id., at 288.224 Noyes, id., at 288.225 Holdsworth, id., vol. VII, at 510.226 Noyes, id., at 296.227 Noyes, id., at 359, provides a series of examples how the different authors

treated “the bundele” in the modern American Jurisprudence.228 Lawrence C. Becker, Property Rights; Philosophic Foundations, (1977), at

18, citing A.M. Honore, “Ownership,” in Oxford Essays in Jurisprudence, (ed. A.M. Guest,1961), at 107-147.

metaphorically or simply as the right to exclude the others from the use of other benefits of the thing.

ii The right to use -- that is, to personal enjoyment and use of the thing as distinct from iii and iv below.

iii The right to manage -- that is, to decide how and by whom a thing shall be used.

iv The right to the income -- that is, to the benefits derived from foregoing personal use of a thing and allowing others to use it.

v The right to the capital -- that is, the power to alienate the thing and to consume, waste, modify, or destroy it.

vi The right to security -- that is, immunity from expropriation.

vii The power of transmissibility -- that is, the power to devise or bequeath the thing.

viii The absence of the term -- that is, the indeterminate length of one’s ownership rights.

ix The prohibition of harmful use -- that is, one’s duty to forbear from using the thing in a certain way harmful to others.

x Liability to execution -- that is, liability to having the thing taken away for repayment of debt.

xi Residuary character -- that is, the existence of rules governing the revision of lapsed ownership rights.

As Becker is quick to point, “Honore is quick to point out that although

all of the eleven incidents are necessary for full liberal ownership as defined by

existing mature legal systems, none of them is necessary constituent of ownership per

se, for people may be said to own things in various restricted senses which omit any

one or more of the incidents.” 229 For our purpose, it is much more important to note

that property may be different also regarding its object. We may expect that the

ownership of tangibles will differ in some respects from the ownership of

intangibles.230

Noyes holds that “in fact the one distinguishing characteristic of the

notion of ‘absolute property’ in modern law is that it is an artificial legal concept

providing a very necessary vacuum for the law to abhor, in order that it may have

some residual interest which will absorb all accretions accruing to no other, and all

abandonments. In this way ‘absolute property’ can be reduced to a bare hypothetical

residuum and represents today, in many of its applications, a legal artifice -- almost a

229 Becker, id., at 19.230 Becker, id., at 19-20. “Finally, the incidents are susceptible of different

scopes. There may be restrictions on what we can own in various senses: e.g. in the case of land as opposed to chattels, a legal system could restrict ownership to the rights of life-tenancy, use management, and income, excluding the right to capital or the power of transmissibility.”

fiction --rather than an economic fact.”231 Still, when he attempts a definition, or

better said, a lengthy description of the property right, it corresponds to the Becker-

Honore model. We suggest that it should be read with the object of intellectual

property in mind, because in our opinion, it easily encompasses it:

“Property is any protected right or bundle of rights (interest, or ‘thing’) with direct or indirect regard to any external object (i.e. other than the person himself) which is material or quasi-material (i.e. a protected process) and which the then and there organization of society permits to be made the object of that form of control, either private or public, which is connoted by the legal concepts of occupying, possessing and using. The effective essence of these legal concepts seems to be the right to exclude all persons not legally entitled to entry or interference. They are protections in the form of prohibitions.”232

Very strong emphasis should be put to the evolution of the property

concept, and the modern understanding of the relativity of its integrality at the

different times of history in different societies.233 When we say that, we do not mean

the differences between the “full liberal notion of property,” but primarily on the

differences within the typical society that would recognize property as such. That is

the field in which it becomes visible how elastic and amorphous the property law

could be. It is simply impossible to reconcile the public interests and absolute private

property in an equal extent on all classes of ownable things in a society. The

ownership of minerals will be different than the ownership of chattels. Same is

regarding the owners, the ownership of the state would in many aspects be treated

different than property of corporations, or of individuals. Not even traditional division

on legal and physical persons would suffice. As the consequence different property

regimes emerge within one legal systems.

231 Noyes, id., at 299.232 Noyes, id., at 436. This is only the beginning of the definition, as it also

includes the determination of the relation of the various interests (further bundle of rights) to the object. The conclusion of this second part is: “Nevertheless, all such interests are composed of property rights because they relate ultimately or eventually to a possessed material or quasi-material object, with regard to which - or the equivalent of which, or to a part or use of which - they are or may become possessory.”

233 Hammond, id., at 53, in relation to this problem, also providing definition of property: “All western legal and economic systems have been grounded on the explicit recognition of property rights but the concept of property has by no means been a static one. Property today is best understood in terms of relational equities: property rights are the sanctioned behavioral relations among men that arise from the existence of goods and pertain to their use. [* * *] Hence the prevailing system of property rights in a community is the sum of the economic and social relations, with respect to scarce resources, in which individual members stand to each other.”

Intellectual Property Right in the Light of its Object

So the question in this examination should not be whether intellectual

property is property, or it is not? The question is what kind of property is intellectual

property in general, followed up with the questions regarding the most suitable form

of property rights recognition and enforcement for each of the different forms of

creativity, as well as for each different class of creators?

In our final chapter we will dare to propose several general points as

the outline for such approach to the varying forms of creativity. We think that it is not

unreasonable to grant accommodated rights to each technology, or medium through

which a creator might choose to express oneself. Of course, all of this rights should

correspond to a general set of uniform legal principles that would be as broadly

common as possible for all intellectual property. Accordingly, that would mean that

the property would be underlaying legal ground as the basis for recognition of rights,

but that different set of particular rules, (based on intellectual property principles),

would apply for the relations in the newspapers, as opposed to the theater, etc. The

rights of a TV director may be solved different than the rights of the theater director,

if the media environment proves to be sufficiently different.

Finally, the examination of intellectual property rights as property

rights should be conducted. Using the “shift from Newtonian physics to quantum

mechanics” as the paradigm for the change of thinking required from the lawyers, as

the members of modern societies as a condition for understanding the process that

govern the societies, Hammond points the characteristics that distinguish in general

the property of information from other traditional forms of property. He determined

eight points of differences which we will follow as the pattern of examination.234

But, while he distinguished them as eight different points we will analyze them as a

chain, a consequence of causes originally ignited by the intangible nature of

information, as the object of intellectual property.

i The question whether the sole ownership is possible in the case of

information. The answer is in the form of the recognition of right. If the society is

ready to recognize right in the creator, the fact that it is impossible for him to hold the

object of his right only for himself does not play further role, as far as the legal

regulation of the matter is concerned. It is up to the particular society to determine to

234 See Hammond, id., at 54.

which extent his right reaches against the others. More complicated is to determine

the rights of the owner who is not creator, and these questions have to be answered

together.

ii Possibility of infinite multiplication at the low cost. The issue of

multiplication can be answered in the same manner. As it was already indicated, and

as it will be shown below, the problem of copying should be resolved after the first

question is answered. After it is determined how exclusive the right of creator is, it

will be clear how much copying will be permissible. In deciding so it is wise to keep

in mind that copying is the prerequisite to any creativity.

iii Permanent value without depreciation from use. Hammond regards

wisely this only as a general characteristic, as many types of information do not

necessarily retain their value, while others, as he remarks may gain in value with

usage.

iv Exhaustibility of the right upon the entry of the object of the property

into the public domain. What is public domain should be answered. The

“materialization” by copying? The phenomenon of the exhaustibility of the object as

opposed to the exhaustibility of the right. Built-in sunset. Alienation in traditional

property philosophy.

v Joint creation and apportionment may be toughest questions to solve in

practice.

vi Speeding up of the frequency of the creative circles, is the consequence

of the copying. Access by copying enlarges the creative resource, and as effect speeds

up the frequency in which artifacts are created.

vii Volume of available information is the consequence of speeding up.

Inflation of accessibility which is the consequence of increasing volume may be

dangerous. It perpetuates the multiplicity of reality in which we live now, but it is

unavoidable. Its consequences will be, for instance in law a multiplicity of the

minority protection tools.

viii Principle of exclusion difference

We have seen already that the patent and copyright clause of the

United States Constitution235 empowers the Congress to regulate the protection of

creativity by “securing for limited times to authors and inventors the exclusive right

(* * *).” We have also argued that the United States at the historic stage of its

development in the moment of drafting its Constitution was not ready to recognize the

full property right of the creator, thus leaving the content of the “exclusive right”

undefined. However, the pertinent statutes implemented under the patent and

copyright clause do recognize the creators right as personal property explicitly. Not so

in the trademark statute, but there it is not necessary to recognize the ownership

explicitly, as the statute is implemented under the commerce clause which allows

freely the interpretation of the trademark ownership in the Constitutional sense of

property as in the Fifth Amendment.236 (The issue of trademark ownership is

discussed in the next chapter.) However, the right granted by the Constitution is not

defined as the property right, neither was it primarily defined so by the judicial

systems interpreting the content of this undefined right for last two hundred years.

Notwithstanding this theoretical indeterminativeness, the acts passed to implement

this Constitutional provision actually do point out in the direction of the proprietary

nature of the “exclusive right.”

Patent Act, 35 U.S.C. § 261 provides undoubtedly that the patent rights

shall be construed as the personal property: “Subject to the provisions of this title,

patents shall have the attributes of personal property.” § 262 provides for the joint

ownership on the patent. When understood that the holder of the patent could be,

under the law, only the “first and true inventor” it turns out that the creator has the

right of property over his creation under the statutory patent law of the United States.

In corresponding provision of Copyright Act, 17 U.S.C. § 201, as well

as in its elaborations §§ 202 and 204 (as well as in the provisions regarding the

termination and transfer of ownership §§ 203 and 205), the Act is slightly more

hesitant than the Patent Act. However, in § 210(a) it provides that “initial

ownership,” which is used as synonymous with “copyright” vests in the author of the

235 U.S. Const. Art. I, § 8, Cl. 8, see note (#) supra.236 In the pertinent part of the Fifth Amendment U.S. Const. reads: “No

person shall (* * *) be deprived of life, liberty, or property, without due process of law; nor shall private property be taken for public use, without just compensation.” There is no other Constitutional provision related to property right. Obviously, the traditional property right was so deeply socially rooted at the time of drafting of the Constitution, that it was considered unnecesary to define it and specifically recognize it by its drafters.

work. More clearly, in the second sentence of the section, it is provided that: “[t]he

authors of a joint work are co-owners of the copyright in the work.”

The provisions regarding the conveyance, the transfer of the right, are

of special importance as one of the most distinguishable characteristics of the

traditional property in general. As far as the legal rights go, it may be said that the

alienability of a particular right actually makes right a proprietary right. It is a

notorious fact that the intellectual property rights are transferable, and in that identical

to the traditional property rights.237 Of course, the specific nature of the object of the

intellectual property requires a specific solutions to its specific problems. The transfer

will be subject of the next step of this study, an as such will not be dealt at this place,

beside the fact that it clearly speaks in favor of the proprietary nature of the

intellectual property rights.

PROPERTY v. MONOPOLY

Both patents and copyrights, as well as other forms of intellectual

property protection are in the first place the protection of the ownership over one’s

creativity. That is the main link through which all of intellectual property systems are

related. In few instances we will turn to the examination of the property and

ownership as the general legal institutes, but before that it is necessary to give a brief

overview of the issue within intellectual property law.

The sheer fact that patentees are granted a monopoly as the means and

the scope of enforcing rights over their respective inventions, if they apply for it and

pay due taxes and maintenance fees, simply does not make the relation with their

inventions more or less ownership, or less property than they have at it from the

moment of its creation. Monopoly appears to be only a right to enforce ownership

over intellectual property recognized and granted by the state in the situations of the

infringement. Analogy with the property over movable things and immovable things

is obvious as far as the enforcement goes; it is up to the state to determine whether

protection for stealing will be through fines, or through the prison sentences. It may

be protected through civil action, or made a criminal act. The fact of property right, or

property protection granted is not affected by the system of enforcement. Therefore,

we are inclined to presume that in order to reach efficient solutions in protecting

creativity, the creative results have to be regarded as the property of its creator.*

237 See 35 U.S.C. §§ , 17 U.S.C. §§, and 15. U.S.C. §§.

The Constitutional Hesitation in the United States

It is interesting to note that although property issue appears to be very

central to proper understanding of intellectual property and to the efficiency of the

system created for its protection American doctrine doesn’t seem to take explicit

statement about it. Undeniably, numerous authors and innumerable opinions by the

Courts address intellectual property as property; but despite that, most lawyers would

rather consider it as a monopoly granted by statutes. Examples of both are too

numerous to cite.238 It seems to us that it is necessary to discuss this somewhat in

detail.

Professor Nimmer does in the one of his footnotes, relating to the cited

opinion on Framers’ attitude to the property, address the nature of the property of

copyright.239 Nimmer, thou, does not have any doubts about the proprietary nature of

the creation on the face of his text, although he does not state so explicitly. From such

standpoint he discusses whether “the public benefit derived from the encouragement

of literary and artistic works is qualitatively greater than the benefit realized by the

public from encouraging the creation of other forms of private property.” He

continues evaluating the impact of this relation on the hierarchy of creative standard

required by stating that: “it does not follow from this premise that a given literary

work must meet a higher creative standard than that required for a given item of

tangible personalty in order to command the property monopoly.” At least two

important concepts are contained herein. First, when Nimmer talks about monopoly as

a “property monopoly” it follows that it is characteristic of any form of the property

as an exclusive right. Second, it is implied that there is hierarchy between the real

property, and intellectual property. This is very interesting question, and it should be

briefly addressed in particular. When we use the term hierarchy we don’t mean the

judgment on value, that one is more valuable to the society than the other, in other

words that one is “more” property than the other. It is a structural hierarchy which

relates to the fact that intellectual property is ownership recognized over the creations

of the previously nonexisting value. That is the point we stressed in the introduction

about growing importance of intellectual property rights in terms of producing the

new value. We pointed already that this new creation may be termed information, and

we will discuss the issue in the following subheadings.

238 239 Footnote 5 of § 1.03[A].

We want to call the attention of our readers to a previously quoted

case, in many respects untypical for the United States court for its explicit recognition

of the proprietary basis of the intellectual property right. It was decided by the Circuit

Court for the District of Maryland. Giles, J, charged the jury with the words that could

stand as a foreword to our essay:

Probably of all species of property this property in patent rights should be most carefully guarded and protected, because it is so easily assailed. If a man invades my farm, the act is patent and open; if he assails my personal or real property, it is an act easily capable of proof; but the most difficult thing in the world is to prove an invasion of property of this character - property protected by patents. It is equally entitled to the protection of courts and juries with all other property of the citizen; it should be most carefully protected, from the difficulty of proving the invasion. No, patents are not monopolies, as the counsel have all said, because a monopoly is that which segregates that which was common before, and gives it to one person or to a class, for use or profit; a patent is that which brings out from the realm of mind something that never existed before, and gives it to the country. And when we consider the priceless blessings which have accrued to our land, by the intellect and ingenuity of the country in this department, we feel almost lost in wonder at the vastness of the interests which have been created by the ingenuity of the country, and the immense amount now invested, in this department of property.240

Another case dealing with same dilemma is also the earliest which our

research discovered, in having a similar attitude. It is trying to reconcile the theory

that property exists in the invention from the moment it is created with the fact that

the enforcement is not provided until the patent is granted through the contract. The

decision is also valuable as a comparison on the early stages of divergence between

the English and American patent system. As a learned piece of writing it is an

excellent source of the early development of American patent law. As a support for

his opinion Baldwin J. quotes an English case:

It is said it is highly expedient for the public, that this patent having been so long in public use, after Mr. Arkwright had failed in that trial, should continue to be open; but nothing could be more essentially mischievous, than the question of property between A and B, should ever be permitted to be decided upon considerations of public convenience or expediency. The only question that can be agitated in Westminster Hall is, which of the parties, in law or justice, ought to recover. By lord Loughborough, Arkwright v. Nightingale, Davies, Pat.Cas. 56.241

240 Singer et al. v. Walmsley, 22 F.Cas. 207, # 12,900, 1 Fish.Pat.Cas.558, (C.C.Md., 1860).

We can find same legal reasoning in the decisions over copyright

disputes. Judge Cullen ruled out the contention that the agreements in restraint of

trade could apply as to proprietor of intellectual property.

have no application to agreements concerning copyrights and patents, the very object of which is to give monopolies.242

Bowker also shares that opinion: “Copyright is a monopoly to which

the government assures protection in granting the copyright. It is a monopoly not in

the offensive sense, but in the sense of private and personal ownership; [* * *]

Copyright is a monopoly only in the sense that any ownership is a monopoly.”243

(Emphasis added.)

Such opinions are not only thought of judicial. the legislators also

debated in favor of similar approach of the future 1909 Copyright Act: “The very

essence of copyright is the privilege of controlling the market. That is the only way in

which a man’s property in the work of his brain can be assured.”244 Although we

may try to find other possibilities of securing the property rights in creation, we share

the same goal which Senate had in mind in copyrights debates preceding 1909 Act.

When is Creativity Protectable

The issue of determination of the moment from which a creator may

seek the protection of its right from the judicial system is one of the central practical

questions of the successful protection system. We emphasize its practical aspects,

because there is no easily determinable point during the creative activity that would

be self-understandable point from which the protection should be granted. It is matter

of policy, when would it be for the law to interfere. Also, present solutions of the

problem, as “conceived and reduced to practice” in patent law, and “embodied” in

copyright law serve well the general purposes of most efficient and cost-less way of

determination of the point from which the law will apply. However, the present

complication of determination of the moment when the invention was conceived, or

241 Whitney v. Emmett et al., 29 F.Cas. 1074, #. 17,585, 1 Robb.Pat.Cas. 567, (C.C.E.Pa., 1831).

242 Murphy v. Christian Press Association, , (N.Y. Supreme Court Appealte Division, 1899).

243 Bowker, id., at 50.244 Senator O.H.Platt, during the copyright campaign for the 1909 Copyright

Act, according to Bowker, id., at 50.

reduced to practice, or potential problem with determination of what is embodied

should be briefly addressed.

Once the creation takes tangible form, when it is embodied, it is

protectable by law. Property right emerged from the creation and met the legal

standard for the protection at the moment of its embodiment. A great dilemma in

intellectual property protection law is whether the creation should be granted

protection even before it is embodied, as the creation has happened, and at that

moment it contains no less information than its embodiment will do. We must

strongly emphasize the point that actually the first embodiment of an idea is its very

birth. At that moment the idea is literally embodied in our body. As such, it is already

capable of producing legal effects, as our behavior may be driven by the idea we

created. So the embodiment in words is the second step in the life of an idea, not

different at all from the embodiment in the computer memory. Although in the

computer it is stored in the form of “intangible” electrical signals, very much like in

our brain, it could be communicated if transformed on the monitor. Although the idea

was never embodied in the traditional sense it could be communicated to tens of

people who may read it form the screen in an office, or to the thousands if it is

displayed on the Times Square news display.

However, legal doctrine did not have to face this problem, as at the

stage when the information is stored in his body the creator can relatively easily

control the access to the creation. It does present a problem, however, as the creators

will often decide to communicate their creation in order to improve it before the first

embodiment in a “host.”245 At that point the issue is whether the law should consider

the spoken words as the embodiment from which the legal protection should be

granted as the more suitable moment than waiting for the more material point in the

life of the creation. Of course the protection is not then granted to the expression, but

rather to the idea, and it should be limited to those involved in the first materialization

of the creation. The argument that it was not fixed in the time long enough to be

perceived is not viable, because it relates only to the expression, which is not to be

copied. The idea itself is sufficiently embodied to be copied. The argument may be

underlined by the analogy in which one would assert that a computer text file

containing a text of a book is not fixed enough to be perceived. This approach never

appeared to be viable as the burden of proving was hard for the creator as plaintiff,

and the danger of the exclusion of the society’s interests was destimulative to the

245 Toda, About the Notions of Communication and Structure: A Perspective, in Communication: Concepts and Perspectives, (1967), at 25-26.

legislators to consider as instrumental. However, we find some merit to it, and in the

course of our further discussion we will try prove that it could be viable under the

reinterpretation of the legal and cultural context of the creation, specially in the

argument on the element of gift as the initial legal regime of the circulation of the

intellectual property.

* At this point we have to note that in real property the recognition of the

originary acquisition of property is also gradual. The acquisition of the property over

the object that was not previously owned is always preceded by possession. Noyes, in

discussing the etymology of the word possession remarks: “Property in land is

associated with settlement. Always one finds the same necessity if sitting on or being

set on the land. The settler sits; old English seissin, which was the ceremony or title

of possesion of land, was derived from “seize,” which in turn originally meant to

“set,” the factive of “sit’; even the settler without the legal title, the “squatter,” was

conceived as thus tentatively possessing the land in a half-sitting posture. Allied with

the last seem to be possessio and besitz. The former is probably from pos- or post-

sedeo and the later certainly eventually from bei-sitzen. Perhaps both have the sense

of sitting or setting (dwelling) near rather than upon.”246 Possession is by the cultural

tradition legally established moment of the first right over an existing value. The

material existed. Even when new “res” is created, material existed before and only

new part of newly created “res” is intellectual contribution to it.

There can be no doubt that common law systems recognize to a certain

extent intellectual property as property right of the creator over its respective creation,

and not only as mere monopoly granted - what is a a very often, if not predominant

position. Talking about the purpose of copyright professor Nimmer turns to the

property issue and concludes: “We may assume that the men who wrote the

Constitution regarded the system of private property per se as in public interest. In

according the property status to copyright they merely extended a recognition of this

public interest into a new sector.”247 (Emphasis in original, footnote omitted.) Like as

in the case of the patents that what is “granted for limited times” is not the property,

or intellectual property if it is any different, but mere right to enforce the property

right against the others by the power of the state. We have seen in the second chapter

how the United States developed its intellectual property system by stubbornly

maintaining its original position, position of newly liberated colony. We also know

246 Noyes, id., at 99.247 Melville B. Nimmer, David Nimmer, Nimmer on Copyright, (1963,1987), §

1.03[A].

how developing countries often tend to keep reservations regarding the recognition of

the rights of creators.

Is the Issuance of a Patent Grant or Recognition of the Right?

One of the central questions in solving the problem is the question of

the legal nature of a patent. Is a patent given to the creation one form of protection

granted to the property, is it a recognition of the property right by the state, is it

creating such right, or is it a monopoly given by the state to the inventor in order to

exploit the invention for certain period of time? In other words is it administrative

recognition of the ownership accompanied with the will of the state to enforce the

right of the inventor? Is it constitutive, declarative, or something else? Clearly it is not

constitutive because* We have to note that the right granted has only exclusionary

effect. It is not an affirmative right, to do if against the state or so.*

* That means that property rights, or at least some of them should

continue with the creator after its main content goes off at the moment when creation

passes in the public domain. Further, that may be interpreted so that creator assigns

some of his right to the state in return for the monopoly granted, upon which the right

is enforceable toward third parties. Accordingly, if the property nature would be fully

recognized, it would be possible to prolong duration of the patent as long as inventor

pays for it progressive maintenance fees, or other taxes. In that case the choice of the

term of protection would be left to the creator. Anyhow, a minimum of rights stays

with him in perpetuity, just as traditional property rights do; until destruction,

abandonment, nationalization or expropriation. As well, the rights may be limited to

life of the creator and certain amount of time after his death, or any other possibility

imaginable - once they are recognized as property rights.

It is important to examine the issue deeper, as if we leave it without the

proper conclusion it will not be clear whether there is the property before the grant,

and whether the rights can continue after the expiration of the patent or copyright. We

will first turn to the issue of the existence of the rights before the patent is granted. Of

course, there is trade secret protection whose legal nature is discussed in subheading

devoted to possession. But here, we will try to determine whether the grant of the

patent is the constitutive moment for the intellectual property rights in the creation.

After the United States adhered to Berne Union Convention, the issue is not related to

copyrights, as they vest in the creator in the moment of embodiment of creation of

the work of art. However, in the period of dichotomy of the copyright in common

law and statutory copyright the Supreme Court of the United States addressed this

issue in Stevens v. Gladding and American Tobacco v. Werckmeister. We will briefly

review the cases in order to show further how the recognition of the creator’s property

right over his creation is part of American common law tradition. In Werckmeister

Justice Day first quoted authorities for the definition of the copyright and then gave

brief overview of the law in England:

A copyright, as defined by Bouvier’s Law Dictionary, Rawle’s edition volume 1, p. 436, is: “The exclusive privilege, secured according to certain legal forms, of printing, or otherwise multiplying, publishing and vending copies of certain literary or artistic productions.” And further, says the same author, “the foundation of all rights of this description is the natural dominion which everyone has over his own ideas, the enjoyment of which, although they are embodied in visible forms or characters, he may, if he chooses, confine to himself or impart to the others.” That is, the law recognizes the artistic or literary productions of intellect or genius, not only to the extent which is involved in dominion over and ownership of the thing created, but also the intangible estate in such property which arises from the privilege of publishing and selling to others copies of thing produced.

There was much contention in England as to whether the common law recognized this property in copyright before the Statute of Anne; the controversy resulting in the decision in the House of Lords in the case of Donaldson v. Beckett, 4 Burr. 2408, the result of decision being that a majority of the judges, while in favor of the common law right, held that the same had been taken away by the statute.248

Consequently enough, the Supreme Court concluded:

While it is true that the property in copyright in this country grows of the recognition of the separate ownership of the right of copying from that which inheres in the mere physical control of the thing itself, and the statute must be read in the light of the intention of Congress to protect this intangible right as a reward of the inventive genius that has produced the work. We think every consideration of the nature of the property and the things to be accomplished supports the conclusion that the statute means to give to the assigns of the original owner of the right to copyright an article the right to take out the copyright secured by the statute, independently of the ownership of the article itself.249

248 American Tobacco Company v. Emil Werckmeister, 207 U.S. 284, 290-291, 28 S.Ct. 72, 74, L.Ed. .Same cite is to be found in the Supreme Court opinion held in following previous decisions Whitney v. Peters, 8 Pet. 591-656, 8 L.Ed. 1055-1079; Holmes v. Hurst, 174 U.S. 82, 43 L.Ed. 904, 19 S.Ct. 606.

249 Werckmeister, footnote (#), supra, U.S. at 298-299, S. Ct. at 77.

Other scholars as well, noted the tendency or American courts to

recognize property interests in intellectual property. Hammond contends that “[t]he

majority of American courts have tended in recent years to espouse proprietary theory

whereas Commonwealth courts have clearly opted in favor of an equitable obligation

of good faith. In the former case the obligation is directed to a conceptualized

economic ‘good’; in the latter, the obligation is directed to the defendant in person.”

Unfortunately, Hammond does not elaborate which social value is protected by the

establishment of such an equitable obligation.

TRADITIONAL PROPERTY LAWS

The fact we tried to point out by reviewing the Roman influence on the

American common law gets its full significance when traditional property law is to be

examined. Noyes also appreciate that when he writes: “There is a curious result of this

fact that English and American jurisprudence -- a recent development -- has so largely

accepted from civilians, or founded upon its own study of Roman law, its theoretical

structure.”250 Although Noyes is pointing out to the danger which he sees in this

blending, one may say that the trend he noticed in thirties continued till today,

integrating even further common and civil law property doctrines.

[8.00] The meaning of the idiom real property law differs in common law from the

one as found in the traditional civil law doctrine (as term doctrine itself differs from

the term theory used more often in majority of the civil law countries). In common

law it signifies the property rights on land. In civil law it is euphemistic, as there is no

other property than on res, meaning the thing. In that respect every property is real

property. In Roman times there was distinction on the real and personal property

existing in the types of action. Actio in rem as distinguished from action in personam

was distinction standing for ***. That might be another subtle link showing the

influence of the Roman upon the common law, but we will not stop p to examine it.

It has quite often being pointed out that some of the most apparent

differences between the common law and the civil law are to be found in the area of

the law of the real property. General explanation offered as often as the question was

250 C. Reinold Noyes, “The Institution of Property; A Study of the Development, Substance and Arrangement of the System of Property in Modern Anglo-American Law,” (1936), at 285.

raised is that the scarce resources of the land to be owned on an island, as United

Kingdom is simply have to lead to more strict regime of the ownership and transfer of

it. And it is probably true, and as we will see may culturally be a model for

development of specific legal institutes in general. Furthermore, it can also be applied

as a helpful tool in the analysis of the institutes of intellectual property. Presumably,

some differences between the law of the real property, where the res is the land, could

be explained by analyzing the difference between the nature of the land as the object

of property, and movable things as the objects. If it is so, we will apply the same

approach to the differences between the objects of intellectual property, to those of the

traditional forms of the property. Once we establish some common points between the

characteristics of some rudimentary institutes, we will compare the results with the

situation in the law of intellectual property.

A passage in Burdick devoted to the time of the William the Conqueror

also deals with this problem, but also shows that the influence of the Roman law

became with his conquest, the very point which is normally regarded as the beginning

of the separation of legal systems:

The reign of William was an epoch in English history. He developed a feudal system of land tenure founded on a personal allegiance to the king on the part of each tenant of the land. The term feud (or fee) meant a grant of land by a monarchical lord to his follower for certain conditions. in the feudal law of the Continent. In the feudal law of the Continent, the term “feud” seems to have been equivalent to the Roman “beneficium”, that is a beneficial grant of land to be held merely at the owner’s pleasure. [* * *] That it had its origin in Roman sources there can be no doubt. [* * *] In other words, the idea of the feud, the use of the land, came from Roman law; the idea of the personal allegiance to the lord of the land came from German sources.251

It is important to note that even legal interest in protecting property is

always the same, factual interest of the owner over his property is not the same if

owner A lives in New York City and the Blackacre is on the hill of the Ruby

Mountains in Nevada. If lone wanderer B stops overnight on Blackacre and lights a

fire behind the rock at the dawn to prepare his coffee, it is not likely that A will bring

up the suit against B. However, if A moves to the Blackacre and builds a house, a

swimming pool, and a fence and B keeps his habit of drinking coffee behind that rock

with the most beautiful view on the desert, it is likely that A is going to sue him for

trespassing.252 Fence, in that respect stands as a symbol of somebody’s property as

much as it is pan obstacle. It is important to note that intellectual property notices, like

251 Burdick, id., at 65.

Pat.Pending, Patent No., ©, ®, or ™, and confidentiality notices serve the symbolic

function of the fence regarding the intellectual property, namely to warn “lone

wanderers” of somebody else's property. It would be a mistake to regard the notice as

constitutive to the intellectual property right. Copinger in his classic English work

“The Law of Copyright” points that it “is a mistake similar to supposing that the mark

on the ear of an animal is the cause, instead of the consequence, of property

therein.”253

If we briefly compare legal requirements necessary to acquire

ownership of the Blackacre in England, where the ratio of available land per person is

pretty low comparing to Zambia where is much more land available than it can be

worked on, we see that under the traditional tribal law to acquire the piece out of the

large tribally owned Blackacre is without market formalities. There is no

consideration needed on behalf of the person who acquires the land, besides the

formal request to the chief.254 Judge Posner in his treatise “The Economics of

Justice” writes: “[w]here land is so abundant relative to population that its market

price would be less than the cost of fencing the land or otherwise enforcing a property

right to it, individual rights to the land will not be asserted; it will be treated as the

common property.”255 Property is obviously taking very different shapes in different

social conditions, as well as and in different time periods. Still some forms of the real

property in modern societies may remind in some aspects, or at least open some

further questions. For instance, the water supply resource, an lake near a city is

common property of the citizens in which state appears as the owner. The owner may

not pollute the water, although regular ownership would allow disposal of the object

of the right. At the same time the proprietors, citizens are limited in their right, even

of access to the property, as the state forbade trespassing even for recreational

activities by an Regulation. Hughes is giving further examples of objects “beyond

appropriation, like navigable rivers, beaches, and the airspace in congested urban

areas.”256 Hammond compares the legal regime of intellectual property to the regime

252 It is interesting that Hughes, in “Philosophy of Intellectual Property”, at 296, gives basically the same example.

253 Quoted according to Bowker, id., at 6.254 As described to me by Overs M.M. Banda, FPLC, MIP Class 1990. Mr. Banda

was at that time Deputy Registrar of Zambian Patent and Trademark Office.255 Richard A. Posner, “The Economics of Justice,” (1981), at 179-182. In the

opening of the discussion on property he also states: “[a] study by Harold Demsetz of the property right systems of North American Indians pointed out that the appropriateness of recognizing a property right in a resource is a function of its scarcity, and hence the market value, relative to the costs of enforcing such a right.” Harold Demsetz, “Toward a Theory of Property Rights,” 57 Am. Econ.Rev. Papers & Proceedings 347, (1967), at 351-353.

256 Hughes, id., at 296.

of property over resources, rather than commodities.257 Same proprietary concept is

notable in the institution of the international public law, when common heritage of the

mankind is never accessible to the inheritors to exercise their proprietary rights of

disposal upon the object of their ownership. We will turn again to such arguments

later on.

In highly instructive overview of the history of the Roman law in the

speech he delivered at Boston University as the Inaugural Charles P. Sherman Lecture

in Comparative and Roman law in October 1965, F.H. Lawson made a remark

regarding the property law of Romans.

As Bacon saw many centuries later, and Marx more recently, the central notion of private law was that of property. For Bacon said, “I consider that it is a true and received division of law into Ius publicum and Ius privatum, the one being the sinews of property and the other of government.” [* * *] The generic word res, from which we derive our term “real rights” meant, as Buckland has shown, not so much a “thing” as an “asset”, and as such, included anything with a money value including what the Romans called obligations and we call chooses in action - claims arising from contracts, torts and unjust enrichment.258

Intangible Rights

Few legal inconsistencies do appear as the terminological impurities,

and are to be founding the approach to the intellectual property by different authors

and even the statutory language. One of the most often is use of the term theft.

Hammond uses it in close conjunction with information, and so does Samuleson.259

We want to point out that it is not possible to speak about the theft of information, in

strictly legal sense, although the property exists on creation. The theft is normally

understood as a criminal act which as a consequence has that the owner is deprived

from the use of the object of his ownership. In other words, the possession of the

object is not any more in its rightful owner, but in the unlawful taker. In the case

when the object is intangible it can be “possessed” and used by the owner and the

taker and the same time, without the deprivation of the owner. As there cannot be any

analogizing in civilized concepts of criminal law, the taking without deprivation of

257 Hammond, id., at 52 and 70-71.258 Lawson, “Roman Law as Organizing Instrument”, id., at 191.259 Samuelson, id., at:the same context. Hammond, id., at 54: “sole

ownership is vastly complicated in the case of information. The act of theft is often impossible to prove.” However, Hammond is well aware of the dangers in using traditional legal language, and further in his text, with lots of references proposes the redefinition of the term. See id., at 66.

the owner cannot simply be called theft. Only the specific acts described by the

legislator can be called criminal acts, and by no means can they be analogized with

the previously existing similar acts which are incriminated. In that light, it is

appropriate to call unlawful taking of the information misappropriation. Its meaning

of wrong appropriation suits purposes of intellectual property very nice.

If the misappropriation is criminalized, as it increasingly is in many

countries including the United States, the redefinition of theft is necessary. Hammond

correctly remarks that “the notion that information can and will be legally protected

has received the imprimatur of the criminal law and this seems to have reinforced, at

least in the United States, the notion that the trade secrets are proprietary in

character.”260

Further distinctions and definitions of unlawful appropriation is to be

found in Reichman.261 He addresses the problem of “counterfeiting” and “piracy.”

Piracy, indeed is a well established name for illicit activities regarding the ownership

of intellectual property. Bowker traces the use of the term into the 1771, used in the

sense of misappropriation of intellectual property by Luckombe.262 It acquired the

secondary meaning soon after originally denoting the activity associated with

privateers. The understanding of the term is closely related to the relation of the

concepts of intellectual property and traditional property in a particular society.

????? Further example of such inconsistency is the composition of the “duty

of candor” provision of the 37 C.F.R. § 65(d), whereby the standard used in torts,

“known or should have known,” is used in order to impose the duty upon the

applicants or their representatives in submitting the applications, and that regarding

several moments in the prosecution.263 The inconsistency arises out of the fact that the

provision uses term “fraud on the Patent Office,” using the civil law standard of

responsibility while incriminating the act. That is another example of the extending

the civil law concepts into the criminal law which in proportionately penetrates into

intellectual property law as the awareness the importance of the creativity rises.

260 Hammond, id., at 66.261 Jerome H. Reichman, “Intellectual Property in International Trade:

Opportunities and Risks of a GATT Connection,” 22 Vanderbilt Journal of Transnational Law 747, (Vol. 4, 1989), in further text referred to as Reichman 1989.

262 Bowker, id., at 251.263

* LINK A separate issue that has to be discussed is the use of the term “natural-

law thinking” in American doctrine in order to denote the property theories of

intellectual property. It is a misnomer, as it does not point the real difference. All of

the property, may be called natural, including the common law concept, once it is

philosophically justified. It is matter of the legal or philosophical system how it will

be justified. But once property is justified in common law system, for example under

the Locke and Mills labor theories, it is as “natural” as the property justified under the

Hegel’s personality theory in the civil law system. There is no natural property in civil

law anymore, and only the fact that the United States original refused to recognize

property rights in creation and replaced them with “quasi-property” or “artificial”

right introduced the need to oppose property based intellectual property concept. In

that respect intellectual property in civil law was more natural, being justified under

whatever property theory prevailed in any particular society, than in the United States

which rejected the justification under the property theory which was considered

natural. To be fair, not all of the civil law systems did recognize property in creation,

(Machlup-Austria), and English common law did before the statutory regulation and

the Donaldson v. Beckett decision later.

THE POSSESSION

The possession is an sophisticated legal concept. In the civil law it has

double appearance. It stands for itself as the “legal fact”, a fact which the law

recognizes and grants the protection to the subject over the object even the relation

between the two does not amount to the level of the right, whatever that amount may

be. Secondly, it appears as one of the rights that constitute the bundle of rights which

are the ownership, where it appears as the right and is enforceable as such. We will try

to examine whether in intellectual property such or corresponding phenomenon

appears, and is the law granting any relief based on such.

Roman law of possession was closely tied to the property concept, to

the extent that it recognized the possessor only in the owner.264 Noyes contends that

the history of the development of the legal concept of equitable property in common

corresponds to the concept of possession in Roman law.265 It is interesting that he

points to Holland, warning us that his viewpoint was civilian, who said that “in its

lowest form it [property] is a right of Possession, in its highest form a right of

Ownership.”266 In our opinion there is nothing inherently civilian in this viewpoint for

two reasons. First, it seems to us that Holland was simply referring to the double

nature of possession to stand, on one side as the legal fact, and on the other as one

element of the bundle of property rights, which we have pointed out earlier. Second,

many civil law countries followed the Germanistic conception of possession as the

legal fact, rather than following the Roman

which required animus possidendi as constitutive element of possession. As the matter

of fact, Noyes ascribes such conception to English law, and cites Salmond, who

“thinking in English terms, says that possession ‘is in fact what ownership is in rights.

264 Noyes, id., at 377, footnote 42, referring to W.A. Hunter, Roman Law, (1876, 1903), points to an interesting argument in favor of proprietary nature of Roman possession: “[i]n Rome the thing necessary to complete possession, besides the fact of possession, was called animus domini, not animus possidendi as in England. [* * *] When the rule was laid down one intended to own, not merely, as in England, to claim the best right to possess. The ‘law of possession was originally a law of ownership.” Oliver Wendell Holmes, id.. at 165 contends: “We are told that, of the many who might have the actual charge or custody of a thing, the Roman law recognized as possessor only the owner, or one as owner and on his way to become one by the lapse of time. In later days it made a few exceptions on practical grounds.” We would ad here that the term animus domini, or dominandi, also appears as , in Teophilus, II. 9, § 4; III. 29, § 2., see Holmes, id., at 172. Finally, let us mention here, in light of our previous discussion of the role of the Roman law toe modern legal systems. We have to conclude that in the case of possession neither civil, nor common law systems took Roman rules. Roman rules on possession were few, and what has been taken is again only the systematization provided by the Roman jurists.

265 Noyes, id., at 300: “Developing in Rome -- much as our equitable property developed -- from the Praetorian law, it was originally there the method of holding developed for those who could not acquire property under the civil law, or for property over objects which could not be appropriated at all under that law. In England it has been blended somewhat unsuccessfully and incompletely with those realest of the real rights based on seissin, which were the practical basis of property from the beginning.” However, on an earlier ocassion he points to a basic difference: “It is also necessary to admitt that the English emphasis upon possession is even greater than Roman. But the fundamental idea of possession is different. It is an assorted lot of possessory rights, not a single simple ‘thing.’ (* * *) It is the development of this modernized form - a development ehich has not yet seen its counterpart in legal theory - which is the great contribution of English law to the institution of property.”; id., at 283-284.

266 Thomas E. Holland, The Elements of Jurisprudence, (1880, 1916), as in Noyes id., at 300.

It ‘is de facto exercise of a claim; ownership is the de jure recognition of one.’”267

However, modern laws of the many countries share the modern concept of possession

in which there is no inherent right, but law provides protection to the mere fact of the

factual possession if holding it is not unlawful. In our opinion, the fact that the

possession was acquired lawfully is a legal fact of greater importance than the intent

of possession and its continuation.

Usucapio***

Usucapio is the mode of originary acquisition of property by the fact of

the uninterupted possession over a certain period of time. It was klnown in Roman

law, and is a part of most of the modern civil codes. A very interesting example of the

presence of the possession in intellectual property is an analogy with the

usucapiowhich is possible to draw with the trademark law. Normally the statutory

period in civil law jurisdiction amount to twenty years for the ownership of real

property and ten years for chattels. The condition should be that the land was not

owned or that the possession should be undisturbed by the owner during the

proscribed time. Somewhat similar institution is to be found in the American

trademark law. Where the illegal user of the trademark was allowed to use it because

of the inactivity of the trademark owner who was policing but not suing, it was

considered that his inactivity contributed to the dilution of the mark. The courts are

likely to find that at the certain point owner will not be able to enjoin fully the

“possessor” of the confusingly similar trademark. In a situation Seventh Circuit found

that the agreement between two similar trademark owners diminishes their right to

enjoin the third trademark owner using identical trademark, even on the similar type

of goods, as all involved were food manufacturers.268 However, as it was never

decided in the sharply formed fact pattern in which the acquisition of the owned

trademark would be over the goods belonging to the same category, it is not clear how

far would American law go. Under the factor of public interest of preventing the

confusion, which is not objective of the traditional property law, any decision has to

take into the account the likelihood of confusion on behalf of consumers. It could be

inferred, that if no likelihood of confusion is imminent, the third user of similar, or

identical trademark may acquire the right by usucapio, if the prior owner knows about

the use and does not try to stop him. (In that case the constructive notice may loose its

267 Noyes, id., at 300, quoting Sir John W. Salmond, “Jurisprudence,” (1902, 1930), at 322.

268 California Fruit Growers Exchange v. Sunkist Baking Co., 166 F.2d 971 (7th Cir. 1947).

presumed significance.) Of course, in the registration countries it is hard to envision

such possibility, unless the prior registrant rights are going to be canceled.

What does this example tell us about the elusive nature of the object of

the property. It is clear that the main difference from the traditional usucapio is the

fact that it has to be more than one possessor who disturbs the property and at the

same time the owner has to let one or more to use. But at that moment only the right

of the owner to enjoin fully the subsequent user is diminished. In order to have

possessory protection the subsequent user would have to have to achieve the right to

enjoin the owner, as the possessor achieves the right even against the owner if his

possession is legally sound. (?) We do not see that it ever happens in intellectual

property law. But, can the possessor of the intangible goods, i.e. information, if there

is such, enforce his right against infringers like the possessor against those who

disturb the possession?

The Absence of Possession from Intellectual Property

is due to the Nature of its Object

The mystery of the absence of the possession from intellectual property

law has to be examined in the light of the specific nature of the information as the

object of property. One possible hypothesis is that there are certain forms of

possession in the intellectual property law, though not recognized as such, so the

protection is granted on the principles which are not possessory. The law of the trade

secrets has to be examined in that order. There are two possible theoretical legal

approaches to the the law of the trade secrets. One is proprietary, the other is not

defined and it encroaches various theories among which we see some that could be

understood as possessory.269 However, the issue of the distinction between the

possessory from the proprietary nature of the right might as well be circumvented in

light of the constitutive role of the possession within the bundle of property rights.

Holmes contended that: “Just so far as the aid of the public force is given a man, he

has a legal right, and this right is the same whether his claim is founded in

righteousness or iniquity. Just so far as possession is protected, it is as much a source

of legal rights as ownership is when it secures the same protection.”270 However, one

has to keep in mind that the possessory protection stops short of the full proprietary

protection when proprietary and possessory interest conflic. Holmes himself

subsequently draws the line: “The only difference is, that, while possession denotes

269 Article on TS270 Holmes, id., at 169.

the facts and connotes the consequence, property always, and contract with more

uncertainity and oscillation, denote the consequence and connote the facts.”271 By

recognizing this we are hopefully not prejudicing our conclusion as far as the

persuasiveness of either approach. Holmes, however, concludes that the possesion and

ownership are very much the same under the American law and that they “pass by

descent or devise, es well by conveyance, and that they are taxed as well in some of

the States.”272 Nevertheless, in the center of his discussion, while considering the

possibility of possession of rights, Holmes concludes:

The possession of rights, as it is called, has been fighting-ground for centuries on the Continent. It is not uncommon for German writers to go so far as to maintain that there may be a true possession of obligations; this seeming to accord with a general view that possession and right are in theory coextensive terms; that the mastery of the will over an external object in general (be that object a thing of another will), when in accord with the general will, and consequently lawful, is called right, when de facto is possession. bearing in mind what was said on the question whether possession was a fact or right, it will be seen that such an antithesis between possession and right cannot be admitted as a legal distinction. tha facts constituting possession generate rights as truly as to the facts which constitute ownership, although the rights of a mere possessor are less extensive than those of an owner.273

His opinion on this point is of high interest to us because it indicates

the position of the common law regarding the possession of incorporeal “things.” it

appeared in that analyzis that all modern laws tend to treat the creativity, i.e.

intellectual property highly analogous to the treatment of the rights. Rights were only

previous incorporeal object of property right that any law had to deal with. In

conjunction with our earlier discussion on the object of the property rights it is maybe

clear that we hold that the analogy used in property law could be drawn again

regarding possession.

271 Holmes, id., at 169-170. Pertaining discussion would be too lengthy to cite, so we direct the attention of our reader to the entire portion on possession.

272 Holmes, id., at 170.273 Holmes, id., at 188. In the conclusion to his chapter on possession (Lecture

Vi, Possession) he clerifies his statement. Although it appears that he is very much in favor of indentical nature of property and possession, he cannot deny stronger right of owner: “But what are the rights of ownership? they are substantially the same as those incident to possession. Within the limits prescribed by policy, the owner is allowed to exercise his natural powers over the subject-matter uninterfered with, and is more or less protected in excluding other people from such interference. the owner is allowed to exclude all, and is accountable to no one. The possessor is allowed to exclude all but one, and is accountable to no one but him.” id., at 193.

Examination will immediately bring up the element of secrecy as

characteristic for this field of the law. Our historical research showed how important

the element of secrecy and confidentiality has been in the history of the protection.

Under the early, pre-statutory common law protection, as well as under the later

common law the protection would be granted to the work of art so long as it would

not be published. It appears that the publication acted as the presumed moment when

secrecy ended, and accordingly the protection would be denied. Could this be

recognized as the animus possidendi which was the basic element of the Roman

conception of the possession.

However, modern civil law theories based on the Germanic possessory

theories consider the element of will unnecessary for possession to be legally

recognized. For that we have to say that the law recognizes factual situation of

possession and grants protection to it. That drove possession very close to detentio,

the civil law detention, or common law custody.

Therefore we will briefly examine common law possession in its

multiple forms; hold, and seissin for the real property, and possession and * for

chattels.

The United States

We will turn to already mentioned Jefferson letter to McPherson. By

opposing the natural theory of the property, as well as intellectual property he makes a

sharp objection regarding the possession. “Stable ownership is the gift of the social

law, and is given late in the progress of society. It would be curious that an idea, the

fugitive fermentation of an individual brain could, of natural right, be claimed in

exclusive and stable property. If nature has made one thing less susceptible than all

others of exclusive property, it is the action of the thinking power called an idea,

which which an individual may exclusively possess so long as he keeps it to himself;

but the moment it is divulged, it forces itself into the possession of everyone, and the

receiver cannot dispossess himself of it. Its peculiar character, too, is that no one

possesses the less because every other possesses the whole of it.”274 The other point

that has to be stressed in passing is Jefferson’s inconsistency in negating natural right

of property over information (which he calls “ideas”). We agree with him that the

nature of the property is socially conditioned. But, while he makes argument in favor

of his opinion by refuting the possibility of the ownership over the “ideas” because of

274 As in Prager, “A History of...”, at 760.

the impossibility of natural property right, when he is making his argument he is

founding it in the natural characteristic of information. We simply think that the social

nature of the property right enables societies at the certain stage of development to

transpose particular “atomized” rights into the property rights. “Atomized” rights are

particular rights during the process of their recognition - in intellectual property it

were particular systems as rights per se.

But if we go to the essential argument he is making we will be able to

compare it, as well as its “secondary” aspect, with the theory Posner builds to explain

relation between the property and the possession. Interpreting property under its

economic role he states that even in the primitive societies where the resources are

not scarce under the contact with the Western markets system of property tends to

develop. The availability of the land is losing its role under the criteria of the superior

fertility, workability, or proximity, and could achieve a market price if it could be

bought and sold. “Moreover, enforcement of a property right to such a land would not

be costly if it was a purely possessory right (a usufruct) which allowed the possessor

to exclude the people from the land only so long as he was actually working on it. In

fact, such possessory rights are common in primitive law. They have two additional

elements: (1) the possessor can transfer his right to members of his family or pass it to

his heirs, but (2) cannot sell the land. (Footnote omitted.)

The Trade Secrets

The law of the trade secrets is undoubtedly an important part of the

intellectual property protection systems. Still, in its present form, halfway between the

common law right and statutory defined body of the law the scope and the nature of

the right are not suffieciently defined for more broader expansion of its use. Because

we think that the use of the trades secret as a significant intellectual property

protection tool would be beneficial to the interests of the creators and industries, we

will undertake an analyzys of the both the nature, and the scope of the right. The fact

that we decided to examine the aspect of possession in conjunction with the property

does not mean that we square this particular form of protection of intellectual property

with the traditional property institute of possession. It is due, however, to the fact that

the element of the possession is sharply highlighted when the object of property is

analyzed in light of how it functions within the trade secrets law. Then it appears

strongest that the basis for trade secrets protection is in the element of secrecy, which

is in our opinion the specific manifestation of possession related to the intangible

nature of intellectual property.

However, before doing so let us explain why we think so highly of the

importance of trade secrets, and even suggest that the importance once realized in its

full extent might increase even further. We have in mind, in the first place the

simplicity of acquring the right, and the complete lack of the formalitites needed. In a

way, we may say that not unlike under the Berne Convention copyright system, the

protection follows the pen as it draws the line. That is to say that the creation is

protected from the moment of its embodiment. Legally, that means that the protection

is granted to the creation regardless of its novelty level, i.e. without any examination

process, when it is independantly created. In the language of the trade secret law that

is when it is not itself misappropriated. The success of that kind of intellectual

property protection system concept has been proven by the success of the copyright

system. In our opinion, that kind of the protection in the industry environment has

additional value. Its inexpensive acquisition, as well as the indefinite duration have a

strong appeal for the protection of the limited circle of subject matter already now. All

of the creations whose apperance is not self explicatory, ultimately to those highly

skilled in art and disposing with the adequate instruments, mainly such as related to

chemical processes are better protected by the trade secrets than by the patents. The

advantage to the patent system is also obvious. The creations for which their owners

seek reinforced protection through the patent system, will have it while the system

will not be overburdened as many creations will be protected already from the

moment of their embodiment.

Turning back to the examination of the legal nature of the trades

secrets and its place within the constelation of the various forms of intellectual

property protection, we will use the exisiting definitions of the law of the United

States. In absence of federal legislative regulation the most important definition of the

trade secret is the one set forth in section 757 of the Restatement of Torts: “A trade

secret may consist of any formula, pattern, device or compilation of information

which is used in one’s business, and which gives him an opportunity to obtain an

advantage over competitors who do not know or use it. It may be a formula for a

chemical compound, a process of manufacturing, treating or preserving materials, a

pattern for a machine or other device, or a list of customers.”275

Modern authors propose that the requirement of the use would be

omitted from the definition as unnecessarily restraining. Other two requirements are

275 Restatement of Torts § 757 comment b, (1939). The Supreme Court addopted the definition in Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 94 S.Ct. 1879, 40 L.Ed.2d 315 (1974).

to be analyzed. The first, one that requires that trade secret provides “an advantage

over competitors” is nothing else but an unclear expression of the subjective novelty

standard merged with the utility requirement. It means that if the trade secret could be

used in order to improve one’s business so to gain competitive advantage. That can

only do if it is novel enough so that the other competitors do not know it yet, but from

the definition of the subject matter one can conclude that it could be indipendantly

devloped. Further, in the absence of the express exclusion of the independant

development as the prerequisite for the protection, we conclude that independant

creation is sufficient. If something is still recognized as the secret if it is indipendantly

developed, than the standard is one of subjective novelty.

Some authors consider the third requirement the most important

one.276 Indeed, the requirement of secrecy is the central institution of the trade secret

protection, therefore we will spend some time in order to compare it to the other

intellectual property protection systems, and analyse the role of the secret in

intellectual propety in general. Starting with the second, we want to briefly point out

that the secrecy of the creation was in the initial and only tool of the protection of

one’s creation. If the creation rests embodied in the mind of the creator, the protection

is absolute. Of course, the indipendent creators are allowed to practice their creations.

The history of the common law provides us with the good example of the next step in

the development of the legal protection. It was not only in the trade secrets, but also in

copyright that the requirement of some level of secrecy was required in order to have

legal protection. The creator would loose the right once the work was published. The

legal presumption was that the work was made public.

The courts rarely addressed the secrecy element squarely as the

possession. Nevertheless, some axamples are to be found.277 The Supreme court of

Missouri found that: “Ideas have been compared to fera naturae, property rights in

which are dependent on possession and are lost by escape of a wild animal and

likewise by disclosure of an idea. Ideas have also been compared to legal tender or

negotiable instruments because title passes by delivery which is like disclosure of an

idea. [Legal Protection of Ideas--Logan, 4 Mo.Law Rev. 239.] Of course, there can be

276 See e.g. William E. Hilton, “What Sort of Improper Conduct Constitutes Misappropriation of a Trade Secret,” 30 Idea 287, (Vol.4, 1990), at 289: “The requirement of secrecy is by far the most important.” He is refering to the Restatement of Torts § 757 comment b (1939) where it is specifically stated “The subject matter of the trade secret must be secret.”

277 Schonwald v. F. Burkart MFG. CO., 202 S.W.2d 7, 356 Mo. 435, (1947). (Rehearing denied.) See also an article by Gerald Sobel, “Preserving Trade Secret Protection,” Patents, Copyrights, Trademarks and Literary Property Course Handbook Series, Protecting Trade Secrets, ( April 1, 1989).

no property right in a mere abstract idea, but there may be 'in a particular combination

of ideas or in the form in which ideas are embodied.’ [Fendler v. Morosco, 253 N.Y.

281, 171 N.E. 56, 58.] Surely when ideas are embodied in a concrete plan for

accomplishing a definite result, the one who has conceived the plan has a right to

contract with reference to its disclosure and to give instructions in its use, even though

he did not originate it in the sense that no one else ever had similar ideas. We think

the Brunner case so holds. It is true that contracts to disclose ideas, which are widely

known and generally understood, are held to have no validity. When ideas, even if

called plans, are so known and understood by most people, contracts for their

disclosure may well be said to be without consideration when nothing is learned that

was not already known.”

Another example is the decisioon in ***, where the court also

recognized explicitely the trade secret as the posession: “According to the great

weight of authority, the plaintiff in an action for breach of confidence involving a

trade secret has the burden of proving three elements: (1) Possession of knowledge or

information which is novel and not generally known, i.e., a trade secret; (2)

Communication of this knowledge or information to the defendant under an Express

or implied agreement limiting its use or disclosure by the defendant; and (3) Use or

disclosure of the knowledgeor information so obtained in violation of the confidence

and to the injury of the plaintiff.”278

From these examples we conclude that the role of secret in the trade

secret law is only the small remnant of its larger role in overall system of intellectual

property protection. Historically, before the codifications, its role was more important

as the cultures could not see how an individual can own the intangible thing once it

left its body. The cultural understanding was not sufficient to realize that due to the

intangible nature of the object the property acted different, i.e. that the object of

property was multiplied rather than passed away. The legal systems realized the

unfairness of keeping the fellow individuals out of the newly created knowledge, but

did that on the expense of protecting the right of the creator. The only way he or she

could own his or her creation was to keep it secret. And here is where we want to

point to the strong analogy that could be drawn to the traditional property law of the

times when secret was required as the basis of the ownership of intelleactual property.

278 281 N.W.2d 419. (Emphasis added.) The court further refered to the following cases: Wilkin v. Sunbeam Corporation, 377 F.2d 344, 346 (10th Cir. 1967); Venn v. Goedert, 319 F.2d 812 (8th Cir. 1963); E. W. Bliss Company v. Struthers-Dunn, Inc., 408 F.2d 1108 (8th Cir. 1969); Mann v. Tatge Chemical Co., 201 Kan. 326, 440 P.2d 640, 645 (1968); Basic Chemicals, Inc. v. Benson, 251 N.W.2d 220 (Iowa 1977).

In the same manner in which the possession is identified with property in primitive

legal systems, the possession of the creation was only recognized by keeping the

creation secret.279 We have seen how possession later develops in double function as

the legal systems grow more conceptual. They assume the role of the factual situation

protected by the law without the specific right recognized, as well as they maintain its

traditional role of physically holding the object within the bundle of property rights.

We have seen how many authors argue that it is not the double role, but only the

multiple aspects of the one role of possession.280 Finally, we believe that the role of

the secret in intellectual property law is corespondent to the role of possession in

traditional property law. It is the perceivable connection between the person and the

object of its right. In many legal systems it took many steps before this connection

was abstractly conceived so that actual physical holding of the object could be

omitted before proving the property right. One of such steps was certainly the

introdiuction of the registration of rights, that were lifted to the level of the highest

evidence of the right.

Accordingly, our opinion is that the requirement of secrecy in the trade

secret law is not specific to it only. It reflects slower historical development of the

trade secret law on the expense of the stronger exclusive protection of the patent law.

However, it is not necessary to expect that it will stay so in light of the needs of more

elastic and affordable protection of creativity in the field of production. From the

viewpoint of the consistent future intellectual property protection system it is easy to

foresee the role of the legacy of today’s trade secret/know how protection as an

subjective novelty and informal type element of such a system.

One remaining question to be clarified is the issue of the physical

possession of others than the creator of his creation. It is the issue related closely to

the nature of the object of intellectual property right and the connected problems, like

the question of theft of a creation. We have concluded that the existing traditional

property law may and should be not thoroughly analogized to intellectual property

because of the unique intangible nature of the creations. That nature is so different

that it permits the object to exist simultaneously at more than one place. The fact that

it exists somewhere else than only with its creator does not diminish its existence with

the creator, neither should it, in our strongest belief, diminish its rights over the

279 Sobel, id., at provides further example: “Courts have found that unsolicited ideas not presented in a confidential manner are not protected. Desny v. Wilder, 299 P.2d at 270 (‘The idea man who blurts out his idea without having first made his bargain has no one but himself to blame for the loss of his bargaining power.’)

280 Noyes, id., at .

creation. To the contrary, the fact of its multiplication should give rise to the

protection of his rights.

That is the line that the history of the intelletual property protection

actually followed. Today, we have the systems that is conceptually abstracted from

the element of secrecy in virtually all other segments than the trade secret law. We

have seen that the requirements of secrecy are getting looser. That means that the

trade secret law is joining the the rest of its intellectual property family in the sense

that it is getting codified and the standards are getting unified worldwvide. Finall, it

will end up as the subjective novelty, non-formal protection in the field of scientific

and industrial production. Which changes in the today’s trade secret law have to be

made to get to that point will be our discussion in the chapter five.

SERVITUDES AS FAIR USE AND EXPERIMENTAL USE

The doctrines of fair use and experimental use, regulated by the 17

U.S.C. § 107 and 35 U.S.C. 102(b), respectivelly, both correspond in conceptual sense

to the institute of servitudes as it was developed by Roman law, and taken over by all

main modern legal systems.281 In the theory of Roman property one of the systematic

distinctions divided all the rights in jura in re propria and jura in re aliena. The first

one signifies the right over one’s own property, while the second signifies rights over

someone else’s property. Object of our interest at this point are servitudes (servitutes),

which with emphyteusis, superficies and mortgage, represented jura in re aliena. The

term servitutes is derived from the word servitus, meaning the service which the

property object owned by one person had as the burden for the benefit of the other

person.282 Several main principles are often used to describe the servitudes:283

i Servitus in faciendo consistere non potest. Active duty cannot

be imposed by the servitude on the owner of the

thing.

281 For the overview of the similarities between the two intellectual property doctrines see article by *******, Idea,

282 See Burdick, id., at 355 for the differences between the common and Roman law: “Servitudes, in Roman Law, include both our easements and profits `a prendre.” He refers to Dalton v. Angus, 6 App. Cas. 740 (1881).

283 Buckland, A text-book of roman Law from Augustus to Justinian, (1921), at 259-260:

ii Nulli res sua servit. Nobody can have a servitude on his own

thing.284

iii Servitus servitutis essere non potest. Servitude on a servitude is

not possible. It is tied to the thing.

iv Servitus civiliter exercenda est. Servitude must be conducted in

a way most convenient to the owner of the thing,

causing as little inconvenience as possible.

v As a res incorporalis it could not be possessed. However, later

Roman law knew possibility of the “quasi-

possession.”

Servitudes were in Roman law subject to numerous further

distinctions. Major one is the division on personal and praedial.285 The first ones

meant the rights which persons have on the property of others, while second are the

rights which certain object of immovable property had over other immovable

property. When deciding which Roman servitudes are closest to the modern doctrine

of the fair use in the scope of the right, as well as to the object of the right, we have to

face a dilemma related to the Roman distinction of the personal and praedial

servitudes. Is the fair use allowed to a particular person, or is it closer to the right tied

to a particular immovable thing. It is neither, as the use is allowed to everybody on

various things. However if we turn to the definition of the personal servitude the

dilemma vanishes: “[a] personal servitude, (* * *) is a mere right, irrespective of any

other property he may own, which a person may exercise over the property of some

other person, whether such property be immovable or movable.”286

284 We will provide an example from patent law in order to show how intellectual property protection follows traditional property law. Like in traditional property, co-owners do not have to establish a servitude in order to get to the part of the property they physically use. Likewise, 17 U.S.C. § 262 provides that the joint owners of a patent “In absence of any agreement to the contrary, each of the joint owners of a patent may make, use or sell the patented invention without the consent of and without accounting to the other owners.” The owners of the patent for the improvement of the invention do have to get the permission, a license, to use their invention, except when the use is “experimental” in the sense of the § 102(b). While the “experimental use” represents the equivalent to servitude, it is obvious that the joint owner does, and cannot have a servitude on his invention despite other owner’s right.

285 Burdick, id., at 371: “both personal and real (preadial) servitudes are ‘real rights,’ or jura in re and not mere rights to a thing, jura ad rem. The right of a personal servitude attaches, however, to a person, while the right of a praedial servitude attaches to a thing, a res. A personal servitude requires only one res, while a praedial requires two, a dominant and servient res.”

286 Burdick, id., at 356.

Aside from the fact that praedial servitudes were in Roman law

connected solely to the immovable things, one question remaining. It is the question

regarding the fact that the right of the fair user could be to some extent described also

by the language of the definitions for praedial servitudes, as the use is normally for

the benefit of one creation on the expense of the owner of the other creation. In that

terms it relates to praedial servitude which are “burdens imposed upon immovable

property for the benefit of other immovable things, regardless of the persons who

happen to own the two estates, the dominant and the servient as they are called.”287 It

appears to us that even in the case of the personal servitude, it cannot be defined

different than use of the one thing for the benefit of the other thing. Therefore, that

would be a characteristic of all servitudes. However, after the analysis of the contents

of the two definitions it appears to us that more abstracted concept of the personal

servitudes corresponds tighter to the concept of the “fair use.”

Personal servitudes are further divided in next four classes: usufructus

(usufruct),usus (use), habitatio (habitation), and operae servorum (service of slaves).

We would like to point out at here, to the common principle of the servitudes, marked

in above list as iv. The requirement to use the right to use in the most convenient way

to the owner makes the requirement for “fair” use on of the basic requirements for the

servitudes in general. If the servitude is not executed in a civil, or “fair” way, the right

is abused. If the above definition of the personal servitudes is broad enough to

encompass the notion carried by the equivalent intellectual property doctrine of the

fair use, than usufructus, one of the four subspecies of the personal servitudes suits the

content of the doctrine even better. Buckland, however without relevance to our

argument, warns that the conception of of usufruct as a servitude is very late

achievement, probably due to Justinian, or even to the later interpolators.288

“Usufructus is defined as the right to use and take the fruits of the

property of another, the subject matter or source of the fruits being left intact: ‘jus

alienis rebus utendi fruendi salva rerum substantia.’ In other words, the use must not

diminish the substance.”289 A usufruct, according to Burdick, may be created in both

movable and immovable property, in fact in everything except for the things which

287 Burdick, id., at 355.288 Buckland, id., at 268: But the texts which use the notion seem to be all

from late jurists an it may be that the idea appeared in the classical age. In any case the remedies for usufruct were same in character [as for the other servitudes]. It was a ius and was claimed by actio confesoria.” (Footnote omitted.)

289 Burdick, id., at 356. There pertinent reference is to the case by which the usufruct is determined in the United States law, Cartwright v Cartwright, 18 Tex. 626, 628.

are consumed by the very fact of its use. However, the usufructuary, who was entitled

to the possession and any lawful use of the object, was required to exercise the use “in

such a way that the revisionary interest of the dominus should not be impaired.” The

description of the Roman institute of usufruct is detailed. The rules which are known

today are elaborate, but we will not deal further with them by the way of the analysis.

It is not necessary for our purposes as there is no such provisions that would contrast

with the teachings on the doctrine of the fair use. Of course, some of the provisions,

like that “the private house could not be used for a shop,”290 or that the “buildings

could not be erected or torn down”291 actually speak indirectly about the fact that the

use ought to be “fair.” One could even further infer that such requirements could be

squared to the provisions of many jurisdictions that the use should not mutilate the

original work. The theory was built around the fruits, in literal sense, as well as other

organic products of ownable things, such as the young of the animals. So was “timber

estate” where the trees were the source of the profits, but not the trees on ordinary

grounds.292 From this we would conclude that the origins of the doctrine were in

naturally reproducing organisms. Relying on Csanyi’s theories (see chapter four), that

the replication of living organisms is a basis for human pattern of copying. However,

Romans made the exception regarding the human children of ancillae.293 The fact that

the minerals were also possible object of the usufruct is due to the apparent Roman

belief that the minerals also reproduce.294 More on the way the usufruct developed as

the legal institute from the Republican to the times of Empire is to be found in

Buckland & McNair:

It dates only from late in the Republic and its primary purpose was essentially alimentary, e.g. provision for a widow. It is not till the Empire that it becomes a general legal institution, divorced from its alimentary purpose, and it is clear that the lawyers of the first century did not find it easy to analyze it and fit it into the scheme of the legal things. What seems to have impressed them first was was its entirely incorporeal nature. It was legal entity sui generis, not to be thought of in physical terms, s ius, and as such a res, capable of being claimed as such, but not capable of being possessed, as it was not physical; and though for certain purposes a part of the mass of rights called dominium, it was not at first thought of as ius in the physical thing, a ius in re, but simply as a ius.295

290 Burdick, id., at 358, citing Dig. 7, 1, 13, 8.291 Burdick, id., at 358, citing Dig. 7, 1, 13, 6.292 Buckland, id., at 268, provides more examples, as well as the rules.293 Buckland, id., at 268.294 Buckland & McNair, Roman Law & Common Law; A Comparison in Outline,

(1936), id., at 101: “In fact minerals in such a case were on just the same level as fruits, the organic prodce of the property, and were apparently regarded by the Romans as equally capable of renewing themselves.”

295 Buckland & McNair, id., at 98.

We opted for the usufruct as equivalent traditional property institute to

the fair use, because it, unlike the usus, it allows the user to commercially exploit the

fruits of such property right on somebody else’s property. So called, bare use nudum

usus, '[i]t is a lesser right than that of usufructus since it is merely a right of user

without a right of fructus.”296 The right to take the produce of a thing includes usus,

but usus does not include the right to produce, according to Ulpian.297

However, in intellectual property, under the doctrine of fair use, the

usufructuary would not necessary acquire any rights on the original creation, neither

the right to exploit economically any right from the bundle of rights that constitute

copyright. That is due to the specific nature of the object of intellectual property right,

that the object always stays with its owner, i.e., the creator, even when it is

misappropriated by others. Likewise, the usufructuary may have economic gains by

using the parts of the original work, or even the whole work, but the source of

economic gain will be a new work which uses the original. That does not necessarily

disqualifies the institute of usufructus, as the proprietary basis for the fair use. It only

shows the changes that traditional property law had to undergo in order to adjust itself

to the specific new object of ownership, as is the creativity. Due to this fact, it is also

possible that the right is actually public, in its nature. Any number of usufructuaries

may have the right to use the original, as it is not exhaustible by the use, and is

reachable by any member of the general public. This, however, was in a way

contained in the Roman notion of the institute. According to Buckland: “unlike the

praedial servitudes, usufruct was divisible (though the other praedial servitudes were

not), a rule with important results. There could be a common ownership of a

usufruct.”298 Of course, it is still different from the situation where every member of

the public has the right to use, together with the right to enjoy the fruit. At the same

time it shows the necessary flexibility of the traditional property institutes, to be

acomodated to the new kind of property, like intellectual property. But, neither

traditional property did stick to the ancient form of servitudes. Noyes remarks that:

“the most important kinds of modern easements are in reality right of access to

common resources or objects held in public property, and are therefore general rights

inherent in all property in land and not special rights created by the grant...”299

296 Burdick, id., at 358, citing Dig. 7, 8, 1; Inst. 2,5, 1.297 Burdick, id., at 358, citing Dig. 7, 8, 14, 1.298 Buckland, id., at 270.299 Noyes, id., at 316.

For that reason we will not explore here the creation of Roman

servitudes. It will suffice to say that in the early times it was created by the grant from

dominus directus, the absolute owner of the preadium serviens. Later on, they could

have been created by stipulations, by legacy, by prescription, by adjudication, or

reservation. Both, the creation and transfer of the servitudes was regulated by

complex rules, unrelated in any way to the modern statutory created doctrine of the

fair use. Such a laconic, statutory, and earlier equitable creation of the right on

somebody else’s property is possible only due to the nature of the creativity not to be

diminished when used by non-owner. When the use presents a threat for the economic

well-being of the owner, thus diminishing his property rights, the use will not be

considered fair anymore.

Analysis of 17 U.S.C. section 107300 which is the section related to fair

use is necessary. It was designed after the doctrine which started developing more

than hundred years ago in the common law protection. The words of the Justice

Joseph Story embodied it almost better than the words of the section 107: “The

entirety of the copyright is the property of the author; and it is no defense, that another

has appropriated a part, and not the whole, of any property. Neither does it necessarily

depend upon the quantity taken, whether it is an infringement of the copyright or not.

It is often affected by other considerations, the value of materials taken and the

importance of it to the sale of the original work....In short, we must often, in deciding

questions of this sort, look to the nature and objects of the selections made, the

quantity and value of the materials used, and the degree in which the use may

prejudice the sale, or diminish the profits, or supersede the objects, of the original

work....301 Starting the analyze with the remark that all of the J. Story’s criteria are

contained in the section 107. It may be important to emphasize the nature of the

300 § 107. Limitations on exclusive rights: Fair UseNotwithstanding the provisions of the section 106, the fair use of a

copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include-

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;(3) the amount and substantiallity of the portion used in relation to the

copyrighted work as a whole; and(4) the effect of the use upon the potential market for or value of the

copyrighted work.301 Folsom v. Marsh, 9 F.Cas. 342, 13 Copy.Dec. 991, 1000-1001, (1841). Note

that the doctrine was created by the judge intensly familiar with the civil and the Roman law principles, and that in its characteristics it resembles the servitudes.

copyrighted work criterion. It could be moe difficult for the courts to analyze, but it

appears that it is important to determine the medium of the work more thoroughly, in

relations to the other factors in order to see if copying may be considered fair or not.

EMINENT DOMAIN AS COMPULSORY LICENSING

Expropriation, was not a prominent feature of the Roman law

according to the known sources. Buckland and McNair state that in the early times

there was no restriction on the powers of the supreme legislature, and accordingly it

could expropriate for any purpose.302 In later periods, they state, “in fact, so far as the

utilities are concerned there is little sign of any such thing in classical law. Indeed,

there may be none, for it seems that the cases recorded are of lands which were

technically the property of the State, though in hands of possessores holding

practically permanently, but, technically, at will of the State.”303 We will use the

word “expropriation’ as the generic term for such restriction of ownership as is the

eminent domain in the law of the United States.

The crux of the issue is contained in the question one author asks

himself in connection with the traditional property, namely with the real property. Our

standpoint is clear; we consider the traditional property as the basis from which the

new form of property developed. Therefore, in broader outline, the same question

may be raised in relation to intellectual property. “We are here concerned with the

role of government in taking private land by eminent domain so that it can be

developed in the public interest. Let me state the question baldly: Can the state, under

proper circumstances, take land away from private owner, pay him just compensation

for his loss, and turn it over to another private owner who will presumably develop

the land more in line with what is conceived to be public interest? The answer is a

qualified ‘yes’, qualified that is by a legislative determination that the taking is for a

public purpose and subject to judicial review to curb excessive legislative zeal.”304

Indeed so, as the language of the judicial opinions will indicate. “All separate interests

of individuals in property are held of the government under this tacit agreement or

implied reservation. Notwithstanding the grant to individuals, the eminent domain, the

highest and most exact idea of property, remains in the government, or in the

aggregate body of the people in their sovereign capacity; and they have a right to

resume the possession of the property ... whenever the public interest requires it.”305

The scope of the objects within the reach of the Taking Clause does not seem to be

302 Buckland & McNair, id., at 72.303 Buckland & McNair, id., at 73. For more details see seq.304 John E. Cribbet, Principles of Property, (19??), at 426.

limited in any way. The Supreme Court found that: “Once the object is within the

authority of Congress, the right to realize it through the exercise of eminent domain is

clear. for the power of the eminent domain is merely the means to the end.”306

Of course, the taking could be done only under the requirement that it

would be for a public use. It is a judicial question, in which the courts follow high

degree of deference to the legislative determination.307 Final, and in some respects

central requirement is that the taking would be done for a just compensation. By

providing so, the Constitution excludes the possiblity of the confiscation “as a

measure of justice.”308

From all said above it is clear that there would be no constitutional

obstacles for taking of intellectual property n the United States. Why, then, are the

reactions so severe regarding the compulsory licensing? When real property can be

expropriated, why would not intellectual property also be subject to the broader range

of the constitutional provisions that regulate the power of the government to take the

property, providing the due process? The only answer, for which would be hard to

find any suppoert in jurisprudence, would be that the personal justification of

intellectual property in Hegelian sense is so strong that it prevents the government to

take intellectual property. As that is certainly not so, the only remaining possibility is

that the pressure of the ecconomy is much stronger at the time when new form of

property emerged, than it was when traditional property law was shaped.

305 Beekman v. Saratoga& Schenectady R.R. Co., 3 paige Ch. 45, 72-73 (N.Y. 1831), later referred to as “the true doctrine of the law” in West River Bridge v. Dix, 6 How. (47 U.S.) 507, 535 (1848). The language of this early decisions may sound apologetic as to the state-controled socialist values, but it certainly points out to the atmosphere which we have underlined earlier in while asserting that in the early post independence times the United States were politicaly resembling modern developing countries. Although the interpretation of the Taking Clause did not change, the language in more recent decisions is somewhat mellower: “The Fifth Amendment to the Constitution says ‘nor shall private property be taken for public use , without just compensation.’ This is a tacit recognition of a preexisting power to take private property for public use, rather than a grant of a new power.” United States v. Caramack 329 U.S. 230, 241-242 (1946).

306 Berman v. Parker, 348 U.S. 26, 33 (1954). Between various construction objects, transportation infrastructure, something as “intangible” as the hydroelectric power has been taken; see Ashwander v. TVA, 297 U.S. 288 (1936).

307 City of Cincinnati v Vester, 281 U.S. 439, 444 (1930), Berman v. Parker, 348 U.S. 26, 32 (1954).

308 United States v. Cors, 337 U.S. 325, 332 (1949). Backus v. Fort Street Union Depot Co., 169 U.S. 557, 573, 575: “When ... [the] power [of eminent domain] is exercised it can only be done by giving the party whose property is taken or whose use and enjoyment of such property is interfered with, full and adequate compensation, not excessive or exorbitant, but just compensation.”

* We will provide here few most obvious examples of compulsory

licensing in the United States. Some, like in the case of the inventions regrding the

nuclear arms, are even regulated by the statutory provisions. The others, like

“shoprights” are protected by the case law. The second, will be addressed in

somewhat greater detail, as in our opinion present one of the greatest threats to the

protection of creativity in the law of the United States. Enforced by contract, in our

opinion present one of the most striking examples of unequal bargaining power, and

as the consequence deprive the creator of his creative result. Obviously, the interests

of industries regading this issue are strong enough to stop any legislation on the

federal level. Ther were several attempts to legislate in the field, by amending the part

II of title 35 U.S.C. with “Limitations upon terms of an employee preinvention

assignment agreement.”309 Lack of popularity of such measures in the Congress is

slightly compensated by the enactment of the similar statutes in several states.310

REGISTRATION OF RIGHTS

We have seen in preceeding pages, that thelement of possession is

recognized by law in certain categories of a creations, namely in trade secrets.

Recently, changes in the law of the United States lead to the situation that property is

recognized in copyrightable creations regardles of the requirement for registration.

Our opinion is that it clearly shows that more than a pepercorn of property is present

309 A Bill H.R. 3286, ‘’ § 223: (a) A preinvention assignment agrement shall not be enforceable to transfer

any rights to the employer in any invention that is not an employment invention [ term definedin ‘’§ 222] except that an employer may require an employee of the employer to grant to the employer a nontransferable, nonexclusive license to practice an invention that is not an employment invention whenever such invention is made by the employe with a substantial use of the employer’s time, materials, facilities, or funds.

(b) An employer may require that the employe of the employer disclose to the employer all inventions made by the employee, solely or jointly with others, during the term of the employee’s employment with the employer if the disclosures are received and kept in confidence.

(c) A preinvention assignment agreement shall not be enforceable to transfer any rights to an employer in any invention that is conceived by an employee of the employer after termination of emloyment with the employer.

Other subsections relate to the settlement of the disputes by arbitration, and the proposed temporal scope of the legislation. However, the Bill was not enacted in this benign and compromising form, and it is not likely that the position of the industries will change.

310 Minnesota Annotated Statutes § 181.78; Washington RCN 49.44.140, 49.44.150; California Labor Code §§ 2870-2872; North Carolina General Statutes §§ 66-57.1; 66-57.2; Illinois Employee Patent Act Ch. 140, Ill Revised Statutes, Sections 301-303.

in creations that are not yet registerd. In order to further clarify our position regarding

the ownership in connection of possession of the creations, or their registration, we

will qoute yet another opinion by Holmes:

One fact which has this effect [gaining ownership] is first possession. The captor of wild animals, or the taker of fish from the ocean, has not merely possession, but a title good against all the world. But the most common mode of getting an original and independent title is by certain proceedings, in court or out of it, adverse to all of the world. [* * *] So rights analogous to those of ownership bmay be given by the legislature to persons of whom some other set of facts is true. For instance, a patentee, or one of whom the government has issued a certain instrument, and who in fact has made a patentable invention.311

While we should be actually happy that such authority like Holms

argues in our cause on the same side, i.e. considering intellectual property as outright

property, we would like to propose another solution. As we have showed above, the

first possession of a creation is the beginning of the originary gain of ownership by its

creator. And indeed, like “the captor of wild animals, or the taker of the fish from the

ocan, he has not merely possession, but a title good against all the world.” We think

that if Holmes would write today, at the point when we could see creativity in

culturaly different context, he would consider it primarily as the objects whose

property is to be gained originary.

However, the role of the registration of the right is a prominent feature

of the intellectual property protection system. All too often has the property in one’s

creation been identified with the patent issued. The registration doubtlesly has its

place and important function, same as does examination. But, it would be wrong to

think that it is only the characteristic of intellectual property. To the contrary, we may

at the glance discover that the system of registration is inherent to many forms of

property, both traditional and intellectual. Many property related legal acts, like gift in

some civil jurisdictions, or mortgage, have to be registered. In addition, and that is the

important point of similarity, very often the objects of the property rights have to be

registered in the traditional property law.

In traditional forms of property most obvious example is the

registration of the real property. The ownership of the land is to be registered to have

the effect to the third parties. But the ownership is acquired by the valid transition of

the title, not by the registration. Houses, also immovable object of the ownership right

311 Holmes, id., at 193.

(the real property), are also to be registered, as the rights other than property upon the

real property has to be registered to have effect towards the third parties. It is not only

the real property where registration is the practice. Many countries register the cars,

and the registration also has legal effect towards the third. The automobiles are

certainly movable property, and still they are registered. The registration is the proof

of the title on the car. In all of these cases the registration flows the path of the title

and is the proof of the title regarding the third. But it is not constituting the right as it

is constituted by the legally valid pass of the title. It is only of declaratory significance

to the right it represents.

Registration of the certain forms of intellectual property is considered

to be constitutive for the right. Primarily for the patents, where the doctrine is almost

unanimous in considering it constitutive of the right in creation. But, if we look at the

other systems of protection we will see that it is not necessarily so. The copyright in

the United States required registration in order to vest in the statutory protection. At

the moment of publication, which is abandonment of secrecy and as such corresponds

to the trade secret loss of secrecy, the work was divested of the common law

protection. The formality of registration was a condition for statutory protection until

the United States adhered to the Berne Convention when it was abandoned, at least as

the constitutive element. Under the new law it is declarative, as the protection is

granted from the moment of the creation, only certain means of enforcement are

facilitated or conditioned by the registration. It was not particularly painful transition

for the American law, and our opinion is that it is because it is in the nature of

intellectual property right. The opposite situation is with the trademark law and we

believe that the common law concept of the trademark is more in the nature of

intellectual property. Certain economic aspects are pointing that the protection is

necessary from an early point of the life of the trademark, in order to prove the

feasibility of building the goodwill if there is no such protection the risk of the loss by

the premature exposure of unprotected trademark increases. The concept of the prior

use stands in our view for the declaratory effect of registration, and here the common

law countries originally had declaratory system of registration, and civil law

constitutive, but the constitutive system is gaining worldwide acceptance. We are of

the opinion that the declaratory element of the registration is important, because there

is no intellectual property object at all involved at the moment of registration. The

goodwill is the creation that is protected by the symbol that stands for it. What we are

pointing out is that the goodwill which is the real object of the protection of the

trademark law, not the symbol which stands for it and is protected by the copyright,

can be created only by the use. In that respect trademark is different from the rest of

intellectual property where the creation is result of the individual effort, as the

goodwill can be created only by the interaction of people. The civil law is creating a

separate right which anticipates the creation and protects only the symbol which may

in the future represent the creation, but it is not the protection of the protection

initially. The legal presumption of the creation replaces the actual creation. We will

devote more discussion to this problem in the next chapter. Here it has to be stressed

that in that respect not even the civil law concept does not stand for constituting

intellectual property right - it is protection of an legal presumption, not the creation of

the owner of the right. But in the later stages of the life of the registration system

trademark, in the judicial contest of its validity certainly the goodwill has to be taken

into the consideration. It is questionable how successful the civil law countries are in

doing this. Some countries have a system combined of the solutions from the both

concepts, and in our opinion it works reasonably well.312 Intellectual property protects

the ownership of the creations and it provides the best protection if it takes in the

account the specific nature of the object of intellectual property.

Finally, we believe that it is not different with the patents. There would

be no big difference if the concept of the constitutiveness of the patent registration

regarding the creation would be replaced by an declarative registration which would

provide more sophisticated or facilitated system of judicial enforcement to the owner.

The interplay between the common law and statutory law provides us with the history

that is confirming to this thesis. Trade secrets protect invention regardless of its

patentability. The loss of secrecy meant the loss of protection. In the common law

copyright the moment of publication was considered to be abandonment of secrecy

and as such corresponds to the trade secret loss of secrecy, the work was divested of

the common law protection. The formality of registration was a condition for statutory

protection until the United States adhered to the Berne Convention when it was

abandoned, at least as the constitutive element. Nothing much changed since it is not

and the concept of the declarative registration was adopted. Same thing would be with

patents - the protection of the creativity would be improved. how this could be done

would be dealt with in the chapter six.

Recapitulation

Before the conclusion to this discussion we have to point another

significant difference, in some respect related to our earlier discussion about the

monopoly nature of intellectual property. In the traditional property the monopoly

312 Mexican TM Code Art. #

meant exclusion of the certain class of subjects from the access to the certain class of

existing objects (goods or resources). We showed how in intellectual property it is

different as the object from access to which anybody else is excluded is a creation,

previously non-existing object. We believe that the same reason lies behind the

difference of the system of the registration between the traditional forms of property

and intellectual property. The registration of movable and immovable goods is the

registration of the rights over them regarding the third parties. It is registration of their

incorporeal, for us invisible part - the rights regarding them. Registration of the

intangibles is the registration of the object of the right, not of the right itself. People

are registering the invisible, in this case the object, but the property right over the

intangible information is simultaneous with its creation. Therefore, registration of the

object has only declaratory effect regarding the right of property over it.

C HAPTER F OUR

THE INTELLECTUAL

IN INTELLECTUAL PROPERTY LAW

It is clearly not the purpose of the chapter four to establish another

dichotomy within understanding of the notion of intellectual property. The

intellectual is in no way opposed to the property within the scope of the notion. That

is why we have deliberately left some of the issues discussed in previous chapters to

overlap with the discussions in this chapter, this time from a slightly different angle.

Information, as the object of property and creativity, both, will be discussed again,

approached this time in its metha-legal context. One short analysis of the differences

within intellectual property on the example of the trademark law will show us the path

in examining the meaning of the intellectual element of the idiom which serves to

describe field of the law we are trying to understand. It seems that the difference

between the original common law concept of the trademark rights, as opposed to the

concept civil law countries developed is one of the broadest conceptual gaps in the

intellectual property, and as such it is very good model for examination of the

structure of intellectual property law in general.

In such approach we will not discuss the role of the trademark law in

relation to the law of unfair competition. We will not disregard it at any point of our

discussion, as we consider its role in the life of the market irreplaceable. But, simply,

the function of the trademark law regarding the law regulating competition is not

determinative to the nature of the trademark as we understand it. The determination of

the validity and rightfulness of the trademark right may be crucial in such issues, but

that does not make it more determinative as far as the nature of the right . Finally,

before we start the discussion, we want to distinguish clearly the role of the trademark

law within the frame of intellectual property law. In that structure the trademark law

is one branch of the law regulating the rights regarding the creation of the meaning of

symbols. Naturally, the law of rights regarding the right of use of the symbols whose

meaning was so created developed first on the market, where the objectives of

economy lead persons in the disputes often fairly inevitable. As such, trademark law

is only one branch of the emerging new law of the symbols, in its particular case

regulating the use of the symbols on the market.

Certain Analogies between the different Systems of Protection

We demonstrated that the registration of the certain forms of

intellectual property is often considered to be constitutive for the right over the

respective creation. Primarily, it is so for the patents, where the doctrine is almost

unanimous in considering registration constitutive as for acquiring the right in

creation. But, if we look at the other systems of protection of the intellectual property

which used to have the same requirement, we will see that id did not necessarily

remain so. The copyright in the United States traditionally required formal registration

in order to vest protectable work of art in the statutory protection. At the moment of

publication, which is the moment of the abandonment of secrecy, the work was

divested of the common law protection. The formality of registration was a condition

for the work to be invested in the statutory protection until the United States adhered

to the Bern Convention. By the recent changes of the Copyright Act the formality of

registration was abandoned as the constitutive element.313 Under the new law, the

registration is declarative, as the protection is granted from the moment of the

creation, and only certain means of judicial enforcement are facilitated or conditioned

by the registration.314 It was not particularly painful transition for the American law,

and our opinion is that it was so because changes are in the nature of intellectual

property law, as the law regulating the relations regarding creations. Thirdly, we want

to point out the similarity of the traditional boundary between the state common law

protection to the works of art before the first publication, and required secrecy

condition in order to grant trade secret protection.315 Moment of the loss of secrecy is

the moment in which the “possessor” of the secret looses the protection granted to its

right, and as such corresponds to the loss of secrecy at the moment of the publication

of a work of art. It is indicative that similar requirement is still the legal criterion for

the protection of the trade secrets.

313 The Copyright Act of 1976, 17 U.S.C. §§ 101-810, as amended by Bern Convention Implementation Act of 1988, effective March 1, 1989.

314 See 17 U.S.C. §§ 412, 504 and 505. For copyrightable works of art said regime is still in force for the works created before the January 1, 1978 according to 17 U.S.C. § 301.

315 See, e.g., Kewanee Oil Co. v. Bicron., Corp., 416 U.S. 470, 475 (1970); Carson Prods. Co. v. Califano, 594 F.2D 453, 461 (5th Cir. 1979), Clark v. Bunker, 453 F.2d 1006, 1009 (9th Cir. 1972); Restatement of Torts § 757, Comment b (1939).

Second, we want to point to the differences of registration in the

trademark law. If we compare the situation in copyright, with the situation in the

trademark law we can note that American copyright law is actually moving in the

direction of civil law concepts. It may be true, here again, that the United States law is

approaching civil law concepts. However, the differences between the two approaches

exist, and cannot be easily disregarded. In the case of the copyright protection, the

protection under the new law, is granted from the moment of creation, while in the

new United States trademark law concept, the start of the protection is moved to an,

comparatively, even earlier moment. It starts the moment of the legal presumption of

the future goodwill, thus resembling a concept of acquisition of the right by

registration. Our opinion is that registration of trademark rights should be reduced in

its significance to the “mere” registration of the right and of its object.316 It should

not represent the privilege of granting the right, as the right is acquired by use. In our

opinion American common law concept of the trademark is more consistent as to the

nature of intellectual property, and should not be abandoned in the measure greater

than present. Nevertheless, a multitude of the economic aspects request that the

protection is granted at an early point of the life of the trademark, particularly before

the actual use of the product on the market, in order to guarantee the feasibility of

building up the goodwill.317 If there is no such protection the risk of the loss by the

premature exposure of unprotected trademark increases, thus reducing the effort of

business subjects to improve its goods and services.

Common law countries originally had declaratory system of

registration, registering the right acquired by the use. The concept of the declaratory

effect of registration in law stands for requirement of prior use on the market. Civil

law countries, to the contrary, had constitutive effect of registration, creating the right

upon the presumption of future use. The worldwide acceptance of the civil law

316 Moorhouse Mfg. v. Strickland, 407 F.2d 881, (C.C.P.A. 1969). In somewhat different context Judge Rich stated that “the acquisition of the right to exclude others from the use of a trademark results from the fact of use and the common law, independently of registration in the Patent Office,” at 888.

317 The courts in the United States recognized this objective quite often. See e.g., the court in Ralston Purina Co. v. On-Cor Frozen Foods, Inc. 746 F.2d 801 (Fed.Cir. 1984) quoted amicus United States Trademark Association stating “tramendous expenditures and financial risks are involved in developing and introducing a new product on national scale” and that it is “common practice, dictated by the commercial realities, for a product as well as its trade name, to be extensively test marketed, and that there are ferequently modifications of the original product concept.” B.W. Pattishall & D.C. Hilliard, Trademarks, (1987), at 40, state: “Occasionally modern corporations expend months or years and many thousands of dollars in developing a new product only to discover that another company has begun to use their intended trademark.” See Ginseng-Up Corp. v. American Ginseng Co., Inc., 215 U.S.P.Q. 471 (S.D. N.Y. 1981).

concept, i.e., constitutive system, is showing the importance of the security provided

by early available protection. As the consequence, certain conceptual imprecision of

the gradually harmonizing international trademark law arose. It is important to note at

this point, that U.S. law actually requires creation of the goodwill in order to

recognize the right of its creator. The registration could not have been constitutive to

the emerging right under the common law due to the fact that there is no intellectual

property object at all created at the moment of the registration. In the case of

registration system it is hard to see the trademark law as the law protecting intellectual

property in the strict sense, as there is no creation involved as the object of the right.

In order to explain this thesis we have to analyze the object of the trademark law and

determine its nature more precisely.

The Goodwill and the Symbol

Trademark is composed of two elements; of the goodwill and of the

symbol which is denoting the goodwill. Lanham Act defines trademark as including

any “word, name, symbol or device or any combination thereof adopted and used by

manufacturer or merchant to identify his goods and distinguish the from those

manufactured or sold by others.”318 The courts held, in connection with trade names,

that “almost any symbol can serve as a trade name and be protected from

infringement if it has acquired that degree of consumer association and recognition

characterized as secondary meaning, and can show likelihood of confusion with a

competitor.”319 The doctrine also recognized the double structure of the trademark

right, due to which the rightful owner of a trademark does not have the right to

exclude others entirely from the use of the word which is his mark, but does have the

right over the denoting quality of the word as the symbol for the product. Callmann

contends: “The trademark owner does not have the right to a particular word but to

the use of the word as a symbol of a particular goods.”320 The symbol is very often

an copyrightable work of art, as far as its graphical composition of lines, letters and

colors is concerned.321 Its function is to enable the public, potential consumers of the

goods marked by the symbol to perceive the source or the pertaining goodwill.

318 Trademerk Act of 1946, as amended 15 U.S.C. §§ 1051-1127, (The Lanham Act §§ 1-50). See section 1127. We will use words trademark symbol to denote statutory terms “tradename” / ”commercial name,” “trademark,” “service mark,” “certification mark,” and “collective mark” in the meaning “any word, name, symbol, or device, or any combination thereof.” See same section for their respective definitions.

319 American Scientific Chemical, Inc., v. American Hospital Supply Corp., 690 F.2d 791 (9th Cir. 1982). It was an action in common-law.

320 Callmann, Unfair Competiton, Trademarks and Monopolies, (4d Ed. 1983), § 78.1(a), at 426.

Certain important United States cases described its function as “to identify the origin

of ownership of the goods to which it is affixed.”322 Schekter is adding that “[t]he

‘origin of ownership’ so designated by a trademark must be the ‘personal origin or

ownership.’”323 It was Mr. Justice Frankfurter who said that “[t]he protection of

trade-marks is the law’s recognition of the psychological function of symbols. If it is

true that we live by symbols, it is no less true that we purchase goods by them. A

trade-mark is merchandising short-cut which induces a purchaser to select what he

wants, or what he has been led to believe he wants. The owner of a mark exploits this

human propensity by making every effort to impregnate the atmosphere of the market

with the drawing power of a congenial symbol. Whatever the means employed, the

aim is the same—-to convey through the mark, in the minds of potential customers,

the desirability of the commodity upon which it appears. Once this is attained, the

trade-mark owner has something of value. If another poaches upon the commercial

magnetism of the symbol he has created, the owner can obtain legal redress.”

(Emphasis added.)324

We are arguing that the goodwill itself is the creation protectable by

intellectual property law, and that it is embodied in the perception of the trademark

symbol that denotes it in the mind of the consumer.325 The goodwill is the real object

321 Negative definition of a registrable mark is provided by 15 U.S.C. § 2(a)-(e). Subsection (e) provides that “nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.” This provision recognizes the ability of symbols to change its meaning; the law nicknamed the process defined by subsection (e) as the “acquisition of the secondary meaning.”

322 Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, (1916), at 412.323 Frank I. Schechter, “The Rational Basis of Trademark Protection,” 40

Harvard Law Review 813, 22 TM Bull 139, (1927), reprinted, 60 TMR 334 (1970). Schehter is refering to Canal Co. v. Clark, 13 Wall. 311, 324 (U.S. 1871); Baglin v. Cusenier, 221 U.S. 580, 591 (1911).

324 Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresgee Co., 62 S.Ct. 1022, 1024, 316 U.S. 203,205, 86 L.Ed. 1381 (1942). Justice Frankfurter’s views were influenced by Schehter’s article.

325 Good will is” [t]the favor which the management of business wins from the public.” Seneca Hotel Co. v. U.S., Ct.Cl., 42 F.2d 343, 344. “It means every advantage, every positive advantage, that has been acquired by a proprietor in carrying on his business, whether connected with the premises in which the business is conducted, or with the name under which it is managed, or with any other matter carrying with it the benefit of the business.” Glen & Hall Mfg. Co. v. Hall, 61N.Y. 226, 19 Am.Rep. 278; In re Ball’s Estate, 161 App.Div. 69, 146 N.Y.S. 499, 501; Whittle v. Davie, 116 Va. 575, 82 S.E. 724, 726; Acme, Palmers & De Mooy Foundry Co. v. Weiss, D.C. Ohio, 21 F.2d 492, 493. These cases are provided by Black’s Law Dictionary in the definition of the goodwill. Barron’s Law Dictionary defines good will as an intangible but recognized business asset which is the result of such features of an ongoing enterprise as the production or sale of reputable brand name products, a good relationship with customers and suppliers, and the standing of the business in its community. Good will can

of the protection of the trademark law, and not the symbol which denotes it, and is, or

may be protectable by copyright. The two are all too often merged. As such, the

goodwill is a creation, and it can be created only by the use. Intellectual property law

is the area of law under which protection of creation is available. We would expect

that all of the intellectual property protection systems would serve to protect the

creation, but in that respect trademark seems to be different from the rest of

intellectual property. We are further arguing that it may only be so when looking at

the surface, mistake arising from the fact that more than one kind of creation exists.

The creation is often understood only as a result of an individual effort. The goodwill,

on the other side can be created only by the interaction of people.326 The creation of

the goodwill is an common involvement of the source of the product and the

consumer, where the first embodiment of the creation is in the mind of the consumer.

In other words, the object of protection in trademark law it is not creation in the same

sense in which it appears as the object of the protection in the field of copyright or

patent law. It is not a creation resulting from an individual creative effort, “conceived

and reduced to practice,” or “embodied in the work of art,” respectively.

Consecutively, it would be hard to exclude the notion that the proper use of the

trademark symbol in conjunction with a bad reputation would not create a

corresponding “bad will.” If so, it should be just as protectable as its positive

counterpart, although the economic sense would not support manufacturer or seller, as

its source in doing so.

Embodiment of the Goodwill

Upon a closer examination of a goodwill, the object of protection

appears to be the reputation of the source, as associated by the consumer with the

trademark symbol denoting it. In the civil law conception of trademark the right is

constituted by the inscription in the register, without the object of the protection yet

created, based solely upon the presumption of the use and the subsequent creation of

become a balance sheet asset when a going business is acquired through a purchase transaction in which the price paid exceeds the net asset value.” It is important to note, however, that the word “goodwill,” signifying the legal concept is untranslatable in most of languages other than English. It can be translated as a reputation, or described. That is one of the reasons why the concept is hardly accessible to the lawyer not belonging to Anglo-Saxon cultural tradition.

326 The process of creating a goodwill is clearly not an individual creative effort, as it has to be born out of the feed-back with the consumer to start existing. It is a creation of interaction of people, and in that respect similar to the right of the publicity. A poet can create a song just for himself but the manufacturer can not create a goodwill in the same sense. It is clear that the life of the poem also starts its full life when it reaches its readers, but it is not required that it would be initially embodied in its readers mind in order to emerge.

the goodwill thereafter. In some respects the registration of the trademark which is

constitutive of the right reminds of the registration of the name of an incorporated

business. The creation of the law at the moment of registration which is called

corporation, in legal theory is considered to be legal persona. We have to be aware

that “incorporating” in Latin means embodying.327 Clearly, the concept of embodying

an idea is the ground where law of corporations overlaps with intellectual property

law. Still, corporate law, although its object is also intangible, is hardly to be

considered a branch of the intellectual property law. Legal person, or corporation

aggregate in common law doctrine, is also not assertion in the sense we regularly use

it to describe choices made by an individual in order to instrumenalize an idea. Of

course, corporation is a creation in the legal sense, based upon a presumption that all

of the trucks, typewriters, telephones, tools and peoples will serve as the embodiment

and the instrumentalization of the idea of a particular business, where the result is

twofold; one being the service or products rendered, the other the revenue generated.

It is even more so for the trademark law when the right is acquired by

registration rather than by use. We have pointed out that creation of the trademark

right by the grant upon the presumption of use is close to creating a corporation in

respect that the recognition of a presumption is a creation of law. By recognizing the

presumption law materializes it. Although the civil law countries do not recognize the

concept of the goodwill, at least not as defined concept such as the American common

law does, they presume its future existence. Otherwise it would be pointless to

register the trademark separately from the name of the company when registering the

legal person created. In that respect, if the protection of a goodwill is not recognized

as the protection of a creation, trademark law clearly belongs to the corporate law, and

not to intellectual property law. In other words, if the conceptualized effort of giving a

symbol a certain meaning is not recognized as creative activity, grant of the right over

the presumption is a legal measure that belong to the law of corporations. Even more

so, if the law of trademarks is left limited to the use of symbols by the business’ on

the market. Of course, the unincorporated business’ are part of the business law in the

broader sense, but still not of intellectual property law.

The Property of the Trademark

327 Corpus, meaning the body. See the language of the Supreme Court in the famous case Trustees of Dartmouth Colege v. Woodward, 17 U.S. 518, 4 Wheat. 518, 4. L.Ed. 629 (1819), where a private corporation was analogized to “a franchize, or incorporeal hereditament founded upon private property.”

We do believe that the protection of the creation throughout

intellectual property law is granted to the creator on the legal principles derived from

the property law. The trademark law of the United States is no exception, and we are

able to find support for our opinion in the judicial opinions. We will briefly examine

some of the opinions based on the trademark theory based on the property principles.

In all areas of intellectual property protection opinions about its proprietary nature are

divided, and there is no clear judicial answer on the question. Nevertheless, the courts

often approach the issue without doubting the proprietary nature of respective

intellectual property right.328 One may actually say that there is long and extensive

tradition of the courts finding the property basis of the right in the trademarks. Ganey,

J., formulated his finding of the law as follows: “The purpose of the trademark law is

to [* * *] identify the business in connection with which it is used and accordingly it

will be protected only when used in connection with a business, for trade marks and

the right to their exclusive use are property rights, in the sense that the right to one’s

trade, and the good will that follows from it, free from unwarranted interference from

others is a property right. The trade mark is the instrumentality by which this property

right is protected and the right grows out of its use in trade not merely out of its

adoption.”329 After Lanham Act was enacted the courts kept this attitude. Typical in

that respect is also the opinion of Lumbard, J. in which he describes the understanding

of the law of the parties and than summarizes and provides few exemplary opinions

for each theory. It is interesting, as it seems that judge presupposes established

property law character of the patents and the copyrights, as opposed to the trademarks

where such right is not clearly established: “[a]n alternative view of the trademark

328 See, e.g., opinion of the Supreme Court quoted in footnote (#), above.329 The Coca-Cola Co. v. Busch, 44 F.Supp. 405 (E.D.PA. 1942). The court cited

for this contention following cases: Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916);United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90; Carthage Tobacco Works v. Barlow-Moore Tobaco Co., 296 F. 142; Amoskeag Co. v. Trainer 101 U.S. 51;Consumers’ Co. v. Hydrox Chemical Co., 40 App. D.C. 284. In Hanover Star Justice Pitney stated: “Common-law trademarks, and the right to their exclusive use, are of course to be classed among property rights.” His are the similar words in Hamilton-Brown Shoe Co. v. Wolf Brothers Co., 240 U.S. 251 (1916): “The right to use trade-mark is recognized as a kind of property, of which the owner is entitled to the exclusive enjoyment to the extent that it has been actually used.” Such opinion was further carried in the American Photographic Publishing Co. v Ziff-Davis Publishing Co., 135 F.2d 569 (7th Cir. 1943) where it was clearly stated that: “[a]lthough trade-mark rights are property, they are not protected per se; it is only the good will in connection with which the mark is used that is protected.” Accordingly “Restatement (Second) of Torts,” § 756, comment a at 136, (Tent.Draft No.8, 1963) held that: “A trademark or trade name is not in itself an independent object of property, nor is the right to use such mark or name. The designation is only a means of identifying particular goods, services, or a business associated with a particualr commercial source, whether known or anonymous. [* * *] Goodwill is property, and since it is transferable the symbol of the property is transferabel along with it.” (Emphasis added.)

right is that it is a form of property, similar in this respect to a copyright or patent

right.”330 This decision reversed prior decisions of the Second district based on the

explicit rejection of the view that a trademark right is a form of intangible property.

Further question arises regarding the use of the term “owner,” for

instance, as used in section one of the Lanham Act.331 Does the term “owner,” when

used out of the scope of Constitutional patent an copyright clause signifies the owner

identical to the owner of the real, or any other property as meant by the Constitutional

term “property” in the taking clause of the Fifth Amendent. We have seen in the

previous discussion on property, that despite the awkward and undefined phrasing of

the creators right in the patent and copyright clause of the Eight Paragraph of the First

Article of the Constitution, Patent act, as well as the Copyright act explicitly address

the rights of the creators as the “personal property.” Although the Lanham Act does

not address it as explicitely, in our opinion, it is not even necessary in light of the fact

that the Act is enacted and implemented under the Commerce clause and not patent

and copyright clause. Because of that, the owner of trademark right is the owner of

the property in its full and regular legal significance, jus like any other property rights

owner in commerce.

Of course, once we accept that the object of protection the trademark

law is in the first place the goodwill rather than the trademark symbol itself further

question arises if we define the goodwill as the creation. we have seen that in order to

be sysematized at all as the intellectual property, the goodwill has to be treated as the

creation. If the goodwill is not a creation, trademark law is not intellectual property.

Once defined as a creation, there is no more reason for trademark regulation in the

330 Monsanto Chemical Co. v. Perfect Fit Products Mfg. Co., 349 F.2d 389 (2d Cir., 1965). Judge provide cites of the other cases in favor of the property theory of trademark right including Baker v. Simmons Co., 325 F.2d 580, 582 (1st Cir. 1963) and Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 259, 36 S.Ct. 269, 272, 60 L.Ed. 629 (1916): “The right to use a trademark is recognized as a kind of property, of which the owner is entitled to the exclusive enjoyment to the extent that it has been actually used.” Recently an unusully strong statement has been made by the U.S. Court of Appeals in the process of examination of the legislative history of Section 526 of the Tariff Act of 1930, 19 U.S.C. § 1526 (1982) in Coalition to Preserve the Integrity of American Trademarks v. U. S.: “In any event, however, we think the Senate debate, considered as the whole, reinforces our conclusion that Section 526 confers an absolute, unqualified property right uppon American companies that own registered trademarks.”See also, John V. Ala, “The New Trademark Law,” 94 Case & Comment No. 5, at , (1989): “[t]rademarks are a form of property and, like the most other forms of property, can be freely sold, assigned, or otherwise transferred.”

331 15 U.S.C. § 1051 provides that: [t]he owner of a trademark used in commerce may apply to register his or her trademark... . (Emphasis added.)

United States to be implemented under the Commerce clause.332 In that case

trademark regulation may be implemented under the patent and copyright clause as

the “useful art.” And indeed, the creative activity of building up a goodwill, from

selecting name for one’s business and choosing color for the shield on which it will be

written, to the most elaborate market surveys conducted in accordance with the

marketing science in order to further the business, the activity encompasses very

much the acts which may be regarded as both scientifically and artistically creative. In

that respect marketing is one of the modern human actvities, not unlike the software

programing and product designing (both to be discussed in next chapter), which defy

to follow tradtional legal subject matter systematisations of intellectual property

protection. However, the requirement of the patent and copyright clause that the rights

should be granted for “limited times” would seriusly conflict with the nature of the

trademark as the symbol representing the commercial goodwill in the consumer

universe and with the public interest of this very universe.

Once again, if we accept that the goodwill is a creation, there is no

more reason to consider trademark law as the law of commerce in the first place.

However, the creativity never was easily distingushable from its commercial value,

partially because of its untangible characteristics. Only when its embodiments reached

the market it was emancipated to the material status. With the goodwill, where the

first embodiment is in the mind of the consumer, it was even more so. In the eyes of

non specifically trained lawyer the creation was visible only as the market relation. It

would be wrong to conclude that such attitude was the matter of the past, as the recent

GATT negotiations clearly show,333 that the commercial side of creativity maintains,

if not increases its legal significance.

Registration system creates a right in anticipation of actual creation

and protects only the symbol denoting it. The symbol, at the moment of creation, has

only the potential to represent the creation in the future. Thus, registration system is

not the protection of creation itself, if we do not consider the creation of law equal to

creation of a goodwill. It is a naked right granted by administrative decision to

eventual future user of future creation. The only creation protectable at the moment of

332 One has to keep in mind that the first federal trademark statute in the United States was passed in 1870 under the patent and copyright clause, only to be struck down by the Supreme Court in 1879. Untill 1938 the cases havebeen solved under the federal common law. The passing of the Lanham Act, however waited the end of the war.

333 See, e.g., Reichman , “Intellectual Property in International Trade: Opportunities and Risks of GATT Connection,” 22 Vanderbilt Journal of Transnational Law 747, (Vol. 4, 1989).

creation are the copyrightable elements of the symbol. As such they may be protected

by copyright, but they are not protectable by the trademark protection. The legal

presumption of creation represented by legal creation replaces actual creation. It has

to be stressed that in that respect the civil law concept does not have the constituting

quality regarding intellectual property right. It is the protection of a legal presumption

of a creation, and not of actual creation of the owner of the right. However, in the later

stages of the life of the registered trademark, in the eventual judicial contest of its

validity, certainly, the goodwill may have to be taken into the consideration. Some

civil law countries do have a system combined of the solutions from the both

concepts, what in our opinion is the most reasonable approach. Such combined system

balances the advantages of early protection which serve to provide incentive to

develop a goodwill with the disadvantages of the slow process of actual creation

during the risky period of the use without the constructive notice.334 Intellectual

property protects ownership over the creations and it provides the best protection if it

takes in the account the specific nature of the object of intellectual property, i.e., the

creation..

Creative Result Protected by Tradmark Law is the Goodwill

If we have accepted to ask ourselves whether trademark law is

intellectual property in the true and full sense, we have to make another examination

before getting the answer. An analysis of the meaning of the intellectual as in

intellectual property is necessary. We can clearly see that it can denote at least two

meanings. First is the ordinary notion of intellectual property as the right over the

creation of the mind of an individual, as we mentioned above. But, as such it would

not include trademarks, because they are not creation of an individual intellect, but

rather of the behavior on the market. In that case it is intellectual from the point of

view of the people who have to perceive it, discover it, or to recognize it - not from

334 Mexican Ley de Inveciones y Marcas (Code on Inventions and Trademarks, 1976) Section 93, in its first paragraph provides that “the right to the use of trademark obtained by means of its registration shall not produce effects against a third party who used in the Mexican Republic the same trademark or another confusingly similar one for the same or similar articles or services, provided that the third party began using the trademark more than one year prior to the filing date of the registration.” As such, it also recognizes the importance of the prior use, even stressing the importance of continuity of time through which the goodwill could have been created. Opposite to protection of the economic interest, which would require that the shorter prior user can continue use in order to accumulate more costs in return for research and promotion, the law provides that the one who used the disputed mark longer, thus has had fuller return will maintained the unregistered right to use. It is actually the recognition of the time for creation of the goodwill which is protected. 15 U.S.C. had the similar one year requirement, abolished with the recent changes.

the point of creation. Its creation is the process of the projection of certain symbol, or

sequence of the symbols, to the universe of individuals who are perceiving the

symbol. During that process the symbol acquires the meaning. At that point, naked

copyright content of the trademark itself becomes substituted by the goodwill of the

source of the product. Thus, the second meaning of the term intellectual property is

broader, culturally updated, so that it includes the creative efforts regarding the

function of the symbols. The main difference is that when interpreted so, also the

creation which is embodied first time in other individual’s perception is recognized as

intellectual property. Trademark right, in that respect, instead being just one of the

rights that protect industrial property, or better, the economic interests of commercial

subjects, becomes intellectual property right in the full sense. As stated above, full

sense means the protection of creation on property principles. Trademark law is only

one form of the developing law of symbols. Trademark law principles could take an

important place as the model in the integral legal protection of the property over

creation. We have to be aware that trademark is only the most rehearsed field of

contact between the law and the symbols.

Some aspects of other forms of intellectual property protection, like

publicity rights could also be improved if understood according to the trademark

principles, as we know them today. Publicity right, in that sense could be analytically

reduced to an interface of the copyright and trademark law, as the creation of the

image of an public personality, to us clearly is an act of creation in the same sense as

the creation of the goodwill regarding the manufactured products.335 In other aspects

it is similar to the creation of literary or graphic character, as the created personality

most often, regarding the personal characteristics, does not necessarily correspond

with the personality which it is representing. Of course, the publicity symbol and its

goodwill may be created by the person himself, or by his producers, or by the hired

335 One of the leading cases on publicity right Estate of Presley v. Russen, 513 F.Supp. 1339 (D.C. N.J. 1981) the court used the following definition of the right as: “the right of an individual, especially a public figure or celebrity, to control the commercial value and exploitation of his name and picture or likeness and to prevent others from unfairly appropriation this value for their commercial benefit.” We would add here that it is the reputation of individual’s activity that is protected, as symbolised by his name, picture, or likeness. For more on publicity right see Gordon, “Right of Property in Name, Likeness, Personality and History,” 55 Nw. U.L.Rev. 553 (1960); Note, “The Right of Publicity--Protection for Public Figures and Celebrities,” 42 Brooklyn L.Rev. 527 (1976); Note, “Lugosi v. universal Pictures: Descent of the Right of Publicity,” 29 Hastings L.J. 751 (1978); Comment, “The Sescendibility of the Right of Publicity: Is There Commercial Life After Death?” 89 Yale L.J. 1125 (1980); Winner, “Right of Identity: Right of Publicity and Protection for a Trademark’s ‘Persona,’” 71 T.M.R. 193 (1981); Ropski, “Further Comments on the Development of the Right of Publicity--A Matter of Life, Death, and Sometimes the first Amendments,” 73 T.M.R. 278 (1983).

designing studios. In that respect it is similar to the creation of the trademark and its

goodwill.

The design protection,may also be improved in conjunction with the

legal principles regarding symbols, developed first under the pressure of the subjects

competing on the market. There are views that propose inclusion of the trademark

protection principles in the protection of industrial designs. If such proposals would

be accepted, and the bill amended so that it would include three systems of protection

rather than any two out of the three. Inclusion of the patent, copyright and trademark

principles in the Act protecting the industrial design would be significant step

towards the integral protection.336 Still more possibilities exist to extend the

application of the trademark principles, and we will explore them, mostly in order to

exercise our theory more thoroughly.337

Finally, and still regarding the applicability of law of the symbols, as

founded in the trademark law regarding the use of the symbol on the market, we will

turn to the protectability of the algorithms as the symbols. We cannot see reason why

not to consider the algorithms as symbols denoting certain segments, or steps of

reality.338 Csanyi holds that algorithms are “the interrelationships of components

within various organizational levels” of a system.339A mathematical equation, as the

expression of such algorithm, may easily be understood as a symbol denoting the

meaning of the algorithm, i.e., represents a certain “model” that is “a part of

reality.”340 Csanyi considers the process of model construction as “always a kind of

336 Jay Dratler, Jr., “Trademark Protection for Industrial Designs”, 1988 U.Ill.L.Rev. 887, No.4. A detailed survey of the situation based on the examination of the present doctrines of the Sears/Compco [Sears Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), Compco Corp. v. Day-Brite Lightning, Inc., 376 U.S. 234 (1964)] and Bonito Boats [Bonito Boats v. Thunder Craft Boats, Inc., 109 S.Ct. 971 (1989)], the article examines marketplace reality for the industrial designs and finds out that most suitable protection could be based on the trademark principles.

337 A caveat before we proceed; we are not suggesting by that that all legal matters are, in a way, intellectual property subject matter. In such broad understanding the second meaning of the term intellectual property is comprising all of the legal relations. In a certain way, all legal relations are intellectual property in itself, because the relations have to be perceived by the human mind in order to be recognized. Recognition of legal relations should certainly stay unprotectable, although the result of the process may be also regarded as a creation. It was Edward Poste in “Gaius,” (1871), who concluded that all property consists of rights only, and consequently, is entirely incorporeal.

338 See footnote (#) in chapter three regarding Justice Frankfurter’s opinion on words as symbols, and footnotes (##) in chapter five regarding the definition of algorithm.

339 Csanyi, id., at 9.340 Csanyi, id., at 2.

identification between the complex system and its model in which the simplification

is inherently unavoidable. [* * *] The framework of thinking in the natural sciences is

based on the use of such models. Reality is the totality of enormously complex,

mutually interconnected processes.”341 In that respect there is no difference between

the models expressed by the algorithms to which nowadays in the United States are

protectable by patents, and the discoveries, which are not protectable by patents.

Csanyi explains the mechanism of scientific comprehension of reality: “Scientific

research attempts to separate and isolate phenomena and effects. It searches for the

simplest connections that can be used to describe and represent the phenomenon

under investigation. Science makes simple models that reflects only a part of reality

but that make thinking about reality possible.”342 We consider the algorithms as

symbols denoting the segments, or steps, of reality models.

We have to remind that we do not propose protection of algorithms by

trademark law. We are realizing that broader law of symbols, of which trademark is

the most developed branch, has the necessary prerequisites for the protection of

algorithms, which are also symbols. Once the symbol is conceived in the mind of its

creator it is not protectable, but upon its use on the “market”, initially protected from

misappropriation under the trade secret principles, its owner may acquire the rights

regarding the third parties. Of course, the market in this sense is the scientific market,

a certain universe where the algorithm-symbol, can be understood as denoting

particular segment of reality it intended to express. Of course, other markets stay the

virgin universes, untouched by the symbol, as it does not even appear on the product

which may use its function. Word universe, as used in the market surveys in the

function of limiting a certain group of individuals that belong to the reality of the

particular product whose owner is disputing the right of the symbol which is denoting

it is happily chosen word. It is well chosen as it denotes the closed reality of particular

group, and as such, indicates the multitude of realities in which we live. It is necessary

that the law recognized this.

One last remark that should be made is the finding of the elements of

the law of symbols in other traditional branches of law. One example can be found in

341 Csanyi, id., at 2.342 Csanyi, id., at 2. He provides us with an example: “Newton in his famous

‘laws’ did not explain the nature of physical forces; he only made a dynamic model of them, and based on this model he predicted some properties of moving bodies. It is well known that these predicitions are more or less valid in large domain of reality with well-recognized boundaries, yet we still do not know what a physical force is. Newton’s laws are not explanations in the absolute sense of the word; they are only models suitable for predictions within limits.”

the right of privacy which is protecting the right to use one’s name. If we analyze the

nature of the name regarding the individual, we may come to the conclusion that it is

nothing else but a symbol that denotes individual in a society. Certainly, the

protection of the name under the civil right of privacy, in that sense is also a part of

law of symbols. Of course, the name is given to us by the means of some kind of

registration, and it is in that sense that its aspect protected by the right of publicity is

acquired only by the use in public.343

Therefore, we consider American common law theory based upon use

as more appropriately recognizing intellectual property as the intangible object of the

trademark right, than it is possible to achieve by constituting the right through an

administrative process, as in the civil law registration system. It is also appropriate to

stress that if one insists on the concept of the use prior to the acquisition of the right,

as the United States properly do, one should base his claim on the acquisition of

property element built by the use. The acquisition of property right is the main reason

why use is, or should be required as the prerequisite. Conversely, if one does not

accept proprietary nature of the trademark right, it should be easy for him to part with

the concept of use required before registration. We realize, anyway that for the

purpose of stimulating the economies it is of vital significance that the right is being

granted by registration and not by the use. Legal assumption of creation at the

moment of granting should serve in covering other interests of the applicant during

the sensitive initial period on the market as a strong competitive tool. As such, it

undoubtedly has the advantage over the system in which producer have to prove the

use of the product before it starts the life in the market. Thus, it is logical that the law

of United States created first, the token use as the substitute of actual use, and recently

343 It is interesting to note that in one of the leading cases on publicity right, Estate of Presley v. Russen, 513 F.Supp. 1339 (D.C. N.J. 1981), the court stressed the proprietary nature of the publicity right in the following words: “In addition, this right, having been characterized by New Jersey courts as a property right, rather than as a right personal to and attached to the individual, is capable of being disassociated from the individual and transferred by him for commercial purposes. We thus determine that Elvis Presley owned a property right in his name and likeness which he could license or assign for his commercial benefit.” Another interesting issue regarding the publicity right is whether the legal persons may develop “persona” in the sense private persons may. See Eagle’s Eye, Inc. v. Ambler Fashion Shop, Inc., 227 U.S.P.Q. 1018, 1022 (E.D. Pa. 1985), and McCarthy, “The Right of Publicity,” (1987). According to B.W. Pattishal, D.C. Hilliard, “Trademarks,” (1987), at 369, eight states in the United States provide statutory protection of publicity right as descendible right: California, Cal.Civ.Code § 990 (West Supp. 1985); Florida, Fla.Stat.Ann. § 540.08(4) (West 1972); Kentucky, Ky. Rev. Stat. § 391.170 (1984); Nebraska, Neb. Rev. Stat. § 20-208 (1982); Oklahoma, Okla. Stat.Ann. Tit. 2 §§ 839.1, 839.2 (West 1983); Tennessee, Tenn. Code Ann. 47-24-1103 (1984); Utah, Utah Code Ann. §§ 76-9-405, 406 (1978); Virginia, Va. Code § 18.2-216.1 9 (1982).

switched to the system of the intent-to-use application. The balance achieved by

securing the applicant in the priority right, and granting him the right when he creates

a use should be economically favorable situation, as it also should serve the public

interest of the consumer. At the same time it is legally more consistent, then

constitution of the right by registration as in the civil law countries. However, it is

important when creating or applying the law to keep in mind the true nature of the

right. Specially in the civil law countries, where the awareness of the above described

nature of the trademark right is not so prominent.

The Survey Evidence

We will support our assertions by quickly outlining the role of the

surveys as the evidence in the trademark litigation. One can ask oneself two

questions. Why is it necessary to prove assertions by such an expensive and

complicated type of evidence? Is it not enough that the jury, or the judge in equity

proceedings determine the asserted wrongful use themselves? Almost every single

piece of evidence in trademark litigation as in any other judicial proceedings could be

proven by survey, in order to achieve higher accuracy of the evidence. For example,

in product liability cases we can imagine survey of the universe of expert witnesses

regarding the use of the state of art technology as better founded than single expert

witness’ opinion. It is not done so, because it is regarded as redundant and

uneconomical. Our answer to this dilemmas is that it is necessary because of the

nature of the creation which is the object of the property in the trademark. The

creation of goodwill is embodied first time in the perception of the trademark symbol

by the public. The symbol so perceived denotes the continuous quality, good, bad or

inconsistent, of a certain product. It is virtually embodied in the mind of every

consumer, or more precisely every consumer of the particular universe, in the sense in

which the “invention is reduced to practice,” or “work of art fixed in material object.”

As such the act of deceiving, false advertising, disparagement are the acts of

misappropriation of the goodwill, as the object of somebody else’s proprietary right.

They may contribute in creation of “badwill” same as not maintaining the continuous

quality of a product. The first have the legal consequences, the second has not. But,

the symbol used on the market, by its nature denotes, or stands for, certain meaning

only when accepted so between particular group of consumers. Of course, the

symbols in general may have meaning to a single person, or a couple. Therefore,

trademark as a symbol denoting the goodwill that is a creation embodied in other

people’s reading of the symbol, can be proved fully only by a survey. The judge, as a

single individual, in most cases will even not belong to a particular universe of

consumers in which the goodwill is created and the trademark is perceived.344 Even if

he does, the accepted reading, or the relevant meaning of the particular symbol can

only be confirmed in the universe that is reading it in conjunction with the

consumption of the product so denoted.

Instead of the Conclusion

In conclusion we will point once again that the nature of the goodwill

as the creation requires careful balance of the economic needs for the early protection

of the investment in the product, before any use is possible, and the relation of the

creation of the goodwill, plus the form of the legal right which a country is ready to

recognize in the trademark. The balance which the United States law achieved by the

latest reformation of the trademark law, and Mexican law had since seventies, is

probably the best in that respect under the present state of the doctrine of intellectual

property. We have to be aware that trademark is only the most rehearsed field of

contact between the law and the symbols, due to the economic importance of the

relations on the market. Some aspects of other forms of intellectual property

protection, like publicity rights, and design protection, may also be improved by

recognizing the legal principles regarding symbols developed first under the pressure

of the subjects competing on the market. There is no reason why the law should not

recognize the same principles in the use of other kinds of symbols once their role

grows to be economically, politically, or culturally significant enough for legal

protection to be granted.

The answer to the question set in the title is, no, the use is not required

for the foreign applicant, as far as the positive law of the United States requires.

However, the issue raises numerous questions, as it gives way to the privilege of the

foreign over the domestic applicant. The international mechanism is based on the

understanding of the trademark registration as economic vehicle for protection of the

investment in new products. Under the present law of the United States, use of the

foreign applicant’s trademark prior to registration in the U.S. is not necessary. That is

logical, as the international obligations of the United States through its adherence to

the international treaties have to be fulfilled. Inevitable roughness caused by the

application of two different systems in one jurisdiction is the price the United States

344 We have also to pay attention to the situation when already known tradename accompanies the new product and a new trademark, or simply, when a known trademark appears on the new product. In such cases it will be such known mark that will actively contribute in building the goodwill regarding the new product, thus perpetuating the “source” goodwill.

have to pay for maintaining the system based on the registration of the right acquired

through the prior use. However, in broader legal context, the use of the trademarks as

the prerequisite for the acquisition of the right should be required, and the registration

of the trademark right only after the right is acquired should be justifiable. In

concluding so, we are well aware that the consistence of the legal concept is rarely a

valid argument when faced with the requirements of the economy.

We will here, regardless of such awareness, once again restate our

position regarding the position of the trademark law within the broader frame of

intellectual property law. In that structure the trademark law is one branch of the law

regulating the rights regarding the creation of the meaning of symbols. Naturally, the

law of rights regarding the right of use of the symbols whose meaning was so created

developed first on the market, where the objectives of economy lead persons in the

disputes often fairly inevitable. As such, trademark law is only one branch of the

emerging new law of the symbols, in its particular case regulating the use of the

symbols on the market. Such process of providing the symbol with the meaning gives

a proprietary right to the owner of the symbol affixed to the pertaining owned

products, which has put monetary and organizational efforts into the activity of

maintaining the quality and promoting owned products. We do not consider the

trademark law primarily as the part of the law of unfair competition, at least not

substantially more than other systems of intellectual property law. We believe that all

of the systems of protection, although they may have developed protecting some

aspects of unfair competition, and all of them did, are actually serving the needs of the

individual as the part of a society and the society as the whole, by providing property

rights in creation. In the slow process through which the crystallization of the property

elements gradually emerged, some other aspects of the issue, like the moments of

unfair competition may have been visible in the courtroom earlier, due to the market

forces which tend to drive the relations as they appear on the market into the

courtroom.

INFORMATION - THE FRACTAL OF CREATION

We suggested in the introduction that the problem of the exhaustion of

the “common” presents serious philosophical problem in the law of property.

Thinkers which have faced it attributed to the fact that the ownable things, our

tangible environment, will sooner or later be exhausted, either owned or materially

wasted. And indeed, the scarcity of the resources was clearly pointing out that such

time may arrive in our lifetimes regarding certain particular types of property. The

reserves of natural oil will last for couple of decades, unless new discoveries are

made. As the consequence property regimes started to change its characteristics. It is

not more possible to own land in the urban areas in many countries. There is no more

continents to be discovered, so that large pieces of land can be awarded to deserving

royal subjects which undertook the exploring expedition in order to find gold. It

would appear to anyone that the resources are finite.

Adjustability of the mankind to its environment seems to be very high.

Mankind adapts to the changing environment not only physically, but also socially.

Whole society is apt to follow certain solutions offered by the individuals in

conjunction with each other. To the reader who apprehended the preceding text will

be clear that we would not distinguish social changes sharply from the changes

environment imposes on our body. If natural oil is going to be exhausted we will face

lack of energy for transport and heating. In order to prevent our bodies to feel cold we

will invent new insulating materials, and ultimately new sources of energy for the

purposes of heating, thus react to the physical changes in the environment by using

our internal resources. Also, we will react socially implementing the laws regulating

consumption of scarce resources, transition period to the new sources and similar.

But, our internal resources are the subject of this study, and now we have reached the

point in which we have to regulate socially their exploitation. One of the most

prominent social instruments for doing so is the law. And the moment when the social

situation got ripe for the changes in the law is now. In adjusting the law of the

protection of creation, i.e., intellectual property law, to its increasingly important

function of protection of central resources, i.e., creation, we are witnessing a birth of a

new social concept of property, and its legal protection.345 We have to be aware that

345 As such it will be able to control its self interests to the extent thet will be credible to the third world countries. We have to note that in some respects slogan “third world” fairly describes the situation by pointing out that it is not one world, as the matter of time in which our reality is taking place. There are more realities, and they appear on different levles of space and time only relatively simultaneous. Actual differences are big enough to justify understanding of the world as divided in entirely separate realities.That conclusion does not preclude understanding of the differences and their turning in the compartive advantages or other forms of cooperation operationalized through the instruments of trade...

Sculptor Richard Lippold was well aware of the multi-real nature of reality when he wrote: “Just the most minute particle, for example, has been described for us, it seems to dissappear, or at last to transfer its ‘true’ existence to some other area of ‘reality’ --from physical matter to electrical energy, for instance. Recently even the smallest electrical particle has been assumed to be a tiny bit of whirling space, inexplicably thrown into a dervish-like vortex, emanating energies as by-products whose illusory forms (waves, electrical impulses) we

this process is only taking place in the certain part of the world’s civilization which is

passing to the stage beyond stage of industrialization, we will here mostly consider

the changes which are happening there. At the same time, we are aware of the cultural

imposition of the rest of the global civilization to fully apprehend the significance of

these changes. That may be so due to the fact that the civilizations other than Western

are not affected directly, meaning that they are not generating the changes, but rather

indirectly although the influences are quickly internalized. Our opinion is that in the

process of the changes it is the attitude of the developed countries that has been

changing first. The change from the standpoint where the political inability of a state

to solve problems may extend to the war is changing towards the politics where the

solutions are extending into the mutual cooperation rather than into the conflict. Once,

Csanyi contends, the societies reach certain level of the cultural evolution, and that is

when “allopoietic cultural machines”346 are developed, patterns such as characteristic

for industrialized societies develop. Following passage from Csanyi relates to both,

changes of the political patterns of industrialized societies and the penetration of the

artifacts and the ideas of such societies into the “third world” countries.

Surpluses that were created by the cultural machines made trade, exchange, and mutual economic interactions possible. Aside from war, economic interactions are those forces by which states are able to influence the probable genesis of each other; that is, those forces will lead to integration and the creation of a higher organizational level.

The artifacts produced by cultural machines have to be functionally distributed, and material and energy inputs for operating them should be provided. But these are the problems of more-developed industrial systems. When these new ideas and new artifacts appear in the creative space of the underdeveloped states, they cause disturbances in the stability of their replication, which is the central problem of the underdeveloped nations.”347

interperet as ‘matter’ through our limited perceptions. We have come, since my childhood, from the ‘knowledge’ that we are chemically ninety-five percent water to the ‘certainity’ that we are physically one hundred percent ‘empty’ space. Richard Lippold, “Illusion as Structure,” from Structure in Art and Science, (ed. Gyorgy Kepes, 1965), reprinted in Modern Culture and Arts, at 215.

346 Cultural machine is defined inCsanyi in relation to Mumford’s concept of “living machines.” “The “machine’ is principally a programable device, a team of experts that can perform tasks according to plan, should it be production or an action of some purpose.” Id., at 157. Csanyi further presents Polanyi’s conception of machine as “every kind of organization in which the constraints of higher level were built on the dynamics of the components of lower levels. In this regard there is no difference between mechanical machines constructed by man and biological organisms. We may add to this that the above definition also is valid for cultural machines.” Id. Further Csanyi distinguishes machines as autopoietic, being those whose product is itself, and allopoietic , which are those whose product is something else. Id.

347 Csanyi, id., at 198.

We consider important to address here the phenomenon of the

ownership of the inexhaustible resources. We have already pointed out that the

creativity is an inexhaustible resource in Lockean sense. In that respect, the private

ownership over the resources is socially easily affordable. In light of such nature of

creativity, the intellectual property concepts have to develop legal means of protecting

the ownership. Finally, this development will have undoubtedly strong impact on the

overall property concepts in the future. First, we will offer an example of recently

developed ability of the human mind to conceptualize infinity. For that we will use

the illustration of the Koch Snowflake348 . To construct it one should begin with a

triangle with the sides of length 1. Next step is adding a new triangle to its side, which

is one-third of the size of the original triangle. The result of such process, if continued

ad infinitum, will be a line of the infinite length within a finite space. The legth of that

line is 3 x 4/3 x 4/4 x 4/3...=infinity. It looks as follows:349

On reflection, it becomes apparent that the Koch curve has some interesting features. For one thin, it is a continuous loop, never intersecting itself, because the new triangles on each side are always small enough to avoid bumping into each other. Each transformation adds a little area to the inside of the curve, but the total area remains finite, not much bigger than the original triangle, in fact. If you drew a circle around the original triangle, the Koch curve would never extend beyond it.

Yet the curve itself is infinitely long, as long as an Euclidean straight line extending to the edges of an unbounded universe. Just as the first transformation replaces a one-foot segment with four four-inches segments, every transformation multiplies the total length by four-thirds.

348 It is named after Helge von Koch, a Swedish mathematician who described it first in 1904.

349 The following illustration is reproduction from the book by Gleick, id., at 99, where the credit for illstation is given to Benoit Mandelbrot.

This paradoxical result, infinite length in a finite space, disturbed many of the turn-of-the-century mathematicians who thought about it. [* * *]

The mind cannot visualize the whole infinite set of self-embedding of complexity. But, to someone with a geometer’s way of thinking about form, this kind of repetition of structure on finer and finer scales can open a whole world. (Emphasis added.)350

Ideally, regarding the social forms, lawyer’s mind should have the

geometer’s mind ability of thinking about form. In unfolding the layers of the

protection law provides to the individuals, lawyer discovers that actually all of the law

is built around the protection of the single value. It could be called freedom, or it

could be called individual. In this sense, denoting the central object of law, these

terms are synonymous. That answers our question, why there is no such branch of the

law as “law of freedom.”351 It is because all law, by the entire multitude of its

instruments serves this purpose. In that context property is protecting one aspect of

individual, or freedom. Protection of our sense of the things belonging to us no less

central to our feeling of freedom than the right to move freely. We cannot afford to

deny full protection of property if we want to hope that individual will feel free and

complete. One’s right of communication may be protected by the means of

instumentalization through the First amendment and the series of pertaining laws, just

as it may be protected by the property rights over the information (i.e., the choice)

one is making in communication. Further aspects of one’s right may also be protected

by the law of contracts where an individual may regulate with other individuals, or

groups, certain aspects of his rights protected by the law in even more fine detail. It is

still the same value law serves -- protecting the activities that are embodying the fact

of freedom. In that respect, both geometer’s mind and lawyer’s mind perceive form

only as instrumentalization of substance. *Another dichotomy falls to the level of its

incidental relevance. Every substance may take different form without going out of

the certain level of unexpectedness of the form. But whatever their relation in our eye,

the remain one and single phenomenon in conjunction with innumerous others.

We will for the moment turn again back to the fractals. Now we will

use the explanation of the role of the fractals as the value of measurability of infinite

350 Gleick, id., at 99-100.351 We find support for this view in the decision of the United States Supreme

Court stated in Lynch v. Household Finance Corp., 405 U.S. 538, 552 (1971), that “the dichotomy between the personal liberties and property is a false one [* * *] a fundamental interdependance exists between the personal right to liberty and the personal right in property.” Hammond also provides that example, id., footnote 11, together with the references, among others, to Stewart J. Charles Reich, “The New property,” 73 Yale Law Journal 733, (1963-1964), and B. Ackerman, “Private Property and the Constitution,” (1977).

or undefinable. If it would appear unusual to use the mathematical thinking in

explaining legal matters, we have to remind that mathematics are just another

language, or code, through which we may express our understanding of reality. In that

it is no different than a poem, or a judicial opinion. Only, it has a quality of high

exactness of expression.352 However, this quality is not qualitatively different from

other forms of expression of reality. In other words, whichever code we may use to

express our understanding of our environment, or our universe, it may be the same

environment we are trying to express. And, as we know by know, there are more than

one way to express one reality, even in mathematics. What we have to fully

apprehend is that every of this possible ways of expression brings us to the

understanding of the same reality as the different one. Euclidean geometry is being

substituted by the fractal geometry, Newtonian physics by quantum physics. The

reality that has been brought to us by the newer means of conceiving it and expressing

it is different than the one conditioned by the the former. Thus, we will use new

mathematical conception of reality in order to explain our understanding of creativity,

as law did not yet developed such new conception. If nothing else, it will be

illustrative enough to trigger our own conception of the legally relevant relations.

Fractional dimension proved to be precisely the right yardstick. In a sense, the degree of irregularity corresponded to the efficiency of the object in taking up space. A simple, Euclidean one-dimensional line fills no space at all. But the outline of the Koch curve, with infinite length crowding into finite area, does fill space. It is more than a line, yet less than a plane. It is greater than one-dimensional, yet less than a two dimensional form.353

Gleick explains in continuance the measurability of the fractal

dimension. We are not trying to suggest by this that the fractal dimension of creativity

as a resource is relevant for the purposes of the law. Neither, are we suggesting at this

352 Vilmos Csanyi, A General Theory of Life, Mind and Culture, (1989), at 2-3: “Usually, mathematical models are most appreciated because of their unambiguous logic, relative structural simplicity, and compactness, and well-developed deductive verifiability. Nevertheless, these elegant tools have some inherent drawbacks. They are not flexible enough, are often not suitable for describing truly complex phenomena, and are not creative in a broad sense. Therefore, the first step of model-building should always be the construction of an intuitive model, which by its nature is able to embody ambiguities, contradictions, and descriptions on different levels. An intuitive model thus may reflect a sufficiently complex part of reality and at the same time allow the possibility of a further, more rigorous mathematical treatment.”

353 Gleick, id., at 101-102. Using techiques originated by the mathematicians early in the century and than all but forgotten, Mandelbrot could characterize the fractional dimension precisely. For the Koch curve, the infinitely extended multiplication by four-thirds gives a dimension of 1.2618.”

point that the information as a commodity should necessarily have other dimension

than its market value, although other measurability characteristics could be imagined.

We are only pointing to the fractal, i.e., infinite, nature of the phenomenon of

creativity. The name of its object is creation, its function is resource. As such, it is

necessarily to be distinguished from the technology, from the art or any other result

creativity may produce. That is not creativity that is owned. Creativity is the resource.

Its results are, or could be owned. The results are commodity. Finally, it is the

economic life of the results that needs the protection of the law. In that respect,

distinguished to the resource and commodity, we may apply the different property

regimes to each other. Traditional forms of property over resources may be found in

the views expressing belief that the information is resource. It is not, creativity, or

individuals are resource. Individuals, as the resource should enjoy the status and the

protection international law grants to the common heritage of the mankind. Our

civilization is our own heritage, and we have the duty to preserve it. The information,

the choice made, is the object of the ownership of the individual, and he may treat it

as the commodity, or as the gift, but he enjoys full right over it. Full, like no other

right over any object should be. At the same time certain information should be

treated as the resource, and they already are recognized as having special status.

Governmental information should be freely available, state even paying the costs of

its distribution.

A BRIEF HISTORY OF SPACE AND TIME

Before we draw conclusion of this argument, we want to present the

same problem from another angle. The problem, comprehension of the full scope of

the cultural changes Western civilization went through in twentieth century could be

seen clearly of the orbits of the sciences and the arts. If our hypothesis from the

introduction was right there must have been more and more compatibility of these

orbits as the boundaries between the two fade. And indeed it is so. Marshall McLuhan

contended that “[t]he artist is the man in any field, scientific or humanistic, who

grasps implications of his actions and of new knowledge in his own time. He is the

man of integral awareness.”354

354 McLuhan, id., at 71. He also said: “No society has ever known enough about its actions to have developed immunity to its new extensions or technologies. Today we have begun to sense that the art may be able to provide such immunity. [* * *] It is in this aspect of new art that Kenneth Galbraith recommends to the careful study of businessmen who want to stay in business. For in the electric age there is no longer any sense in talking about artist’s being ahead of his time, if we reckon by the technology is, also, ahead of its time, if we

End of nineteenth century was clearly revolutionary in art, juat as it

was in sciences. Artists picked the message of newly understood reality and started

communicating it as a message which reverberates still.355 All shapes can be reduced

to sphere, cone, and cube was Cezanne’s message. The shapes are but combinations

of the clusters of color, was pointilistic message. Obviously his “artistic” message was

“scientifically” sound, as the science used this principle in conceiving the TV screen,

where tiny groupings of blue, red and green points provides realistic illusion of the

shapes in movement. Goethe’s analysis of color was just in the same amount based in

the artistic perception of problems which were subject matters of optics, or more

broad, physics.356

One of these ultra important messages which were going to transform

Western civilization was Monet’s. His serial paintings, between which those of the

Cathedral of Rouan are probably the most famous, signified the first time that an artist

provided the spectators of his work with the picture of one single object at the

different times. The serial approach had the potential to radically change the view on

reality the spectators of his work might have had.357 It may sound banal, but the

reckon by the ability to recognize it for what it is.” Id., at 70. It was Wyndham Lewis who said: “The artist is always engaged in writing a detailed history of the future because he is the only person aware of the nature of the present,” as in footnote (#),id., at 70.

355 For an excellent study of the relation between the scientific comprehension of the reality and its artistic pendant, see Sidney J. Blatt, in collaboration with Ethel S. Blatt, Continuity and Change in Art; The Development of Modes of Representation, (1984). At 94-97 is a table in which the author provides an chronological overview of the individual and cultural development. Individual development consists of Concepts of space and Concept of Object; while Cultural development consists of the periodizations of the periods of the History of art, prevailing scientific construction as the Cosmological World View and of the Concept of Scaling.

356 Goethe, regarded most often as an artist, did not hesitate to pursue into the exploration of the environment. Two of his treatises, “Theory of Colors,” and “On the Transformation of Plants” in their para-scientific approact to the matter did influence modern physicists. See Gleick, id., at 197.

357 In an article by Rebecca Nemser, entiteled appropriately “A different way of seeing,” “Boston Phoenix,” March 2, 1990, John Coplans, artist and critic, author of “Serial Imagery,” said regarding the Monet’s exhibition at the Museum of Fine Arts: “Why did Monet work in series? We know that the mathematicians were working on the idea of series at the same time that Monet was painting in series, and we also know that the musicians work in series. We know that many artist afterward worked in serial form - Joseph Albers, Andy Warhol, Frank Stella, etc. There is shift of perception that began in photography. Photography is fast. Monet is about fast perception of the change of light, how it changes as you look. Monet’s paintings are as much about perception as about the things he painted. Monet was the first painter ever to paint in series. All the paintings before that were theme and variation. There’s a big difference between painting a series of different trees and painting the same tree enlessly. And no one bothers to explain

effects of this message were far reaching. It had such effects as that particular artistic

method suggested different perception of the relation of the space and the time then an

individual of Western traditional culture was used to. Such effects last until these

days, and in that respect his art is still relevant to us, unlike Gothic sacral painting

whose perception of reality is well digested in our culture.358 It provided viewer with

the understanding that one space have reality different in different times. What is even

more important it was not only the Artist, that traditionally recognized prophet of the

Western civilization who made this statement by using certain artistic method. The

other brother of the violently split shaman twin, the Scientist, also have made it. Jules

Henri Poincare, whose studies of the topology and dynamic systems helped modern

theoreticians of chaos in understanding the reality. Gleick, in describing the role

Poincare played to the modern scientists used following words: “Poincare, at the turn

of the century, had been the last great mathematician to bring a geometric imagination

to bear on the laws of motion in the physical world. He was the first to understand the

possibility of chaos; his writings hinted at a sort of unpredictability almost as severe

as the sort Lorenz discovered.”359

it in the exhibition! That’s the issue Monet raises -- that it was possible to paint the same thing repetitively. It’s not theme and variation, it’s the same tree.” (Emphasis in original.0Deborah Cornell, artist and teacher of painting, said: “The exhibition showed me that Monet was really a modern thinker. It hit me when I saw the grainstacks -- the assembly of the different perceptions of the same subject, in a continuum. He wasn’t into absolutes. He was into relativity -- the idea that something can change and still be true.”

358 Michael Mazur, artist and a teacher at Harvard, in the same article outlined this effect of removal of the time and space boundry: “With Monet, no matter how many times you See it, you can’t reconstruct the painting in your mind, because you can’t remember color and you can’t remember light. There’s an elegiac quality -- a sense of time passing, a daily kind of time passing, real time passing. Monet is about someone going out there every day and being there. And when you are in front of that painting, you’re there. (Italics in original.) Id.

359 Gleick, id., at 46. It was Poincare who have said “I know it must be right, so why should I prove it?” Such a statement, we believe is paradigmatic for the “science after science,” id., at 88, as it stands today. The “idiotism of specialization” and the requirements of formal proof before anything is understood, once realized, lead the science out of its seclusion from the arts. Regarding the specialization, McLuhan also was of the opinion that it is at its end; “After three thousand years of specialist explosion and of increasing specialism and alienation in the technological extensions of our bodies, our world has become compressional by dramatic reversal. As electrically contracted the globe is no more than a village. Electric speed in bringing all social and political functions together in a sudden implosion has heightened human awareness of responsibility to an intense degree.” McLuhan, id., at 20. Aside McLuhan’s sometimes not easy penetrable lingo, the expression “global village” has been often misused, or misunderstood. Its meaning is not only that the size of the world is contracting in our perception, making us feel more familiar in all of its parts, including the tropical jungles and Arctic plains, but also that the artist, the poet and the priest will be shaman again. That means that the integrality will take the place of the seclusion.

The thundering echo of Monet’s artistic method, and the meaning that

it expressed, was caught up by Picasso who has lead it to its ultimate conclusion. By

painting a human face from the front and from the side at the same time Picasso

energetically wiped out one of the basic conceptions of Western perceptions of reality

-- division between the space and the time. If we can see an object from the front and

from the side at the same time, it is not anymore the reality Western civilization knew,

neither was it the world as it knew it. But, it was not only the bunch of exalted poets

who realized that process, starting with Baudelaire’s odes to new morality, it was also

the science who sung the same ode.360

Above everybody, Albert Einstein whose mathematically expressed

message of the relation between space and time Picasso painted.361 The relation of

the space and the time is relative.362 This teaching was embodied in the mathematical

theory of relativity, and freed way for the further developments of science into the

quantum mechanics. But it was still divided, the culture did not recognize its

dichotomies and still was not able to paint itself a new integral picture of the world.

The scientists who had more modern message even earlier had to wait for the most

valuable aspects of their work to be rediscovered. Before them, both Dada and Soviet

revolutionary poets emptied the codes of language in order to fill it with noise. The

message of the relativity of the space and time was examined from the other aspects.

360 Baudelaire, Flowers of Evil361 For more on the development of the history of art in the last century and

the events that preceeded,see Blatt, id., ch. 5, at 290-363, entitled “From linear Perspective to Conceptual Art: Impressionism, Cubism, and Modern Art.'

362 Lippold, id., Modern Culture, at 215. “[W]e know now that movement is relative, and their speed may be such that they are also standing still, as we are told we would be if we ‘traveled’ at the speed of light.. Or their movement in space, which we now ‘know’ is infinite and endless, would imply that they really are going nowhere, because there is no ‘where.’ We can no longer ask ‘where’ or ‘when.’ (As I write this, an astronaut has just flown out of the February twenty-first into February twentieth and back again, not only once but several times! If we cannot say ‘where’ he is or ‘when’ he is, can we even ask ‘what’ he is?).” Later in the text, at 224, in analyzing structure he returns to the question of the removed space and time in our recent culture: “But these are the very clues to our contemporary feelings about structure. Symetry is an accident of disorder, yet accident is the order of non-symmetry -- what Hans Arp calls the ‘Laws of Chance,’ of the scientist approximates with his ‘Second Law of Thermodynamics.’ The wildest of neo-Dada ‘happenings’ can be as carefully calculated and reconstructed as a master plan for the sewers of New York City. In fact, since there is no ‘time’ and ‘space,’ all events and objects are merely immediate sensations. Order is but an event of the briefest duration, for nothing is identical from moment to moment.” Here Lippold is clearly restating what Monet discovered. And let us state, once Monet’s message is commonly accepted his work will drift into the space of art that does not contain information relevant to our questions, just somewhere naear the Gothic painting.

Beckett wrote “Waiting for Godot,” showing how one space relates to infinite time, as

consequence by losing its recognizability as locus.Piet Mondiran wrote: “Both science

and art are discovering and making us aware of the fact that time is a process of

intensification, an evolution from the individual towards the universal, of the

subjective towards the objective, towards the essence of thing and ourselves.”363

Poincare, whose studies of the topology and dynamic systems helped

modern theoreticians of chaos in understanding the reality was the part and generator

of the end of Western civilization. He may have been before the other scientist there

where the sciences arrive today. And he was there without the help of the media that

extended our abilities, thus enabling us to understand. In any way, the end of history,

in the sense of radical change of quality of Western civilization, started well in the

heyday of history, and had the name before it was visible from Washington. Its name

was Twentieth Century. The device that made it visible is the theory of chaos.

But, before the chaos, Twentieth Century had to unfolded the reel of

the history. First, Surrealists sung their ode to ‘automatic’ thinking. By the way of

automatic catching of thoughts as they drift and thunder through our mind, specially

during the unconscious states, like dreaming, and using the scenes so generates in

writing, the Surrealists actually simulated feeling. The uncontrolled thinking appeared

to closely resemble feeling. They introduced organic abstraction in textual works in

the similar way Kandinsky did to painting. That song the people understood as hymn

to chaos.

All of the changes have developed in the domain of teh elite culture,

and probably would have stayed there, would not rock and roll further remove the

boundaries between the dichotomies incorporated in Western culture to an even larger

extent. Because, not only were science and art detached, so was the elite from the

popular art within the art. It was just another dichotomy of the Western civilization,

but its power to enable other understanding of reality to penetrate the society was

extraordinary. Any possible reinterpretation of reality was bound to stay isolated as

only elite could understand it. So it was, until the mass media. Media having the

ability to develop their own language did just that. If it would not be rock and roll it

would be something else. But it was bound to come from America, the land of

Western civilization but not overburdened with the heritage of cultural patterns and

codes as was Europe. Technical basis for development of the new media that had to

be filled with “programing” was strong. When the new music appeared cultural

363 Mondrian, id., at

brakes of traditional culture in America just were not strong enough to stop it. The

expansion of the new music was not to be stopped as, it communicated new message,

whose understanding of reality was more meaningful to the emerging civilization than

the old one. First step was, logically, England, who spoke the same language, and also

was less burdened by the cultural patterns filled with the classical music than, say,

France or Germany.

But we have to understand that it was not the spoken language that it

was carrying the message in rock and roll.364 Any music in history is but the code,

transmitting certain messages, like any other code does, including languages. So the

message encoded both in the media through which it was transmitted, and in the

understanding of the world by the authors that created it, new music was the language

that had the potential of reshaping our understanding of reality. It was transmitted

through the media whose very nature made the difference between the elite and

popular obsolete. The understanding of the new space was embodied in the music.

Music and the jet airplane were consequences and causes of further reshaping of the

world, until the computers came into play. Computer are rock and roll of science, and

the fact that personal computers developed regardless of the super-computers which

are undeniable more powerful is analogous to the erasure of the elite - popular

dichotomy in arts. The scientific view of the world came on every one’s desktop. The

potential of the spreading of the new culture reached the critical mass. And it is

happening right now, in the front of our eyes and before the benches of our courts.

And our duty is to act and not only to sit and read the letters which are not telling us

anything relevant about the methods of establishing what is valuable and enhancing

changes.

364 Roger Sessions, “The Listener,” from “The Musical Expirience of Composer, Performer, Listener,” (1950), reprinted in Modern Culture and the Arts, at 126. Sessions, in trying to grasp the notion of the “musical understanding” offers following: “The difficulty, I think comes from the fact that while...the instinctive bases of music, the impulses which constitute its raw materials, are essentially of the most primitive sort, yet the organization of these materials, the shaping of them into the means of communication and later into works of art, is and historically speaking has been, a long and intricate process and one which has few obvious contacts with the world ordinatry experience.” While Sessions is well aware that the music serves as the means of communicatin between the creator and his audiences, so that he explicitely states that “[u]nderstanding of music, as relevant for the listener, means the ability to receive its full message...,” at 127-128, at no point of his essey does he reach the logical conclusion that music is able carry the meaning of the message because it is a certain code. Code has been defined**** Linguists have been interpreting language as the code. In that sense music, as being code, is nothing else than a specific “language,” through which we may express certain feelings, thoughts, or both.

These changes require efficient laws which will regulate the new

relations emerging in post industrial societies. Peter Dormer says that: “[i]n amore

general sense we are becoming accustomed to the science of teh incorporeal in the

same, pervasive way that we got used to the theories of evolution, or the much earlier

Copernican revolution.”365 [6.99] Sapir, Worf

The Language is Formative to the Ideas

For Csanyi history of the development of the languages and the history

of production of artifacts are inseparable.366 It is of utmost importance for us to

understand that the two virtually give shape to each other. Csanyi is pointing to the

teaching of Isaac, who stressed the role of the processes of differentiation, by which

the mind of the toolmaker is able to separate different shapes, the other serving as the

system of rules which serves as the basis for production of the ordered assembly of

forms, i.e., artifacts. He further points that first man-made artifacts, created about

two and a half and three million years ago did not show any signs of ornamentation. It

took about one million years, symmetry appeared, which Isaac calls “first

unquestionably cultural idea.367 Csanyi, referring to Vertes, Marshak, Schwartz and

Skoflek, further states that “first symbolic objects appeared not serving direct

practical purposes appeared only 50,000 to 100,000 years ago.” That leads him to the

immediate conclusion that “[t]he development of language must have occurred

between these dates, i.e., over the period of 1.5 million years if we accept that the

development of artifact production adequately reflects linguistic ideas.”368

THE EXHAUSTION OF RIGHTS

365 Peter Dormer, The meanings of Modern Design - Towards the Twenty -First Century, 1990, at 81. Dormer is providing us withe the further examples of merging of the arts and sciences, namely in the works of Saul Bellow, (More Die of Heartbreak, botany), Ian McEwan, A Child In Time, mathematics, physics), Tom Stoppard, (Hapgood, small particle physics) and John Updike, (Roger’s Vision).

366 Csanyi, id., at 176, et seq. He is stating that “[t]he use of language itself is a certain kind of cultural idea system. Thus its development is bound to show the features of a real evolutionary process. The same applies to the idea components concerning the creation and use of artifacts.”

367 G.L. Isaac, “Stages of Cultural Elaboration in the Pleistocene: Possible Archeological Indicators of the Development of Language Capabilities,” in S.R. Harnad, D.H. Steklis, & J. Lancaster (eds.) Origins and Evolution of Language and Speech, Ann. N.Y. Acad. Sci. 280:131-142.

368 Csanyi, id., at 177.

We have now to point to another phenomenon, inherently

characteristic to the property rights in creation. In this context, when we say that the

rights are exhaustible, it has nothing to do with the term “exhaustion doctrine” as a

specific version of the “first sale doctrine” is known in the law of European Economic

Community. There the meaning denotes exhaustion of the right to control the sale of

the material object in which a patented creation is contained upon the first approved

sale.369 The doctrine is created in order to avoid problems the distributors of products

that contain patented creation on the different territories of the Member States.

When we are using the term we are pointing to the fact already

described in the chapter on property, that the object of the intellectual property has

somewhat elusive nature. The fact is well recognized by the positive law which limit

the duration of the most intellectual property right in time. Even such rights which do

not have the term of protection granted determined by the law, do provide the end of

the right in the particular events. Trade secrets protection is lost when the secrecy is

lost, trademarks protection is lost when a mark becomes generic. The fact that the law

tried to determine statutory terms in patent and copyright systems just confirm the fact

that the information have the quality to become common or public property. At the

certain point of the life of a creation, the information contained “materialize.”

Paradoxically, this materialization happens on the level of the ideas at the moment

when information factually became accessible, or better said, accessed by the general

public. Hughes notes this, and refers to the phenomenon as to “a built-in sunset” of

intellectual property.370 Other authors * But the perishable nature of the right over the

369 See e.g., B.I. Cawthra, Patent Licensing in Europe, (1978), at 86 et seq. Cawthra provides the brief history of the doctrine of the exhaustion of rights, as it was propesd and adopted by nine governments of the Connvention for the European Patent and Common Market on 15 December 1975. The general reporter, Mr. F. Savignon described its content as the characteristic of the rights of the national, or then projected, Community patent owner which “should be exhausted once the products protected by the patent had been put on the market in one of the contracting states by the owner of the patent or with his consent, for example, by a licensee,” at 86. It is understood, in addition that such patent owner should not, “by exercising his rights, be able to prevent the free movement of goods within the Community, once they had been put on the market.” Author also provides the literature on the subject.

370 Hughes, id., at 296. “Perhaps the greatest difference between the bundles of intellectual property rights and the bundles of rights over other types of property is that intellectual property always has a self-defined expiration, a built-in sunset. Imagine how different Western society would be if it had developed on the basis of one-hundred-percent inheritance tax. This difference powerfully distinguishes intellectual property from other property. The remainder of the article explains, at various junctures, how this sunset enhances the social neutrality of intellectual property rights and improves the fit between these laws and the theories by which they can be justified.” (Emphasis in original.) Compare Hughes’ suggestion on social neutrality of intellectual property to our suggestion

creation, does not itself be guided by the attempt of the law to limit the duration of the

right. In some cases, the right will extend longer and the owner will attempt to exploit

his intellectual property even under the penalties imposed under the system of unfair

competition law. However, more often it will be that some aspects of the right will

perish before the statutory term of protection. We will try to provide some examples

that may clarify this contention.

At the certain point of exploitation of an artifact, for instance musical

composition, and let’s say hat it is “Billy Jean” by Michael Jackson reaches a point of

saturation. In a certain conceptual way, the fact of saturation materializes the

composition in the reality of so many people that it is virtually impossible, and

conceptually unnecessary for its creator to keep the property right to the song. On the

basis of property he was remunerated to the extent that he is, simply said, a very rich

person. Any criterion of copyright justified on incentive becomes pointless, as the

argument for encouraging that creator to create in the future. One can even go so far

to conclude that it destimulates him to create, at least at any degree of artistic level.

But the protection exists still and generates income to the artist for the fifty years after

his death. But propertywise, his work drifted in an factual public domain within the

term of protection granted by the statute. To protect its needs for free copying the

society creates the “black hole” of the premature ejection in the public domain. It is

not simple to recognize the borders defining the public domain, neither the moment in

which some aspects of the exploitation of the artifact are out of the domain of its

creator. This “black hole” of intellectual property, or a “built-in sunset” as Hughes

calls it, is to be found at different points of time in life of different creation. Being

aware of that phenomenon he consistently, with the help from Michelman, creates a

common of ideas that “become extraordinary.”

In some respects, and Hughes is completely right in that, the

phenomenon we mentioned as recognized in the trademark law, where the sanction of

the loss of property right in the symbol denoting the product and its source is imposed

on the owner of such symbol in the event that symbol becomes generic term denoting

whole class of same or similar artifacts. In the United States certain famous trademark

symbols became generic terms, like “aspirin,”371 “cellophane,” or “thermos.”372

However, some other trademarks were restored upon the successful efforts of the

owner to de-genericize the public use of the symbol. Such were the cases of

that power acquired through creativity is inherently democratic in nature.371 Beyer Co. v. United Drug Co., 272 F. 505 (S.D. N.Y. 1921).372 King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir.

1963).

trademarks “Xerox®,” “Singer®,”373 “Kleenex®,” or “Band-Aid®.” We will quote

entire part in which Hughes suggest that a process of “depropertization” is very real

part of intellectual property.

A second group of extraordinary ideas -- which contains ideas like the architectural columns -- may not be monopolized because of their widespread public use. At first, this sounds like a poor argument: that the idea of a column is widely used may mean it is a “public idea.” but it is hardly a self-evident reason why it must be public. Yet widespread use of something, like columns and vaulted ceilings, has another effect: it makes a particular idea appear to be basic truth or process.[* * *]

In short, some ideas become “depropertized.” Originally, they could have been subject to private ownership (unlike the first kind of extraordinary ideas), but the pressure to keep them in the common increases as the ideas become increasingly important to the society. As an idea becomes extraordinary, it is clear the common will not have “enough and as good” if the rights to the idea continue to be privately held.”374

Our opinion differs as much, as we contend that the criterion for

extraordinary ideas is not utilitarian in traditional sense, and that anything from a

musical composition “Billy Jean,” to a piece of the computer software, which may be

a game called “Tetris,” at the certain point turn in the independent entities in the

public domain. It simply is not possible, neither is necessary to control their

duplication. The part of their exploitation may be still generating the income to its

creators, which will provide much more than incentive -- it will provide the living for

them. There is certain proportion of the risk involved for the authors. The more

popular a creation is, the more it will generate from the conventional channels of

remuneration. The less it is popular, the less will be the risk that unauthorized copying

will be excessive. Only super popular creations, those which generate vast sums of

money will be excessively copied. Of course, criminal law, customs law, and other

administrative law should provide instruments of protection against counterfeiting of

artifacts illegally copied for commercial purposes. Individual duplication is not

controllable easily and it should not be intensely controlled.375 Specially so long as

the important part of the protection, which does not expire at all in most of the

373 Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1986).374 Hughes, id., at 320. For distinctionbetween the categories of extraordinary

ideas see our footnote (#), supra infra.375 It is possible to imagine that the books, for instance, will be locked in their

covers on the library shelves. Such cover-boxes can be unlocked by inserting an electronic card, not unlike today’s plastic cards for photocopying machines in the libraries, which will be able to count the number of pages opened, and accordingly calculate the price payable.

countries, and should expire anywhere, is the moral rights over the creation which

should be secured by the legal system of protection.

THE GIFT

By now it is clear that our use of the term intellectual property is for

the object of the legal protection, which is creativity. In that respect the two are

synonymous. Earlier, we have suggested that the protection of creativity is sometimes

inadequate, as it does not recognize any extra-maket rationale of creativity. Protection

based solely on recognition on monetary incentive, in our opinion, may sometimes

even lead to destimulation instead of enhancing the creativity - especially its higher

forms. Based on our contention that the creative activity is unavoidable attempt of

human individual to reconcile its relation with the environment, we conclude that it

would be conducted regardless of its market value. However, the very fact that once

undertaken it serves other individuals, and not only contemporaty ones in defining

their owne, as well as their social relation to the environment, the results creative

activity do achieve the market value. Such value is further reinforced by the symbolic

system of recognition, which we know as fashion, or trends. However, we further

contend that the creative activity in certain part would be conducted regardless of the

market system of its traffic, and that artistic artifact, as well as the results of basic

scientific researc are not conductecd in proportion with their monetary value. The

difference in the proportion consists of the activity which the creators themselves

consider as the gift. The notion that the traffic of intellectual property is actually

conducted in the regime of gift, especially so for the higher forms of artistic and

scientific, and specially religious creativity has to be explained in somwhat greater

detail.

The issue has another aspect. That is that the difference between the

regimes, or modes of exchange through the market or gift ultimately produce different

types of the societal relations. It is not only the matter of legal or economic system,

but may be deeply determinative to the social structure. It starts with the specific

impact the gift echange has on the individual level: “It is the cardinal difference

between gift and commodity exchange that a gift establishes a feeling-bond between

two people, while the sale of commodity leaves no necessary connection. I go into a

hardware store, pay the man for a hacksaw blade and walk out. I may never see him

again. The disconectedness is, in fact, a virtue of the commodity mode.”376 The

reason we are stressing the importance of the commodity mode is because we are

convinced that the disconnecting quality which is its primary consequence, also add to

the misplaced distinctions on patents, copyrights and trademarks. The integral

protection of intellectual property rejects this distinctions on the basis of the integral

nature of creativity. Besides the earlier argued reasons for integral nature of creativity,

it is also the characteristic of information to be produced as a gift, that gives the basis

for restructuring of its legal protection. Of course, however thorogh may the cultural

separation of the soul from the body, of the spiritual from the material be far, never

will the other mode be completly separated. In an airplane full of the corporate

executives it is still possible that one will be offered a candy by his previously

unknown passenger.

In the case of creativity, that is very much the case. We do let our

creations to be separated from our persons, from the effort in which they have been

created, and we receive the value that expresses a compensation for the labor the

effort consisted of, the compensation for the contribution of the new value, as well as

the compensation for the fact that we are willing to be separated from it. The

important fact is that any creator actually wants to be separated from the value he

created. Our nature, in general, makes us feel fulfilled as humans when we are able to

communicate our creation to other individuals. And what we part with at the moment

of communicating it is its embodiment, never with the information itself. The

information we have created stays forever ours, the part of our person. Hyde

continues his explanation of the difference between the gift and the commodity by

stating that: “If a thing is to have a market value, it must be detachable or alienable so

that it can be put on a scale and compared. I mean this in a particular sense: we who

do the valuation must be able to stand apart from the thing we are pricing. We have to

be able to conceive of separating ourselves from it.”377 It is easy for us to conceive

376 Hyde, id., at 56. On the other places in the same chapter the author further clarifies the different nature of the gift mode of exchange, at 60: “The synthetic or erotic nature of the giving of a gift may be seen more clearly if we contrast it to the selling of commodities. I would begin the analysis by saying that a commodity has value and a gift does not. A gift has worth. I’m obviously using these terms in a particular sense. I mean ‘worth’ to refer to those things we prize and yet say ‘you can’t put a price on it.’ We derive value, on the other hand, from the comparison of one thing with another.” Further, at 67: “Because of the bonding power of gifts and the detached nature of commodity exchange, gifts have become associated with community and with being obliged to others, while commodities are associated with alienation and freedom.” For further alaboration of the consequences of commodity type of freedom, that means the loneliness, see the following pages.

377 Hyde, id., at 62.

separating ourselves from the embodiments, not event the copies of embodiments of

our creation. Therefore, we are able to price the embodiment even if it is a sole copy

produced. But, from the information itself, from the idea created, it is hard to separate,

therefore equally hard to to price it.

But the transition of the information created into the commodity

happens on the level of the embodiment of the information, and rarely on the level of

the information itself. (It does happen, however, in the case of the USA copyright in

the humiliating institution of the “work for hire” and in milder forms in all unequal

assignements of the creation.) The best example we can think of to highlight the

difference between the gif of the information as distinguished from the sale of the

embodiment is the custom of dedication of creations. Many authors, for instance,

dedicate the book they have written to their wifes, or parents although they intend to

sell the copies to the people they do not know personally. The sale is never limited to

those people to whom the creation is dedicated to. The circle of the people the book is

dedicated comprises of the individuals to whom the creative effort was gifted because

the creator was communicating the information to her or him. Any further

embodiment could be sold as a commodity.

We might best picture the difference between gifts and commodities in this regard by imagining two territories separated by a boundary. A gift, when it moves across the boundary, either stops being a gift or else abolishes the boundary. A commodity can cross the line without any change in its nature; moreover, its exchange will often establish a boundary where non previously existed (as, for example, in the sale of a necessity to a friend). Logos-trade draws the boundary, eros-trade erases it.378

The further study of gifts takes Hyde into the examination of the

donating of the body organs. Obviously, although the separation of the spirit from the

body went very far in our culture, the body itself is something we find hard to

separate from in the extent that e could percieve parts of it as commodity. So far, in

all of the legal system that regulate the organ transplantation and donation, giving of

the organs is treated exclusively as a gift. The sale of the organs is prohibited. In a

way, this is extremely important for our discussio because it shows how much we are

tied to the elements that our individuality consists of. It is important to understand that

our ides are as much the parts of our individuality as our arms, or kidneys. If we are

ready to part with them, they are priceless, valueless. Certainly, their worth to us is

immense. Finally, we are lucky enough that our ideas, the information we created,

378 Hyde, id., at 61.

could be reproduced in thier embodyments, while our organs so far cannot. That does

not mean that the deprivation of an idea is less a deprivation. Unfortunatelly, as we do

not bleed the law tended to give lesser protection.

Returning to the effect that the mode of the exchange of information

has on the society, we have to admitt that the gift exchange is more suitable for

smaller and closed communities than for the larger and open ones. Because of the

reciprocal, mutual, and repetitive nature of the gift mode the societies in which people

are not likely to ever meet again tend to develop commodity mode.379 However, that

does not meen that within such societies the closer type communities do not remain.

First, and most obvious example is the family. It is not necessary to give special

examples of the gift exchange within family circle, but the number of the occassions

on which the gifts are presented is numerous. The birthdays, Mother and Father’s

days, are some. In the broader family circles the money is often lended without

interest rates. But the choice of the closed communities in Western civilization is far

from being exhausted by its most obvious example. Hyde further deals with the

scientific communities, which he considers as an excellent example of the gift based

exchange systems. Relying heavilly on the work of the sociologist Warren hagstrom

from the University of Michigan, Hyde disects the well known customs of the

scientific community in order to show which part of its exchange system is based on

the gift exchange.380 He notes the split within the community that exists due to the

different modes of the exchanges: An industrial scientist often cannnot contribute his

ideas to the scientific community because he has to wait, sometime years, while the

company secures the patent. Even then, the discovery emerges not as a contribution

but as a proprietary idea whose users must pay a fee, a usury, for its use. There will

allways be exceptions, but as a rule, scientist who treat ideas as gifts thereby enjoy

higher repute in the community, they are more apt to be engaged in theoretical

(‘pure,’ ‘basic’) research, and they are less well remunerated. Those who hire out the

379 For an excellent overview of the development of commodity exchange see Hyde’s chapter seven, pp. 109-140. Through the example of the history of usury Hyde is telling the story of the further and further separation of the integral world in Western culture. And indeed, the example of a money institute is apt to lead that story.

380 Hyde, id., at 78: “Scientists claim and receive credit for the ideas they have contributed to science, but to the degree that they are members of the scientific community, such credit does not get expressed through fees. To put it conversly, anyone who is not a part of the group does ‘“work for hire’; he is paid ‘fee for service,’ a cash reward that compensates him for his time while simultaneously alienating him for his contribution. A researcher paid by the hour is a technician, a servant, not a member of the scientific community. Similarly, an academic scientist who ventures outside of the community to consult for industry expects to be paid a fee. If the recepient of his ideas are not going to treat them as gifts, he will not give them as gifts.”

proprietary concerns are more anonymous and less a part of the community, they tend

to be working in applied science, and they are better paid.”381 After providing several

examples, one from Harvard University, Hyde appropriately summs up:

Here we may revise my remarks on the connection between freedom and the marketplace. Free-market ideology addresses itself to the freedom of individuals, and from the point of view of the individual there often is a connection between freedom and commodities. But the story changes when approached from the point of view of the group. A gift community puts certain constraints on its members, yes, but these constraints assure the freedom of the gift. ‘Academic freedom,’ as the term is used in the debate over commercial science, refers to the freedom of ideas, not to the freedom of individuals. Or perhaps we should say that it refers to the freedom of individuals to have their ideas treated as gifts contributed to the group mind and therefore the freedom to participate in that mind. The issue arises because when all ideas carry a price, then all discussion, the cognition of the group mind, must be conducted through the mechanisms of the market which - in this case, at least - is a very inefficient way to hold a discussion. Ideas do not circulate freely when they are treated as commodities. [* * *] In a free market the people are free, the ideas are locked up.382

At one point Hyde successfully grasp the legal aspect of the social

impact of the gift exchange mode. Firstly, in connection with the etnographer Marcel

Mauss’ well known “Essay on the Gift” he detects the original relation between the

gift and the contract. Mauss wonderd whether the gift is the simplest form of relation

that is in more recent times secured by legal agreement. Hyde finds that Mauss gives

two replies. “On the one hand, it seems correct to see the felt bond of gift exchange -

‘the obligation to return’ - as an archaic form of the legal nexum. But in tracing the

shift from the primitive to modern, Mauss underscores a loss as well. As I mentioned

in the introduction, his essay focuses on gift exchange as a ‘total social phenomenon,’

one in which religious, legal, moral, economic, and aesthetic institutions appear

simultaneously. And it is only as these several threads are differentiated that the legal

contract develops as a discrete institution.”383 Hyde follows Mauss into an

examination of Roman law. Mauss noticed that early Roman law did not distinguish

the legal concepts of “thing” and “person” (res and personae), but conceived them

381 Hyde, id., at 81. In the pertinent footnote Hyde cites Hagstrom: “Industrial research organizations whose goals are only in the area of applied research often appoint distinguished men to do basic research, give a small amount of time to other scientists for this purpose, and publicize their research results, solely to make themselves attractive to superior scientists. If they do not permit pure research, their applied research and development efforts suffer.”

382 Hyde, id., at 82-83.383 Hyde, id., at 86.

simply the parts of a “hausehold” (familia).384 That leads Hyde into the critique of the

social role of law in modern Western societies:

But just as the Roman saw the familiai divided into res and personae, the modern world has seen the extension of law further and further into what was earlier the exclusive realm of the heart. Law has sought to strengthen those bonds that in former times were secured through faithfulness and gratitude, however indeterminate these may heve been. But the law is limited in its ability to bring people together and secure order. Not only does law tend to shed the emotional and spiiritual content of a total social phenomenon, but the process of law requires a particular kind of society - it requires, to begin with, adversaries and reckoning, both of which are excluded by the spirit of gift exchange. Because the spirit of the gift shuns exactness and because gifts do not necessarily move reciprocally (and therefor do not produce the adversary roles of creditor and debtor), courts of law would be rightly perplexed as to how to adjudicate a case of ingratitude. Contracts of the heart lie outside the law, and the circle of gift is narrowed, therefore, whenever such contracts are converted to legal relationships.385

To the common lawyer the concept of the legal commerce is entirely

incompatible with the gift. The requirement of bargain consideration in order for the

traffic of goods to be legally recognized as a valid contract prevents the gift to be

recognized as one. In the introduction to his treatise on gift, Dawson states:

The landscape to be examined in this survey has ben reported by many observers to include one of its features a great gap, a chasm, that divides all legal systems derived from the English common law from those of the European continent. The gap is revealed by asking a short question: Can a fuly capable person make a binding promise to another to give to give of do something for nothing? For countries within the sphere of influence of the English common law the standard answer would be no, almost never. For the more civilized countries of western Europe the standard answer would be yes, since they have never suffered from the blight that efflicts countries adhering to English common law - the requirement of bargain consideration.386

384 Hyde, id., at 86.Hyde acknowledges that the later Roman law increasingly distinguished the two, and cites Mauss saying that in so doing it “passed beyond that antiquated and dangereous gift economy, encumbered by personal considerations, incompatible with the development of the market, trade and productivity - which was, in a word, uneconomic.” At the same place he further refers to Mauss who comments: “This distinction [things and persons] is fundamental; it is the very condition of part of our system of property, alienation and exchange. Yet it is foreign to the customs we have been studying.”

385 Hyde, id., at 88.386 John P.Dawson, Gifts and Promises; Continental and American Law

Compared, (1980), at vii.

In order to explain to our reader which is not familiar with the concept

of consideration, we will further partially rely on Dawson. In short, he chose to

understand the role and the history of consideratin as an misunderstanding of the

Roman concept of contractual causa which springs up from the formalistic

interpretation of the contracts by early common law court. Causa, or the motive for a

contract, whose legal role is no bigger than excluding the criminal motives as illegal,

became a formal requirement for the validity of contract.387 As many formalistic

constructs theory of consideration is an artificial interpretaion of acts by the parties. It

is essential that both of the parties would act in order for the contract to be valid, but

the “peppercorn of consideration” will suffice. Dawson cites Wright and Ashley as

proposing the abandonment of the doctrine in the American law.388 In his words “[i]t

is more common to explain it through historical accident - that the tyranny exersised

in English law by the medieval forms of action was just beginning to fade at the

crucial time, the sixteenth century, when a law of contract was emerging from the

shadows cast by the law of tort.” He further procedes in more detailed explanation of

Justice Holmes’ “invention” of the old English idea unecesarilly complicated the

American law. Finally, his opinion is that the concept of consideration is ultimately

going to rescind from the law of the United States. He bases his belief on the overal

trend of law, which although slow, nevertheless moves in that direction.389

For us, at this place, Dawson’s conclusion isn’t important only for its

legalistic implications. Its importance in the first place lays in the message that it

carries regarding the broader cultural context. That is to say that from it may be read

that by adopting the legal enforceability of unilateral gratuitous promises, the

American common law shows deeper cultural changes in the society.

Hierarchy of Creative Activity

It has to be marked with due attention that most of the cases involving

intellectual property do not include works of the high artistic creativity. In that respect

387 Dawson, id., at 113-116. Author discusses the role of the cause in the context of French law. The discussion may serve as a broad example for the role of the cause in civil law systems in general.

388 Dawson, id., at 197. There he also quotes Rodell as characterizing the consideration as “enormous and shapeless grab-bag,” and Havighurst which calls it “primitive” (after Sharp), and “uncouth.”

389 Dawson, id., at 230: “This survey leads me to only one conclusion: that our disadvantages [including the concept of consideration], the main sources of our own discontent, are those of our own creation, are not found elsewhere and cannot be removed by borrowings from Europe. But this vy act, that they are strictly our own, offers the hopeful prospect that we should be able to eliminate them and set our own house in order.”

artistic creativity is only one of the forms of creativity, containing higher level of

information. It contains much higher amount of information, in the sense of number

of choices made, than some other kinds of creativity, thus at the same time it may be

harder to apprehend. Regardless of that, on certain markets which are sensitive to the

choices made or questioned, it may be valued high. While one of the parties whose

work may be regarded as high art may be seeking protection against somebody

copying some part of it could be found, great majority of the cases involve the parties

whose work has quite low artistic value. Unfortunately we did not came across any

statistical systematization of this objection. Nevertheless, from this remark a

following hypothesis could be inferred: the works of art are not subject to the broad

market interest at the time when they are created. As the consequence present system

protects only the works which have certain market value in the economic sense, or

which are subject to the transfer of the rights upon them, in legal. Further, it could be

inferred from the fact that the art is not subject to litigation so often as other forms of

creation, that the art is not created in the legal mode of the sale of the goods and that

the economic incentive is not the determinative for creating the art. What is an

acceptable hypothesis is that legal mode in wich the art is emerging is the mode of

gift, rather than sale. Of course, different set of legal rules should apply if we want to

improve legal protection of the art, and not only the industry of the art substitutes.

In the space between the extremes find their place many other creative

activities, which themselves may be containing more or less information. Succesfull

design, for instance may contain the same amount of information as artistic

creativity, even the size of the questions opened may sometimes be comparable.

However, the design will often contain as small amount of information as “kitch,” the

ultimate substitute for artistic creativity.390 In our understanding, higher the amount

of information, stronger intent to gift the creation, while creating. Warning to our

readers - let us remind again; to gift the creation, but not the artifact and its copies.

The urge to gift is due to the unavoidability of opening the questions for a human

individual. Secondly, the stronger urge to give, bigger the gift, higher the information,

lower the chance of copying. Lower the level of information, smaller the gift, more

likely it will be copied, and subsequently, litigated.

We have noticed already that that human creative activity can be

higher in the amountof information it involves, or generates (depending from the

point of view of the creator or consumer). Dormer, in the discussion of an essay by

the American art critic John Perreault about the willingnes of the “high culture” to

390 kitch essay

relate to a marketing of itself, critically examines Perreault ‘s question which is more

significant to modern individual: the suposedly meaningles art exposed in the

museums, for which to be seen an entrance fee has to be paid, is more relevant to the

consumer than the sucessfully designed dinner plates in their own homes. After

concluding that the question cannot be meaningfully answered about the competition

of suposedly unworthy modern abstract art if confronted with truly important design,

as Perreault did put it without defining. In essence, Perreault is trying to confront the

informational value of the high artistic creativity to the value of averagely lower

artistic creativity. Dormer is further trying to explain Perreault’s mistake, and here he

steps in the area we are trying to determine in this discussion about the portion of

creativity that a creator gives as a gift to its audiences. Dormer is offering that

Perreault failed by mixing the concept of the accessability through the ownership of

the host object, the artifact, with the true creation contained in it:

Perreault wants his argument to pivot on the concept of ownership. And it is the concept of individual ownership that characterizes consumerism and design. Ownership has become a value and end in itself. In consumerist terms it matters very much that you can handle, touch, caress and gaze at a thing that is yours. But that is a necessary characteristic of consumer design. It is not a characteristic of profound art. It matters not one whit whether you own Vermeer you are staring at or the limewood altarpiece by the German, Tilman Riemshneider. Your imaginative relationship with the work or your understanding of its spiritual or empirical content is not affected by your not owning the work.

Design, however, is intended and marketed differently. It is intended to be sold and to be consumed individually. It just happens that one of the tactics of the modern marketing is to seek to elevate such objects into art by comparing them with art and, of course, as already noted, converting them into the full currency of culture by having them dsplayed in museums.

Judging by Perreault’s argument, and he is not alone, to make the strategy work it seems that one has to pretend that there is no hierarchy in art. If we can assert that the choice is not between the profound and the commonplace, but between ‘art’ that is in museums and ‘art’ that is in the home, then we convey the impression that a dinner plate is equivalent to any other artistic endavour. A pretended equivalence, a democracy of ‘art’ objects, is a useful strategy in the marketing of design as high design.391

Of course, if the creation is the gift two of the related premises of the

copyright law, as of intellectual property in general, simply can not stand any longer

in their entirety. First is the assumption that by providing the incentive to the creators

we induce them to create more, thus benefiting the society. It is correct only in part,

as creation is not related only to the incentive. Small, but most important part of the 391 Dormer, id., at 141.

creations, namely those of the artistic creations would be created even if there would

not be any incentive. Of course, there would be less of them because creators would

have to spend time on providing for their living, but still it would be unavoidable as

artistic creativity is like a physiological necessity - it has to be done. When we are

using the word artistic it means works of the high art, as only the high art has ability

to carry messages which are of the importance to the society. These are the messages

which are interpreting our material and spiritual environment, the ideas on our

realities which give the ability to the societies to move. It is the mistake of the

societies who are by the means of their legal systems encouraging the imitation of art

forms expression by their legal systems.

The creation is a gift, but it does not mean that it does not enter the

sales economy at certain point of its life. We could say that it is sooner for the forms

of creation less artistic in the above described meaning, and later for the forms of

higher artistic expression. Because, level of their artistic expression determines to

some extent the market value of certain work of art, proportionate to its

communicability. If its is lesser the market is smaller and we could expect lower

price. It is not always so because of the small, but influential segment of the market,

and it is one of the most developed segments of the market, which is able to

communicate with the work, and understands its exceptional value. It is not different

in the field of the patents. Because of that some works, under different circumstances

although very much in advance of the moment, can very quickly transcends from the

gift mode into the sales mode, and without to much turbulence.

Second, related issue is the fact that creation is a gift, it is not being

copied under the present law, even if used without the consent of the author, even it

doubtlessly is his property (Is it also his ownership?).

Gifts are a class of property whose value lies only in their use and which literally cease to exist as gifts if they are not constantly consumed. When gifts are sold, they change their nature as much as water changes when it freezes, and no rationalist telling of the constant elemental structure can replace the feeling that it is lost.392

That is possible because of the nature of the res which permits it to be

existent at same time at more different places. Therefore it is important to determine

at which points the work retains the character of the gift, and when does it cross into

the mode of sales. It is important that it can drift back, as in the situation of the self-

392 Lewis Hyde, The Gift; Imagination and the Erotic Life of Property, (1979, 1983), at 21.

ejection of the work into the public domain because of its popularity, described

below. It is the way of the work from gift to gift. What we have to see is whether this

path is uniform towards all the members of the general public, or is it unequal to

extent that should be recognized. Next heading is devoted to this problem, starting

from the point of the fair use.

Possibilities for the Improvement

A serious misunderstanding of the creative processes upon which the

copyright law of the United States was built may have caused remarkable inflation of

the role of art in American society. Upon perishement of the unsurmountable

boundary between the elite and popular art shown earlier, the fact that, for example,

the tradtional elite art forms may be gaining in its market position in the United States

cannot be valid argument that the art keeps its due role in the society. Raising of the

prices of the objects of traditional elite art as the commodity may be easier to interpret

as the sign confirming our diagnosis, then a counter-argument. The degeneration of

the movie industry and the music industry, as valuated from the artistic point of view,

are pointing in the direction of our opinion. When we speak of the degenration we

have in mind ever decreasing complexity of the creative works, its increasing one-

dimensionality in terms of presenting particular aspects of the human society and the

relations in it and its oversimplification of the layered structure of the relation of

rational and irrational in modern Western societies. We are arguing that the copyright

system of the United States by treating the creativity as the commodity only, which

should be only one aspect of created artifacts, as we have shown in our heading on the

gift, stimulates only non artistic creativity. Creation based on and conditioned by the

terms of investment may be bringing incentive to creators, but it deprives public of

the artistic statements that same authors may have made instead of an investment.393

Originally, this section of the essay had in mind the shallowness of the artifacts of the

American movie industry, and increasing voidness of the music industry in terms of

artistic thinking. However, a newspaper article trying to articulate the present state of

American architecture, summed it up nicely: “Today’s light, or lite, architecture isn’t

like that [light appearance of modern architecture, as opposed to its intellectual

complexity]. Its goal is to reduce the intellectual demand, not to increase it. Its real

parent is not modernism at all, but the stage set, the idea that the architecture is a

matter of facades crafted primarily for quick and easy pleasure. Take the ever greater

ability of modern technology to make almost everything lighter and lighter, thinner

and thinner, and cross it with the hedonistic sensibility of the stage set, and it is no

393 See our footnote (#).

wonder that architecture now is light in weight and lightweight: light visually, light

phisycally and light intellectually.”394

Why would the art be as important for any society in the first place,

and why the increasing incomes of the entertainment industry may be a signs of defeat

of the cultural concept of the American society?

The art, to answer the first question, is the form of creativity that

contains plenty of information, much more than the other kinds of creativity. It is

richer in information than other forms of creativity. We have to remind the reader that

the information means freedom of choice. The choices done by the creator in the

manner that they open the possibilities of choice for the recipient, or continuous

attempt to conform to the presupposed public taste is not art. The compromise

between the two may be welcome for any society, as it provides public with the open

choices reduced to the number which the public may perceive and apprehend. But,

when the social systems, including legal system, shift the balance of compromise in

favor of providing the audiences with the answers rather than the questions, society as

the whole starts generating less information in the most significant segment of

creativity, which is the art.395 Presently the situation in the United States should be

matter of concern for those aware of the informational power of artistic creativity.

More worisome is the fact that it appears that in the United States there seem to be

very few instances that would recognize the problem at all. The pressure on the

National Endowment for the Arts at the end of last and begining of this decade appear

disgraceful. The political interests interfere with what would be the main purpose of

the endowment, that is the support of the artistic creativity, by trying to distinguish the

private from the public support, an operation that is fully pointless in lthe light of the

394 Paul Goldberger, “After Opulence, a New ‘Lite’ Architecture,” The New York Times, Sunday, May 20, 1990, at 1 and 31 of Section 2. The lengthy article captures the tendency towards substituting the substantial issues for their less substantial substitutes on several other instances, describing the “lite” architecture as “the built world’s equivalent of easy-listening music,” but stopshort of determining the trend as the overal sense in which the American creativity seems to be shifting.

395 It was again Mondrian, id, at 52-53, who in analyzing the role of the art noted: “The pioneers create through their reaction to external stimuli. They are guided not by the mass but by that which they see and feel. They discover consciously or unconsciously the fundamental laws hiddden in reality, and aim at realizing them. In this way they further human development. They know that humanity is not served by making art comprehensible to everybody; to try this is to attempt the impossible. One serves menkind by enlightening it. Those who do not see will rebel, they will try to understand and will and up by ‘seeing.’ In the art the search for a content which is collectively understandable is false; the content is always individual.”

arti itself. The society that decides to support the arts have to face problem when it

tries to distinguish the artistic creativity on non - creative criteria.396

To answer the second question we have to read the marry suicide

message which American entertainment industry is emitting to the world daily. Total

education of the home audiences toward the home produced entertainment cut off the

urban population of United States from the streams of the world history in an extent

incomparably higher than it was the situation in urban Soviet Union. American media

regard introduction of foreign TV programs, musical compositions, movies, or

“anything under the Sun made by the man” which is not an American unsuitable for

their audiences. A total and absolute self-imposed blockade of the media in the United

States may have resulted in increased return of investment to the domestic

entertainment industry, but have impregnated the public taste to the extent that the

individuals are simply not able to accept the creation non-American. The totalitarian

prohibition of cultural imports in the Soviet Union resulted in the opposite, producing

an unquenchable thirst for the creation, i.e., information from abroad, as well as

sprung up domestic response to creation of the information not imported.397 The

result is that the Soviet Union will find much easier to adopt to the future conditions

of the world as an integrated community than the United States, which will for a

certain period of time remain a giant autistic child unable to understand others, and as

unable to explain itself to others.398

396 See, e.g., “Legislators Rebuff One-Year Extension For U.S. Arts Panel,” by Willima H. Honan, New York Times, Thursday, June 7, 1990, at C 17, C 20, and “Officials Reviewing Limits on Arts Funds,” by Barbara Gamerakian, New York Times, Thursday, June 14, 1990. Rep. Pat Williams (D), Montana articulated his fears towards the difficulties in connection to the problem as follows: “It is exceedingly difficult when dealing with subject restrictions to do that in a way to keep the censorship jinni in the bottle and develop language that is benign. i suggest this language would probably result in mischief with regard to subject matter restrictions.”

397 Peter Dormer, The Meanings of Modern Design; Towards the tTwenty-First Century, 1990, at 34, supports our conclusion, nontheless recognizing all of the disadvantages and limitations of the creative activity in socialist societies: “Centralist planning probably also cuts down on technical innovation. For it appears that one of the successes of Western economic liberalism is its encouragment of technology and, possibly, the arts - artists are more or less free to explore whatever form their fancy takes them.

However, the very freedoms enjoyed in the West may diminish both the effectiveness and the sharpness of the arts. In authoritarian countries the artist is often one of the key voices of opposition, and therefore art which challenges the official view is seized upon greedily, if only because it is different.”

398 I found it amazing that the American law students, whit which I have otherwise interesting discussions regarding the law issues during my studies, were unable to explain the principles and the rules of baseball. They would be able to explain it using the technical terms understandable only to those which already knew the rules. They were unable to abstract the main principle which

The fact that the American art, which was undeniably successful after

the Second World War, we may say when it was art, did prepare the audiences all

over the world how to perceive its message, does not guarantee that that will stay like

that any longer. The creativity of the popular culture in the United States generated

the relevant artifacts in the sense that it was artistic creativity in the sense that opened

the questions of relevance for both the society in which it was created as well as

universally. It is true that the art that was made in the United States in the two decades

after the war learned the audiences of the world to understand America, its culture and

its society. Many processes contributed to the decline of its relevance. We will not try

do determine them all, but will provide a couple as the illustration for this thesis. For

example, one would be overtly racist policy of maintaining divided top-hits charts for

“black,” as oposed to “white” artists whic persists in secluding the musical production

until today. The fact is that the white music was influenced much by black artistic

creativity, but the questions opened by black artists about the conditions in which they

live in the American society never reached white audiences in the States in the

amount in which they did outside the States, from West Indies to Orkney’s. The blues

influenced the musicians in Europe by the questions opened, while in the States the

influence was limited to the form of the answers redelivered by the white artists.

Second example is the process of merchandising any form of the creativity as the

substitute for artistic creativity that became socially fully acceptable. To us it is

important that when this process was legally sanctioned, it helped the American

creativity to lose its meaning. As the global consequence, the clearly visble situationof

the success of African pop music, whose emancipation was in a way prepared by

reggae music in seventies. Similar, in the movie industry, the success of the German

movie industry at the end of the seventies (Fassbinder, Wenders are only most

exposed) followed by the success of Spanish movie industry in the end of the eighties,

(Almodovar, Silver Bear in Berlin for “Beehive”**) should not come as a surprise to

anyone. In the first place, the expansion of the European movie industry was prepared

by the American movie industry, in the same way reggae opened the doors for

African pop. It also means, and clearly shows that the American entertainment

industry lost the informational charge it contained during the time when it was artistic.

From now on it is condemned to jogging only in its own back yard instead of

steaming down the Champs d’Elysees. At the same time African, for certain part of

characterizes the game, i.e., the inherent fairness of the fact that the pitcher has to cooperate with the batter form the other team. Further they did not understand that the game is developed from English cricket, and were totally unable to understand the game does not matter much to people which are not American, simply because nobody is able to explain it. The sport industry is a part of the entertainment industry, and as such it is is an illustrative example.

the young audiences of the world simply started being more significant than the

American, as the denomination for the informational charge of artistic artifacts in the

entertainment industry.

However, the artistic production is not a battlefield, neither is creativity

only shaped by the market forces, so that we can expect that the sale figures will

probably never drop significantly.399 The amount of the individuals, due to the

prevailing present educational systems, which are unable to understand the art forms

will raise in absolute number in the most countries. Further, the channels providing

supply of the artistic creative forms, called “independent,” or “alternative” will

continue the supply, in an expectedly efficient manner to the audiences of the world

which are demanding that kind of information. The American rock groups, like the

“Sonic Youth,” may never be appreciated at home, although, for instance, their

influence may be tremendous in European countries. We are aware that it is not easy

to provide an simple model of the global consumption of the artistic creativity.

However, for the purposes of proving that United States, by insisting on the protection

of the commercial aspects of creativity through the economic incentive only, are

failing to stimulate the socially most important form of creativity, the art, it suffices to

say that none of the many American pop groups, or film makers, or other artist which

do gain popularity in the countries which are able to read their information, never

became popular at home.

Because of the high entropy400 of the art, its role in any society that

hopes to have sound future is irreplaceable. The artistic creativity enables the society

to analyse itself, and sees itself in proportion to its past as well as to other

contemporaneous cultures. In that respect its significance for the balance of the

development of a society would be equivalent to the destimulation of the basic

scientific research. By denying this function of the art through their legal system, for

example by underestimating the role of the moral rights, the United States are

exposing themselves to a serious risk of disabling its population to receive

information.401 Even the American authors sometime realize how dramatic is the

399 During the week while I was writing this portion of the text it was announced on the ABC’s “Entertainment Tonight” program that it is possible to expect that the release of a certain new film will be the first time that a movie will gross more than one hundred million dollars in the first week after its release.

400 Shannon & Weaver, id., at 12-13. The measure of the quantity of the information, information meaning the freedom of choice.

401 Related are also theh rules regulating the “work for hire,” 17 U.S.C. § ???, under which, essentialy, an artist does not acquire the right over the work which he creates before his employer acquires the rights over the very work a creator created. It is not an assignement by the law , as some other copyright systems

impact of the denial of the protection of moral rights: “The relief the courts have

presently afforded American artists who seek to prevent the distortion of their work

[under section 43(a) of the Lanham Act, see our discussion in the next chapter] is not

a substitute for the protection that would be afforded by a doctrine of inalienable

moral rights. Explicit congressional adoption of moral rights into American copyright

law is necessary to preserve the cultural integrity of our society, a duty which

Congress implicitely charged under our Constitution.”402 The consequences are that

the creativity output in art is dropping, and by doing this the United States is cutting

itselves off the richest resource they may have at all. Fortunately, the general

openness of the American society in the sense of politically unrestricted access to

information does provide the relatively small number of people which can accept the

choices made by others with the information they need in order to maintain their

creative level high enough in the vital areas like the software engineering, to keep the

the United States in the game, at least out in the left field.

COPYING AS A NECESSITY

Copying is an act whose nature is elusive, at least as much as the ever

changing concept of property. In the different time periods its notion changes with the

technologies for duplication available. We have to try to define its applicability in

particular situation, in order to see where are its limits as a whole. One of the

meanings which it comprises certainly may be used as a verb synonymous to

multiplying. But its meaning may be less broad, denoting imitating. As a noun copy

means a species of multiplied original. The true challenge comes first at the point

where the meaning of multiplying is to be interpreted. The confusion is caused by the

deterioration of the term original (in the sense of first embodiment, not as the

have it, where the right would be recognized at least symbolically. Under the United States copyright system the role of the creator is totally neglegcted in light of the fact that he is employed. The relation between the employer and employee is superior thant the relation betwen the creator and the creation. The system of protection of creativity, in our belief, cannot be successful if it is organized upon such hierarchy. It is not to say that the reality of industriarelatios shoul be disregarded. We are only trying to point out that the systems which have compulsory assignement are in our view better as thay recognize the property of the creator over his creation. In addittion we believe that such systems recognize more fully the basic human freedom, expressed in property, than the United States system.

402 Susan L. Solomon, “Monty Python and the Lanham Act: In Search of the Moral Right,” 30 Rutgers Law Review 452, (1977), at 477.

standard of subjective novelty). Original used to signify the first embodiment. At the

early post Roman times when copying of the written text was done by the hand, it was

hard to tell whether an original copying of the earlier copy of an original text was less

original then any of the original copies in between. The original may have been the

manuscript of the creator of the text, before it was officially originally copied in a

form of an incunabulum, or a book later. The printing press introduced the copies in

the sense of multiple replicas of an original manuscript as we understand it today.

Word copy is derived from the Latin word copia, meaning plenty. English law

distinguished the verb to copy, from the noun the copy as the rights “to copy” and

“the rights in copy.” First was protected by statutory law as the right of multiplication,

and the second by common law as the right of possession.403

The modern notion of copying is thoroughly diffused due to several

reasons. One of the meanings, connected to the noun, is the loss of meaning in the

term original. In the case of computer files it is very hard which of five hypothetical

back up copies of an floppy diskette is the original. The fact that the author may feel

that he is using the diskette marked by the pink label, does not make it more original

than any other. Every copy is an original, a perfect original. Or, is the original a copy

embodied in our mind? The second reason, tied to the verb, is that modern

multiplying technologies available stimulate the production of individual copies as

economically feasible, rather than production of traditional series of copies. That is

why photostatic copying replaces the printing in the process of individual use. Same

thin is with the sound reproductions which may be copied rather than bought in the

form of an record. That is why digital audio technology is bound to overcome

unrecordable compact discs or vinyl records. Later on, we will point out the

imprecision in that respect in the section 107 of the Copyright act.

Interesting concept regarding the role of copying in somewhat broader

context we can find in Csanyi’s System-Component theory. Although his theory is

principally biology based, its scope and applicability is universal, in the best newly

established scientific tradition. After defining the structure as the “actual time-space

relationship of the system’s components,” and the characteristic of “the biological

system’s structures that in the course of time they are assembled and decomposed,”

Csanyi focuses on replication, as “the type of organization that characterizes the

biosocial system,” which he distinguishes as either “self-maintanance,” or

“reproduction.”404 After the necessary distinctions are drawn, Csanyi procedes to

403 English case Jefferys v. Boosey, 4 H.L.C 815, (1854), opinion of Baron Parke.

404 Csanyi, id., at 6-8.

explain the essential position of copying, mentioning the access to information as a

necessary prerequisite.

“Therefore, as far as organization is concerned, self production and reproduction belong in the same category. Furthermore, by analyzing self-production and reproduction, it can be shown that the principal mechanism in both cases is copying, that is, replication. Replication is generally considered a synonym for copying, where a constructor produces a copy (replica) of a component or a given system. To do so, the constructor needs a description as the information necessary for this copying process. In the case of self-replication the total information of the constructor itself is necessary in some form. The essence of replication is functional operation, regardless of the particular mechanisms of storage and retrieval.”405 (Emphasis ours.)

Consecutively, for Csanyi, copying, imitation in the social sense, or

replication in the terms of systems, is central in many aspects to the evolution of the

“bio-social,” i.e., global system. Accordingly when giving on outline of cultural

evolution,406 emphasizing the utmost importance of the role of the “linguistic models

of reality,” he baldly states that “[t]he most important constituent of cultural evolution

is an individual’s ability to transfer the concept components of his own memory (by

copying it with varying fidelity) into the memory space of another individual through

language. The copying process is replication, that is, propagation of the concept

components in a physical sense. As a consequence, the evolution of concepts is no

longer restricted by an individual’s life span.”407 Kaplan indirectly responds when he

states that “[a]n artistic form, like a life form, is a creation, and like the living thing

again, one which demands a cooperative effort, in this case between the artist and

audience.”408 When more specific, in the context of the social activity whose results

are the object of the intellectual property protection, he holds that “[t]he most

common process of design is copying. The designer copies and sometimes recombines

reliable parts of previous production cycles. Even if he invents something, it may

have originated from the creative process of a different artifact. Again, obvious

405 Id., at 8.406 Id., the chapter on “Cultural Evolution,” at 148-189. For the definiton of the

term culturel evolution, and its place in the cultural anthropology, See pages 148-150.

407 Id., at 165. (Emphasis in original.) Hyde, id., at 112 discusses Aristotle’s opinion on money interests from his Politics. He cites Aristotle saying: “And this term interest [tokos, ‘offspring’], which means the birth of money from money, is applied to the breeding of money because the offspring resembles the parent.”

408 Abraham Kaplan, “The Aesthetics of the Popular Arts,” “Journal of Aesthetics” (Spring 1966), reprinted in “Modern Culture,” at 69.

examples are earliest automobiles, which resemble the mail coach in most of their

details, because designers copied the mail coach.”409

What are the meanings of the word copying? Are they the same in the

statutory language, as in the other parts of law. What does it mean in technology or

art, and what in the colloquial language? It is not necessary to say that copying

doesn’t mean plagiarizing (which is actually only small part of the copying, even

small part of the infringement under the present laws). From Duerer’s studies of

Michelangelo,410 through Kandinsky’s copies of his own organic abstractions, to

Andy Warhol’s study of the Campbell trademark, copying was a vital process for

highlighting new social contexts, reexamining socially accepted values and expressing

new ideas. Above all it enabled creative replication, meaning that it enabled

replication under the question mark, replication which forced human individuals to

adjust to a question rather than stagnate over the answer. If they did not copied from

the contemporary authors they plunged in the works of the past and copied them

freely. Times have changed - the most obvious change being the changes accelerated.

The artists of today in achieving the goal of creation, highlighting the ever changing

social contexts, or expressing new ideas. Copying from each other makes works

referential to each other, thus achieving the ultimate goal, one which is even above

“the real purpose”. The one because of which “the real purpose” was established in

the first place. To bring general benefits to the public.411 It was recognized through

the creation of the “fair use” doctrine, what showed the societies recognition that

copying is an important, probably vital process in achieving the progress.

We have to conclude that the meaning of the term copying has

acquired different, fuller, and more elaborate structure than it traditionally has had.

The whole societal system is based upon the patterns of imitation. The dubious

Western concept of “progress” is in entirety fueled by the creativity based on the

creative permutation of imitation. One may try to be witty and ask whether

“copyright” means right of author to make copies, or the right of the members of the

public to copy. In any case, the meaning of the term copying should not any more

409 Id., at 162.(Emphasis in original.)410 For the Duerer litigations see Bowker, id., at 11-12. I am providing this

reference just as curious coincidence. The example of Duerer’s work was chosen randomly, but the later found reference in Bowker is so spectacularly rich with details on the different aspects of the copyright protection of his work, and so astonishing in its resemblance of today’s art market problems, that I thought it is interesting enough to be referred to.

411 Fox Film Corp. v. Doyal, 286 U.S. 123, at 127, 52 S.Ct. 546 (1932).“The sole interest of the United States and the primary object in conferring the monopoly lie in general benefits derived by the public from the labors of authors.”

mean mere production of numerous copies as it did in the industrial societies. The

notion of serial production is historically emptied, and so is the corresponding concept

of copying. Copying should mean individual multiplication; duplicating rather than

multiplying, and always in function of the replication of the patterns of life. As the

content of the activity has changed, so did the social context and the cultural role of

copying. We are well aware of the dangers that are part of the attempt to limit the free

flow of information. In the same sense as it may be dangerous for a society to limit to

its citizens the free access to information, the attempt to overprotect the ownership of

its own citizens from copying may be no less disastrous. Limiting the individuals in

access to information could disrupt the replication of patterns, thus, breaking the

access to the meaningful future in the same extent as the effect of the totalitarian

communist regimes was helping their own removal by cutting themselves, i.e., their

citizens, from the information available in the world.

Under this theory, for example, home taping simply should have not

been prevented entirely, despite the just attempts to pay the creators for their creative

efforts. The numerous multiplication of a creation, in this sense, is beneficial to the

society, as it enlarges its creative resources, and it is not detrimental to the creator as

its harmfulness to the full incentive to the creator is minimal as long it was an

individual duplication. By saying this we are actually recognizing the objective of the

Sears/Compco doctrine as important cornerstone of the successful intellectual

property protection, the statement which may be in the sharp contrast with the opinion

of the many intellectual property lawyer. And, it is understandable that the doctrine

created the reaction among the profession, almost describable as hatred. The

profession correctly realized its potential to limit the right of the creator and expose

him to massive copying of his creation, but have failed to recognize the importance of

the doctrine for the society. In Compco Justice Black stated one objective as: “to

forbid copying would interfere with the federal policy [* * *] of allowing free access

to copy whatever the federal patent and copyright laws leave in the public domain.”

What we are saying is that both cases are not evil in themselves, but many of the cases

thy served as precedent are. In particular fact patterns of both cases original

manufacturers of lamps had the full opportunity to protect their creation by design or

utility patents which they missed to do. Under the trademark law, functionality is not

protectable, and as the copy was made of the whole product, and not of its particular

feature, it was hard to an unwilling Court to stretch the principles of protection of

functionality through the trademark law as the later American cases actually did. So it

was not Sears/Compco that was dangerous for the creativity, but their application

through later cases which were blindly and servilely following the potential contained

in the said Supreme court cases without any further understanding of the anti-trust

policies.412 Finally, Sears/Compco court did one mistake under our interpretation of

the permissibility of copying, and rightfully deserved criticism for doing this. The

obvious wrong of “reaping what others have sown” should have been sanctioned in

some way, although the diligent sower missed protecting its harvest. Specially as it

was not an individual act of duplicating but the serious unfair trade behavior.413 The

individual duplication is rarely used to further generate economic benefit to to the

duplicator, but it does provide the duplicator with the information necessary in order

to ignite his creative processes. But, although it is not its purpose to compete with the

rightful owner of such right on the market, it may indirectly limit the market of the

artifact by excluding the duplicator as the potential consumer. The new balance is to

be found to reconcile the new interests. The law has to recognize this changes in order

to provide successful protection. We will in further discussion show that it already

does by analyzing certain cases which are applying the doctrine of fair use. Doctrine

of fair use is important as it enables the society to reproduce by replicating naturally

its cultural patterns, both what has been regarded as scientific and artistic. It does so,

however, only on the level of non commercial copying.

The Treatment of the Central Issue of the Intellectual Property

Law by the Supreme Court of the United States on the

Example of Two Cases -- INS and Betamax

Two cases decided by the Supreme Court of the United States

represent the two opposite poles of the irrreconcilable interests which any intellectual

412 Spangler Candy Co. v. Crystal Pure Candy Co., 353 F.2d 641 (7th Cir. 1965). Specially so in In re Shanango Ceramics, Inc., 362 F.2d 286 (C.C.P.A. 1966). We will discus the pointlessness of refusing trademark protection to the features of designs formerly protected by the utility patent in the next chapter. The principle of exclusivity of the protection was an easy way out to a policy obeying court. The feature in question was easily distinctive symbol identifying the product, and the fact that the further protection was further denied because of the utalitarian function of the design, in the same time ridicules the true purpose of intellectual property protection. As trademark, particular rim feature could not exclude totaly others, see opinions of Judge Rich, first as the dissent in In re Mogen David Wine Corp., 328 F.2d 295 (C.C.P.A. 1964), and as matured into the law making opinion In re morton -Norwich Products, Inc., 671 F.2d 1332, (C.C.P.A. 1982). Both cases will be discussed in the next chapter in the subheading devoted to the industrial design.

413 It is challenging to consider that the decision of the court in the Rolls-Royce Motors, Ltd. v. A&A Fiberglass, Inc., 428 F.Supp. 689 (N.D. Ga. 1976) could be different if the defendant would not be a producer of customized kits of imitation of Rolls-Royce grille and hood ornamentation for a Volkswagen beetle automobile. Would the imitation still be infringing if the defendant would be an individual who copied the features of the Rolls-Royce design protected under the Section 43(a).

property protection system has to serve. Both are decided in this century, and

although they represent radical approach to the divided extremes, neither of them

deals with the issue in an explicit way. If we consider these two hardly reconcilable

poles of intellectual property protection as: one, being the interest of the society that

the information would be available in order to facilitate creation, thus benefiting the

development of the society; and two, protecting the indvidual in respect of his rights

on the matter he created, the two cases of which each approached one are

International News Service v. Associated Press 414 and Sony v. Universal City

Studios.415 Before we start analyzing each of them, let us briefly explain how do we

see the difference between the two. INS represents the pole of protection of the right

of the owner of the creation. Unfortunatelly, the creation whose proprietary aspect

was at the issue were the news, the information whose level of creativity is wery low.

The reporting of the events, even if it often is a form higher creativity, often is no

more creative than telephone directory assembling. Even, the level of information was

low, the Court provided quasi property shelter to the “owner” on the basis of the

costly efforts invested in production of information. Others were excluded, although

the subject of the reporting, the news, were unprotectable. In Betamax, the situation

was opposite.The rightful owners of the copyrighted material have to yield the right to

use the copies of their copyrighted works without the compensation. The line of the

distinction, in my opinion, was the fact that the use of the news in INS was both

public and commercial, while the use in Betamax was private and non-commercial.

Interpreted in this light the cases are bright guidelines of the examination of the

question of the boundry between the exclusivity of the right of the individual and the

benefit of the society from the accesibility of the creations. In such analysis one thing

has to be kept in mind; that both may serve each other -- the secured individual is

creative member of society, while the successful society is one that may afford to

secure full protection to the individuals.

INS

International News Service is the case which most sharply, in

conjunction with the Sony, marks the opposite poles not only of the Supreme Court of

United States, but also the ultimate and eternal dilemmas of every intellectual

property sytem. In order to clarify we shall start step by step analysis. Firstly, which

414 International News Service v. Associated Press, 248 U.S. 215 (1918). We will refer to it as INS, as it is commonly known.

415 Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, L.Ed. 2d 574 (1984).We will refer to it as Betamax, as it is commonly known.

are the articulations of the Supreme Court attitudes towards the antipodes of the

societal interests that govern intellectual property systems in general.

These two antipodes should be articulated as opposing interests of the

society which make central tension upon which the protection systems have to be

balanced in order to bring benefits to the society. At least, on objective is clear. It is

the most general one - that any legal system, including the intellectual property

protection should benefit the particular society. but within the intellectual property

protection system two opposing interests both serve the society to the benefit of its

particular aspects. One should serve society by protecting the interest of the

individual. We believe that by protection the persons (both legal and physical) every

system ultimetely serves the society. The individual that feels fully protected accept

the society that provides the protection and dispose his efforts so theat the society has

access to it. In the protection of creativity that means that The other interest is

primarily societal in the sense that the society wants to have the acces to the result of

the individual’s effort, and tends to withdrow the protection in order to have less

limited access to it. Of course, in any legal system these interest do not appear as

overtly opposed, but rather in shades.

In our opinion the INS case is the landmark case of the recognition of

the full protection of the individual interest, while Betamax represents the opposite

pole, providing the protection to the interest of the society as the whole. But both

cases had untypicall constelation of facts, due to which the opposed interest appear

much milder. the final effect is that the spectrum of shades is very gradual, and it is

not producing strong tensions within system. It has to be stated that neither of the

cases is explicit at any point of its role, or of the interests it protects.

With the understanding that INS provides almost the explicit property

right recognition in the effort we have to analyse its facts. Two factors watered down

its potential charge. Firstly, the level of creativity of the disputed products was

relatively low. Daily news reporting is in general less artistic creativity that does not

involve high amount of the personal effect upon the creation. Therefore, the legal

remedy was granted more upon the fact that the expenses of such lower creative

activity is very high. That is, it could be almost said regular situations with the courts;

they tend to compensate lower creative level with the expenses of the process in order

to meet the standard from which the legal protection will be granted. Secondly, the

person whose effort was endangered by the misappropriation was legal person. The

issues in intellectual property tend to be formulated sharper when an individual’s

creative effort is infringed. In conjunction, these two factors limit the reach of the

case. We believe that if it would have been plaintiff who was a physical person,

whose creation was an artistic expression which was infringed, the property protection

granted would be stronger. Nevertheless, such as it is INS represent the protection of

individual interest in intellectual property of the low level of creativity.

It shows clearly the international equitable nature of intellectual

property, as all the courts in the world tend to evaluate the particular creation on the

scale not provided by law. Law cannnot allow to hierarchically divide creativity. The

statutes are numb regarding any sorts or levels of creativity for the simple reason that

it is too risky to allow the courts to evaluate this aspects of creativity. That of course

produces problems of the application of legal norms. In other words the courts are

forced into the interpretation of the norm of the very high discretion. That is the

equitable element present in all legal systems of protection of intellectual property.

On the other side, in Betamax, we had again plaintifs which were not

individual persons, actually not even the authors but mere owners of the copyright.

Defendant was not even infringer, but the contributory infringer, again a corporation.

Copyright owner alleged that it is at pecuniary loss du to the activity of defendant

which producess the copying devices (VTRs) that enable the individuals to infringe

upon its property. The Suprme Court recognized as the highest interest the interest of

the society to benefit of its progers, and based it on the constitutional provision. What

was left implicit, is that the benefit of the society is generated through copying, and

that is what makes Betamax the case representing the opposite pole of the protection

system.The Court did not say it that way, and has based its decision on the patent

doctrine of contributory infringement and found that the infringing devices that were

found capable of substantially other function than mere copying. That function was

found to be “time-shifting.” While it could be said that any form of copying, like

photocopying for instance, is time-shifting, here it is important that the social benefit

was in the time-shifting. Therefore, the court actually found that the social, or

civilisational ability that enables individual to dispose with the time deserves the

protection. The fact that copying was the means to achieve that goal was irrelevant.

We agree totally, because we think that copying is one of teh basic human activities

whose freedom has to be protected in order to have the progress in any form. The

copying is the human activity that may have very different uses, and thay certainly

has to be distinguished. In the context of intellectual property the use which is truly

infringing is the commercial use of another individual’s creative result. But, copying

without any commercial ambitions of the work which is flattering to its author but

detrimental to the larger context of producer’s pecuniary interest is socially acceptable

as it provides the other individuals with information necessary to make them

productive mambes of the society.

The Doctrine of the Fair Use

It is important to understand that doctrine of the fair use relates to the

all of the rights that constitute a “bundle of rights” which is copyright, in the United

States defined by the section 106 of the Copyright act. Despite that, most of the

people associate it only with the copying, actually to the subsection (1) related to the

reproduction of the copyrighted work in copies or phonorecords. That is not correct,

as section 107 relates to the each of the rights in the bundle. We have seen earlier that

the origins of the fair use doctrine is in equity. Also, it is clear that the nature of the

object of the intellectual property required certain adjustments. In the civil law

countries, these changes would be done by the “equitable” interpretation of the legal

rules, but in the common law, it required the remedies and actions provided by equity.

However, as it stands today, enacted as section 107 of the Copyright Act, fair use has

its roots in equity. In strictly systematic sense, it is hard to say that it is equity

anymore, as being part of an codification, iti is part of the statutory law, i.e., law, and

not equity.

We have explained above that we understand the legal nature of the

“fair use” doctrine as corresponding to easement in property, and we will not repeat

this discussion here. We will regard for the purpose of the following analysis as a

policy instrument.

However, for the better understanding of the doctrine of fair use it is

important to emphasize that dissemination of information which is socially

acceptable, and copying which is not, are no more than synonyms for the same

process. The criterion of private non-comercial use should be used to strongly

distinguish “fair” use from infringing uses characterized by public and commercial

explotiation of the creations. Often quoted words of the Supreme Court are defining

the purpose of the copyright as follows: “[t]he economic philosophy behind the clause

empowering Congress to grant patents and copyrights is the conviction that

encouragement of individual effort by personal gain is the best way to advance public

welfare through the talents of authors and inventors in ‘Science and useful Arts.’”416

In our opinion the encouragement of the individual effort is not achieved only through

416 Mazer v. Stein, 347 U.S. 201, 219 (1954).

personal gain, but also through the access to the information which is undoubtedly

form of personal gain as well. It is matter of policy whether the community will

derive benefits more through the incentive given to the author to create, or through the

information given to the number of potential authors, on expense and by limiting

authors’ right after certain extent and giving right to the others to use protected rights.

Ironically, the Circuit Court relied on the oft-quoted sentence from

Mazer v. Stein in reasoning its opinion in Betamax case which was actually reversed

on appeal. “Despite what is said by some of the authorities that the author’s interest in

securing an economic reward for his labors is a “secondary consideration,” it is clear

that the real purpose of the copyright scheme is to encourage works of the intellect ,

and that purpose is to be achieved by reliance on the economic incentives granted to

the authors and inventors by the copyright scheme. This scheme relies on the author

to promote the progress of science by permitting him to control the cost of and access

to his novelty. It is based on the premise that the exclusive right granted by the

copyright laws “will not impose unacceptable costs to society in terms of limiting

access to published works or pricing them too high.”417 (Emphasis added.)

The purpose is to encourage the works of the intellect, and that by

giving incentives to the authors, not to give incentives to the authors by itself. Giving

incentives is one possible way of bringing the benefit to society. We saw that certain,

and probably most important part of the creativity is stimulated by incentive through

the market only to the limited extent, if at all. In his study on magical intellectual

property Suchman deals also with the model of the system where creation is protected

by a private, rather than governmental patent intervention. For our purposes, and

according to our belief, it is easily disregarded that he analyzes patents. He concludes

that:

All too often, economic theorists after policy advice predicated on the implicit assumption that the opposite of a publicly structured market for intellectual goods is no market at all. In particular, this perspective underlies efforts to weigh the costs of patent monopolies against the benefits of invention. The hidden premise is that, without patents, innovators would be unable to monopolize their ideas and would consequently enjoy few economic rewards. Yet, if the preceding discussion of magic demonstrates anything, it is this: Because of the control of the ideas confers substantial benefits on inventors, intellectual property structures are likely to arise in any social system containing self-interested actors. Even without governmental assistance, individual innovators will do their utmost to create a regime that rewards creativity;

417 Universal City Studios, Inc. v. Sony Corp. of America, 659 F.2d 963 (1981).

the only question is whether the results will be better or worse than the governmental alternative. (Emphasis in original, footnote omitted.)418

There are other possible pecuniary incentive systems possible, like the

private funding, or state subsidizing, which under proper organization may prove to

be efficient in order to stimulate important forms of creativity. At the same time we

have to be aware that form of the market incentive may be even counter-productive in

regard that producers, or other market mediators of the art industry act as investing

capital when creating, or choosing a particular creation to launch it on the market.419

We believe that this is not an imaginary danger, and that the adjustments of the law to

such notions is important for a society to develop. Total treatment of the art through

the market is suicidal to the same amount as totally free competition, unlimited by the

anti-trust system is suicidal to the free market, to the economies, and the society as a

whole. In that belief we are not alone. Lewis Hyde concludes that the transition from

the gift to market mode in different societies always produces the same result: “The

problem is that wealth ceases to move freely when all things are counted and priced. It

may accumulate in great heaps, but fewer and fewer people can afford to enjoy it. [* *

*] Under the assumptions of exchange trade, property is plagued by entropy and

wealth become scarce even as it increases.”420

Still, the district court put economic incentive on the first place. Was

such interpretation overruled, however not explicitly, by the Supreme Court? Does it

mean that the Supreme Court found that such an overwhelming interest in giving

incentive to the authors on the expense (unacceptable) of the society is more than the

Copyright was intended to? It looks as though the circuit court properly determined

“the real purpose”, but inferred the means by which to achieve it on presumption. It is

obvious that the Copyright Act can’t solve the copying problems as they appear in

modern societies, and it is quite understandable that the Supreme Court reversed such

an exclusive interpretation of an imperfect Act.

418 Suchman, id., at 1290-1291.419 Robert Christgau, in his article on the future of the pop music in the

coming nineties “Rockism Faces the World“ in the Village Voice, January 2, 1990 concluded that in the eighties: “[r]ock was mere music no longer. Reconcieved as intellectual property, it was a form of capital itself,” and further “When art is intellectual property, image and aura subsume aesthetic substance, whatever exactly that is; when art is capital, sales are intrinsic to aesthetic quality.”

420 Hyde, id., at 22 and 23.

[17.02]That is basically what Betamax 421 case resolved. Supreme court went out of

the existing law to create new rules on copying. The Court recognized a need of the

individual and community to copy and be permitted to copy for common benefit, one

above the interests of authors and industry. The author, as a matter of fact, does not

even have such interest perpetually - after his creation is remunerated to such an

extent through the present system that his second need, that his work would

communicate and be seen by as much public as possible overtakes and leads

Analysis of 17 U.S.C. section 107422 which is the section related to fair

use is necessary. It was designed after the doctrine which started developing more

than hundred years ago in the common law protection. The words of the Justice

Joseph Story embodied it almost better than the words of the section 107: “The

entirety of the copyright is the property of the author; and it is no defense, that another

has appropriated a part, and not the whole, of any property. Neither does it necessarily

depend upon the quantity taken, whether it is an infringement of the copyright or not.

It is often affected by other considerations, the value of materials taken and the

importance of it to the sale of the original work....In short, we must often, in deciding

questions of this sort, look to the nature and objects of the selections made, the

quantity and value of the materials used, and the degree in which the use may

prejudice the sale, or diminish the profits, or supersede the objects, of the original

work....423 Starting the analyze with the remark that all of the J. Story’s criteria are

contained in the section 107. It may be important to emphasize the nature of the

copyrighted work criterion. It could be moe difficult for the courts to analyze, but it

421 Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, L.Ed. 2d 574, (1984).

422 § 107. Limitations on exclusive rights: Fair UseNotwithstanding the provisions of the section 106, the fair use of a

copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include-

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;(3) the amount and substantiallity of the portion used in relation to the

copyrighted work as a whole; and(4) the effect of the use upon the potential market for or value of the

copyrighted work.423 Folsom v. Marsh, 9 F.Cas. 342, 13 Copy.Dec. 991, 1000-1001, (1841). Note

that the doctrine was created by the judge intensly familiar with the civil and the Roman law principles, and that in its characteristics it resembles the servitudes.

appears that it is important to determine the medium of the work more thoroughly, in

relations to the other factors in order to see if copying may be considered fair or not.

However, as shaped in 1976, section 107 reflects an past community’s

view on the use of intellectual property. Its language is in the plural, tuned to the

needs shaped after industrially induced criteria: mass production and pre-designed

common use. It recognizes needs for the education and it determines it as mass

activity. In modern societies education is irretrievably merged with the entertainment

and high science, as well with the group education. Individuals work on their

education in cooperation with modern technologies, but a big part of it is individual,

and a big part of it is possible only through the copying. It speaks of news reporting

not distinguishing local reporting which role is increasingly important in rapidly

decentralized societies. When it speaks about inherently individual activities, like

scholarship, or research it sticks to the activities traditionally recognized as of special

importance to the society. It excludes the activities which established itself in the

post-industrial age as constitutive for societies well-being, such as entertainment.

When it determines the reproduction which it permits it talks about the “reproduction

in copies or phonorecords” in plural, not recognizing that the modern needs of

copying are fulfilled by individual copying for individuals. The essence of “the

modern copying” is duplicating the work in one copy for personal use. The societies

established protection of a sovereign individual with his/her legitimate individual

needs and rights as very high goal to be achieved. Copying is very important

instrument in enabling that goal to come true, and although that interest424 inevitably

clashes with the interest of the community to encourage authors by making incentives

to creators, it also assures its stability by protecting property of the individuals. This

problem may be solved; solved not inconsistent with the author’s interest in his

property. We will discuss it later on.

One of the misconceptions in the dissent is in understanding of the

potential market. Never, in any society is law to be applied by the courts as the

instrument to determine the future of the community. It is the legislative body that is

authorized to do by creating. In the Common law, of course, this process may appear

different, but is deeply identical on the level of the legal principle. It looks different

because every new decision creates the law which in a way is affecting the future as a

424 Leaffer, § 10.11 [C], at 306, commenting Williams & Wilkins Co. v. United States 487 F.2d 1345 (1973), aff’d by an equally divided Court, 420 U.S. 376: “The small and speculative future harm to plaintiff was outweighed by the certain harm to medical science if the photocopying were stopped. Thus, the public interest in medical science prevailed over the possible damage to the copyright owner.” (Footnote omitted.)

fact. But that is an legal fact, and to the extent of influencing particular parties future

it is true also in the civil law systems.425 Here, we have essentially different situation

in which the court is inferring the “factual” fact without relying on any material

evidence, in order to create the legal fact, as opposed creating the legal fact, i.e., the

opinion on established factual evidence.The Supreme Court realizes that and refers to

the Congress as only being competent to determine future laws. But, by interpreting

“the potential market” factor from the subsection (4) of section 107, as future rather

than present potential market dissenting opinion is applying the law against its

purposes. Although the future may be, to some extent contained in present time, its

outcome, our future reality not only shouldn’t be determined by the courts, but also

isn’t determinable to that extent. As far as its determination goes whole society has to

participate through the parliament, creators included.

* Heavy reliance of the dissent in Betamax makes the weak points of the

section 107 even more apparent. Copying for individual use) Specially in the light of

overruled reasoning of the Circuit Court: “The district court relied heavily on its

conclusion that the Copyright Act of 1976, providing that copyright holders have

monopoly power over all productions of their works, did not include reproduction of

sound recordings for home use. See 17 U.S.C. §§ 106(1), (4), (5) and 107.”

The Fair Use and the Public Domain

The analogy used by the trial court is in our opinion accurate. The

sheer duration of the suit, over eight years made it obvious, although the law did not

change. Essentially that analogy is easily shown by the comparison of the

development of the radio and the television broadcasting. About a century ago, when

first commercial radio broadcasting started to take shape, every single performance

was important to the author as a recognition of the value of his work. (Is the value of

the work its usefulness?) After some time broadcasting became economically

accessible to smaller broadcasters. Once radio programs reached the point of

saturation and popular recordings started being played over and over again. And not

only were they played repeatedly in time, but often at more than couple of times

simultaneously in the different places. For many of this performances the money was

collected. As far as the interest of incentive to the author goes it became obsolete to

425 Marlin Firearms Co. v. Shields, 171 N.Y. 384, 64 N.E. 163 (1902). The court stated: “But the precedent which the plaintiff seeks to establish would open the door for a judge sitting in equity to establish a cesorship not only over the past and and present conduct of a publisher of a magazine or newspaper, but would authorize such judge by decree to lay down a chart for the future guidance in so far as a plaintiff’s property rights might seem to require,...”

bar home taping. If the copying technologies were available in the early days of the

radio when hours of broadcasting were incomparably fewer industry backing up

authors interests would react different, just like it did when television faced

appearance of copying equipment. But as hours of broadcasting increased even during

the time it took the Courts to reach the decision in Betamax case. Many independent

small TV stations started broadcasting, cable TV started to broadcast 24-hours a day.

It became apparent that works of art created for and broadcasted on TV programs

reached similar level of saturation as the works on the radio programs. Video clips

were on the air every couple of hours, several times a day all around the globe, on

cable, satellite etc., scientific programs are shown again and again on specialized

networks, educational channels and official broadcasting companies in all of the

countries around.426 The remuneration is sufficient to achieve goal of progress by the

means of the “incentive,” and need of society to copy for individual purpose,

whichever it may be, is recognized. Intuitively, one may say, but Betamax case

protects these interests by the law, anyhow. However, “the copyright case of the

century” didn’t changed the purpose of the copyright as we knew it. It reversed the

order of the means by which the purpose is to be achieved. Copyright will never be

the same again.

426 Christgau notices this phenomenon in the mentioned article and concludes: “Technology changed everything in the 80’s. [* * *] Sampling transformed rock and roll’s proprietary relationsip to its own history. Cassettes made private music portable - and public.,” at 66.

C HAPTER F IVE

THE INTERFACES

The phenomenon of the development of the interfaces of various

systems in the protection of intellectual property is pointing out that the law is

changing in the direction of applying the common principles of intellectual property

to all creation regardless their statutory clarification under the subject matter strictly

defined. Spreading of the subject matter included for the copyright protection from

the books, charts and maps to the variety of different subject matter which are

protected today, and still are the pressure upon the courts to stretch the limits of the

subject matter even wider is indicative. We want to indicate that the case law not only

foslo,but also creates the trend, and that such development is not entirely new.

The research in the case law for the purpose of this chapter will be

organized as the search after the situations where the instruments of patent protection,

trademark protection and trade secrets protection were applied to the copyrightable

subject matter in copyright related litigation. We will also search for corresponding

treatises. Copyright is chosen as the principal matter because it seems that the form of

protection under the copyright system points out more acute questions on the property

of intellectual creations than other forms of intellectual property protection.

Accordingly more cases are to be expected in the field of copyright. Further, other

fields like computer software and industrial design will be examined in particular. In

those fields cross applying, under the broadly accepted name of interfaces became

well established practice.

The scope of the research will be narrowed to exploring the cases in

which different protection principles were cross applied in solving disputes. Cross

protection how we understand it, is the described situation in which courts apply

instruments of protection developed for protection of other forms of intellectual

property to the copyrightable (or other) creations on exceptional rather than regular

basis. Regular applying of the different systems is known as interfaces.427 As we see

the development of the interfaces started by cross applying. The cross protection

preceded interfaces. The present situation is streaming to establish systematical

interface systems as the solutions to most of the new subject matter of intellectual

property. However, it seems there is a trend to apply interfaces to the traditional

subject matter too. Hypothetical future situation in which such needs for more

adequate protection of the subject matter will be met by an adequate protection

system will be called integral protection.

Overlapping Forms of the Protection

Copyrights and patents are traditionally regarded as the central part of

intellectual property and as such they are a matter of special interest to us. Many

lawyers consider the opposite poles of intellectual property as related to some extent,

but are not very much aware why and how. “Although patents and copyrights find

their federal basis in the same clause of the Constitution, the legislative and judicial

treatment they have received has differed materially; copyrights and patents, though

related, are yet worlds apart”.”428 (Emphasis added.) It is possible to find different

approaches in understanding relation between copyrights and patents. For instance, in

discussing the “duplication” in the context of the doctrine of “fair use” in copyright,

another commentator concludes that the fair use “is analogous to the sale of a patented

article whereby the purchaser is given the right to use and sell that specific device, but

not to make duplicate devices; that making or using or selling of duplicate devices

constitutes an infringement of the patent.”429 Although these two statements can not

represent the legal thought in their respective time periods, former being from the

sixties and the later from the thirties, they may indicate how the understanding of the

relations was changing. Of course, it should not be a problem to stock-pile examples

of analogizing between the various forms of the protection, but the real challenge is to

show that the judicial system followed that sort of thought in jurisprudence with some

degree of sistematicality.

427 1. a surface regarded as a common boundary of two bodies, spaces or phases. 2. the facts, problems, considerations, theories, practices, etc., shared by two or more disciplines, procedures or fields of study * * * 3. a common boundary or interconnection between systems, equipment or human beings.* * * 6. Computers. a. equipment or programs designed to communicate information from one system of computing devices or programs to another. b. any arrangement for such communication. “The Random House Dictionary of the English Language”, Sec.Ed., (1987).

428 Stanley Rothenberg, Legal protection of Literature, Art and Music, (1960), at 3-4.

429 Leon H. Amdur, Copyright Law and Practice, (1936), at 754-755.

Cross-Application

The Supreme Court, discussing the apportionment of profits regarding

the determination of the damages on the appeal in Sheldon v. Metro - Goldwyn430

found that “[t]he analogy found in the cases of patent infringement is persuasive.”

Concluding lengthy technical discussion of the mechanisms of apportionment the

Court concluded that there is no bar to the use of the principles of patent law: “[w]e

see no reason why these principles should not be applied in copyright cases.”431

Further research with the decisions preceding the famous one, just

quoted above, will reveal that the Supreme Court was on similar path even before.

Another decision from the thirties432, this time in the copyright licensing case

examined, which ended in dispute over the tax issues lead the Court into the

following comparison: “[a] copyright, like a patent, is ‘at once the equivalent given by

the public for benefits bestowed by the genius and meditations and skill of individuals

and the incentive to further efforts for the same important objects’.” (Citations

omitted.) Further, Hughes C.J concluded: “[w]e agree, however, with the contention

that in this aspect royalties from copyrights stand in the same position as royalties

from the use of patent rights, and what we have said as to the purpose of the

Government in relation to copyrights applies as well, mutatis mutandis, to patents

which are granted under the same constitutional authority to promote the progress of

science and useful arts.”

Other similar comparison is to be found in another famous Supreme

Court case433 which dealt in the first place with the doctrine of the first sale. It came

out of the dispute over the retail price of a copyrighted book determined by a notice

printed in conjunction with the copyright notice. The issue of similarity of the

principles of patent and copyright laws was raised by the appellant. However, not

430 Sheldon v. Metro-Goldwyn Pictures Corporation et al., 309 U.S. 390, 402. In Aladdin Mfg. Co. v. Mantle Lamp Co., 116 F.2d 708 (7th Cir. 1941), the court found in the similar context, i.e., in determination of damages that it is possible to apply the principles of patent law to the trademark issue. That is quite far-reaching as the principles of trademark law are traditionally regarded as incompatible with the patent law principles. Still, the court found referring to the Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 36 S.Ct. 269, 60 L.Ed. 629, that “[t]he procedure is analogous to that in patent cases.”

431 Id., at 405.432 Fox Film Corporation v. Paul H. Doyal, 286 U.S.123, at 127, 131, 76 L.Ed.

1010, at 1016, (1932).433 Bobbs-Merrill Co. v. Straus, 210 U.S. 339, at 345, 52 L.Ed. 1086, at 1091,

(1908).

always was analogy upheld. The Court held for the appellee avoiding to compare the

rights over the creation under the following explanation: “[w]e may say in passing,

disclaiming any intention to indicate our views as to what would be the rights of

parties in circumstances similar to present case under the patent laws, that there are

differences between the patent and copyright statutes in the extent of the protection

granted by them.” We consider this opinion of the the court also to be in favor of our

contention that the differences are only of the statutory nature, regarding the

characteristics of the protection granted, and that there are no difference regarding the

substantial content of the property right over intellectual property.

One important example of the approach illustrated by the examples set

above is to be found in a more recent Supreme Court case, namely in Betamax.434

There, the Court made the comparison between the patent and the copyright systems

by patently using the definitions of the contributory infringement as set by the

provisions of the section 271 of the Patent Code in order to determine contributory

infringement in the area of copyright.435 The Court did so in self-understanding

manner, without even finding that it needs to explain such step, as it presumed that it

is legally consistent to do so.

The examples we choose show the Supreme Court found making

comparisons reasonable and useful, but it did not go as far as the substantiality of the

mutuality of the underlying principles in various systems of intellectual property

protection. Our intention at this point is not to show that the courts were aware of

such similarity. We are showing that the courts felt free to make the comparisons of

what we consider fairly different legal institutions. We are arguing that the time when

such similarities will be fully recognized is now.

It appears that in the first half of the century it was more natural to

consider the protection systems of intellectual property as organically related. The

beginning of the second the whole was fragmented into the divided areas. Probably it

was conditioned by policy reasons, but the result looked like many small minefield for

the purposes of the big anti-trust conquest.

More recently other theoreticians and the same Court reached similar

conclusions. In “the copyright case of the century” the Supreme court said: “[t]he

434 See footnote (#) , supra, at .435 See 35 U.S.C. § 271.

closest analogy is provided by the patent law cases...”436 Professor Leaffer writes:

“For thorough understanding of copyright law, one should be able to place it into the

broader range of the other forms of intellectual property law. Copyright, patent, and

trademark law, although based on different statutes, goals, and theories, may often

overlap and interrelate.”437 We share this beliefs. In our opinion the statutes reflect

the theories, and the theories were shaped after the goals were recognized by the

society. As we understand it, the “goal” is the term denoting how the author is, or

should be, affected through the exploitation of his creation. Thus, once legal theory

determines the goals of creation intellectual property protection may be understood in

the new light.

“All forms of intellectual property share similarities. First, as to its

nature, all intellectual property involves property rights to information: copyright

(expressive information); patent (technological information); trademark (symbolic

information).”438 Both, patents and copyrights, as well as other forms of intellectual

property protection are in the first place the protection of the property in the creation.

Creation is the result of creative process, a discovery, a invention, a work of art, an

idea or any other protectable or unprotectable result of human creative activities all

share common area. They are all part of the human effort to understand the reality.

Creation is the expression of our understanding of the reality. In our opinion the

discoveries and the ideas may also be forms of expression of the same understanding.

Information is in that sense the common material creations consist of. The

information is on both sides of the creative process; input and output aggregated by

that process. The question is: which information can be owned by the creator (author

or inventor). That is the main link all forms of intellectual property protection are

related through.

Some Analogies Between Various Intellectual Property Doctrines

There is no difference between the forms of creation but there is

between the means of the exploitation of the results of the creative process. As a

matter of fact, there is more differences than the present system is capable recognizing

of and successfully serving.We conclude that differences are most likely reason for

the appearance and the existence of the cross protection and the interface situations.

436 Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, L.Ed. 2d 574 (1984).

437 Marshall A. Leaffer, Understanding Copyright Law, (1989), § 1.8, at 14.438 Id, § 1.8. The determination the content of intellectual property right as the

information was discussed in previous chapters.

Before we go further it is necessary to show in few brief examples how analogizing of

the legal doctrines pertinent to particular protection systems may indicate some

similarities common to all of intellectual property.

One of typical examples of such would be the analogy between the

“first sale”439 copyright doctrine and “reverse engineering” trade secrets doctrine.

Certain similarities are noticeable in spite of the general differences in purposes they

were created for. Under both doctrines the lawful owner acquires the full scope

property right (ownership) on the material object, and is free do dispose with it

disregarding intellectual property incorporated in it. Some aspects of the similarities

may be traced in the Vault v. Quaid. The issue was not discussed thoroughly as the

plaintiff abandoned its misappropriation claims on the appeal.440

Another such analogy helpful for understanding internal relations in

intellectual property is the issue of rejection of moral rights doctrine under common

law systems.441 It may be understood that the concept of absolute rights of the owner

of the material object is not easily compatible with the such rights of creator that may

arise as the limit. Still, it would be wrong to think that such conception is completely

absent from common law intellectual property system. It is not present in the

copyright, where we expect it first. It appears in an unexpected field: in the protection

given to the inventor to be registered as the first and true inventor, even before an

earlier applicant. Such right may be compared with some aspects of the “paternity

right”, the unalienable right of the author to be acknowledged as one442 . Other aspect

of it is visible in the right given to the inventor through the patent to control patented

invention even over its derivations, i.e. control of the dominant patent over the

improvement patents. That corresponds to the “integrity right”, moral right to control

mutilation and adaption of a work of authorship given to its author. It also

439 See 17 U.S.C. § 109 (1976).440 Vault Corp. v. Quaid Software Ltd. 847 F.2d 255, 57 U.S.L.W. 2016, 1988

Copr.L.Dec. P 26,293 7 U.S.P.Q.2d 1281 , Vault Corp. v. Quaid Software Ltd., 655 F.Supp. 750, 55 U.S.L.W. 2494, 1987 Copr.L.Dec. P 26,103, 2 U.S.P.Q.2d 1407.

441 Article 6 bis(1) of the Berne Convention: “Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.”

442 Some continental system recognize such inventors rights explicitly as moral rights, See e.g. Yugoslav Act on the Protection of the Inventions, Marks of Distinction and the Technical Advancements, sections 8 and 11. I would also like to thank Sarah Wijns, FPLC, MIP, Class of 1990, for initially pointing out this inconsistency in the U.S. legal system.

corresponds to the exclusive right to “do and to authorize [* * *] derivative works”443

granted to the copyright owner, in a measure as that right corresponds to the “integrity

right”.

Third such similarity could be found in analogy of the doctrine of the

equivalents in patent law with the standard of the substantial similarity in copyright

law.444 Both of these standards are to be applied by the courts in order to determine

the proximity of the infringing work to the infringed A question arises, and by now it

can be easily called traditional question, of the role of the jury in determining the

answer to this, as to the other issues in intellectual property litigation. The answer

clearly requires separate research, and we will not discuss it further in this essay.

Fourth example may, at the first glance, appear as confusing. It is

opposite from the above examples, in the sense that the doctrines which have the

same name in different protection systems denote different doctrines. The use of the

term “fair use” is to be found both in copyright and trademark law. However, the

content of the doctrines is entirely different. The “fair,” or “permitted use” doctrine in

the trademark law “[i]n essence, [* * *] prevents a trademark registrant from

appropriating a descriptive term for its own use to the exclusion of the others who

may be prevented thereby from accurately describing their own goods. The holder of

a protectable descriptive mark has no legal claim to an exclusive right in the primary,

descriptive meaning of the term; consequently, anyone is free to use the term in its

primary, descriptive sense so long as such use does not lead to customer confusion as

to the source of the goods or services.”445 The doctrine, as defined by the Fifth

443 See 17 U.S.C. § 106(2).444 This similarity was pointed out by professors Marcus Hurn and Hugh

Gibbons of the Franklin Pierce Law Center, in their lecture “Rethinking Similarity: Conceptual Problems Underlying the Doctrine of Equivalents in Patent Law and ‘Look and Feel’ Cases in Copyright,” held on January 16, 1990 as the part of the program of “Patenting Software” Conference, on Massachusetts Institute of Technology.

445 Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983), citing Soweco Inc. v. Shell Oil Co., 617 F.2d 1178, at 1185. The court also refers to 1 J. McCarthy, “Trademarks and Unfair Competition,” § 11.17, (1973), at 379. See alsoVenetianaire Corp. of America v. A&P Import Co., 429 F.2d 1079 (2d Cir. 1970). Interesting question is whether another “permitted use” case, Societe Comptoir de L’Industrie Cotonniere Etablissements Boussac v. Alexander’s Department Stores, Inc. 299 F.2d 33 (2d Cir. 1962), would be decided with different outcome for the plaintiff if it would have been raised under the New York “Anti-dilution statute.” We want to point out that we consider the role of anti-dilution theory simply as an extension of the general protection from the “likelihood of confusion.” Anti-dilution theory, and the statutes enacted, by introducing the lower standard of evidence provides the plaintiff, and indirectly, the public interest, with more successful legal tool to stop the likelihood of confusion. We consider the dilution of the trademark just one of the consequences

Circuit, is clearly corresponding to the “merger” doctrine in copyright, and the name

“fair use” appears here as a misleading. It is, indeed, easier to regard the impossibility

to express the essential truth about the product but by the excepted primary

descriptive meaning as the equivalent to the doctrine created in copyright to protect

the forms of expression which are substantially similar in a high degree due to the fact

that the pattern of reality so described is hard to describe in any other way. In

conclusion, we are pointing out to the artificial character of this doctrine, artificial in

the sense that it is a very simple legal tool created in order to facilitate adjudication of

complex semantic and communicational problems involved in our perception of

reality.

Such comparisons, as we conducted in the preceding paragraphs, are

possible because of the similarities caused by inherent proprietary nature of the

relation between the inventor or the author to his creation within all forms of

intellectual property protection. Still, by comparing certain features, we are not

neglecting the eventual existing differences between the systems of protection, and

are prepared to understand the reasons and the purposes behind such differences.

However, we are convinced that further such analysis would ultimately show that

points in which such similarities correspond, on the deeper level, are due to the fact

that the information is the common object of all intellectual property protection.

Being so, similar problems of justly dealing with its specific intangible nature caused

the similarities in the law of its protection.

The nature of the Creation

One of the most important problems in the common approach to

intellectual property rights and in understanding its broader context is caused by mere

deduction habit of human way of thinking. Once we realize that four basic principles

of patent protection system do not determine characteristics of imaginary invention, as

opposed to the work of art the problem is solved. That means that patentability of

of the increased likelihood of confusion, as extended to the non-competing goods. In our opinion it is equally likely that to the certain segments of consumer universe even denoting non-competing goods with the substantially similar marks can cause confusion regarding the source. Thus, we do not regard anti-dilution as a new legal doctrine, created after the war, but just an spreading of the “likelihood of confusion” standards to a wider area. The consequence is that it protects more thoroughly the proprietary interest of the owner of the goodwill, indirectly protecting the public interest not to be confused as to the origin of the goods.

subject matter,446 novelty,447 usefulness,448 and non-obviousness449 are not

characteristics determinative to a certain type of human creation. These are but mere

administrative terms that reflect requirements imposed by the society in order to reach

the pragmatic goals of dividing presumably economically exploitable creations from

the presumably non exploitable ones. Acting through the Legislator in order to make

such goals operable, the presumption of the economical exploitability was instituted

by creating the category of “utility”450. Talking about said statutory requirement

Judge Rich expressed the distinction in In re Bergy as “the questions of whether a

particular invention is novel or useful are questions wholly apart from whether the

invention falls into a category of statutory subject matter.”451 (Emphasis in original.)

he also said that: “[t]he requirements of novelty, utility, and non-obviousness are not,

as the good judge said, ‘the statutory definition of invention’’; they are the statutory

prerequisites to patentability of inventions. There is always an invention.”452

(Emphasis in original.) Invention is no less a creation because it is not patentable.

Some authors distinguish between the invention and the innovation, later defined as

the development and introduction of the inventions already made and patented.453 It

points out precisely the aspect of the patent system we discussed.

It would be simply too much inventions to protect by monopoly as

formal as patent monopoly is, unless such strict requirements would have been

imposed. The large quantity of all the inventions made has to be narrowed in order

that formal protection system simply could technically process all of the applications.

446 See 35 U.S.C. § 101 (1982).447 See 35 U.S.C. § 102(a) (1982).448 See 35 U.S.C. § 101 (1982).449 See 35 U.S.C. § 103 (1982). We have discussed inappropriateness of the

standard of the “flash of the genius,” as introduced and abandoned by the Supreme Court in Introduction, footnote (#), and here opinion of Judge Giles S. Rich, Associate Justice of the Court of Appeals for the Federal Circuit in a speech published under the title “Escaping The Tyranny Of Words--Is Evolution In Legal Thinking Impossible?” in 60 Journal of the Patent Office Society 271. At page 276 he states that: “[t]there is nothing rare about invention. Each and every one of us makes inventions all t he time. Little problems in our daily lives give raise to little inventions to solve them. Even animals make inventions and discoveries. There is raccoon that visits me and has discovered that by jumping on the roof over my study and grabbing the bottom of a storm door and shaking it he can get a handout of food. Beavers invent marvelous dams and reduce them to practice.”

450 Donald S. Chisum, Chisum on Patents, (1988), §§ 4.01 et.seq.451 In re Bergy , Coats, and Malik, 596 F.2d 952, at 960-961 (C.C.P.A. 1979).452 Rich, id., at 302. He concludes the article by proposing: “Let’s not be

tyrannized by words. Let’s try to hang on for dear life to the little advances in the art of thinking about patent law that we are able to make in our lifetimes,” at 303.

453 Fritz Machlup, “An Economic Review of the Patent System,” Study No. 15, S. Res.236, (1958), at 14 and 24.

In other words; same requirements could be imposed to the copyrightable creations,

and that wouldn’t change the nature of copyrightable creations at all. Creative result

stays the same regardless of protection system applied. Certainly, such system for

copyright could have been established two hundred years ago, only if the creators of

present intellectual property system could have had an idea how profitable and

economically sound entertainment industry would become. In short, we think that the

sheer economic strength of the industry is the main reason of formality of the patent

system, as well of its sophistication, and its consistency among intellectual property

protection systems. It is possible to foresee the pressure which will reflect the interests

of the entertainment industry for the formal protection, similar type to the patent

protection, as the market for the products of the industry will expand.

Section43 (a) of the Lanham Act as the Focal Point of Overlapping

Before we turn to the points where the overlapping of the forms is

subject to frequent discussions and part of the everyday practitioner problems, we will

review some of the cases in the field of law where cross applying does not occur as

often as in the case of software protection. Still, with a regularity, the actions taken

under the section 43(a) of the Lanham Act454 will be copyright issues brought up

454 15 U.S.C. § 1125, as amended:(§43) False designations of origin and false descriptions forbidden(a) Any person who, on or in connection with any goods or services, or any

container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--

(1) is likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association of such person with another person, as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(2) in commercial advertising or promotion, misrepresents the nature, characteristic, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who

believes that he or she is or is likely to be damaged by such act.Pattishall & Hilliard, id., at 303, quoting Robert, The New Trade-Mark Manual,

(1947) at 186-188, point out that “[s]ection 43(a) was primarily intended by the framers of the Act to provide a remedy for the use of a geographic name, or ‘appelations of origin’ in connection with goods not actually from that locality. In that respect, it should be less surprising that the claims directed towards the protection of authors’ rights regarding the true origin of their work regarding the source of its creation fitted within the language of the provision designed to protect the consumers from the false statements regarding the origin of a product as a geographic source is concerned. It also shows that the protection from the unfair competition is a tool designed to protect the property aspect of the rights primarily. The protection from the unfair competition only appears to be case for itself because of its widespread appearances. Actually, it is the most often aspect of the intellectual property violations, thus it is also most visible in

under the trademark law provisions. In the light of our previous discussions it has to

be clear that it is not primarily trademark aspects of the issues brought up are

associated with in 43(a) actions. It is more likely that the aspects of the broader

protection of the rights over the symbols, as contained in the principles of the

trademark law, will be used by plaintiffs, such as their publicity right. Other major

issue associated with the copyright issues brought up under 43(a) actions is protection

of moral right of authors. Moral right is most often interpreted as fourfold bundle

which consists of the right to create, the integrity right -- the right that the work will

not be mutilated without the consent of the creator, the right to decide whether or not

to dispose of the creation, the right to withdraw the creation after its publication (as

associated with publishing contracts), and the paternity right -- the right of truthful

name attribution.455 Different countries recognize different scope of protection for

moral rights.

Probably the most famous case, which became a vehicle for the

attempts to introduce certain principles of protection of moral rights which American

copyright is failing to provide is the famous Gilliam v. ABC case.456 In addition to

the courtrooms. In other words, our opinion is that the unfair competition developed as the value in itself, but as such its main objective is still to protect intellectual property in creation.

455 See Nimmer, id., § 8.21. See also Leonard D. DuBoff and Sally Holt Caplan, “The Bern Convention,” Los Angeles Lawyer 41, April 1989, footnotes 9-13. Authors provide us with the list of American states which have enacted provisions protecting certain moral rights of authors: California, Cal.Civ.Code., § 987 (1982); New York (N.Y. Arts & Cult. Aff. Law §§ 11.01 et seq. (McKinney Supp.1987); Massachusetts, Mass.Gen.Laws Ann. ch. 231 § 85S; Maine, Me. Rev. Stat. Ann. tit.27, § 303 (Supp. 1986); and Pennsylvania, Pa. Stat. Ann. tit. 73, §§ 2101 et seq. (Purdon Supp. 1987). Nimmer, § 8.21[C], includes also New Jersey, N.J. Laws, tit. 2A, § 2A:24A-4; and Rhode Island, R.I. Stat. ch. 62, § 5-62-3. From the states listed it is clear that the legislative trend in the United States is shifting towards protection of moral rights. However, although the most prominent states, regarding the copyrights, did protect moral rights of creators, there are no signs of similar legislative action on federal level. Nevertheless, hearings in the Senate committees are being held from time to time regarding the issue, one of them on October 24 1989, as reported by 38 BNA Patent, Trademark & Copyright Journal 680 (1989). We simply cannot skip the testimony in which the argument against introduction of the moral rights was articulated as follows: “Legislation giving directors moral rights in their films would mean that the editor would have to keep the phone number of all directors at hand so that they could approve changes necessary to put the film on television,” id., at 681. Needles to say, the witness is the employee of the TV station, and as such probably represents the interests of the industry. This writer has to admit that he had rarely seen such an humiliating understatement of the creativity as the right of the expression of an individual. It is comparable to saying that the principles of First Amendment will present problems if enforced, at least on the TV, because the noise made by the expressions will distract the editor of the program while working.

456 Gilliam v. American Broadcasting Companies, Inc., 538 F.2d 14 (2nd Cir.1976). See Joseph P. Bauer, “A Federal Law of Unfair Competition: What

finding the violation of the terms of the license agreement and the infringement of the

authors adaptation right, the court found a violation of the integrity of the work under

the provisions of § 43(a).457 The mutilated version was found to constitute a false

designation of origin by the means of deforming the work and presenting it as

authors’, so exposing the authors to the possible criticism for the work which was not

his creation. It was successfully established that defendant was not entitled to make

changes he did. An earlier case Jaeger v. American International Pictures Inc.

established the pattern which Gilliam followed, but with the different outcome.458

The court did not issue preliminary injunction after an action by purported director of

an German film for alleged violations of rights of literary property, right of privacy

and the Trademark Act by alleged garbling and distortion of the English version of the

film. The court did find that there is possible cause of action under the section 43(a)

regarding the fact that director’s name was used for representation of the garbled

version of the film. However, preliminary injunction did not issue in the first place

because it was persuasively shown that the American distributor was entitled to make

changes and that plaintiff waited approximately two months after he learned that the

changes have been made. The circumstances in Gilliam case were different regarding

the right to “re-edit,” and that was probably the main reason why plaintiffs prevailed.

In this case the author’s right of integrity was raised under the New York Civil Rights

Law New York section 51459 , and the paternity right under federal Trademark Act,

Should be the Reach of Section 43(a) of the Lanham Act,” 31 UCLA Law Review 671, (1984), at 693-694. Comment, “Moral Right for Artists Under the Lanham Act: Gilliam v. American Broadcasting Cos.,” 18 William and Mary Law Review 595, (1977); Susan L. Solomon, “‘Monthy Python’ and the Lanham Act: In Search for Moral Right,” 30 Rutgers Law Review 452, (1977).

457 In the very conclusion of the opinion the court expressly stated: “We therefore agree with Judge Lasker’s conclusion that the edited version broadcast by ABC impaired the integrity of appellants’ work and represented to the public as the product of appellant what was actually a mere caricature of their talents.” We want to point out here that strictly speaking, the protection granted to integrity of the work under the statutory concept of preventing misrepresentation of the product, as in § 43(a), corresponds more squarely with the paternity right than with the integrity right. However, the distinction is not crucial as integrity and paternity rights are closely related, and sometimes hard to distinguish within the concept of the moral rights.

458 Jaeger v. American International Pictures, 330 F.Supp. 274 (S.D. N.Y. 1971).

459 Section 51 of the New York Civil Rights Act provides in pertinent part: :Any person whose name...is used within this state for...the purposes of trade without consent [of that person]... may maintain an equitable action...against the...corporation so using his name...to prevent restrain the use thereof.... It is important to explain that the moral right of paternity in author’s right is essentially the protection of same social value protected by Civil Rights Act of the State of New York, i.e., the right to control the use of the name by the person, reinforced regarding the author in conjunction of his creation. Let us also state that such right might also be regarded as the object of the law of symbols, as the name is nothing else but the symbol denoting private person. Unfortunately, the

section 43(a). Interesting pattern of the legal reasoning is the translation of the

violation of the author’s integrity right, i.e., his right that his work would not be

mutilated without his consent, into the violation of privacy which is secured by the

Civil Rights Act, and the remedy sought for this violation under the Trademark Act,

which is a translation of the author’s paternity right, i.e., his right to be denoted as the

author of the work. It may be only the coincidence, but it is interesting to note that

plaintiffs in both cases, as well in the one which will be discussed next are European

artists, supposedly more familiar with the moral rights concept than the American

artists.

We have to state that although the cases we are describing here do

apply principles of cross protection, it is actually to be expected that they would not

appear in such number, if at all, would the United States copyright provide adequate

protection of the moral rights. Obviously, the provision of the section 106(2) of the

Copyright Act securing the author in his right to prevent unauthorized production of

derivative works based upon the copyrighted work is not tight enough, so that various

“re-editing”460 are not objectable under it. However we will provide brief review of

quite numerous cases raised under section 43(a) in order to protect some aspects of

the right of an author, some of which would correspond to the paternity right in the

systems which recognize moral right of the authors. Here, we have to be aware, it is

more likely that the issues are raised under the broader principles of protection of

symbols because of the failure of the copyright law to provide adequate protection,

additional clause of the section explicitly provides that “nothing contained in this act shall be so construed as to prevent any person...from using the name, portrait or picture of any author, composer or artist in connection with his literary, musical or artistic productions which he has sold or disposed of with such name, portrait or picture used in connection therewith.” The court in Yameta v. Capitol Records, 279 F.Supp. 582 (S.D.N.Y. 1975), preliminary injunction vacated on other grounds, 393 F.2d 91 (2d Cir. 1968) in interpreting § 51 referred to Durgom v. Columbia Broadcasting System, Inc., 29 Misc.2d 394, 214 N.Y.S.2d 752 (N.Y.Co.Sup.Ct.1961), and to Long v. Decca Records, Inc., 76 N.Y.S.2d 133 (Sup.Ct.1947).

460 The court in Jaeger said: “There are many sworn assertions by people in the film industry to the effect that it is a custom of their trade to recognize in American film distributors a right to “re-edit” and otherwise adapt foreign movies for exhibition in this country. There are substantial indications that contractual arrangements for American showings of such movies are made with the common understanding and acceptance of this customary practice as a necessary element in the effective exploitation of foreign productions which may, in terms of differing tastes and sensibilities, inevitably require tailoring for American display.” This may indicate at least two things; first would be the awareness of foreign producers of the significance of American market, and second, which is disrespect for the authors rights regarding the integrity of his work deeply rooted in common law copyright, in the best tradition of its early relation to censorship as we describe it in chapter two.

than because they would be related to trademarks in particular. it is valid for the both

for the cases stated in previous paragraph which are deceiving public about the facts

of creator’s contribution to the work, as to the following cases.

Similarly, according to the stipulation of the parties, there were no

precedents for the case which arose under section 43(a), as an issue of the false

attribution of authorship. In Follet v. New American Library author sued the publisher

in an attempt to enjoin the appearance of his name in conjunction with original

authors’ names on the cover of the book which he revised only.461 In the original

contract with the English publisher, then relatively unknown author was actually

trying to get bigger exposure, but as he gained in popularity in the meantime, he

started to regard his creative editing contribution to the original work as unflattering

to his reputation. As this case was also tried under the law of the State of New York,

one line of the claim was related to the section 51 of the Civil Rights Act.462

However, the court addressed the issue brought up under the section 43(a), as the “key

issue” of the designation of authorship. Plaintiff was successful in obtaining an order

by which defendants were required to indicate a lesser amount of plaintiffs authorship

than it previously did. The case is important as it introduces another right from the

bundle of moral rights -- the right of a creator to abandon the work he or she created.

461 Follet v. New American Library, Inc., 497 F.Supp. 304, 311-313, (S.D.N.Y. 1980). We may only wish that more opinions in intellectual property cases would be written by the judges who have that amount for understanding of the creative process.

462 The court refereed to: Bernham v. Bernham-Stein Furs, Inc., 123 N.Y.S.2d 872 (N.Y.Co.Sup.Ct.1953); Miles v. Sears, Roebuck & Co., 61 A.D.2d 929, 403 N.Y.S.2d 18 (1st Dep't 1978) (unauthorized publication of brochure containing pictures of and tips by plaintiff derived from authorized manual); Goldberg v. Columbia Broadcasting System, 25 Misc.2d 129, 205 N.Y.S.2d 661 (N.Y.Co.Sup.Ct.1960); Shostakovich v. Twentieth Century-Fox Film Corp., 196 Misc. 67, 80 N.Y.S.2d 575 (N.Y.Co.Sup.Ct.1948), aff'd, 275 A.D. 692, 87 N.Y.S.2d 430 (1949), and Ellis v. Hurst, 145 A.D. 918, 130 N.Y.S. 1110 (1st Dep't 1911). Both hold that an author has no right under the Civil Rights law to restrict the use of his name to indicate his authorship of work as to which he possesses no copyright. The court distinguished the case from Durgom v. Columbia Broadcasting System, Inc., 29 Misc.2d 394, 214 N.Y.S.2d 752 (N.Y.Co.Sup.Ct.1961), and Ali v. Playgirl, Inc., 447 F.Supp. 723 (S.D.N.Y.1978) holding that in both the plaintiffs gained injunctions against the use of their names in contexts unrelated to their own activities. The court followed Gieseking v. Urania Records, Inc., 17 Misc.2d 1034, 1035, 155 N.Y.S.2d 171 (N.Y.Co.Sup.Ct.1956) citing the following: “‘A performer has a property right in his performance that it shall not be used for a purpose not intended, and particularly in a manner which does not fairly represent his services.’ By analogy, it may well be that Follett is entitled to an accurate description of his role in preparing ‘The Gentlemen of 16 July.’” (Emphasis added.)

Finally, the similar cases which were misleading regarding the

statement on the cover of the record. In Benson v. Winley plaintiff, a well known jazz

musician stated that he recorded the music while playing only as the backing musician

in the early days of his career. It is not actually issue of author’s moral rights in the

first place, although certain aspects of the paternity right are involved. The case could

predominantly be interpreted as the trademark case in the full sense of the term,

regulating the deception of the consumer right not to be deceived.463 However, strong

aspects of the protection of artist’s publicity right actually granted by the court should

not be disregarded. The protection of the publicity right will always be involved to a

greater extent when plaintiff is the author himself, rather than an allegedly deceived

consumer.

As we have pointed in the last chapter, the use of the trademark

principles, in the broad sense, as the law of symbols, should be applicable regarding

the protection of the right of publicity. Specially it is so in the cases where “likeness”

is involved. Likeness, in the context of right of publicity is nothing else but the term

corresponding directly to the trademark symbol, here denoting reputation, and the

goodwill in the trademark cases. Indeed, the attempts to rise claims based on the

unauthorized use of the plaintiff’s picture, name, or likeness under the state civil

rights laws.464

Other intellectual property cases on the trademark and copyright

interface established the pattern, not only by seeking the protection for the integrity

of the work, but also for other aspects of the authors property, or the interests of the

consumer simultaneously.465 In conclusion, it should be stated that analysis of the

trademark / copyright interface we conducted suggests that the provision of section

43(a) of Lanham Act is primarily used as an instrument for protection of intellectual

property rights which do not fit squarely into the schemes of other traditional

intellectual property systems, rather than it serves as a tool of protection of the public

interests which consumers have, in not being deceived in false advertising or

463 Following cases provided by Bauer, although related also to the copyright issues, are in our opinion publicity right and trademark cases: Benson v. Paul Winley Record Sales Corp., 452 F.Supp. 516 (S.D.N.Y. 1978);Columbia Broadcasting Systems v. Springboard International Records, 429 F.Supp. 563 (S.D.N.Y. 1976); Rich v. RCA Corp., 390 F.Supp. 530 (S.D.N.Y. 1975);Yameta v. Capitol Records, 279 F.Supp. 582 (S.D.N.Y. 1975), preliminary injunction vacated on other grounds, 393 F.2d 91 (2d Cir. 1968).

464 Bauer, id., at 693. Bauer provides us with an example; Joel v.Various John Does, 499 F.Supp. 791, 792 (E.D. Wis. 1980).

465 C.M. Paula Co. v. Logan 335 F.Supp.189 (N.D.TX., 1973), and Scarves by Vera, Inc. v. American Handbags, Inc., 188 F.Supp.255, (S.D.N.Y., 1960), Harper House, Inc. v. Thomas Nelson, Inc., --- F.2d ----, WL 128504 (9th Cir. 1989).

mislabeling of the products. The chief argument for such understanding of the

function of the section 43(a) is the fact that it is hard to find a single case in which

somebody else than the rightful competitor. In other words, the role of the section

43(a) as an instrument of the protection against the unfair competition is primarily

protection of the rightful intellectual property rights holder against competitors, rather

than protection of the consumers against the unfair competition.466 Although the

section may have been designed to protect both interests, life of the section in front of

the courts yielded its function of protecting the the bare public interest to the indirect

protection of the public interest by primarily protecting interest of the intellectual

right holder. In the final outcome, it is the intellectual rights holder who will have

strongest incentive to protect its interests and rights, and by doing so the public

interests of the consumers will also be served. In this sense, although we concentrated

on the copyright related aspects of its application, section 43(a) is becoming the focal

point of the United States intellectual property protection, providing the protection of

various emerging rights, under, broadly said, trademark principles. As such, it is

another fact that contributes to our conviction that all of the historically separated

systems of intellectual property protection would provide better protection to

creativity if their principles are reinterpreted and merged. We are further convinced

that the merger is occurring, at least at the level of understanding common

characteristics of creativity. Of course, in order to have legal protection its basis in

understanding creativity has to be uniform, but that does not mean that the final legal

instruments are going to be uniform. To the contrary, we foresee even bigger

diversity in detail of protection of various particular and specific subject matter, but

always based on the common treatment of the creativity. In that order we will first

466 It seems as the courts felt necessary to address that issue. The court in Yameta, see footnote (#), supra, stated: “Although 43(a) was originally given a narrow reading in the courts, it has become apparent in the last decade that its scope is quite extensive. See Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538, 546 (2d Cir. 1956) (Clark, J., concurring). Examination of the legislative history reveals that this provision was intended to prevent not only false designations as to origin, but to protect consumers and competitors against all forms of misdescription or misrepresentation of products and services in commerce. Furthermore, the evil to be remedied is not limited to the common-law concept of 'passing off.' See Derenberg, ‘Federal Unfair Competition Law at the End of the First Decade of the Lanham Act: Prologue or Epilogue?,’ 32 N.Y.U.L.Rev. 1029 (1957). Thus, defendants do not escape liability merely because they are not distributing an album recorded entirely by someone else, but falsely represented as a recording by Hendrix.” The court in Follett, see footnote (#), supra, contended that:“Section 43(a) is designed to provide a statutory cause of action for false description or advertisement of goods by any person likely to be injured by such description or advertising, American Home Products Corp. v. Johnson & Johnson, 577 F.2d 160, 165 (2d Cir. 1978).” Even this neutral statement cannot hide the fact that the plaintiffs are rightful competitors and not consumers, what is also clear from the cases court addressed as relevant.

examine further present situation in which various systems are interfacing

immediately below, and the possible outlook of the merged protection system, in the

next.

THE SOFTWARE

We may ask ourselves how much of the future of intellectual property

protection is contained in the present situation and the recent developments in the

protection of the computer software. After the years of the dilemmas whether

software should be protected under the patent protection, copyright, or should the new

sui generis form of protection be created, copyright settled under all of the forms of

protection mentioned, as well as under the trade secret, and trade mark protection for

some of its aspects. It is somewhat awkward to know that some of the dilemmas were

created in the first place by the Patent and Trademark Office’s administrative

problems. Lack of the qualified examiners lead Office to refuse grant patent

protection in the first place, rather than deeper concerns on the unpatentability of the

software as subject matter.467

Recent situation is overcoming the dilemmas in the practice so that the

authors are protecting their software without problems under all forms of the

protection available. Theoretically different approaches are possible and they could be

described in the following manner: exclusive subject matter approach permits both

patent and copyright protection, but under the condition that they should be applied to

the different aspects of the creation. Aspects that are protectable under patent

principles should be protected exclusively by the patent, and those which are not, by

467 Gregory J. Meier, “Software Protection- Integrating Patent, Copyright and Trade Secret Law”, 69 Journal of Patent and Trademark Office Society 151, at 152-153. He contends that the refusal to accept software as patentable subject matter “had its origins in bureaucratic concerns over workload, rather than in careful theoretical analysis.” Reichman, id., footnote (#), at 11, calls it “the foolish decision of the United States Patent and Trademark Office.” But not all of the software “inventors” do share relief that PTO started granting patents to their creations. The group called “Professors against Software Patents” distributed on the mentioned Conference on Patent protection for Software, held on MIT, January 16, 1990 a leaflet that stated: “The seminar you are attending invites you to protect your business by patenting software. This is as useful as protecting your house from prowlers by filling the pool with piranhas.” the rest of the leaflet is pointing out disadvantages of the expensive and slow patent protection regarding the nature of software creations.

the copyright. Overlapping subject matter approach favors all aspects of the software

to be protected by both systems. Program has to be original, fixed in the tangible

medium of the expression and not merge the idea and expression (this is a problem

that requires a separate discussion), and if as such is also in the state-of-the-art and

unobvious it should also be protected by the patent.468

We may get better understanding of the problem if we turn to the

initial discussion in the National Commission of New Technological Uses of

Copyrighted Works (CONTU) final report.469 In his concurring opinion professor

Nimmer wrote that the full protection under the copyright law would made such

impact on the copyright that meaning of “writings” and “authors” under the

Constitution would broaden the protection to the point that it may become general

misappropriation law, and cover the subject matter more appropriate for patent

protection. Commenting on such opinion as opposed by commissioner Hershey’s

dissent from CONTU report professor Leaffer concludes: “Neither Hershey’s nor

Nimmer’s approach was adopted, and all manner of programs are now copyrightable,

regardless of their nature or output.”470

Reichman considered the problem of emerging technologies and the

legal aspect of the relations caused by the impact of new technologies.471 His

conclusion regarding the software, as for the other new technologies is that they are

hard to cover by the traditional means of intellectual property protection primarily as

they “bear their know-how on their face.”472 He defines the reasons that cause the

problems in protection of new technology as following:

468 Pamela Samuelson“The Software Copyright/Patent Interface: What Is The Law And What Should The Law Be?,” a discussion in Plenary Session of the Spring Meeting of AIPLA, 957 AIPLA Bulletin. In connection to her systematization, see articles on protection of “look and feel” of computer programs: Russo & Derwin, “Copyright in the ‘Look and Feel’ of Computer Software,” 2 Computer Lawyer 1 (February 1985), Daniel J. Kluth and Steven W. Lundberg, “Design patents: A new Form of Intellectual Property Protection for Computer Software,” 5 The Computer Lawyer 1 (August 1988), reprinted in Journal of Patent and Trademark Office Society 847 (December 1988), and Ronald Abramson, “‘Look and Feel’ of computer Software,” 95 Case and Comment 3, (No. 1 1990).

469 CONTU Final Report, (1979), at 12, also Pub. L.No. 96-517, § 10, 94 Stat.3015, 3028.

470 Leaffer, id. § 3.4[B]471 Jerome H. Reichman, “Implications of Software Protection for Universities

and Research Institutes,” Paper presented at the Annual Meeting of the International Association for Teaching and Research in Intellectual Property (ATRIP), National Law Center, George Washington University, Washington, DC, on July 25, 1988, at 7-8.

472 Id., at 7, quoting Galbi, “Proposal for New legislation to Protect Computer Programming,” 17 Bull. Copyright Soc’y 280, (1969-1970).

In short, because the new technology bears its know-how on its face, like any

artistic work, it is subject to instant predation when successful and will obtain zero

lead time after being launched on the market. Paradoxically, these qualitatively minor

innovations in know-how can produce major benefits to the public and yield large

economic rewards despite the ease with which they can be duplicated. Yet, they

would obtain little protection under the dominant paradigms of classical intellectual

property law. The patent paradigm will exclude the bulk of the new technological

innovations because their teachings appear slight or merely incremental when viewed

as an advance over the prior art. At the same time, being functional in character, the

new technologies are alien to the spirit of the copyright paradigm, which historically

protects works of art and literature. They are intermediate technologies in the sense

that they fall between the patent and copyright paradigms; and they are, in effect,

legal hybrids with no place of their own in that international intellectual property

system that sits astride the Paris and Berne Conventions of 1890s. (Footnotes omitted,

emphasis in original.)473

New Technologies have the Quality to Change

Leaving aside cultural rationales why new technologies are likely to fit

in all fields of intellectual property protection to some extent, we will focus in

analysis on developments in the field of software in relation to the hardware creations

- microchips in the first place.474 By introducing the Semiconductor Chip Protection

Act Congress had managed to merge principles of protection of utility with copyright

principles, a step which is very important in the departure from the traditional system.

We have to be aware that making that step is rather the consequence of dealing with

new technologies, than a programmatic decision towards the reform.

First, it is important to note that creations in software as in hardware

are mutually conditioned, and have strikingly similar needs for protection. In our

opinion clearly that is pointing out that same principles lay behind both. In other

words, in the new relation towards the reality, mankind’s use of the software is no less

determinative, material or firm than the hardware. The hardware is increasingly

sophisticated and particularized to meet the needs of serving one purpose - the same

purpose the software is created for. In other words, there is no substantial difference

between software and hardware; they both perform certain function in achieving a

473 Reichman, id., at 7-8.474 Semiconductor Chip Protection Act of 1984, Pub. L.No.98-620, 98

Stat.3347.

required result. Software is no less material, only because it appears to us as

“immaterial”. It is no less hard tool to achieve a result than a hammer or than a

computer chip. We have to recognize that human needs changed to certain extent and

the tools serving those needs just followed the changes. We have suggested above that

most of the human powers actually lay in the field of the ideas. We have pointed out

that the coherence that makes a copper mining company work is not material. There is

no such thing in a company as a chain that would link the chairs, tables, air-

conditioning machines and copiers to the dumper-trucks, bulldozers and drilling

devices, or each of it one to another and to the people that operate them. Still, the

people and the machines, if they would not be somehow linked, would not be able to

execute such a complex task, especially not economically feasible. But the fact that

they are organized in a corporation gives the super human power to such an

exemplary organization. The ‘chain’ that links all the activity and the tools together is

immaterial, and could be generically called an idea.

Once this is understood we have no choice in staying consequent, but

to conclude that if the algorithm475 (not necessarily a mathematical algorithm, so far)

is protectable in the hardware context as the means-plus-function476 , it is just as

protectable in the software context, i.e. in the context of other algorithms only. If there

is a possibility of the algorithms becoming patentable per se, as such they would

constitute a new kind of protectable subject matter.

* Leaving aside previously outlined cultural rationales why all of the

new technologies are likely to fit both fields of intellectual property protection, we

should analyze recent developments in the field of software and hardware creations.

First, it is important to notice that creations in those two fields have strikingly similar

needs for protection, in my opinion clearly pointing out that same principles lie

behind them, and that it is not possible to distinguish between them. In other words in

the new reality software is no less determinative, material or hard than the hardware,

and hardware is increasingly sophisticated to meet the needs of serving one purpose -

the same software is created for. In other words there is no substantial difference

between software and hardware; they both perform certain function in achieving

475 “A fixed step-by-step procedure for accomplishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps.” C. Sippl & C.Sippl, “Computer Dictionary and Handbook,” (1972) Id., at 1246 n.8, 197 U.S.P.Q. at 471 n.8. Csanyi, id., at 9, for the purposes of his system-component theory defines algorithm as “the interrelationship of components within various organizational levels, which [* * *], are specific only at the given level.”

476 In re Hiroyuki Iwahashi, Yoshiki Nishioka and Mitsuhiro Hakaridani, 888 F.2d 1370 12, U.S.P.Q.2d 1908, (Fed. Cir. 1989).

result. Software is no less material because it appears to us as “immaterial”. It is no

less hard tool to achieve result than a hammer or than a computer chip. We have to

recognize that human needs changed to certain extent, and the tools to fulfill those

needs followed the changes. It is, figuratively speaking, rather the idea which drills

the ground in order to rech the oil, than the tool invented to drill itself. The algorithm

is just symbolizing the idea of a segment of nature, as understood by the inventor. The

inventor, by opening the right questions, employs the powers of nature and expresses

the segmentOnce this is understood we have no choice to stay consequent, but to

conclude that if the algorithm477 (not an mathematical algorithm, thus far) should be

protectable in the software context just as it is patentable now in the hardware context,

i.e. among other algorithms only. We can see no reason why algorithms, in general,

would not be protectable per se.

THE INDUSTRIAL DESIGN

It appears to be well established that the overlapping of the subject

matter of the copyright with the design patent protection is one of the most

complicated issues of intellectual property. It also has the tendency to interrelate with

the all of the main intellectual property protection systems, patent, copyright and

trademark. The source of confusion is at the conceptual point where “beautiful and

useful”478 merge. In other words, the concepts of utilitarian and aesthetic seem to be

confronted as two opposing parts in the situation when they would rather have to be

distinguished as the parts of one single issue. In other words, we are arguing that the

distinctions which have been drawn in intellectual property law between the two in

order to facilitate the administration of the protection systems, are by now mystifying

rather than clarifying the interrelation of the different aspects of a creation.

Professor Nimmer is addressing this issue in the light of the law as

established in Mazer v. Stein as the problem of “Copyrightability for Patentable

Works”. “There is an overlapping area wherein certain works may claim either

copyright or patent protection. This is most apparent with respect to a design which

may qualify for copyright as a work of art or as a print or label used for the articles of

477 “A fixed step-by-step procedure for accomplishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps.” C. Sippl & C.Sippl, Computer Dictionary and Handbook (1972) Id. at 1246 n.8, 197 U.S.P.Q. at 471 n.8.

478 Leaffer, id. , § 3.11

merchandise or may claim patent protection as a design patent. This may also be true

as to scientific or technical drawings.”479 The problem relates to the patentability of

copyrightable works480, and was solved in part by the 1976 Copyright Act. But, as we

can see, Nimmer is not addressing the possibilities of further overlapping by allowing

the authors to choose whichever protection to suit best the needs of protecting their

creation, i.e., the case if the “election doctrine” would be explicitly overridden by the

courts.

Similarly to his opinion regarding protection of new technologies,

Reichman realizes that protection of creations in industrial design are not well served

by the existing system in the United States. He is pointing that

one need only consider that industrial designs have obtained patent protection for over the century, and yet no truly satisfactory solution to the problem of design protection is yet available in this country. Innovation in design normally reflects small variations on an established theme rather than big steps forward in the progress of the art as a whole. Technically, such variations are obvious even when novel. Yet, they are as vulnerable to instant piracy by competitors as any play or painting would be if copyright law did not intervene on behalf of “authors.” Scholars accordingly began to view industrial design as a legal hybrid falling in between the patent and copyright systems, and the search for an appropriate sui-generis legal solution gathered new momentum in the 1950s.481 (Footnotes omitted.)

In an article entitled “Functional Works of Art: Copyright, Design

Patent, or Both,” Joan Paul gives an exemplary clear overview of the situation in the

United States law.482 Pointing out the fact that the patent and copyright systems “have

undergone a rather extensive but separate evolution,” she is explaining not entirely

justified development of the “election doctrine.”483 The doctrine was created after the

enactment of 1909 Copyright Act, and further reinforced by the Copyright Office

regulations, but was slowly deteriorating until the Supreme Court decision in Mazer v.

Stein.The 1976 Copyright act, although it went generally further in that direction, in

the definition of the “pictorial, graphic or sculptural work,”484 “has also codified the

old copyright regulation refusing copyright registration to the form or shape of a

479 Nimmer, id., § 2.19.480 In re Yardley, 493 F.2d 1389 (C.C.P.A. 1974).481 Reichman, id., at 6.482 Joan Paul, “Functional Works of Art: Copyright, Design Patent, or Both,” 3

Comm/Ent Law Journal 83, (No. 1, 198?).483 Id., at 84, citing Louis De Jonge & Co. v. Breuker & Kessler Co., 182 F. 150

(C.C.S.E.D. Pa. 1910), aff’d, 191 F. 35 (3d Cir. 1911), aff’d, 235 U.S. 33 (1914).484 35 U.S.C. §§ 101 and 113(b), (1982).

utilitarian article, regardless of the artistic merit of the creation, unless the work has a

separate and independent artistic identity.”485 Such development in legislature had as

its effect introduction of nebulous judicial tests, when the refusal or the validity of

registration is at issue in front of a bench.

The “independent artistic identity test,” as provided by the Copyright

Office Regulations,486 serves as the poor substitute to the clear Congressional

definition which the new Copyright act is lacking. In the absence of such guidance

“the Copyright Office unilaterally and without authority or justification propounded a

stiffer requirement of creativity and artistic merit for pictorial, graphic, and sculptural

works applied to the articles of manufacture than was intended by either Congress of

the framers of the Constitution.”487 As the consequence, the two approaches

developed, one broader, in accordance with the Mazer v. Stein, and the other,

narrower, in accordance with the Copyright Regulations. Further problem is obvious

in applying this doctrines in the courts, where it is clear that the test of “independent

artistic identity” proves to be impractical. *D* In some respect it reminds of the

distinction between the creation and artifact proposed in the introduction, as in the

case of “conceptual” separatibility, it requires separation of the supposedly artistic

superstructure from its functional basis. But the similarities are only superficial, as

this distinction is moot due to the real inseparability of the two. This may serve as an

opportunity to further clarify our proposal. It has to be said here that a creation and an

artifact, both include the aspects which the above mentioned test proposes to separate.

However, an artifact may embody several creations, possibly even from the different

creators, and in that aspect its element are distinguishable, although at the same time

they are not separable. Design which is the creation embodying different sets of

information, i.e., sets of choices done by the creator, may be more or less influenced

by the other creations contributing to a result which is an artifact, and although they

may be distinguished as such, there is not sound reason to separate them. Any legal

protection based on such concept has to fail, and the result of the failure is lining up of

the creators in front of the courtrooms instead of the drawing boards.

Recent development of legislative proposals are interesting in the

context in this discussion. It became clear that ill conceived provisions of Design

485 Paul, id., at 85.486 37 C.F.R. § 202.10(c) (1980). Both subsections (c) which introduces said

test, and (b) which excludes previously patented articles from copyright protection are the tools of the “election doctrine,” and as such not necessarily in accordance with the rest of the body of the law.

487 Paul, id., at 96.

Patent Act488 are, in the light of the industry objectives in the first place, not totally

suitable for design protection, In the first place it is due to the required test of non-

obviousness which is an unsurmountable obstacle to prove with the creations of the

industrial design. We are pointing out that as, in our belief, the function defined the

design to an overwhelming degree, it is logical that it is rare that the designer’s

solution will be totally unobvious, however his individual contribution to the

particular design creation is high. It lead most of the creators to consider copyright

protection as more suitable for their needs.489

Such a situation lead to the numerous, almost yearly repeated attempts

to enact special legislation for the purposes of the design protection. In proposing the

Design Protection Act of 1989490 in the House or Representatives on October 19,

1989 Hon. Carlos J. Moorhead (CA) said: “[t]he Bill would have features in common

with both the patent law and the copyright law”, and further “[t]he Bill would not

affect protection provided by the copyright law, the design patent law, or any other

Federal or State law.”491 It is very interesting from our point of view on the interfaces.

The new act would merge the protection principles from the patent and copyright. It

would simplify the registration procedure and make it much shorter and less

expensive. It would give to the owner of the registered work some exclusive rights

from the “date of publication of the registration [* * *] or the date the design is made

public anywhere in the world, whichever occurs first.”492 Hon. Moorhead concluded:

“Prior design protection bills have had a provision requiring that if the design was

copyrighted, than registered under the bill, copyright protection for the design with

respect to its utilization in useful article would terminate. As an attempt to reverse the

Mazer versus Stein case this may have been appropriate in 1954. But after 35 years of

case law following Mazer it is not longer appropriate.”493

Proposals to Merge Systems of Protection

Even more interesting are proposals to include the trademark

protection principles in the protection of industrial designs made by Dratler.494 If such

proposals would be accepted, and the bill amended so that it would include all three

488 35 U.S.C. §§ 171-173 (1982). For the “lethal” effects of the interplay between these sections with the sections 101-103 which define the patentability of the creation see Paul, id. 87-90.

489 Joan Paul in her article concludes the same, see id., at 110.490 Design Protection Act Bill, H.R. 3499.491 Cong. Rec. 10/19/89, at E3485.492 Bill (H.R. 3499) § 4.493 Cong. Rec. 10/19/89, at E3485.

systems rather than any two out of the three, it would be new step towards the integral

protection. A detailed survey of the situation based on the examination of the

doctrines of the Sears/Compco495 and Bonito Boats496 it examines marketplace reality

of the industrial designs and finds that most suitable protection would be based on the

trademark principles. On its ways it examines some points common to our interest

like the patent/trademark interface. Reichman would probably agree with our opinion

that such approach is consistent with the nature of intellectual property, as his opinion

is that “[i]n retrospect, it appears more accurate to view industrial designs as a

precursor of the many legal hybrids that the intellectual property law would strain to

accommodate in the latter half of the twentieth century.”497 (Emphasis added.) In our

opinion he is pointing to the same phenomenon which is obvious to us. The principles

of different traditional protection systems of intellectual property do correspond, and

by the way of judicial opinions, as well as through the scholarly research they interact.

Such contacts are more often as our societies develop further into the post-industrial

society, and on that way the law is changing. The integral protection is, in our

opinion, the future of intellectual property protection, the future that became obvious

at the moment protection to software was initially granted under the various systems.

The Form is Often the Expression of the Function

One of the most paradoxical misconception of several present today in

the U.S. law of the protection of intellectual property is the construction of the criteria

which distinguishes useful articles from those which are not, supposedly “useless”. As

this distinction takes very central place, being one of the most visible points of

orientation in distinguishing designs which are copyrightable from those which are

patentable. Regardless of the dreadful consequences the distinction has in the

economic practicality of the U.S industry, which are vaguely discussed in Congress

every time the bill like one discussed above is proposed, it appears to be easy to point

out its basic unfoundedness, as well as the ignorance which guides its legal

applications.

494 Jay Dratler, Jr., “Trademark Protection for Industrial Designs”, 1988 University of Illinois Law Review, No.4, at 887.

495 Sears, Roebuck & Co. v. Stiffel Co. 376 U.S. 225 (1964), Compcp Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964).

496 Bonito Boats v. Thunder Craft Boats, Inc. 109 S.Ct. 971 (1989).497 Reichman, id. , at 6. He further points to a similarity between the software

and the industrial design: “[w]hat recent technologies, such as software and chip designs or biotechnology, share in common with industrial design is a proclivity to yield extravagant financial rewards from relatively modest improvements in know-how that require a lot of capital and effort to develop.”

[6*66] The case in which copyright protection was denied to the fashion garments

will help us out to see that this decision was not even based on the law as it stands

today. We will make an analogy with the leading case in the field, Mazer v. Stein. The

protection to the clothing as “the soft sculptures” was denied in the first place because

of the fraud on the Copyright Office, but also because the the subject matter was

found to be useful. We believe that if the court examined properly the process how

fashion is made it would find enough similarity to Mazer to apply the law. When

fashion is designed, the process indeed reminds to those of sculpting. The designer

has a three dimensional structure to solve and tries to build the relation of its

proportions in the space. He or she is also concerned of the interplay of the textures of

the materials he or she is going to apply to emphasize or harmonize the effect of

combining silk with the organdy, or denim with the corduroy as sculptor would think

of juxtaposing bronze to the wood, or glass to the metal. Than relations of the colors

come into the play and the work of art is being produced by the very much the same

process as an sculpture would be created. Normally, after the commercial fashion

shows would be held wholesale purchasers would demand certain changes which they

see as necessary to sell garments on the market, and the designer would incorporate

proposed changes before production starts. In our opinion only on this stage garment

transcends from an concept similar to sculpture to the useful object, as the sculpture

of the Balinese dancer becomes a lamp when electrical fixtures are incorporated. Of

course, the sculpture itself is and stays copyrightable regardless of the addition of any

electrical fixtures, just as the “soft sculptures” stay sculptures regardless of the

adjustments that will enhance its functionality. That is so in particular with the high

fashion, which thinks about what we consider as garments in terms of symbolic and

sculptural dimensions primarily, although the “garments” will be wore. To the lesser

extent it is true for all fashion designs. But, the copyright law never insisted, and

specially since Bleistein v. Donaldson , did not require high level of creativity in order

to grant the protection.498

[20.03]To this most important clarification has to be made regarding American

concept of distinction between aesthetic and useful in the United States law. It is

indeed, a very complex issue, and the solution oto balance of the mutual

interdependence of the two has been attempted as well as by numerous schools of

design as by different theoreticians. Peter Dormer, who is not the proponent of the full

498 Bleistein v. Donaldson Litographing Co., 188 U.S. 239 (1902). Paul, id., at 96, cites Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409 (2d Cir. 1970), as to the standard for the works to be accepted by the courts being “any work which by the most generous standard may arguably be said to evince creativity.”

identification of the two states realises that when he states “[t]hat some tools look

aggressive is not, of course, simply a result of a macho styling. Function dictates form

more often than not. You cannot have an entirely non-aggressive-looking circular

saw, chain saw or electric drill.”499 The well known designers, like Ferdinand

Porsche Jr., who has often stated so, have realized that the best of his successful

designs were actually those in which he let function determine form. In other words

the design solutions which we find most aesthetically pleasing are those whose design

is influenced, if not determined by the logic requirements of the function.500 In an

attempt to solve this problem Dormer introduces a distinction of the “above the line”

and “below the line” designing in which the first relates to “styling” and second to

“engineering.”501 It is our opinion that in a certain way it could be said that the

design, or aesthetic aspect, is the expression of the function. Without incorporating

this understanding in its law no country can hope to achieve success of Italy in design

of its goods, and finally economic competitiveness of its economy on the world

market.

The idea that the function is being expressed through the form, the

design, could be further explained through examples. For instance, the process of a

499 Dormer, id., at 93. At 102 Dormer provides us with the analysis of teh bycicle frame design and redisign attempts, and qutes design journalist graham Vickers: “Basically unchanged for half a century, the familiar ‘safety’ bycicle poses a unique design challenge in a society acustomed the regular reshaping of its most cherished objects. The bycicle is intolerant of designers’ whims because, says Vickers, any infelicity in the design immediately causes pain to the rider.” (Emphasis added.)

500 It is becoming pointless, if not impossible to distinguish the importance of the form as opposed to the purpose of an artifact.The designers of Art Deco and Bauhaus, as well as the modernist designers, respectively, were first showing consciously the awareness of this notion in their approach to designing. The most beautiful form is often that one which follows the function most closely. While many aspects of ought of both of this designer schools were made obsolete by the advent of the post-industrial production which made non-serial production of the goods possible, the approach which would give them lasting relevance is in their understanding of the interweined relation of the form and function. Once again, that notion is the understanding that the easiest way to reach maximum usefulness is by creating, or discovering the form which serves the realization of the artifact’s function best. It is the form that will then appear aesthetically pleasing. However, post-modernist design abandoned the supremacy of the form-function identification for more elaborate interplay of form-function-symbol interplay in which much more free association with the symbolic meanings enhances the richness of the relation between the former two.

501 See Dormer, id. 13-32. In the first chapter of his book, under the title “Designing Style; The Relationship between Style and Engineering” Dormer is building up said distinction, providing his raders with interesting examples of our perception of its role in modern technoligies. He is using the example of the catastrophy of the space shuttle Challenger, the Chernobyl nuclear reactor and the JAL’s Boing 747 in order to clarify the deeper relation of modern culture to the “above and below the line” objectives of design.

traditional Italian bottle design. It is not obvious to everybody that there are several

levels of functionality which determine the shape of the container for liquid among

hundreds possible. First is material by which it is going to be made, second the type of

liquid it is designed to contain. In case of our bottle, and it will be the bottle which

people of the Piedmontese town of Alba, and the villages around her use for bottling

their famous Barolo and Barbaresco red wines. The bottle is known and recognizable

by its shape under the name “Albeisa.” To superfluous observer it looks like an

ordinary bottle, but one who pays attention will recognize its distinguished

proportions, as it is a bit narrower and taller than majority of other bottles. All of the

others, traditional or not are known by its names, technical or colloquial. Traditional

technology in last few hundred years in Europe is the glass bottle. It gives the

possibility to make thin sides of the container and to give it thin, upright standing

profile with the narrow neck. That is the basis. The form will be further determined by

the function. The Champagne bottle will have curved bottom in order to provide

possibility to hole the bottle better during the time when it has to be positioned upside

down in order to improve the fermentation of the wine. In case of our bottle the

bottom is slightly curved in order to allow sedimentation of the rich wine to lay

unmixed in the corners of the bottle so provided. Further, the color of the glass will be

brown, not white or green as for Pinot Grigio or Orvietto Clasico, from Veneto and

Umbria respectively, as they are white vines whose reaction to the daylight allows this

colors. In our case Albeisa will be brown, so that it would successfully give protection

the red vine needs from the daylight. Sometimes the name “Albeisa” will be written in

relief in the portion of the bottle where its body starts to narrow toward the neck. Its

shape has been reached through the popular design and today, after several hundred

years is, of course, not protected by copyright. But its shape stands as clear trademark,

or mark of origin if you will, of these famous Italian red vines. Of course, through the

time it’s use to denote the origin of the vine, even if not labeled would tell Italian

consumer of the origin of the vine. Its design is decisively achieved through the

function. The proportions are partially added by the creator of the final shape, and that

is the part where aesthetic interplays within the boundaries of function. It would not

be protectable under strict interpretation of the American trademark laws as it stands

for functional object, and is geographically descriptive. The aesthetic appeal could, of

course, be reached as a juxtaposition to the function, through the interplay of the

relation between the two.

Many of the consumer’s products shape, color or material has been

reached by designer’s examination of the products function, but even if it is reached

by confronting the logic of the use with its shape (like the furniture designed by

Italian designer Ettore Sotsas and the group “Memphis”), it is always related to the

function. The American reader may be more familiar with the artistic concepts of

utilitatarian objects through the work of domestic furniture designers, like Thomas

Hucker, Garry knox Bennet and John Cederquist. “The most intriguing pieces, maybe

the first of their kind, are Mr. Hucker’s Milanofiore tables, which at the first glance do

not look like much: a trio of square coffee tables each surrounded with small stone or

pebbles. But the tables emanate different fragrances -- jasmine and burnt almond, for

example -- and black pebbles and white stones create different sounds when walked

on.”502 Supposing that the coffe tables are “usefull” articles, it is unclear why the

protection should be split with two systems of protection. The aesthetically appealling

appearance of Hucker’s tables could, or should be easilly copyrightable as they are

completly sculptural. If we stay with the bottles, we will see that the recent boom of

design of the perfume bottles is also reached through the same process. It is not

always the idea of the container which is examined, although the designer has always

to provide tight closing at the neck as objective. But the shapes will be reached

through the interplay of the material used, the color of the liquid itself, with the name

of the perfume etc. Often it will be process similar to those described with the

furniture. But it will never be detached from the function entirely.

Good example of such elaborated, and at the first glance seemingly

detached approach to the industrial design, where the form-to-function relation is

further reexamined in the light of the symbolic charge of the function is the design for

the hairdryer by the Dutch designer Alexander Groenewege, provided by Dormer.

Groenewege considered the “gun” shape of the most existing hairdryers as sterotyped

“form follows the function” approach where the hand held tools have the shape

resembling the gun. He, instead considered the function of the hairdryer as to provide

the wind to its owner. Once he choosed the wind as the primarily function of the

hairdryer, he considered the shapes that may symbolically express the function such

like feathers, birds, aeroplanes, wings, palm trees, leaves, and picked a peacock

because of its conotation to style. Further he recognized how peacock’s fan tail is like

the fan Spanish women use to wave the air, and got its basic form for truly innovative

hairdryer design. Of course, the product designed that way should almost market itself

502 Suzanne Slesin, “Furniture as fine Sculpture,” New York Times, Thursday, May 10, 1990. See also about the category of “narrative” design and its role in the American design, in Dormer at 26-29. There is also provided an excelent example of design for radio reciever - Daniel Weil’s “Small Radio.” In our opinion, this excellent design is a brave attempt to exqamine the ultimate declination from the function, also expressed in relatively abstracted way. Even if it may be narrative, as Dormer considers it, this design uses abstract symbols to tell its story, thus approaching the field of artistic design more closely.

with the other connotation of Spanish fan, like rythm, flamenco, tension, tenderness.

Finally, Groenewege considered the Japanese connotation of the fan as important

because of the Japanese competitors.503

One further example should be offered to clarify the standard of

successful design. The primary criterion is fulfillment of the functionality of the

design and without meeting this point, or transcending it, there cannot be spoken

about successful, or simply about good design. Here we are talking about the standard

whose arbitration is not made by the taste. Above this minimum comes the individual

expression of the designer regarding the function, and although we consider that

respecting the function of the object designed contributes to the quality of its design,

we are not negating that the expression of the function is at the same time designer’s

individual contribution. The example we have in mind is the undisputed success of the

automobile industry in the designing vehicles from the end of seventies onwards.

While the seventies were considered historically unsuccessful period for the industry

in general, end of the decade as the whole next decade were regarded as a success. It

may be interpreted as logical come back to the functionality. The oil crisis in the early

seventies increased the awareness about the oil consumption in transport and triggered

efforts to improve savings. Automotive industry responded by several actions which

included the energy saving motor designs, as well as the aerodynamic researching of

the auto bodies. The air tunnel testing became obligate for every model, and after

several decades streamlining in its new appearance was back. This efforts radically

improved the design of the Japanese cars, it brought back to life even traditionally

strong Italian design, and finally, by the market forces of competition reflected on the

design of the American car industry. We believe that it is not necessary to point out

that the quest for fulfillment of the requirements of functionality was factor that

contributed to the rebirth of the successful car design.

We have to be aware, that in the field of the automobile designing,

both “above and bellow the line” the sae principles apply as in the other fields of

design regardless of the fact that the car seems to be more dependant on the “bellow

the line” design. Thus, the expressive tail fins of the American cars designed in the

Fifties, although exagerated the symbolic notion of streamlining for speed, were

accepted as succesful design becuse of this symbolically suggested relation to the

function of enhancing the performance of the product. Dormer qutes Michael S.

McCoy of the Design Department, Cranbrook Academy of Art in saying just that:

503 Dormer, id., at 99-100. This description relates to the design (in the meaning of the “above the line” design), while the part in which the designer explains the engineering design aspect (“bellow the line”) is equally interesting

“The big tail fins of the famous American cars of the 1950s suggested speed,

suggested tht they were there to help keep the car in position on the road as you

whooshed along. In fact, they had no scientific function at all. Today, said McCoy,

the new breed of the automobile expresses good performance through the scientific

styling of the body.”504

In continuation Dormer discusses the problem that designing within

the given parameters presents for the designer. It may be hard to achieve the

distinctiveness of the product he is designing when the expression through the stylized

shape is defined by both the enginering, i.e. “below the line” design, as well as with

the “above the line” requirements of the fashion and trends. He concludes that it may

lead to the situation in which all the products look the same. At that point he states:

To put it bluntly, this sameness is literally bad for business. Products start looking alike and that makes competitive consumer caitalist enterprise very difficult - not only in manufacturing but also in art.

The key phrase ‘product differentiation’ is of interest to everyone who is in competitive enterprise, be they painters, sculptors, or manufacturers of cameras or electric hairdryers. Robert Blaich, managing director of industrial design at Philips, told Alex Freedman of the Wall Street Journal: ‘So many products are the same today. You could take of the labels and you would not know what company made them.”505

On the other point Dormer in essence suggests that if the trademark

symbols would be removed from such undistinctivly designed goods, their shape

alone could never serve as the indication of their origin. If the names of the

manufacturers would be removed from, for example, from the stereo hi-fi components

their shape would not be able to serve as the indication of the source. Earlier he

pointed out that the “black-box” type of the design has not the decisive role for the

design of electronic components regarding the function of such electronic products.

That type of analysis leads him to the conclusion in the very last chapter of his book

that “[t]he symbolic content of objects can become the most important aspect of a

design even to the point where symbolism compromises use (but never safety). Of

course, symbolism, aesthetics and taste blend into one (* * *).”506

Our suggestion here, as a lawyer, is that such role of the design should

be supprted by the societies through its legal systems. Of course, as we have already

explained, the law of symbols, especially of the role of the symbols on the market

504 Dormer, id., at 111. (Emphasis added.)505 Dormer, id., at 110. (Emphasis in original, footnote omitted.)506 Dormer, id., at 176.

place is concieved in the trademark law. That is the reason why we dared to propose

that the bar of registration of the shape of the product if determined that it is de jure or

de facto functional is unnecesary obstacle. It is also to the contrary of the purpose of

the trademark law to protect the distinctive symbol of the origin of the gooods in

interest of the consumers. As any shape, including the functional ones may acquire

such symbolic status, we consider such a bar unnecessary. However, during our visit

to the United States Patent and Trademark Office in the summer of 1990, in the

conversation with the examining attorneys it was easy to discover that in the most

cases they are rady to grant registration of certain shapes providing minimum

cooperation from the applicant plus his understanding of the type of the evidence

which to submitt with his or her application.

In the discussion related to In re Shenango507 the examining attorney

was explicit in his opinion that the rejection of a feature previously protected by an

expired utility patent should be subject to the rule of reason. The opinion of the court

was the “the expired utility patent is adequate evidence that the under-rim

configuration here sought to be registered is indeed functional,” and “that a feature

that is the subject of a utility patent goes into the public domain when the patent

expires.” Our suggestion was that the fact that the particular feature, i.e., the

supportive under-rim rib of the china plate, even if once was sufficiently novel and

unobious to be protected by utility patent has acquired the secondary meaning in the

minds of the consumer during the duration of the patent, as the indicator of the

manufacturer. It would have be in accordance with the goals of the patent law to have

it in public domain after the expiration of the patent if it would be still essential for

other producers to improve their products by using the particular feature. But, during

the time of the duration of the patent other improvements in the field of the ceramics

may have been done, which made the supprtive role of such rib obsolete. The result

may have been that the plates not having such rib would not be in any means superior

to the one which had it, thus reducing the functional role of the rib to mere decorative

symbol, indicating the manufacturer in the mind of the consumers. We do not see why

would the patent law have to overcome the acquired trademark meaning of previously

functional feature, when the function of the feature lapsed due to the other

improvements in the respective field of technology.

[20.04]The principles exposed were gradually recognized by law which changed in

the direction that made design protectable under patent and copyright systems

cumulatively. It became clear that new understanding of the meaning of industrial

507 In re Shenango Ceramics, Inc., 363 F.2d 286 (CCPA, 1966).

production oriented to the individual not, to the mass production is founded on the

same understanding of the society and on the end of industrial age.508 Certainly

literary most obvious field where cross-applying is possible. Although U.S.A.

struggled for long time to achieve it Mazer v. Stein ended this unpleasant

undecidedness in favor of cumulative concept known in some other countries509 and

introduced the election doctrine into the united States law. However, ill conceived

provisions of Design Patent Act ( 17 U.S.C. §§ 171-173) are not totally suitable for

protection, and there is no wonder that most of the authors prefer copyright protection

over the Design Patent. On the other hand, we have seen that the regulations of the

508 Process is described by Marshall McLuhan. he is calling it “re-tribalisation.” It abolishes the difference between the mankind and the technologies. It is interesting to read the interview Jaron Lanier’s interview in The Boston Phoenix, March 2, 1990. After the speech he held at Boston Institute of Contemporary Art about the “virtual reality,” the new computer technology which he is the leading developer of. Adam Heilbrun asked the question: “We are witnessing a break-up of consensus reality in the external reality right now. The political repercussions seem rather frightening, as large segments of society have no common ground, no shared assumptions about reality. Will virtual reality not further undermine consensus reality?” Lanier answered among others: “Most societies on earth have some method by which people experience life through radically different realities at different times, through ritual, through different things. Western civilization has tended to reject them, but because virtual reality is a gadget, I do not think that it will be rejected. [* * *] I think that it will bring back into Western experience something that has been lost.

It will bring back a sense of the shared mystical altered sense of reality that is so important in basically every other civilization and culture prior to big patriarchal power. I hope that might lead to some sense of tolerance and understanding.”

The immediate continuatoin of what Lanier said may be not in connection but we will reproduce it as it is interesting in the light of the other ideas which we consider pertinent to the issue of technological changes in the post-industrial societies:

“But, there is more to it than that. I often worry about whether it’s a good technology or a bad technology. I have a little benchmark I use for that. I believe that if technology increases human power or even human intelligence and that’s its sole effect, than it’s simply an evil technology at birth. We’re already both powerful enough and and smart enough to accomplish a great deal. All of our problems are self-brought at this point.

If the technology, on the other hand, has a tendency to increase human communication, human sharing, than I think it’s a good one overall, even though there might be many ways it could be used badly. My chronic examples of these are that the television is “bad” but that the telephone is “good”.

McLuhan would certainly like to hear this; it’s the principle idea of his book here expressed in the few words.

509 Yugoslavia and Italy are few of many countries. In Yugoslavia shapes may be protected under copyright, patent and model protection systems. Recently, with the changes of Patent Act of January 19 and April 13, 1990, amended § 84 states that in the course of examination process a patent application may be transformed into a model/design application and vice-versa by simple action by the applicant. The priority date of the original application applies to the transformed one.

Copyright Office do not follow entirely the state of the law established by Mazer, thus

presenting an obstacle to the necessary protection of the design.

Professor Nimmer is addressing this issue in the light of the law as

established in Mazer v. Stein as the problem of “Copyrightability for Patentable

Works”. “There is an overlapping area wherein certain works may claim either

copyright or patent protection. This is most apparent with respect to a design which

may qualify for copyright as a work of art or as a print or label used for the articles of

merchandise or may claim patent protection as a design patent. This may also be true

as to scientific or technical drawings.”510 He is not addressing, however, the problem

of Patentability of copyrightable works, and much less the possibilities of further

overlapping the gap between said two poles and extending the protection across.

Accordingly our proposal would be directed toward removing the

paradoxical distinction of the functional and aesthetic from intellectual property

protection, as just another unnecessary reflection of the body and soul dichotomy. The

useful - useless antonym excluding the design protection out of the copyright system

is the thing of the past, as the Supreme court concluded back in the fifties, when

American design was making its reputation. But if it was a big step for judiciary, it

was small one for the Mankind. It was not bold enough to wipe traditional

requirements of utility out of the design protection, and accordingly slowed down the

initial elan of the American design of the sixties.

PROTECTION OF THE “IDEAS”

The starting point in suggesting reconsideration of the statutory

language should be the fact that numerous authors actually use the term “idea” when

they try to determine the object of intellectual property protection and, or examine its

nature. And it is true that that there is hardly better colloquial word to use in denoting

that what we determined as the information. However, when used in the statutes the

term denotes something else, one group of the ideas which Hughes calls

“extraordinary ideas,” and which are traditionally excluded from the protection in

public interest. So the ideas became a legal term denoting only one group of ideas,

those which the law defines as unprotectable in order to serve the societal interests

510 “Nimmer on Copyright”, § 2.19, p. 2-223

suposedly higher than individuals interest in his or hers creation. Of course, the

society provides extra-legal rewards and incentive to those who contribute such

information to the common knowledge, but nevertheless does not provide legal

protection to such ideas. So, when we are using the term ideas we are trying to point

out that the notion of unprotectable ideas is constantly shifting as human mind

acquires capability to understand its own interpretation of reality, i.e., creativity.

Different understanding of creativity stretched patent protection to algorithms

overnight, as it may do with protection of methods of doing business. Something that

has yesterday have been an idea, in the sense that it was considered as the part of the

fundamental understanding of our environment, can today slide in the realms of

protectable subject matter, as the society moves in the direction of understanding next

layer, or segment of reality. We are pointing out that such process is going on daily.

[21.01]Extra-contractual protection of the ideas seems to be the most unacceptable

suggestion in improving the available protection. Thou, it seems that some steps in

that direction are not only necessary but also unavoidable. This is not to say that much

will change. Again, only the understanding of the idea has to be modified, not the

legal principle adopted through long developing. “Idea” as we understand it responds

to the traditional understanding of the reality. Reality is, indeed that what we call and

understand as an idea, or part of it we call and understand as a fact. The border may,

and should be shifted behind the level of understanding of the reality we now call an

understand an idea.

[21.02]Obviously, thirties were higher in understanding the nature of creation, but not

always were the Court ready to change the law. In Long v. Jordan, Secretary of State

of California,511 was very good in articulating the problem: “And through this line of

argument, he [the plaintiff] reaches the startling conclusion that since his plan or idea,

although not itself copyrightable in theory, is copyrightable in fact. The obvious

unsoundness of this conclusion of itself disproves the main premise upon which it is

based, namely that although plaintiff’s system, being an idea, is not copyrightable, the

means of explaining the system may be copyrighted.”

[21.03]The best example of how recent law fails to reach the necessary level of

understanding of the reality before it applies the rules is Whelan Associates, Inc. v.

Jaslow Dental Laboratory, Inc.512 . In this, what is considered an computer case the

Supreme Court missed the chance to establish the law on protection of the ideas, idea

511 29 F.Supp. 287 (N.D. Cal., 1939) 512 797 F.2d 1222 (C.A. Third Circuit 1986), cert. denied, 479 U.S. 877 (1987)

here used in its traditional misnaming sense. This is similar to the problem which the

Court in Morrissey v.Proctor & Gamble513 failed to solve. “When the

uncopyrightable subject matter is very narrow, so that “the topic necessarily requires,”

if not only one form of expression, at best only a limited number, to permit

copyrighting would mean that a party or parties, by copyrighting a mere handful of

forms, could exhaust all possibilities of future use of the substance. In such

circumstances it does not seem accurate to say that any particular form of expression

comes from the subject matter. However, it is necessary to say that the subject matter

would be appropriated by permitting the copyright of its expression.” But, if in the

light of possibility that reexamination of the merger theory seems to be necessary. It

may be highway to the graveyard for the merger theory, because it relies on the wrong

notion of the idea. It may be saved in the form as “if there is only few possible ideas

to express reality it is not possible to acquire protection of the idea”, but that is simply

not true. It may be historically conditioned, and the law is to preserve possibilities of

changes, not to block them. First see what theWhealan court missed.

[21.04]Real issue which the parties and the court closely missed was whether the

protection of the “idea” how an dental laboratory works. In other words expression of

the idea (reality) of how the dental laboratory works is not embodied neither in

writing algorithms, nor in any moment following that. It may be embodied in the

moment computer programmer writes the program if he writes it straight in the code,

but essentially fixing of the impression may be as well in plain English. Copyrightable

is the expression of the programmers understanding of the principles of the

organization of an dental laboratory. Some other person, or other programmer would

conceive the principles in different way, as all of the individuals don’t perceive

reality (idea) as the same. That is the exact reason why one program may be more

successful than the other. The programmer perceived reality in more suitable way for

the expression than other programmer. The idea stays in the dental laboratory forever,

and these principles are certainly not protectable. But, perceiving of the principles is

their expression, once fixed in the tangible medium of expression it is protectable

regardless of the language used; English or Fortran.

Another good example how the Courts may miss in determining what

is the Idea is the Eden Toys, Inc. v. Marshall Field & Co.514 . We are not saying that

“everything under the sun made by the man” is copyrightable. Even less are we

touching in the Platonian world of ideas and its shadows. We just see other

513 379 F.2d 675 (1967)514 Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498 (1982).

possibilities to understand the term idea for what is required in successful protection

of the creations. No redefining of the term idea in this case is necessary. Only proper

understanding of what is not copyrightable. The copyright infringement contained

substantial similarity in the two plush snowman dolls. The Court tried to distinguish

the idea from the expression according to the standard established in Mazer v. Stein :

“The protection afforded a copyright work covers only the work’s particular

expression of an idea, not the idea itself. Although the process of separating the

unprotected idea from the protected impression can sometimes be arduous, the instant

case does not present any difficulties in this regard. (Citations omitted.)”515

Theanalysis of how the snowman looks like and how it is made is pathetic: “For

countless generations, children and the young at the heart have built snowmen by

rolling moist snow into balls and placing them atop other. Dark colored objects such

as lumps of coal are then used to simulate facial features and buttons. Bearing in mind

the traditional characteristics of all snowmen, we find no error in Judge Gagliardi’s

conclusion that any similarity between Snowman II and the Korean snowman would

appear to the ordinary observer to result solely from the fact that the both are

snowmen.” (Citations and footnotes omitted.) Bearing in mind the traditional

characteristics of all snowmen we have to conclude that plush toys were neither made

of the balls of moist snow, nor are they an out-door toy. They are, to the contrary

fluffy warm puppets, like the teddy-bears. Here the idea was not the snowman, as the

Court both in the majority and dissenting opinion concluded, but the plush toy, a

puppet. The idea of a plush puppet was expressed in the form imitating the snowman.

Both, if the snowman, and the puppet both remain unprotectable, the copy of the

puppet design should constitute an infringement, if and when the substantial similarity

is found.

515 347 U.S. 201, 217-18, 74 S.Ct. 460, 470-71, 98 L.Ed. 630 (1954).