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TABLE OF CONTENTS



INTRODUCTION

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.

2 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

1
© Mladen Vukmir, 1990. All rights reserved.
2
Word j
j, 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
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 ï
ï  in the idiom 
 ï
ï . 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 
is the land, and property of chattels, where the  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, ) of intellectual property is determined. The
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.

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, ³The Economics of
Justice,´ (1981), use the term?j
jj in the same manner as we use j
j. See , at
page 20: ³[Blackstone] traced the articulation of the concept in specific rules and j
jj

of the legal systems of his time.´ (Emphasis added.) Finally, ³The Random House Dictionary
of English Language,´ (2d Ed.) defines an j
j as: ³10. an established principle, law,
custom or organization,´ and ³Webster¶s Third New International Dictionary´ defines it as:
³something that is instituted: as an elementary principle: a precept of rule recognized as
authoritative.´
 The examination of the content and meaning of the element of the term

 in the idiom 
 ï
ï  will be conducted in the separate
chapter. It will be there that the 


 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
³property´ 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.

  

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
 

  
 is probably most dominant. Others, like 
 ,


 and 


  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.
3
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.

3
The advent of the post-industrial age is something upon which many authors agree.
So R. Grant Hammond in ³Quantum Physics. Econometric Models and Property Rights to
Information,´ 27 McGill Law Journal 45, (1981),: ³It 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, ³The Coming of Post-Industrial
Society,´ (1973),: ³In 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, ³The Production and Distribution of Knowledge in
the United States,´ (1972); Parker, ³Social Implications of Computer/Telecoms Systems,´ 1
Telecommunications Policy 3, (1976); Pamela Samuelsen, in her article, or note ('),


refers to E. Ploman & L Hamilton, ³Copyright: Intellectual Property in the Information Age,´
(1980); Branscomb, ³Who 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, ³Understanding Media;
The Extensions of Man,´ (1964), and ³The Gutenberg Galaxy,´ (19UU).
3
Article 1, Section 8, Clause 8 of U.S. Const. reads: ³The 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 creations shall be legally recognized.
4 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.5

 
cc !c""#"

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 , to the object of the property to which intellectual
property law grants its protection. We know that the history of its development began

4
Layman Ray Patterson, ³The 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 uj
? ?

 , 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, (j, one of the moral
rights), Patterson states that: ³[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.´
5
It was Oliver Wendell Holmes who made a remark that ³the law is behind the times.´
O.W. Holmes, ³Law and the Courts,´ in „?
?

, (1920), at 294.
5
á Justin Hughes, ³The Philosophy of Intellectual Property,´ 77 The Georgetown
Law Journal 287, (1988), at 302-310, and Lewis Hyde,
? j? 
j
j ?
? ?  j?
j??   , (1979, 1983), at 50-51.
5
á John Gleick, „

? u
j ? ?
? áj , (1987), at l. The ³ABC News
Tonight with Peter Jennings,´ on Thursday, April 19, 1990 in ³American Agenda´ devoted to
the 20th Anniversary of the Earth Day repeatedly used the word ³interconnected´ in
describing the true state of nature, and the attempts of the elementary schools in the United
States to bring to youngest students more understanding of ³interconnectedness´ through the
improved curricula.
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.6 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 

, as John
Locke conceived it,7 Stuart Mill took the concept over. 8 The modern authors
consider it, like Becker does when he talks about ³exhaustibility´ of resources.9

Whether ownership is through the creation of the means for exploiting

existing resources more thoroughly, through the means for discovering the new
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.10
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

6
Vilmos Csanyi, ³Evolutionary Systems of Society,´ (1989), at 193-200, devoted the
closing chapter of his book, entitled ³The Problems of a Finite Earth,´ to the problem and its
recognition through the process of cultural evolution. ³The biosphere is not the environment of
society but is an j 
?
??
j .´ (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.
7
á Hughes, j, at 296-330; Lawrence C. Becker,    ? j
? j
j?
 
j
, (1977), at 32-48; John Locke,
?

j

? ?    , (3ed. 1698,
rev.ed. 1963).
8
Becker,?j, at 41-48; J.S. Mill,  j j
??jj
?  ?j ??„?  
?
? ?á
?uj, ( London, Routlege & Kegan, 1965)
9
Becker,?j, at 109-110, 118;
10
Pamela Samuelsen, ³Information As Property: Do 

and „
  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,
? j?
 
j ? jjj
?  j ?
? 


? „ ? „
 ? ? ?  , 14 (1983);
D. Brandin & M. Harrison,
?
  ?
, (1987).
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,11 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.

 
 "

The terminology used in this essay is standard legal terminology.

When there is deviation it will be pointed out. The term ï
ï  will always mean
the legal right on the object, and never the object of the right itself.12 The idiom

 ï
ï  will be discussed in detail later in the course of the argument.
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  

will be used to denote an individual involved in
creative activity, as stripped of its mystified, romanticized meaning associated with

11
The term j  
j is a Latin word which when translated in English means
literally j . The concept of corporation is a valuable example of the legal
recognition of intangibles.
12
á C.Rainold Noyes,
? 
jj ? ?    ? ? á ? ?   ?
á

?
?
 ? ? ? á
? ?    ? j ? u ?   j
? 
,
(1936), at 356-358. Noyes displays a variety of approaches to this matter which are often
extending beyond the terminological choice.
unique talent, in the United States legally sometimes expressed as the ³flash of
genius.´13 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.14 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 ³new´ material objects to which
protection is traditionally granted. That means that the term creator comprises both
the ³inventor´ and ³author´ as traditionally used in relation to the scientific inventions
and the artistic works respectively.

The term  

, 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

, or a embodiment of a creation,
such as a particular technology15 may be. An artifact is a tangible embodiment of a

13
The oldest case we detected that mentions this concept of creativity as legally
relevant is @ ??
? ?

?@j?„ 
j , 36 F.2d 357, (D.C.E.D,N.Y., 1929) where
Galston, J., said: ³I 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 „ ? j  j ?„  ? 
j?
 j
?„ , 62 S.Ct. 37, 41, 314 U.S. 84, 91, 86 L.Ed. 58 (1941), where it was stated by
Justice Douglas that ³[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 „  decision in the


? ?  ?  ? „? ? 



? „j , 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
³flash of genius´ see footnote 7 in  , ?

, and footnote 1 of the decision in  
?

j??
jj?

?„? ??á 
?j ?„ , 340 U.S. 147, 71 S.Ct. 127, 95
L.Ed. 162. á also Hyde, j, at 52-54. ³The µcult of genius¶ which we have seen in this
century has nothing to do with the ancient cult. The public adoration of  j
turns man and
woman into celebrities and cuts off all commerce with the guardian spirits. We should not
speak of another¶s  j
; this is a private affair.,´ at 53. (Italics in original.)
14
George Nelson,  
? ? 
j , (1957), in the excerpt  j  in u ?
„ ?
?? 
J.B.Hall & B. Ulanov ( ed.), (1967), at 487, said: ³When 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 u ?„ .
15
We accepted the term technology in its broad meaning derived from its etymological
roots; the Greek word ³techne´ meaning art, and ³logos´ as science. Therefore, the term
technology siginifes properly the result of creative activity encompassing an integral effect
which such results have on our society. á also George Parkin Grant, ?  j
á
j ?

j, 1974, 1985, at 1: ³The word µtechnology¶ 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 µtechnology¶ we are speaking a new activity which
creation, while a creation is the result of the process of choosing the solution to a
problem, what some authors call an 
.16 17

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

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

The term ï



 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 ³make, use and sell´ for industrial, or to ³reproduce, 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

western Europeans brought into the world, and which has given them their universalising and
homogenising influence.´
16
Hughes, j, at 294. In an attempt to define the 
of intellectual property he
concludes: ³Some people disfavor describing such efforts as µideas,¶ but I will use µidea¶ to
refer to this broad notion of the res, understanding µidea¶ to be shorthand for the unique
product of cognitive effort.´
17
A dichotomy, similar to the one we propose, is to be found in Wassily Kandinsky,
³Concerning the Spiritual in Art,´  j  in u ? „ , at 168, where he in the
footnote, analyzing the structure of a creation states: ³The 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 j? 

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

The legal content of creation will be called 



, 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.18 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 ³semantic
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 ³news´ on one side, or
³information 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.

  "

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,
because it is not. It is ³descriptive´ rather than ³prescriptive,´ 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

18
Claude E. Shannon and Warren Weaver, ³The Mathematical Theory of
Communication,´ (1963), at 8: ³In particular, j  
j must not be confused with meaning.´
(Italics in original.) Also, Umberto Eco ³c
 
  
 llll
lll.
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.19 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 
,
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.

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 
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

19
William E.Hearn,
?
 ??
?j
?
?j
, (1883), at 153, as quoted
by C. Reinold Noyes,
?
jj ??   ? ?á ???  ?á

?
?

 ? ? ? á
? ?    ? j ? u ?   j
? 
, (1936), at 289, :
³Thus 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: ³[i]n essence it is this concept of µduty,¶ as the
correlative of µa right,¶ which represents the modern view.´ The United States Supreme Court
decision in @
?
j ?„? ?? j
?„, 273 U.S. 629 (1926), written by Justice
Holmes, provides an illustrative example of such understanding of the relation between right
and duty: ³Apart 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.´
regarding his environment. In other words, there are some relations which societies
recognize integrally ï , 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 
 
, 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 ³law 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.

  $%&&

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 ³proprietary´ 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.
 CHAPTER ONE

'cc(
  
c(

  

 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 ³reality´ different after

every new ³discovery.´20 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
20
John Gleick, ³Chaos; Making A New Science,´ (1987), at 81-118. A chapter entitled
³The 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: ³The 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. 21 The
process within the judicial system of every society which is performing the similar
function is called recognizing, and its function is to ³discover´ 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 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
mentioning law, holds that ³[t]he µrights¶ of a biologically determined superior - his
potential scope of action - are determined by biological relationships, while the scope

21
See Gleick, j, at 5, where in explaining how the mathematical theory of chaos has
the potential to influence the society as a whole, he states that ³[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.
á, , Francis Fukuyama, ³The End of History,´ The National Interest, (Summer 1989),
who in interpreting Hegel¶s idealism stresses ³our 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 l, 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.
of action of a culturally superior is governed by traditions, customs, ideas, i.e., the
   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 - 
.´22

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.23 We will try to present

22
Csanyi, j, at 174. (Italics in original.) He explains, j, that ³[i]n exclusively
noncultural group of animals the function of a dominant µsuperior¶ is largely determined
biologically and depends on the individual¶s condition, experience, and previous conflicts. The
culturally developed idea of a µsuperior,¶ 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.´
23
Frank D. Prager, ³The Early Growth and Influence of Intellectual Property´, 34 Journal
of the Patent Office Societies 106, (1952), at 106. ³It 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 j, 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: ³A History of Intellectual Property From 1545 to 1787,´ 26 JPOS
711 (1944); ³Brunelleschi¶s Patent,´ 28 JPOS 109 (1946); ³Proposals for the Patent Act of
1790,´ 36 JPOS 157 (1954); ³The Steamboat Pioneers Before the Founding Fathers,´ 37
JPOS 486 (1955); ³The Steamboat Interferences 1787-1793,´ 40 JPOS 611 (1958); ³The
Changing Views of Justice Story on the Construction of Patents,´ 4 The American Journal of
Legal History 1 (1960); ³Trends and Developments in American Patent Law from Jefferson to
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.24
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. 25

 
 !"

The magical property rights, or as some authors call it - natural,26 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
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

Clifford (1790-1870),´ 6 The American Journal of Legal History 45 (1962); ³An Award and a
Law Obtained by Caron de Beaumarchais,´ 44 JPOS 147 (1962); and ³Examination 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.
á introduction to the first article referred to in this footnote.
24
Mark C. Suchman, ³Invention and Ritual: Notes on the Interrelation of Magic and
Intellectual Property in Preliterate Societies,´ 89 Columbia Law Review 1264 (1989), at 1264:
³Failing 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, µprimitive¶ cultures lack analogous mechanisms for the
protection of ideas.´ (Footnote omitted.)
25
Fritz Machlup, ³An 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.
26
Suchman uses the term magical intellectual property in the quoted article. He is
quoting in that Adelstein & Peretz, ³The 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.
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

³inventor´ who, through diligence or good fortune, discovers that her
maize crop is larger when she ³plants´ 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.27

  &
""
 

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 ³periodic 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.´28 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.29 We are alluding to the fact that certain
forms of industrial, or industrious activities at the certain level of organization

27
Suchman, j, at 1274. For the economic aspect of such protection,?
 immediately
following text.
28
Prager, j., at 111. Similar is true also for the ceramic industry, and the stage
repeated in Venice, in France, and elsewhere.
29
So in Prager, ³A History of Intellectual Property From 1545 to 1787´, 26 Journal of the
Patent Office Society, 711, (No. 11, 1944), at 722 ?
.
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.30 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.31

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: ³What 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.´32 He also refers to
the excavations of Assyirian pottery which reveals that the molds with the engraved
marks were used in their manufacture.

  %
 

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
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
30
Abraham S. Greenberg, ³The Ancient Lineage of Trade-Marks,´ 33 Journal of the
Patent Office Society, 876, (No. 12, 1951), at 877.
31
á? Greenberg, j, at 878. He concludes by stating: ³We 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.´
32
Greenberg, j, at 877.
the slaves.33 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
34
products. 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, ³to identify his creation.´ He continues:

It seems logical at this point to refer to the difference between the

ancient ï 

 
 of the artist or skilled artisan, and the true 


 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.35

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
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,

33
Verona, ³Pravo industrijskog vlasnistva,´ (1978), at 6, quoting Hubman, ³Geverblicher
Rechtsshutz,´ (1926).
34
Verona, j, 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.
35
Greenberg, j, at 879.
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.36

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 ³those who discovered anything
for the good of the state should be honored.´ 37 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 ³an art often practiced by cities
when they are in want of money.´38 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
 ' 


granted in the Greek colony on Sicily.

   
 

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

36
Edward S. Rogers, ³Some 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.
37
As in Aristotle, jj
II, 8,1267 b. Aristotle was criticizing this idea.
38
Aristotle, jj
, I 11,1259 a.
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.39
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
³whether 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.´40

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. ³Eye selves, made

39
Rogers, j, at 41, quotes Kohler,
 our footnote ('),

, speculating: ³That 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.´
40
Kohler, j, at 39,
 footnote ('),

.
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.´41
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.42 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 ³in addition to
performing the function of a trademark these names and devices indicate a
governmental or official regulation.´43 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.

As we have said, some authors argue that certain legal institutes had
the clear function of protection of intellectual property.44 So Bowker, who points out

41
Greenberg, j, at 879.
42
Greenberg, j, at 879, and in continuation: ³These 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.´
43
Rogers, j, at 29.
44
, Bowker, j, at 8; Hughes, j, at 291, quoting UNESCO, ³The ABC of
Copyright,´ 12 (1981); also
 footnote ('), j 
.
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,45 the copies
being protected by certain kind of ³courtesy of trade,´ according to Martial, who
listed particular booksellers which were keeping specific works of his for sale46; 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 ³that where an artist had painted upon 
 
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 ³this 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.´47 Ladas, not specifying the time he considers, states that ³[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.´48 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; ³And 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
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 
 , 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: ³It
seems to us better opinion that the tablet should accede to the picture, for it is

45
Stephen P. Ladas,
?  
j
?  j ? ? j
?
? j
j?    ,
(1938), Vol. I, at 13, also states that ³[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, 
?j?
?

?  ??j , III, 36.
46
Ladas, j, , 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 ³was
undoubtedly condemned by public opinion, between them also Martial, j

? ?
j j 
(Book I, LIII, LXII, LXVI), and Cicero, who according to Snyder, ?
?  ?
u
j , 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,

j? 
?  j
? 

(1838), at 16 in stating that the term in Roman law ³
was derived from 
j -the crime of stealing a human being.´
47
Bowker, j, at 8. Even extensive research both on WESTLAW system, and in
English reports did not reveal which ³John 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.
48
Ladas, j, , at 13.
ridiculous that a painting of Appelles or Parrhadius should be but the accessory of
thoroughly worthless tablet.´49

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 O
50under the name


 
ï, 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. 51 Arthur Schiller considers
the existence of the action, among the five groups of cases which were designed to
protect the trade secrets.52 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


  
ï, 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  , 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
competitor? The writer believes this question is to be answered in the
affirmative for the classical period. 53 (Footnotes omitted.)

Generally, Roman law regarding the idea that monopolies are harmful
was based on the idea that they are ³inequitable.´54 Later on, the idea became strong

49
According to Ladas, j, , at 13, Gaius,
?
j
, Book 2, Title I, Sections 33 and
34.
50
Justinian, j

11.3.,
j?
  ?
51
?? A.Arthur Schiller, ³Trade Secrets and the Roman Law; Actio Servi Corrupti´, 30
Columbia Law Review, 837, (1930). Also E. Kintner / J. Lahr, ? 
?   ? j
(1987), at 129.
52
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. á, art  U
53
Schiller, j., at 844-845.
54
3 Inst. 181.
enough that it was codified by Emperor Zeno, about 480 AD proclaimed the law
providing: ³[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...´55

  +,"
 

Earliest intellectual property case of post Roman times in Europe we

have found to be mentioned in literature is ›

 
, from 567, a decision
of King Dermott or Diarmed, in the Halls of Tara. ³To 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.56 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 ³[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.´ 57

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 ³secret´ at
the time of the infringement. ³Secret´ 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.
, 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.

55
Cod.IV 59, according to Prager, j, 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 ³Statute of Monopolies.´ Several of these are cited for instance in á

?
j? ?á. 1.
56
Philip Wittenberg,
? j ?
?u
j ??j
?   , 1937, at 17. The
book in question was a copy of Abbot Finian¶s ³Psalter,´ 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
³Psalter´ ³in Saint Columba¶s well-known hand-writing.´
57
Bowker, j, at 9. Bowker is reporting from Montalambert, u 
? ? ? 
.
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.
 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). 58

 
 !#+","

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.

 
 !

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
it was not a protection of the creation granted to the authors,59 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

58
Prager, j, at 119, and Verona, j, at 6-7.
59
Earliest known privilege granted to the author was on September 1, 1486 in Venice to
Sabellico. Bowker, j at 10, Prager j, at The first grant was to the German printer Johan
Speyer in 1469.
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.60 The protection
was overlapping. Printers were initially granted both patent and copyright protection
as in Italy,61 Germany,62 France,63 and in England.64 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. ³The 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
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
µdangerous art.¶´65 This aspect of of the impact as the source of the copyright requires
the examination of the nature of the ³monopoly,´ 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,66 or control over the dissemination of the

60
Copyright law of the United Kingdom, which was traditionally source of ³copyright
protection,´ was changed by the new act, in 1989.
61
Prager, j., 126-135, and ³History of Intellectual Property From 1545 to 1787,´ 26
Journal of the Patent Office Society 711, (1944), at 711-720.
62
Bowker, j at 10-12,?³The 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, ³the the
seat of a book-fair.´
63
In France, the continuation of the privileges to the librariesUU
64
According to Bowker, j, 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, j
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.
65
Leaffer, j, at 2-3. Wittenberg, j, 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.
66
Benjamin Kaplan, ³An Unhurried View of the Copyright´, (1967), Foreword, at vii.
³Copyright protection became necessary with the invention of the printing press and had its
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.67
Although modified by the Statute of Anne in 1710, which recognized ³for the first
time the rights of authors to their work.´68 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.69 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
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

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.
67
Barbara Ringer, ³Two Hundred Years of American Copyright Law´, 200 Years of
English & American Patent, Trademark & Copyright Law, Bicentennial Symposium, Atlanta,
Georgia, (1976), at 120. ³It 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.´ á also C. Ver Steeg, ³The Formative Years, 1607-1763, at 96-97 (1964), and L.
Wroth,
?„ j
? j  (1938), at 19.
68
M. Leaffer, § 1.2, at 3. á also article by Lyman Ray Patterson, ³The Statute of
Anne: Copyright Misconstrued´, 3 Harvard Journal on Legislation 223, (1965-1966). Patterson
takes 1709 as the year of the enactment.
69
Kaplan, j., at vii-viii, ³The 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.´
the industrial period.70 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.71 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: ³rivals
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.

 
 !,"#

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
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
1536.72 According to Prager, the guilds played an important role in the development

70
Malcolm W. Browne, ³In Alchemists¶ Notes, Clues to modern Chemistry,´ New York
Times, Tuesday, April 10, 1990, referring to the book by Dr. Betty Jo Teeter Dobbs
j
?
?
?
 j ?  ?j ?? ??
 .
71
Marshall McLuhan,  

j ? uj
?
? 
j
? ? u
, (1964), at 30:
³µRational,¶ of course, has for the West long meant µuniform 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.´
72
Prager, ³A History ...,´ at 722. Prager is comparing the rights granted, as well as the
inventive degree of the ³invention´ between the Speyer¶s Venetian patent and Turquetti¶s
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.73 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.74

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.

å
 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 ³Giacomo Aconico, a fortifications engineer from
Trent better known as a humanist and fighter for tolerance´ revealed his knowledge
of Venetian patent system to Englishman.75

Lyon patent and concludes that they are substantially the same type, Turquetti¶s being
somewhat ³less complete.´
73
Prager, j, at 725, also citing sources on Italian and English Academies.
74
Prager, j, at 726.
75
So Prager, j, at 723, quoting D.S. Davis, 50 L.Q.R., at 99, and E. Hassinger,
³Studien zu James Acontius,´ (1934), at 1-20.
 
 !(#

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.76
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.77 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 1899.78 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
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

76
Teruo Doi,
?  
?    ? 
? ? 

, (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).
77
Doi, j, at 2 and 201.
78
Doi, j at 201-202.
to bear the changes which are brought by emerging technologies.79 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,
, 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: ³Even 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 µconventional
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.´ 80

  !c++

The idiom 

ï
ï  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.81 The Court recognized that: ³[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 
ï
ï , 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.´

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: ³I must be
content with wishing that Mr. Tilghman should have the courage to defend his

 ï
ï , that is to say, his honor. Your very devoted, Monyer.´82 Until
late in the twentieth century did not the Supreme Court repeat the idiom again.

79
So Suchman, j, 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 ³it 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,
³Risk, 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).
80
McLuhan, j, at 74.
81

??
? ?@  , 7 F.Cas.197, (D.Mass.No. 3662, 1 Woodb. & M.53, 1845)
82
uj? ?
j
, 86 U.S. 287, 19 Wall. 287, L.Ed. 125, (October Term 1873).
 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
1832,83 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: ³The 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: ³If the earth be the gift of the nature to
the living their title can extend to the earth in its 

 state only. The ï

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
the authors of the improvements.´84 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 

property and intellectual property. Real property is set of rights over the objects,
things (res), which are part of the ³natural 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

83

? ?
? 
? ? ?
? ? 
 , 31 U.S. 218, 6 Pet. 218, 8 L.Ed.376,(
January Term1832).
84
Quoted according to: Dennis R. McGrath, ³The Constitution According to Madison: A
Guide for Twentieth-Century Americans,´ at 12, and Baltimore Sunlll
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
³improvements 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: ³[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. ³That 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.´85 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 ³securing´ undefined ³rights.´
Interesting examples of solving said dilemmas are to be found in the early American
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

85
Prager, ³A History of...´, j, at 760.
 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.´86

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.87

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, á  
 
.88 The case is explicit in
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.

86
 
? ?
? ? á
, 13 F.Cas.1017, No. 7.495, (C.C.Me.,1873), reversed by
á
? ? 
? 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.
87
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 ³follows the
pencil,´ as it is often symbolically expressed.
88
áj  ? ?
? ?

 , 22 F.Cas. 207, # 12,900, 1 Fish.Pat.Cas.558, (C.C.Md.,
1860).
 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 ³exclusive
right´ over the creations for ³limited 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.

 
 !
"#

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 

 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: ³Failing 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, µprimitive¶ cultures lacks analogous mechanisms for the
protection of ideas.´89

89
Suchman, j., at 1264. He makes a very interesting point in the later part of his article
at the page 1292, by concluding that: ³[i]n short, rather than being too weak, the non-
governmental intellectual property rights embodied in magic may actually bee ?
  ,
 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
protection.90 Therefore, we will for an instant continue our examination of the past in
order to understand present more thoroughly.

protecting existing technologies even to the point of denying crucial information to would-be
inventors.´
90
Suchman, j, at 1283, is suggesting that ³magical property rights draw strength from
more elaborate cultural constructs as well. in particular a µmythology 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.


CHAPTER TWO


c((c c 


 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.91 We have found it surprising
in light of the dominant beliefs in the separate nature, and accordingly, the unrelated
history of the legal systems.


91
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 ³The 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,
 also determining legal history, as a
mere part of integral history. Therefore, we are inclined to á the reflections of the general
historical processes as common, where others would tend to á 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.92 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 ,
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.

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,

92
In his letter to Chancellor Kent Justice Story wrote: ³I could not well á 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, ³Justice
Joseph Story: A Study of the Legal Philosophy of a Jeffersonian Judge´, 18 Vand.L.Rev.643,
649 (1965).
understanding of the influence of the Roman law to the Western culture did not loose
an iota of its importance.93 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.



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 
  was in its very beginning.94 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.95 Much more than the

93
W.W. Buckland, ³Equity in Roman Law´, (1911), at 117 ?
.: ³Even 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.´
94
Arthur R. Hogue, ³Origins of the Common Law´, (1966), at 22, states: ³[t]he
possibility of a medieval ³reception´ 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.´
95
Charles P. Sherman, one of the prominent American Romanists argued in a lecture
entitled ³Roman 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. á
Sherman, Lecture Notes, footnote # 80, M.H.Hoeflich, 1984 U.Ill.L.R. 719. also W.W.
Buckland, ³Equity in Roman Law´, 1911, at p. 117-118.
rules itself is this true for the concept of systematization of law which came through
the Bracton¶s influential ³De legibus et consuetudinibus Angliae.´96

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: ³The 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.´97

 *("

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 ³Principles 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.
Blackstone in his first lecture as Vinerian professor at Oxford,
published later as an introduction to his Commentaries, speaks with

96
W. S. Holdsworth, ³Sources 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 
j
?
97
?? Oliver Wendell Holmes,
?„ ?
, (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.
 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 ³the 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
³Roman´ 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.98

Other authors reached very much the same conclusions. For example,
Holdsworth in the ³History 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.´99

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
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
98
William L. Burdick, ³The Principles of The Roman Law And Their Relation To Modern
Law´, (1938), at 56-57.
99
Sir William Holdsworth, ³History of English Law,´ Vol. 4, (18ll), at 292-293.
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. 100

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 ³Law and Revolution.´101 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.

100
Burdick, j., at 65.
101
Harold J. Berman, 
?
?  j ?
?  
j ? ? ? 
 ? 
?


jj  (1983). In the chapters 13 and 14, at 404-519, author provides detail historic
overview with commentaries on the significance of particular phenomena.
 #+'

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 ³Henrici 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.102 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
the part of the Roman law in the development and formation of the English

102
For civilistic approach á also Leonhard, ³The Vocation of America for the Science
of Roman Law,´ 26 Harvard Law Review 389, (1913).
 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.103 (Footnotes omitted.)

After giving the history of the Roman law in England, and noticing the
important fact that the Roman law ³nevertheless, 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 |

 epoch.104

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.105

103
Carl Gueterbock, ³Bracton and His Relation To the Roman Law,´ Amer.ed., (1866,
1979), at 13-14.
104
., at 16-17.
105
., at 74, ³The 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, derive their origin or their first confirmation. Even
 
+,"c!"#

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 ³formulary 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 

 give way
to a formulary system. Our law passes under the dominion of a system of
writs which flow from the royal chancery.106

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 ³Roman epoch of
English legal history.´Ë 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 approvalË 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.Ë During all this
period Roman Law authorities ³were 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.´Ë
It
is also said by a very conservative writer upon the history of English LawËË

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.)
106
Pollock & Maitland, ³History of English Law´, bk. II, chap. 9. Cited according to
Roscoe Pound and Theodore F.T. Plucknett, ³Readings 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.107

(Footnotes: Ë Gueterbock, Bracton and his relation to the Roman

Law (Coxe, Eng. Transl.), p.16. Ë Selden, c. 8, p.1, et seq. Ë á

  ï

ï, 41 F.2d 929. Ë
Amos, Roman Civil Law, p. 450. ËË
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.108 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. 109 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.110 Thus, the civil law systems are
also determined by their own historical roots which was later to certain amount
influenced by the Roman law. None of the civil systems today can claim to be an

107
Burdick, j., at 74-75.
108
., at 75.
109
For the selection of the excerpts of various authors on the Anglo-Saxon law before
the Conquest á Pound and Plucknett, ³Readings on the History and System of the
Common Law´ (1927), at 43-55, with further references.
110
For the history of the German and French legal systems á, , Konrad Zweigert
and Hein Koetz, ³Introduction 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.
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 Mansfield111, Holdsworth,
Welsby etc. Lord Holt, Chief Justice of King¶s Bench in one case concluded: ³It must
be owned that the principles of our law are borrowed from the Civil Law.´112 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.113
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 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,

111
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 


and promise instead of the
common law concept of the consideration. He took part also in the decision of the leading
copyright case uj
? ?

 , 4 Burr. 2396, and described the right involved as an
³incorporeal right.´ His definition is still used and we will discuss it in the later chapter devoted
to the determination of the intellectual.
112
English case 
? ?„ , 12 Mod. 482.
113
Henry Sumner Maine, ³Ancient law,´ (1888); Kenelm Digby, ³Introduction to the Law
of Real Property´, (1876); Pringsheim, ³The Inner Relationship between English and Roman
Law,´ 5 Camb. L.J. 352, (1935); Roscoe Pound, ³The Formative Era of the American Law,´
(1938); Re, ³The Roman Contribution to the Common Law,´ 29 Fordham Law Review, 447,
(1961); Peter Stein, ³Roman Law and English Jurisprudence Yesterday and Today,´ (1969)
³Continental Influences of English Thought 1600-1900,´ 3 La Formazione Storica Del Dirito
Moderno in Europa, 1105-1125, (1977); ³Logic and Experience in Roman and Common Law,´
59 Boston University Law Review 433, (1979).
 being in fact the source from which they have been either partially or
entirely deduced.114

as well as those of Lord Campbell in his ³Lives 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.115

  ,'"%

One of the strongest links between American and English common law
is the teaching of Sir William Blackstone.116 It comes as the surprise that even in the
Blackstone¶s ³Commentaries´ 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.117 It appears as paradoxical that Blackstone in

114
George Shearswood, ³Lectures Introductory to the Study of the Law´, (1870), at 153.
115
Lord Campbell, ³Lives of the Chief Justices´, 3 ed., III, (Life of Lord Mansfield), at
274.
116
Famous is Chancellor James Kent admittance in his ³Commentaries on American
law´ (the title itself is an homage to Blackstone¶s µCommentaries on English Law¶) that he
³owed 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, ³The 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. (á Hoeflich, U.Ill.L.Rev., at ) F.H. Lawson,
³Roman Law as an Organizing Instrument´, 46 Boston University Law Review 181, (1966), at
197.³But 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.´
117
Thomas E. Scrutton, ³The 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: ³While Blackstone therefore utterly repudiates any authority of the
civil laws j ?
 
in this kingdom, except in particular courts; and only allows them in
those, so far as they have 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.)
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.118
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: ³Blackstone, more than a century before
Maitland, recognized that the English law had many features that were ³very
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.´119

,+(

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
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.120 One of the best
known excerpts is in may respects typical. In concluding his article entitled aptly
118
Arthur R. Hogue, j, at 244, is of the opinion that: ³[f]or Blackstone the competence
of the Parliament was so great that he knew µof 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.´ á also Blackstone, ³Commentaries,´ Intro., Section III,
and I, 69. Also á in Posner, j, at 25-27.
119
Harald J. Berman, ³Introductory 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:
³Notwithstanding 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  ?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.´
120
M.H. Hoeflich, ³Roman 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 ³Roman and Civil Law in Harvard
Law Review 1887-1930.´ The text itself, as the footnotes to it, are abundant with references.
enough ³The 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:-
³If 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.´121

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
³Principles...´

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 ³we often,´ says Maine, ³find entire texts from
the Corpus Juris Civilis embedded with their terms unaltered, though their
121
William Wirt Howe, ³The Roman Law And The Civil Law In America´, 16 Harvard Law
Review 342, (1902), at 357-358.
 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.)122

!!
  ".*
 +
,"*

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 ³evil´ 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
German Civil Code of 1900 as one of the great achievements of history.
(Footnotes omitted.)123

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

122
Burdick, j, at 54-55.
123
Peter J. Hamilton, ³The Civil Law And The Common Law´, 36 Harvard Law Review
180, (1923), at 180-181.
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,124
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.

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 ³Commentaries on Laws of England´. It was published in 1756, less
than a century after the ³Jurisprudence of Holland´ by Grotius. Although Blackstone
makes references to the natural law only in the introduction, he does quote Grotius

124
Frederick H. Lawson, ³Roman Law as an Organizing Instrument´, 46 Boston
University Law Review 181, (1966), at 189. ³It 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.´
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.125 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   ï
 , 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   
, 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
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

125
á in Lawson, j., 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, ³Ex parte
Sir William Blackstone, µPlagiarist¶: 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.
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.
 
*

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. 126

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
teaching of the Roman law almost stopped after the second world war.127 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

126
Grant , j, at 89.
127
On the history of the teaching of the Roman Law in America á articles by M.H.
Hoeflich, ³Roman 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, ³The
Teaching and Study of Roman Law in the United States,´ 9 Georgetown Law Journal 297,
(1930-1931).
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 ³The 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 
  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.
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 
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.128

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, 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.129 Illustrative in that respect is Bryson¶s article ³The 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:

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

128
Hamilton, j., at 180-181.
129
E.g., 
j
? ??27 Va. (6 Rand.) 355, 370 and 374, (1828).
 body of Virginia case law, as we have seen , and in this limited form the
Roman law survives today in Virginia.130

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 


(1793), and it is in
this case that the greatest number of classical references occurs.131

  /#/(

History of the legal development of the United States recognizes

several distinguished individuals which were aware of the role of the Roman Law
even in modern society. Doubtless, one of the most prominent were Joseph Story,
Associate Justice of the Supreme Court,132 and Dane Professor at the Harvard Law

130
W. Hamilton Bryson, ³The Use of Roman Law in Virginia Courts,´ 28 The American
Journal of Legal History 135, (1984). Same standpoint takes also Hoffman, ³Classics in the
Courts of the United States, 1790-1800,´ á footnote 73, j 
. 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, ³The 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.
131
Richard J. Hoffman, ³Classics in the Courts of the United States, 1790-1800,´ 22 The
American Journal of Legal History 55, (1978), at 58.
132
For more on various aspects of Story¶s career and appointment to the Supreme
Court, á R.Kent Newmyer, ³Justice Joseph Story on Circuit And a Neglected Phase of
American Legal History,´ 14 The American Journal of Legal History 112, (1970), and ³Justice
Joseph Story, The Charles River Bridge Case and the Crisis of Republicanism,´ 17 The
American Journal of Legal History 232, (1973), Morgan D. Dowd, ³Justice Joseph Story and
the Politics of Appointment,´ 9 The American Journal of Legal History 265, (1965), Gerald T.
Dunne, ³Joseph Story: The Lowering Storm,´ 13 The American Journal of Legal History 1,
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 ³knowledge 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.´133 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 ³fair use´ as
formulated in the case ›

  
134 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.135

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.

(1969). Finally, Frank D. Prager, ³The Changing Views of Justice Story on the Construction of
Patents,´ 4 The American Journal of Legal History 1, (1960).
133
M.H.Hoeflich, ³John 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.
134

? ?u

, 9 F.Cas. 342, 13 Copy.Dec. 991, 1000-1001, (1841).
135
For the comparison between the two, with a lot of references to the interpretation of
their work, both from the civil and common lawyers, á Hoeflich, j., at 65.
 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 ³differences.´ 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.136

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
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

136
Roscoe Pound, Foreword to Nathan Mathews, ³The Valuation of Property in the
Roman Law,´ 34 Harvard Law Review 227, (1921), at 227-228. For equally balanced
conclusion á article by Hoeflich, note (' ),

.
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 ï

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 ³the justice that goes beyond the written
law.´137 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 ³legal rules are
necessarily general, while the circumstances of every case are particular.´138 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: ³[i]njustice often arises by a certain chicanery, indeed, by an over-
subtle even fraudulent interpretation of the law. From which arose the proverb, µthe
more law, the less justice¶ (    
 
).´139

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.140 Equity is but the name for the mechanism

137
Aristotle, ³Rhet. 1.13.13 (1374a), and also in 1.13.17 (1374b): ³[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 ³Eth.Nicom.´ 5.10.6 (1137b): ³[C]orrection of the law where the latter is
defective by reason of its universality.´
138
Sir Paul Vinogradoff, ³Common-Sense in Law´, (1918), at 209.
139
Cicero, ³De Off.´ 1.10.33. For more on the issue á Stroux, ³Summum Ius Summa
Iniuria; Ein Kapitel aus der Geschihte der Intepretatio Juris,´ (1926), and Jolwicz, 48 L. Q.
Rev. 180-185, (1932), á footnotes 4 and 5 in the Schiller article, our footnote ('),

?
140
Joseph Story, 1 ³Commentaries on the Constitution, (1891), at 305.
which common law developed in order to solve this general problem.141 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.142 Among several mechanisms is interpretation. 143

  
 

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
statutory provisions of the Code of Obligations, which contain provisions regarding
contractual relations, allow courts to apply the principles of so called ³morality´ in
specific cases.144 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.

141
Stuart E. Prall, ³The 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 jj
and Roman
j

is particularly instructive in realizing how different concepts of equity may
complement.
142
Vinogradoff, j., at 221. ³But 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 (
? ?
 ), business practice,
etc.´
143
Schiller, j., at 735. Distinguishing between broader and narrower meanings of the
term j   
j Schiller says: ³   
j 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 j   
j 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 á j., at 764 ??
.
144
So in Yugoslav Code of Obligations, Sections, 10, 47, 49, 51, 75, 103, and 20, 51.
 It is probably worth noting, that there are several layers through which
the presence of
 
 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

 
of properties owned by different owners, as the Romans knew it. That is
provided by the statutory provisions.145 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 ³socially justifiable ³regarding 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, ³taking into the account
their needs, and specially their accommodation standing.´ It has to be said that the
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.146 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 ³construing.´147
145
Yugoslav Code on Basic Property Right Relations, Sections 24-26.
146
So in Yugoslav Code of Civil Procedure, Section 8.
147
A. Arthur Schiller, ³Roman Interpretatio and Anglo-American Interpretation and
Construction´, 27 Virginia Law Review´ No. 6, 733, (1941), at 745-746, also in his footnotes.
 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 
ï
. 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: ³In other
European systems of royal law, however, and in England in the twelfth and thirteenth
centuries, µequity¶ was not considered to be separate from µlaw¶ but, on the contrary,
an integral part of it. As in canon law, the equity of royal courts was that aspect of law
which gave it its capacity to adapt old rules to new (µexceptional¶) circumstances, in
order to do justice.´148

  "*

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 ³Roman 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
 
, specially in post classical times when it
become superior to the role of the law.149 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 ³equity of a

148
Berman, j, at 519.
149
Constantine, in C. 3.1.8 identifies
j

and iustitia and levels them above j
.
statute´ and ³equitable 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.150

 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
 
 was
known in the early English law. Bracton defines it, as does Azo, but without
mentioning any equitable jurisdiction exercised by the separate court.151 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 (, King¶s Chancellor), to
frame the new writs   
 
 . That power was ³to meet new cases
sufficiently like those for which writs already exist, and new writs are time to time
framed.´152 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
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

³Common-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.153

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

150
Schiller, j., at 758-759.
151
Bracton, ³De legibus...´ 2b.3., ³[r]erum convenientia, quae in paribus causis paria
desiderat jura, et omnia bene coaequiparat,´ Azo, Inst. I.1.f.240.
152
W.M.Geldart, ³Elements of English Law,´ (llll), at ll.
153
Vinogradoff, j., 209.
conflict between the spirit and the letter of the law. Development of the Roman law as
the body of
 and
 , 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 (



). 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 ³splendid formalism´ simply stopped serving the purpose of the law.154

Clear historic overview of the development of equity is provided by

Prall in his article ³The Development of Equity in Tudor England.´155 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
reviewing the lives of outstanding English lawyers. He points out the role of
Christopher Saint-Germain, and the influence of his ³Doctor and Student.´156 It
appears almost inapprehensible to understand that his proposal of 
 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.157
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. ³He 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.´158 In the best
tradition of common law historian Prall, by the way, disqualifies Thomas Starkey, a

154
Vinogradoff, j., 216, states: ³It 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.´
155
Stuart E. Prall, ³The Development of Equity in Tudor England,´ 8 The American
Journal of Legal History 1, (1964). Prall distinguishes Greek jj
from Roman
j

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.
156
Prall is referring to Christopher Saint-Germain, ³Doctor and Student,´ (18th ed.,
Dublin, 1792). His opinion is that Saint-Germain¶s equity is closer to jj
?
157
The culmination of rejection of equitable principles is surely Selden's famous remark
to the length of the Chancellor¶s foot. á Prall, j, at 4.
158
Prall, j, at 7.
proponent of ³the substitution of the Roman law for the English common law,´ as
³probably not based on any sure knowledge of either system.´159 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. 160 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
relation between Saint-Germain and Plowden: ³Both 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.´161 He
complement himself little later: ³If 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.´162 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

159
Prall, j, 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, ³Dialogue between Reginald Pole and Thomas Lupset,´
(1948).
160
Edmund Plowden, ³The Commentaries, or Reports of Edmund Plowden,´ (1792),
lived from 1518-1585, Inner Temple barrister and its treasurer.
161
Prall, j, at 12.
162
Prall, j, 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.
is similar manner: ³The issue was 
 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.´163

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.164
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 !  or the
O One of the parts of the 
ï  "  

, the Liber Sextus,
ends with a bouquet of these high-sounding maxims - #  ï 
 
ï
 ï

 
, and so forth, maxims familiar to all readers of
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.165

Even the Blackstone, otherwise opposed to the Roman influence

doctrines, in ³Commentaries´ recognizes the influence of the Canon law as far as the
jurisdiction of the ecclesiastical courts reaches.166 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: ³The 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

163
Prall, j, at 19.
164
Prall, j, at 19
165
F.W. Maitland, ³Equity - A Course of Lectures´, ed. by John Brunyate, (1936), at 8.
166
Blackstone, ³Commentaries,´ Intro., Sect. 3, at 82-84, and III, 429.
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).´167 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 ³by no means meager, and out of it
came a substantial body of law.´168 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. ³In 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.´169

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
Blackstone emphasized also this particular link as highly probable.170 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
³superintendency´ 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

167
Harold J. Berman, ? 
?
?  j ?
?  
j ? ? ? 
 ? 
?


jj , (1983), at 234.
168
, at 237.
169
For the background of the development
?j, at 240.
170
Thomas E. Scrutton, ³The Influence of the Roman Law on the Law of England,´
(1885), at 143, states: ³Another 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.)
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 ³foreign´ 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 ³received.´ 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 ³foreign´ or ³Roman´ were opposed by
the English.171

Nevertheless, citing Pomeroy172, 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.

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.173

 

!0#

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
171
Burdick, j., at 77.
172
Pomeroy, ³Eq.Juris.´, 3d ed., § 2: ³In 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.´
173
Burdick, j., at 80.
in the Roman times.174 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.175
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.176 He concludes his section
on equity with the conclusion: ³[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.´177

We would only like to add that in such form, as required by the

conclusion above, we can find some form of
 
 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   from the actions ï 

, 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,  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.178 We will see later that the history of the

174
Vinogradoff, j., at 222-226.
175
á Blackstone, ³Commentaries´, III, at 431-432, where he quotes Grotius saying
³?  ? 
? j j?
?
j j?  j? j j?  jj.´ Blackstone further concludes further,
that these principles are equally applied both in the courts of the common law as in the courts
of equity: ³[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.´
176?
Vinogradoff, j., at 227-233.
177
Vinogradoff, j., at 233.
178
There is no reason why, , section 34 of the Lanham Act (15 U.S.C. 1116)
Remedies, while providing that courts vested under appropriate jurisdiction under the Act
³shall have power to grant injunctions, according to the principles of equity and upon such
ownership made a similar turn, equivalent to the distinction of the actions   from
the actions  ï 

, which all of the civil law countries have made distancing
their law from its Roman origins.

åË
Ë The purpose of this argument was not to show that the civil and the common
law are identical as a whole or in parts.179 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
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

terms as the court may deem reasonable,´ would also not restate such principles, and at the
same time include them in the statutory text.
179
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.
during the nationalistic 

 of the nineteenth century.180 Because of that
majority of the texts in favor of strong national legal developments have to be taken
 


.

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
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.

180
Berman, j, at 512. ³It is the tragedy of µscientific¶ history that it was invented in
nineteenth century, in the heyday of nationalism. From Ranke on, history was to be an
objective study of µhow things actually happened.¶ It was simply taken for granted, however,
that µwhat 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.´
 CHAPTER THREE


 


c c


 
$

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 ³elusive.´ 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.181 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
new names, as the doctrines of intellectual property law. For example, the doctrine of

181
C. Reinold Noyes,
? 
jj ? ?    ? ? á ? ? ?   ?
á

?
?
 ? ? ? á
? ?    ? j ? u ?   j
? 
,
(1936), at 437. ³The 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.´
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.

 
|

After this brief introduction to the problem, we can clearly see that
determination of the , 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 
 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 ³copyright is an intangible right.´182 Even the Supreme Court
was not prone of this mistake, and described the copyright as ³this intangible
right.´183 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 
$

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.184

It would appear strange that Lord Mansfield would describe that

imprecisely the right he tried to determine.185 Obviously, Lord Mansfield was using

182
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.
³A µcopyright¶ which is an incorporeal, intangible right or privilege existing of both its physical
manifestation and the very thing copyrighted is not a µgood, ware, (or) merchandise¶ such as
the felony provisions of the National Stolen Property Act are implicated.´  j? á

? ?
áj 686 F.2d 234, 239 ?
, (1983). Sometimes, courts use proper expression as ?th
Circuit did in describing plaintiff¶s claims: ³infringement of its copyrights in the fifteen scripts
and conversion of its intangible property rights.´  ? 
 ?
 j
j ?  ?  
?

j??„ ??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.
183
So,  Justice Day in  j
 case, note ('),

, stated: ³...the statute
must be read in the light of the intention of Congress to protect j
? j 
j? j as a
reward of the inventive genius that has produced the work.´ (Emphasis added.)
184
uj
? ?

 , 4 Burr. 2303, at 2396 (1769), 98 Eng. Rep., at 253.
185
á Noyes, j, at 306, for analysis of the use of the term j   
 in English and
Roman law. Noyes is pointing to John Austin,  
? ? j
  , (1832, 1869), vol. I,
at 368, who traced the error in the related case, to the ³jargon´ of English law in which the
the term in the sense in which Roman lawyer would do it, by identifying the object of
ownership with the right over it. 186 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.187 In doing so they are
actually closer to the old Roman conception of 
 , 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 ³intangible rights´ is even closer to the language of the Roman
jurists, because it is derived from the terms 
 
 ï
  (the tangible
things), and 


ï
  (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  

ï


, still meant one and only one thing - right over rights.188 In other
words, according to Gaius,189 incorporeals meant the rights as the object of the
property right, such as right of inheritance ( 
), right of using somebody else¶s
thing (   ), obligations (


) and servitudes (
 ï

). All
these rights are part of the property, but they are not object of property right.

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

 is wrong, because we do distinguish the two.

186
Noyes, j, at 357, addresses the problem as follows: ³In the most cases the
American courts use the word µthing¶ as a synonym for material object.
  

?  ?
?j
? ?j   
?j
?
??j ?

???
?  



 ?j  
?? ?

?j  
?

?
?j j??j ?
?
 j
?
 And, unfortunately the newer term
µintangible¶ 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
µincorporeal.¶´
187
According to Burdick, j, at 312, in the United States ³at 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.
188
Horvat, j, 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 
? j  

? 
? 
j?  ? 

  as opposed to 
?
 

? 
? 
j? 

 .´ At the same place he points that Romans considered only
tangible things ( 
) as the possible objects of the rights, while the intangible things,
(j
) ³were commonly identified with the right itself.´
189
Gaius 2.14, 
jj 
, 2.2.2, 13-14, (also in 3 and 4), according to Horvat, j, at
143. Buckland,
? j, at 187, describe the distinciton as: ³
? j  

were
abstract conceptions, notional things, and, as 
meant assets, ? 
? j  

were
rights.´
O
 , or the property right was not included in incorporeals because Roman
jurists were entirely identifying the right with the object.190 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 (  
ï

) and intangible things (  
ï

) - not rights.
Roman legal theory arrived to the 
ï

 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    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 ³information is the power´ may have certain legal significance. Of course,
if  ï
 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 ³freedom 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
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.

 




190
W.W. Buckland & A.D. McNair, 
? 
? ? „ ? 
? ? „
j
 ? j ?
j , (1936), at 70-71, Horvat j??Buckland, j, at 187, explains: ³j j was not 
?
j  
j
. It was in fact treated as a 
?j   
j
, indeed the only 
?j  
j
.´
 Word  is the key to the meaning of the legal concept of property.
Two different authors encroached the relevant meaning of the legal term  or 
by approaching various aspects of the concept.191 Salkowski defines it as follows:
³Thing 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...´192 Austin said
that ³[t]hings are such permanent objects, 
  ï 
, as are sensible or
perceptible through senses.´193 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: ³The Mathematical
Theory of Communication.´ The work was reprinted in 1963, and complemented by
the paper entitled ³Recent 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 ³communication 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
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 


 in this theory, is used in a special sense that
must not be confused with its ordinary usage. In particular, 



must not be confused with meaning.

191
á Noyes, j, Appendix I, at 571, regarding the etymology and historical
development of related legal concept of the term j ..
192
Carl Salkowski, 
j
?
? j
 ? ? 
?  j
? 
, (1868, Eng.transl.
1886), at 333.
193
Austin, j, at 368.
 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 
 say, as to what you 
 say. This is,
information is a measure of one¶s freedom of choice when one selects a
message.194

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 ³tree-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
subject matter is shared with the understanding of the new geometry. 195 The
possibility of such comparison is actually suggested by the Shannon himself when he

194
Claude A. Shannon and Warren Weaver,
? u

j
?
 ? ?   
j ,
(1963), at 8-9. Gleick, j, at 255, when introducing his readers to a ³piece of mathematics
cum philosophy known as information theory,´ says: ³  
j 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 j  
j on the level of their
appearance as the mathematical equation, that symbol of the same notion is:

?= - [1 log 1 + 2 log  2 + . . . +  log  ],

?
?= - ™ j log j

where: ³a set of independent symbols, or set of independent complete messages for

that matter, whose probabilities of choice are 1, 2, . . . . [* * *] Where the symbol ™
indicates, as is usual in mathematics, that one is to sum all terms like the typical one 1 log 1
written as a defining sample.´ á?j, at 14-15, for further explanation.
195
The field on which the paths of the theory of chaos and the information theory
intersected is, according to Gleick, j, at 256, redundancy. ³Redundancy 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: ³The famous advertisement for shorthand training -- j??
 ? ?
?
-- illustrated the point, and information theory allowed it to be measured.´
takes an example of Joyce¶s ³Finnegan Wake´ in order to illustrate redundancy.196
Weaver goes much further, when at the very opening of his article defines
communication ³in 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.´197 And in such definition the emphasis should be on


 , as
Weaver himself returns to the definition in order to explain it stating that ³[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.´198 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
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
ï 
 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

196
Shannon, j, at 56. ³The 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.´
197
Weaver, j, at 3.
198
, at 5.
information,  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.199 It may be mentioned here that the ³answer´ to the questions by the
creator himself, in the sense that he made choice for himself, do not represent the
³answer´ 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 ³The Red Studio´200 he had in addition
to all of the choices which the other creators faced, made, or opened, the choices of
which most stunning was ³will 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,
or the type of the film. For picturing green meadows we may decide to use ³Fuji®,´
but for catching the blue of the ocean we may use ³Agfa®,´ or ³Kodak®.´ But here
again, the more choices we plan to make, or more we decide to face, the more
information our creation will contain.

199
Mondrian, j, at 51, puts it straightforwardly: ³Art has shown that it is a question of
determining the relations.´ Felix Klee, ³Paul Klee,´ (1962), at 155, provides us with the words
of the painter who formulated it as follows: ³Creation 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. ?
?? ?
j ?We have found parts of it, but not yet the whole.´
(Emphasis added.)
200

? ? ájo, 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: 
 ? j ? , 1908, Leningrad, Hermitage
Museum. In many later paintings painter returned to red as the dominant color. He was using
it consciously as a symbol.
 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.201 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 ³telephone directory´ cases.202 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 ³sweat
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
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.

201
á Hughes, j, at 319-323. Thoughtful distinction Hughes made between ³common,
everyday´ ideas, like walking the dog on the shorter leash, or adding paprika to a quiche, and
³extraordinary´ 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
³extraordinary´ 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 ³unique importance´ of ³extraordinary ideas.´ Hughes, j, 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 ³a pure µsocial property.¶´ á also Giles S. Rich, ³Escaping the Tyranny of the
Words -- Is Evolution in Legal Thinking Impossible?´ 60 JPOS 271, (No. 5, 1987).
202
,  ? ? 
jj?
 ?
?

? „, 91 F.2d 484 (9th Cir.1937), or
j
 ?
 ?„
? ?   ?j  ?„
??uj 

? ., 770 F.2d
128 (8th Cir. 1985).
 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.203 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
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.204 Then, the information is a fractal of creation

203
Harry A. Toulmin, Jr.,   j ?
?
? 
, (1936), did not have any doubts. he
concluded, at 3, that: ³Invention, 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, ³The Artist and the World,´ (1958),  j  in u ?„ ?
?? 
, at
243 uses word discovery when describing artistic creativity. ³It 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 ³Monet has discover a truth about the actual world.´ á, in
relation to this, our footnote ('), and pertinent text. Piet Mondrian, ³Plastic Art and Pure
Plastic Art and Other Essays,´ (1945), at 53 reaches the same conclusion: ³Not 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
³useful/useless´ dichotomy in copyright law.
204
Wassily Kandinsky, „  j ??áj j
?j ? , (1947), at 23-24. á 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: ³Being 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
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 



. 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.

  ""
"

Then, why fractal? Gleick talks about fractal as about element of

perceiving reality introduced by the theory of Chaos. He uses following words:
³Fractional dimension becomes a way of measuring the qualities that otherwise have
no clear definition,´205 and even more precise -- ³[i]n the mind¶s eye, a fractal is a
way of seeing infinity.´206 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

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: ³The
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: 
? j
?
?  j
j ´ (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 ³Der Sturm.´
205
Gleick, j, at 98.
206
, at 98. For the implied universal quality of fractal
 pages 107-110.
shrinking world by infinitely enlarging the common. And after all why not, as the law
itself provides that every creator can be its ³own lexicographer.´207

But, for the above definition of ³fractional dimension´ a means for

measuring unclearly defined, Gleick provides few examples, like ³the 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 ³how does one measure amount of
information?´ Shannon introduced notion of 
ï 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: ³Entropy is the name
for the quality of systems that increases under the Second Law -- mixing, disorder
randomness,´208 and later ³[i]n the physical sciences, the entropy associated with a
situation is a measure of the degree of randomness, or of µshuffledness¶ if you will, in
the situation; and the tendency of physical systems to become more and more
perfectly shuffled,...´209 As the entropy is measurable physical value Weaver
concludes ³[t]hat information be measured by entropy is, after all, natural when we
remember that information, in communication theory, is associated with the amount

207
Patent lawyers would immediately recognize this expression as coming from the
j ? „
? ?  j
? ?
?  j? á

, 384 F.2d 391, 181 Ct.Cl. 55, 155
U.S.P.Q. 697 (Ct.Cl. 1967). The court quoted Justice Frankfurter, ³Some Reflections on the
Reading of Statutes,´ 47 Col.L.Rev. 527, (1947), at 528, reflecting the inexacteness of words:
³They 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; „j
?á?  ?„? ?@
j?á?  ?„ 132
F.2d 812 (7th Cir. 1943); á
?   ? „? ? ? 
j
 162 F.2d 857 (9th Cir.
1947); j 

?j? 
?„? ??j??j j ?„ 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, 
?  ?
„? ?  ? 

 ? u? „, 275 F.2d 249, points even further in the past: ³this 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, j,
at 4: ³The new science has spawned its own language, an elegant shop talk of 


?and
j 
j
? j  j j
? and  jjjj
? ? j j

? and
?
?

.´ (Italics in original.)
208
Gleick, j, at 257. Preceding explanation includes an accessible example of the
Second Law: ³The 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 Second
Law is so often said to be part of physics that make makes time one-way street.´
209
Shannon & Weaver, j, at 12.
of freedom of choice we have in constructing messages.´210 The path to such answer
is contained in the explanation of the binary, or , as such 


 , 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: ³Zero and one may be taken symbolically to represent any two choices, as
noted above; so that ³binary digit´ or ³bit´ is natural to associate with the two-choice
situation which has unit information.´211 But it is in defining  
 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 ³the 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.´212

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  
 or  
 
.Internal relates here to the
amount to which a creator himself does not control outcome of mental part his
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

210?
?, at 13.
211
, at 9.
212
?, at 13. It is not strange that the word is employed here, as this ³statistical rule´ is
the field in which the theory of chaos found the interest in reexamining the communication
theory. á Gleick, j, at ll.
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: ³As 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 µI,¶ the artist, did not make the work. ³Not I, not I, but the wind that blows
through me,...´213

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: ³[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. @    
 



 

(, freedom of choice),
  

 
  
    
% ´
(Emphasis and the remark in the parenthesis ours.)214

å
 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
described as the ³tree-of-decisions.´ We do not see why this pattern would not
continue further, in the realm of creation, according to the pattern described above.

"#"!("!&c1
  )!

213
Gleick, j, at jj.
214
Weaver, j, at 19.
 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: ³[a]s a slogan, µproperty¶ does not have the siren¶s call of words like
µfreedom,¶ µequality,¶ or µrights¶´, 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 ³
have much more of a
siren¶s call than property rights.´215 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, ³materialized´ 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.

  '! "!
 "

The very existence of two terms denoting ownership is in itself a proof

of the Roman influence upon the old English law. Term to
 is in ³Webster¶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

215
Justin Hughes, ³The 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.
and Saxon origin of the English law.216 On the other side, term ï
ï  is traced
back through Middle English and Middle French to Latin.217 Latin itself had two
meaning for the property, one is 
  and 
 , meaning ³absolute
ownership´, and ³owner proprietor, possessor, master, ruler, lord,´ the other ï
ï  ,
meaning ³own, peculiar, particular; lasting permanent.´218 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 
 , but
in Americn legal parlance we do say that we have appropriated the book, while the
Romans would use the word 

, they would vindicated the book. Word
ï
ï 
 would be used more in the meaning of the property pertinent to the book
itself. Characteristically enough, and important to our analysis word ï
ï   in
Latin means possession. However, Romans were using two words to denominate what
we call ownership. First is 
 , 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 ï
ï   which is best translated as ownership, or
ownness. 219

It is interesting that the Webster's describes the entry ï
ï   as

³a 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
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

216
Selected meanings: owe,  ; owed, or archaic ought; [ME? ? ? ? , OE

?

, akin to OHG?j , possess, have, ON
, possess, have, am obliged.]: POSSESS,
OWN, etc.
217
Selected meanings: property, [ME   , fr. MF   ?  j,, fr. L   j
?
  j

, fr.   j?[fr.   j
own, particular + -
-, -

- ty]
218
According to the 
?
?„?
j ?? j
?jj
, by John Traupman,
(1966), used throughout the text.
219
For more detailed approach to the relation of ³property´ and ³ownership´ in modern
American property law,
 Noyes, j, at 358-359.
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
³right of action.´ ³To 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 µproperty¶ whenever someone has µin 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).´220

@
& '
 O

 defines the property thoroughly, satisfactory
enough in our opinion to be cited extensively, as:

³[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.(221) 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.
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
220
Lewis Hyde,
?j?
j
j ?
?? j?j??   , (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.
221
This corresponds to most common Roman definition of property as j?  j?
?


j ?NoyesUUU
 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 - ³belonging´ 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 - ³exclusivity´ is the
element signifying the instrumentalization by which the individual vests the element
of ³belonging´ 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 ³belonging´ anymore; third - ³an 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 ³belonging,´ not
a single right regarding the object; finally - ³guaranteed 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 ³belonging.´ 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: ³A 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.´222

 
"+'#+"!

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
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 
  over the
thing, which was the only form of ownership the Roman law recognized was a

222
Oliver Wendell Holmes,
?„ ?
, (ed. Mark DeWolfe Howe, 1963), at 168.
threefold bundle. It comprised the right to use (  ), right to take its fruits
(   ), and right of disposal extending to the right to destroy the thing owned
(
  ).223 Some sources, by the times of Gaius, distinguish property right as
fourfold:

i having (
 ),
ii possessing (ï
 ),
iii using ( ),
iv enjoying the fruits ( (

Earlier, pre-Republican times knew only categories of 

ï , and
ï

. (meaning the ³keep of the hand,´ and ³power,´ 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
³hands-on´ ownership as little bit more sophisticated right and described it as

 , meaning dominion (l). 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,224 space on the metes and bounds of real
property five feet wide,225 and similar. The time of Empire developed the institution
of eminent domain for public purposes, such as building of roads and acquaducts.226
Only the end of the classical period saw the use of the technical term ï
ï 
,
meaning property, and denoting the legal concept of property similar to the elements
of the one we understand as property.227 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

223
Some Roman lawyers, like Ulpian, regarded the ownership as a single right, rejecting
the concepts interpreting the ownership as the bundle of rights. á Dr. Marijan Horvat,
j
?
, (
?
), Vol. I, (1957), at 164.
224
Smoke, dust, steam, water, smell etc. However, even the earliest Roman law, the
Twelve Tables provided an action called
j?

? j
?
 
 , 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, j, at 168.
225
j j
and
j
, Horvat, j, at .
226
? 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.
227
We will not here present other Roman categorizations of the property, such as  ?
j jj? ?@ j
?
 ? etc, which are important only for the history of the Roman law.
today.228 In his understanding such legal concept was developed upon the Roman law
concept, but ³being 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: ³the
liberty or immunity gained by the individual through protection against the power of
his superiors and the interferences of his fellows.´229 He describes the effect as being
a right which is a protection rather than the power.

Holdsworth held that ³[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.´230 Noyes added to this very remark
³that the common law structure of estates has been modified by the Roman concept of

 .´231

Modern theory of property recognizes, or as one may say, in the

meantime we have discovered, much more components to the bundle.232 Becker is
citing Honore, presenting the bundle of eleven rights, comprising the ³full liberal
notion of ownership.´233 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 $ 
 ï
 -- that is, to exclusive physical control

of the thing owned. Where the thing cannot be possessed physically, due,
for example, to its µnon-corporeal¶ nature, µpossession¶ may be understood
metaphorically or simply as the right to exclude the others from the use of
other benefits of the thing.
ii $ 
  -- that is, to personal enjoyment and use of
the thing as distinct from iii and iv below.
iii $ 


 -- that is, to decide how and by whom
a thing shall be used.

228
Noyes, j, at 288.
229
Noyes, j, at 288.
230
Holdsworth, j, vol. VII, at 510.
231
Noyes, j, at 296.
232
Noyes, j, at 359, provides a series of examples how the different authors treated
³the bundele´ in the modern American Jurisprudence.
233
Lawrence C. Becker,    ?j
?j
j? 
j
, (1977), at 18, citing
A.M. Honore, ³Ownership,´ in  ?



?j ? j
  , (ed. A.M. Guest,1961), at 107-
147.
 iv $  
  
 -- that is, to the benefits derived
from foregoing personal use of a thing and allowing others to use it.
v $ 

ï
 -- that is, the power to alienate the
thing and to consume, waste, modify, or destroy it.
vi $  
   -- that is, immunity from
expropriation.
vii $ï
 

 -- that is, the power to devise
or bequeath the thing.
viii $

  -- that is, the indeterminate length
of one¶s ownership rights.
ix $ ï


 
   -- that is, one¶s duty to
forbear from using the thing in a certain way harmful to others.
x '

 
 -- that is, liability to having the thing
taken away for repayment of debt.
xi |
 

 -- that is, the existence of rules
governing the revision of lapsed ownership rights.

As Becker is quick to point, ³Honore 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
ï , for people may be said to own things in various restricted senses which omit
any one or more of the incidents.´ 234 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.235

Noyes holds that ³in fact the one distinguishing characteristic of the
notion of µabsolute 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 µabsolute property¶ can be reduced to a bare hypothetical
residuum and represents today, in many of its applications, a legal artifice -- almost a
fiction --rather than an economic fact.´236 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:

234
Becker, j, at 19.
235
Becker, j, at 19-20. ³Finally, 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.´
236
Noyes, j, at 299.
 ³Property is any protected right or bundle of rights (interest, or
µthing¶) 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.´237

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.238 When we say that, we do not mean
the differences between the ³full 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.

  c""#"! .2

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

237
Noyes, j, 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: ³Nevertheless, 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.´
238
Hammond, j, at 53, in relation to this problem, also providing definition of property:
³All 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.´
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 ³shift 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.239 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
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

239
á Hammond, j, at 54.
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
³materialization´ 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 Constitution240 empowers the Congress to regulate the protection of
creativity by ³securing 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

240
U.S. Const. Art. I, § 8, Cl. 8,
 note (')

?
full property right of the creator, thus leaving the content of the ³exclusive 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.241 (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 ³exclusive right.´

Patent Act, 35 U.S.C. § 261 provides undoubtedly that the patent rights
shall be construed as the personal property: ³Subject 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 ³first 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 ³initial
ownership,´ which is used as synonymous with ³copyright´ vests in the author of the
work. More clearly, in the second sentence of the section, it is provided that: ³[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

241
??In the pertinent part of the Fifth Amendment U.S. Const. reads: ³No 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.
notorious fact that the intellectual property rights are transferable, and in that identical
to the traditional property rights.242 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.-

 

#"+(

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

242
See 35 U.S.C. §§ , 17 U.S.C. §§, and 15. U.S.C. §§.
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.243 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.244 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 ³the 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: ³it 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 ³property 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 ³more´ 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.

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:

243
??
244
Footnote 5 of § 1.03[A].
 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.245

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. 56.246

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.

245
áj  ? ?
? ?

 , 22 F.Cas. 207, # 12,900, 1 Fish.Pat.Cas.558, (C.C.Md.,
1860).
246
j  ? ? ? ?
., 29 F.Cas. 1074, #. 17,585, 1 Robb.Pat.Cas. 567,
(C.C.E.Pa., 1831).
 have no application to agreements concerning copyrights and
patents, the very object of which is to give monopolies.247

Bowker also shares that opinion: ³Copyright 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; [* * *]

ï  
 

ï

    


 ï 
 

ï
.´248
(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: ³The 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.´249 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.

  $
,."

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 ³conceived and reduced to practice´ in patent law, and ³embodied´ 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
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

247
u  ? ? „ j
j
?  

?

j
j , , (N.Y. Supreme Court Appealte Division,
1899).
248
Bowker, j, at 50.
249
Senator O.H.Platt, during the copyright campaign for the 1909 Copyright Act,
according to Bowker, j, at 50.
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 ³intangible´ 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 ³host.´250 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
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.

250
Toda, ? ?
j
? ? „ j
j ?
? á  ? ? 
j ? j ?
„ j
j ?„ 
?
?
j 
, (1967), at 25-26.
- 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: ³Property in land is
associated with settlement. Always one finds the same necessity if 
 or being
 on the land. The   sits; old English which was the ceremony or title
of possesion of land, was derived from ³seize,´ which in turn originally meant to
³set,´ the factive of ³sit¶; even the settler without the legal title, the ³squatter,´ was
conceived as thus tentatively possessing the land in a half-sitting posture. Allied with
the last seem to be ï

and  ). The former is probably from ï
- or ï


and the later certainly eventually from ). Perhaps both have the sense
of sitting or setting (dwelling) 
rather than ï
.´251 Possession is by the cultural
tradition legally established moment of the first right over an existing value. The
material existed. Even when new ³res´ is created, material existed before and only
new part of newly created ³res´ 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: ³We may assume that the men who wrote the
Constitution regarded the system of private property ï   as in public interest. In
according the property status to copyright they merely extended a recognition of this
public interest into a new sector.´252 (Emphasis in original, footnote omitted.) Like as
in the case of the patents that what is ³granted 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
how developing countries often tend to keep reservations regarding the recognition of
the rights of creators.

  cc#!!l

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

251
Noyes?j, at 99.
252
Melville B. Nimmer, David Nimmer,
j ? ?„ j, (1963,1987), § 1.03[A].
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 á
 and  
$


  . 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  
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: ³The 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, ³




 
 ï



 

   
 

  
 
, 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 


 

 ï

  
, 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.253

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. 254

Other scholars as well, noted the tendency or American courts to

recognize property interests in intellectual property. Hammond contends that ³[t]he


 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 µgood¶; 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.

253
 j
?

??„
? ?j?  j
 , 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.
254
 j
 , footnote ('),

, U.S. at 298-299, S. Ct. at 77.
 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: ³There 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.´255 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.

å
 The meaning of the idiom 

ï
ï 
 differs in common law from the
one as found in the traditional civil law doctrine (as term 
  itself differs from
the term 
 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  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. 
  as distinguished from

ï 


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
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  is the land, could
be explained by analyzing the difference between the nature of the land as the object

255
C. Reinold Noyes, ³The Institution of Property; A Study of the Development,
Substance and Arrangement of the System of Property in Modern Anglo-American Law,´
(1936), at 285.
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 ³feud´ seems to have been equivalent to the Roman
³beneficium´, 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.256

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.257 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
Pat.Pending, Patent No., ©, ®, or Œ, and confidentiality notices serve the symbolic
function of the fence regarding the intellectual property, namely to warn ³lone
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
³The Law of Copyright´ points that it ³is a mistake similar to supposing that the mark

256
Burdick, j., at 65.
257
It is interesting that Hughes, in ³Philosophy of Intellectual Property´, at 296, gives
basically the same example.
on the ear of an animal is the cause, instead of the consequence, of property
therein.´258

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.259 Judge Posner in his treatise ³The Economics of
Justice´ writes: ³[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.´260 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 ³beyond
appropriation, like navigable rivers, beaches, and the airspace in congested urban
areas.´261 Hammond compares the legal regime of intellectual property to the regime
of property over resources, rather than commodities. 262 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.

258
Quoted according to Bowker, j, at 6.
259
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.
260
Richard A. Posner, ³The Economics of Justice,´ (1981), at 179-182. In the opening of
the discussion on property he also states: ³[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, ³Toward a Theory of Property Rights,´
57 Am. Econ.Rev. Papers & Proceedings 347, (1967), at 351-353.
261
Hughes, j, at 296.
262
Hammond, j, at 52 and 70-71.
 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, ³I
consider that it is a true and received division of law into ! ï   and
!  ï 
 , the one being the sinews of property and the other of
government.´ [* * *] The generic word , from which we derive our
term ³real rights´ meant, as Buckland has shown, not so much a ³thing´ as
an ³asset´, and as such, included anything with a money value including
what the Romans called obligations and we call 



 - claims
arising from contracts, torts and unjust enrichment.263

c."

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  .
Hammond uses it in close conjunction with information, and so does Samuleson.264
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 ³possessed´ 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
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 
ïï
ï 

. Its meaning
of wrong appropriation suits purposes of intellectual property very nice.

263
Lawson, ³Roman Law as Organizing Instrument´, j, at 191.
264
Samuelson, j, at:    Hammond, j, at 54: ³sole 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. á?j, at 66.
 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 ³the notion that information can and will be legally protected
has received the ï 
 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.´265

Further distinctions and definitions of unlawful appropriation is to be

found in Reichman.266 He addresses the problem of ³counterfeiting´ and ³piracy.´
*
, 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.267 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.

lllll Further example of such inconsistency is the composition of the ³duty

of candor´ provision of the 37 C.F.R. § 65(d), whereby the standard used in torts,
³known 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.268 The inconsistency arises out of the fact that the
provision uses term ³fraud 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.

-c  A separate issue that has to be discussed is the use of the term ³natural-
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 ³natural´ as the property justified under the

265
Hammond, j, at 66.
266
Jerome H. Reichman, ³Intellectual 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.
267
Bowker, j, at 251.
268
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 ³quasi-property´ or ³artificial´
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 O


@ 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 ³legal 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.269 Noyes contends that

269
Noyes, j, at 377, footnote 42, referring to W.A. Hunter, 
?
, (1876, 1903),
points to an interesting argument in favor of proprietary nature of Roman possession: ³[i]n
Rome the thing necessary to complete possession, besides the fact of possession, was
called
j
? j j, not
j
? 

j j as in England. [* * *] When the rule was laid
down one intended to  , not merely, as in England, to 
j??
? j??



 The
µlaw of possession was originally a law of ownership.´ Oliver Wendell Holmes, j. at 165
contends: ³We 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
j
? j j? or? j
j also appears as
the history of the development of the legal concept of equitable property in common
corresponds to the concept of possession in Roman law.270 It is interesting that he
points to Holland, warning us that his viewpoint was civilian, who said that ³in its
lowest form it [property] is a right of Possession, in its highest form a right of
Ownership.´271 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
  ï
 as constitutive element of possession. As the
matter of fact, Noyes ascribes such conception to English law, and cites Salmond,
who ³thinking in English terms, says that possession µis in
 what ownership is in
. It µis 

exercise of a claim; ownership is the 
 recognition of
one.¶´ 272 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.

? ?
---

ü
 
±, in Teophilus, II. 9, § 4; III. 29, § 2.,
 Holmes, j, 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.
270
Noyes, j, at 300: ³Developing 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: ³It 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 µthing.¶ (* * *) 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.´;
j, at 283-284.
271
Thomas E. Holland,
? 
?? j
  , (1880, 1916), as in Noyes j, at
300.
272
Noyes, j, at 300, quoting Sir John W. Salmond, ³Jurisprudence,´ (1902, 1930), at
322.
 à 
ï
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
 
ï
which 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
³possessor´ 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.273 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  
ï
, if the prior owner knows about
the use and does not try to stop him. (In that case the constructive notice may loose its
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  
ï
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

273
„
j j
?  j?  
? 
? ? á j
? @
j ? „., 166 F.2d 971 (7th Cir.
1947).
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?

 
.!! c""#"
  +# #! .2

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.274 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: ³Just 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.´275 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: ³The only difference is, that, while possession denotes
the facts and connotes the consequence, property always, and contract with more
uncertainity and oscillation, denote the consequence and connote the facts.´276 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 ³pass by
descent or devise, es well by conveyance, and that they are taxed as well in some of
the States.´277 Nevertheless, in the center of his discussion, while considering the
possibility of possession of rights, Holmes concludes:

274
Article on TS
275
Holmes, j, at 169.
276
Holmes, j, 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.
277
Holmes, j, at 170.
 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 


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 
 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.278

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 ³things.´ 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.

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
  ï
 which was the basic element of the Roman
conception of the possession.

278
Holmes, j, 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: ³But
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.´ j, at 193.
 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 
,
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.

 
+(

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. ³Stable 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.´279 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 ³ideas´). 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 ³ideas´ because of
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 ³atomized´ rights into the property rights. ³Atomized´ rights are
particular rights during the process of their recognition - in intellectual property it
were particular systems as rights ï .

But if we go to the essential argument he is making we will be able to

compare it, as well as its ³secondary´ aspect, with the theory Posner builds to explain
relation between the property and the possession. Interpreting property under its

279
As in Prager, ³A History of...´, at 760.
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. ³Moreover, 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 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: ³A 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.´280

Modern authors propose that the requirement of the use would be

omitted from the definition as unnecessarily restraining. Other two requirements are
to be analyzed. The first, one that requires that trade secret provides ³an 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

280


 ? ?
 
§ 757  ? , (1939). The Supreme Court addopted the
definition in 
?j?„? ?@j  ?„ , 416 U.S. 470, 94 S.Ct. 1879, 40 L.Ed.2d 315
(1974).
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.281
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.282 The Supreme court of
Missouri found that: ³Ideas have been compared to 
 

, 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
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

281
á  William E. Hilton, ³What Sort of Improper Conduct Constitutes
Misappropriation of a Trade Secret,´ 30 Idea 287, (Vol.4, 1990), at 289: ³The 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 ³The subject matter of the trade secret must
be secret.´
282
á 
? ??@ 
?u?„, 202 S.W.2d 7, 356 Mo. 435, (1947). (Rehearing
denied.)?á also an article by Gerald Sobel, ³Preserving Trade Secret Protection,´ Patents,
Copyrights, Trademarks and Literary Property Course Handbook Series, Protecting Trade
Secrets, ( April 1, 1989).
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: ³According 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) *








   

 
 
 
 
 
  + (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.´283

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.
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.284 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

283
281 N.W.2d 419. (Emphasis added.) The court further refered to the following cases:
jj ? ? á 
? „ 
j , 377 F.2d 344, 346 (10th Cir. 1967);  ? ?  , 319
F.2d 812 (8th Cir. 1963); ? ? @j

? „
? ? á 
 ?  , 408 F.2d 1108 (8th
Cir. 1969); u
? ?

? „j
? „, 201 Kan. 326, 440 P.2d 640, 645 (1968); @

j?
„j

? ? ?@
 , 251 N.W.2d 220 (Iowa 1977).
284
Sobel, j, at provides further example: ³Courts have found that unsolicited ideas not
presented in a confidential manner are not protected. 
? ? j , 299 P.2d at 270 (µThe
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.¶)
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.285 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
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

285
Noyes, j, at .
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.286 In the theory of Roman property one of the
systematic distinctions divided all the rights in

   ï
ï 
and

  


. 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 (  (, which with emphyteusis, superficies and mortgage,
represented

 

. The term    is derived from the word   ,
meaning the service which the property object owned by one person had as the burden
for the benefit of the other person. 287 Several main principles are often used to
describe the servitudes:288

i á  


 
ï
 Active duty cannot
be imposed by the servitude on the owner of the
thing.
ii ,   
  . Nobody can have a servitude on his own
289
thing.

286
For the overview of the similarities between the two intellectual property doctrines

article by UUUUUUU, Idea,
287
á Burdick, j, at 355 for the differences between the common and Roman law:
³Servitudes, in Roman Law, include both our easements and profits `a prendre.´ He refers to

 ? ? 
, 6 App. Cas. 740 (1881).
288
Buckland, ??? 
?
? ? 

??
j j
, (1921), at 259-260:
289
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 ³In 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 ³experimental´ in the sense of the §
102(b). While the ³experimental use´ represents the equivalent to servitude, it is obvious that
 iii á     
ï
. Servitude on a servitude is
not possible. It is tied to the thing.
iv á    
. Servitude must be conducted in
a way most convenient to the owner of the thing,
causing as little inconvenience as possible.
v As a 
ï

 it could not be possessed. However, later
Roman law knew possibility of the ³quasi-
possession.´

Servitudes were in Roman law subject to numerous further

distinctions. Major one is the division on personal and praedial.290 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: ³[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.´291

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 ³burdens 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.´292 It

the joint owner does, and cannot have a servitude on his invention despite other owner¶s
right.
290
Burdick, j, at 371: ³both personal and real (preadial) servitudes are µreal 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.´
291
Burdick, j, at 356.
292
Burdick, j, at 355.
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 ³fair use.´

Personal servitudes are further divided in next four classes:   

(usufruct),   (use),


(habitation), and
ï
 
 (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 ³fair´ use on of the basic requirements for the
servitudes in general. If the servitude is not executed in a civil, or ³fair´ 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   , 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.293

³à   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: µjus
alienis rebus utendi fruendi salva rerum substantia.¶ In other words, the use must not
diminish the substance.´294 A usufruct, according to Burdick, may be created in both
movable and immovable property, in fact in everything except for the things which
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 ³in
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 ³the private house could not be used for a shop,´295 or that the ³buildings

293
Buckland, j, 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 j
and was claimed by

j? 
 j
.´ (Footnote omitted.)
294
Burdick, j, at 356. There pertinent reference is to the case by which the usufruct is
determined in the United States law, „
 j? ?„
 j, 18 Tex. 626, 628.
295
Burdick, j, at 358, citing Dig. 7, 1, 13, 8.
could not be erected or torn down´296 actually speak indirectly about the fact that the
use ought to be ³fair.´ 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 ³timber
estate´ where the trees were the source of the profits, but not the trees on ordinary
grounds.297 From this we would conclude that the origins of the doctrine were in
naturally reproducing organisms. Relying on Csanyi¶s theories ( 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

.298 The fact that
the minerals were also possible object of the usufruct is due to the apparent Roman
belief that the minerals also reproduce.299 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   , not to be thought of in physical terms, s  , and as
such a , 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 
 , it was not at first thought of as   in
the physical thing, a   , but simply as a  . 300

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   
 , '[i]t is a lesser right than that of usufructus since it is merely a right of user
without a right of fructus.´301 The right to take the produce of a thing includes usus,
but usus does not include the right to produce, according to Ulpian.302

296
Burdick, j, at 358, citing Dig. 7, 1, 13, 6.
297
Buckland, j, at 268, provides more examples, as well as the rules.
298
Buckland, j, at 268.
299
Buckland & McNair, 
?
??„ ?
? ?„
j
 ?j ?j , (1936),
j, at 101: ³In 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.´
300
Buckland & McNair, j, at 98.
301
Burdick, j, at 358, citing Dig. 7, 8, 1; Inst. 2,5, 1.
302
Burdick, j, at 358, citing Dig. 7, 8, 14, 1.
 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: ³unlike 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.´303 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:
³the 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...´304

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

   , the absolute owner of the ï 
  . 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

303
Buckland, j, at 270.
304
Noyes, j, at 316.
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 107305 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: ³The
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....306 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
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

305
§ 107. Limitations on exclusive rights: Fair Use
Notwithstanding 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.
306

? ?u

, 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
 j
.
could expropriate for any purpose.307 In later periods, they state, ³in 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 ï

 holding
practically permanently, but, technically, at will of the State.´308 We will use the
word ³expropriation¶ 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. ³We 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 µyes¶, 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.´309
Indeed so, as the language of the judicial opinions will indicate. ³All 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.´310
The scope of the objects within the reach of the Taking Clause does not seem to be
limited in any way. The Supreme Court found that: ³Once the object is within the

307
Buckland & McNair, j, at 72.
308
Buckland & McNair, j, at 73. For more details
?
.
309
John E. Cribbet,  j j
??   , (19ll), at 426.
310
@
? ? á


? á 
 ? ? „, 3 paige Ch. 45, 72-73 (N.Y. 1831),
later referred to as ³the true doctrine of the law´ in 
?j  ?@ j? ?j, 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: ³The Fifth Amendment to the Constitution says µnor 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.´  j? á

? ?
„


 329 U.S. 230, 241-242 (1946).
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.´311

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.312 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 ³as a
measure of justice.´313

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.

- 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
³shoprights´ 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
311
@ 
? ? 
 , 348 U.S. 26, 33 (1954). Between various construction objects,
transportation infrastructure, something as ³intangible´ as the hydroelectric power has been
taken;
?

 ? ?
 , 297 U.S. 288 (1936).
312
„j ??„j j
j? ?
  281 U.S. 439, 444 (1930),?@ 
? ?
 , 348 U.S. 26,
32 (1954).
313
 j?á

? ?„
, 337 U.S. 325, 332 (1949). @

? ? ?á ? j ??
„, 169 U.S. 557, 573, 575: ³When ... [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.´
federal level. Ther were several attempts to legislate in the field, by amending the part
II of title 35 U.S.C. with ³Limitations upon terms of an employee preinvention
assignment agreement.´314 Lack of popularity of such measures in the Congress is
slightly compensated by the enactment of the similar statutes in several states.315

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
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,

314
A Bill H.R. 3286, µ¶ § 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 µ¶§ 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.
315
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.
 or one of whom the government has issued a certain instrument, and who
in fact has made a patentable invention.316

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 ³the 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
(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.

316
Holmes, j, at 193.
 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 ri sk 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.317 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.

  #"

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
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

317
Mexican TM Code Art. #
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.
 CHAPTER FOUR

c




c c


 
$



 It is clearly not the purpose of the chapter four to establish another

dichotomy within understanding of the notion of 
 ï
ï . The

 is in no way opposed to the ï
ï  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.

 
".*+!!( !

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.318 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.319 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.320 Moment of the loss of secrecy is
the moment in which the ³possessor´ 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.

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
318
The Copyright Act of 1976, 17 U.S.C. §§ 101-810, as amended by Bern Convention
Implementation Act of 1988, effective March 1, 1989.
319
á 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.
320
á, , 
? j? „? ? @j  ? „ , 416 U.S. 470, 475 (1970); „

 ?
 
? „? ? „
j
, 594 F.2D 453, 461 (5th Cir. 1979), „
? ? @  , 453 F.2d 1006,
1009 (9th Cir. 1972); Restatement of Torts § 757, Comment b (1939).
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 ³mere´ registration of the right and of its object.321 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. 322 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
concept, , constitutive system, is showing the importance of the security provided
by early available protection. As the consequence, certain conceptual imprecision of

321
u 
?u? ?á j
, 407 F.2d 881, (C.C.P.A. 1969). In somewhat different
context Judge Rich stated that ³the 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.
322
The courts in the United States recognized this objective quite often. á , the
court in 

 ?  j
? „? ?  „ ?   ? 
?   746 F.2d 801 (Fed.Cir. 1984)
quoted amicus United States Trademark Association stating ³tramendous expenditures and
financial risks are involved in developing and introducing a new product on national scale´
and that it is ³common 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,



 (1987), at 40,
state: ³Occasionally 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.´ á? j
 ? „ ? ?  j
? j
 ? „?  , 215
U.S.P.Q. 471 (S.D. N.Y. 1981).
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.

 
+*""+( ." 

  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 ³word, 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.´323 The courts held, in connection with trade names,
that ³almost 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.´324 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: ³The 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.´325 The symbol is very often an
copyrightable work of art, as far as its graphical composition of lines, letters and
colors is concerned.326 Its function is to enable the public, potential consumers of the

323
Trademerk Act of 1946, as amended 15 U.S.C. §§ 1051-1127, (The Lanham Act §§
1-50). á section 1127. We will use words 

?
 to denote statutory terms
³tradename´ / ´commercial name,´ ³trademark,´ ³service mark,´ ³certification mark,´ and
³collective mark´ in the meaning ³any word, name, symbol, or device, or any combination
thereof.´ á same section for their respective definitions.
324
 j
?áj jj?„j
? ? ?  j
?
j
?á ?„  690 F.2d 791
(9th Cir. 1982). It was an action in common-law.
325
Callmann,  
j ?„j ?



?
?u j
, (4d Ed. 1983), § 78.1(a),
at 426.
326
Negative definition of a registrable mark is provided by 15 U.S.C. § 2(a)-(e).
Subsection (e) provides that ³nothing 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 ³acquisition of the secondary meaning.´
goods marked by the symbol to perceive the source or the pertaining goodwill.
Certain important United States cases described its function as ³to identify the origin
of ownership of the goods to which it is affixed.´327 Schekter is adding that ³[t]he
µorigin of ownership¶ so designated by a trademark must be the µï 

 origin or
ownership.¶´328 It was Mr. Justice Frankfurter who said that ³-. ï






& 


ï


 


. 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
 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 same²-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  
  
  
 
  can obtain legal redress.´
(Emphasis added.)329

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.330 The goodwill is the real object

327

  ?á
?ujj ?„? ?u
, 240 U.S. 403, (1916), at 412.
328
Frank I. Schechter, ³The Rational Basis of Trademark Protection,´ 40 Harvard Law
Review 813, 22 TM Bull 139, (1927), reprinted, 60 TMR 334 (1970). Schehter is refering to
„

? „? ? „
, 13 Wall. 311, 324 (U.S. 1871); @
j ? ? „
 j , 221 U.S. 580, 591
(1911).
329
uj



?  ? ?  ? u? „? ? áá?  
? „, 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.
330
Good will is´ [t]the favor which the management of business wins from the public.´
á 
??„? ?á, Ct.Cl., 42 F.2d 343, 344. ³It 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.´  ?
?
?u?„? ?
, 61N.Y. 226, 19 Am.Rep. 278;  ? ??@

??

, 161 App.Div. 69,
146 N.Y.S. 499, 501; j? ?
j 116 Va. 575, 82 S.E. 724, 726; ?

???
u ?   ? „? ? j

, 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 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 ³goodwill,´ 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.
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.331 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, ³conceived
and reduced to practice,´ or ³embodied 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 ³bad 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.

   .+ !+*""

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
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

331
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.
that ³incorporating´ in Latin means embodying.332 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.

 
!
+ %

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.

332
„ 
, meaning the body. á the language of the Supreme Court in the famous
case


??
?„? ? 
, 17 U.S. 518, 4 Wheat. 518, 4. L.Ed. 629
(1819), where a private corporation was analogized to ³a franchize, or incorporeal
hereditament founded upon private property.´
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.333 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: ³The 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.´334 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: ³[a]n alternative view of the trademark
right is that it is a form of property, similar in this respect to a copyright or patent
right.´335 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.
333
á , opinion of the Supreme Court quoted in footnote ('),
 .
334

?„
„
?„? ?@
 44 F.Supp. 405 (E.D.PA. 1942). The court cited for this
contention following cases: 
  ?á
?ujj ?„? ?u
? 240 U.S. 403 (1916); j?
 ?„? ?
 ?

?„ 248 U.S. 90;?„

?

?  
? ?@
u ?


? „ 296 F. 142;? 

? „? ?

j  ? 101 U.S. 51;„

? „? ?   ?
„j
? „ 40 App. D.C. 284. In 
  ? á
Justice Pitney stated: ³Common-law
trademarks, and the right to their exclusive use, are of course to be classed among property
rights.´ His are the similar words in 
j @  ?á?„? ? ?@ 
?„, 240 U.S.
251 (1916): ³The 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  j
? 
j? j
j ? „? ? j
j
?
j
j ? „, 135 F.2d 569 (7th Cir. 1943) where it was clearly stated that: ³[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 ³Restatement (Second)
of Torts,´ § 756, comment a at 136, (Tent.Draft No.8, 1963) held that: ³A 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. [* * *]
j? j
?    ?
?
j ? j? j
? 


? ?
? ? ?    ? j
? 


?

 ?j?j´ (Emphasis added.)

335
u

? ? „j
? „? ?  ? j?  
? u? „, 349 F.2d 389 (2d Cir.,
1965). Judge provide cites of the other cases in favor of the property theory of trademark right
including @
 ? ?áj
?„ 325 F.2d 580, 582 (1st Cir. 1963) and 
j @  ?á?
„? ? ?@ 
??„, 240 U.S. 251, 259, 36 S.Ct. 269, 272, 60 L.Ed. 629 (1916): ³The right
to use a trademark is recognized as a kind of property, of which the owner is entitled to the
 Further question arises regarding the use of the term ³owner,´ for
instance, as used in section one of the Lanham Act.336 Does the term ³owner,´ 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 ³property´ 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 ³personal 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
United States to be implemented under the Commerce clause.337 In that case
trademark regulation may be implemented under the patent and copyright clause as
the ³useful 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

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
„
jj ?? 
 ??  j ??  j
?



? ??á: ³In 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.´á also, John V. Ala, ³The New Trademark Law,´ 94 Case &
Comment No. 5, at , (1989): ³[t]rademarks are a form of property and, like the most other
forms of property, can be freely sold, assigned, or otherwise transferred.´
336
15 U.S.C. § 1051 provides that: [t]he   of a trademark used in commerce may
apply to register his or her trademark... . (Emphasis added.)
337
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.
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 ³limited 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,338 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
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

338
á, e.g., Reichman , ³Intellectual Property in International Trade: Opportunities and
Risks of GATT Connection,´ 22 Vanderbilt Journal of Transnational Law 747, (Vol. 4, 1989).
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. 339 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,  the
creation..

 
,#"+.
+ %*+*""

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 
 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
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

339
Mexican Ley de Inveciones y Marcas (Code on Inventions and Trademarks, 1976)
Section 93, in its first paragraph provides that ³the 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.
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.340 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
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 st ep

340
One of the leading cases on publicity right 

?? 
 ? ?

 , 513 F.Supp.
1339 (D.C. N.J. 1981) the court used the following definition of the right as: ³the 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
 Gordon, ³Right of Property in Name, Likeness,
Personality and History,´ 55 Nw. U.L.Rev. 553 (1960); Note, ³The Right of Publicity--
Protection for Public Figures and Celebrities,´ 42 Brooklyn L.Rev. 527 (1976); Note, ³Lugosi
v. universal Pictures: Descent of the Right of Publicity,´ 29 Hastings L.J. 751 (1978);
Comment, ³The Sescendibility of the Right of Publicity: Is There Commercial Life After
Death?´ 89 Yale L.J. 1125 (1980); Winner, ³Right of Identity: Right of Publicity and Protection
for a Trademark¶s µPersona,¶´ 71 T.M.R. 193 (1981); Ropski, ³Further 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).
towards the integral protection.341 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.342

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.343 Csanyi holds that algorithms are ³the interrelationships of components
within various organizational levels´ of a system.344A mathematical equation, as the
expression of such algorithm, may easily be understood as a symbol denoting the
meaning of the algorithm, , represents a certain ³model´ that is ³a part of
reality.´345 Csanyi considers the process of model construction as ³always a kind of
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.´346 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: ³Scientific
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

341
Jay Dratler, Jr., ³Trademark 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 á

„ [á

???„? ?áj?„, 376 U.S. 225 (1964), „?„ ?
?
@ j?j j ? , 376 U.S. 234 (1964)] and @ j?@

[@ j?@

? ?
  ?
„
? @

?   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.
342
A 

 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 ³Gaius,´ (1871), who concluded that all property consists of
rights only, and consequently, is entirely incorporeal.
343
á footnote (') in chapter three regarding Justice Frankfurter¶s opinion on words as
symbols, and footnotes ('') in chapter five regarding the definition of algorithm.
344
Csanyi, j, at 9.
345
Csanyi, j, at 2.
346
Csanyi, j, at 2.
but that make thinking about reality possible.´ 347 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 ³market´, 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
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.348

347
Csanyi, j, at 2. He provides us with an example: ³Newton in his famous µlaws¶ 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   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.´
348
It is interesting to note that in one of the leading cases on publicity right, 

? ?
 
 ? ? 

  513 F.Supp. 1339 (D.C. N.J. 1981), the court stressed the proprietary
nature of the publicity right in the following words: ³In 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
 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
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.

 
(#,,+

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

benefit.´ Another interesting issue regarding the publicity right is whether the legal persons
may develop ³persona´ in the sense private persons may. á? 

?  ?  ? ?  ?


j ?á? , 227 U.S.P.Q. 1018, 1022 (E.D. Pa. 1985), and McCarthy, ³The Right of
Publicity,´ (1987). According to B.W. Pattishal, D.C. Hilliard, ³Trademarks,´ (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).
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 ³invention is reduced to practice,´ or ³work 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 ³badwill´ 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.349 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.

  c+!
"#

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

349
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 ³source´
goodwill.
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
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 ³common´ 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, , intellectual property law, to its increasingly important
function of protection of central resources, , creation, we are witnessing a birth of a
new social concept of property, and its legal protection.350 We have to be aware that
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,

350
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 ³third 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:
³Just the most minute particle, for example, has been described for us, it seems to
dissappear, or at last to transfer its µtrue¶ existence to some other area of µreality¶ --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 interperet as µmatter¶ through our limited perceptions. We have come, since my childhood,
from the µknowledge¶ that we are chemically ninety-five percent water to the µcertainity¶ that
we are physically one hundred percent µempty¶ space. Richard Lippold, ³Illusion as Structure,´
from á  ?j ? ?
?áj , (ed. Gyorgy Kepes, 1965),  j ?in u ?„ ?
?

, at 215.
Csanyi contends, the societies reach certain level of the cultural evolution, and that is
when ³allopoietic cultural machines´351 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 ³third 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.´352

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 Snowflake353 . 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

351
„
? 
j  is defined inCsanyi in relation to Mumford¶s concept of ³living
machines.´ ³The ³machine¶ 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.´ , at
157. Csanyi further presents Polanyi¶s conception of machine as ³every 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.´  Further Csanyi distinguishes machines as
jj, being those
whose product is j
, and
jj , which are those whose product is something else. ?
352
Csanyi, j, at 198.
353
It is named after Helge von Koch, a Swedish mathematician who described it first in
1904.
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law as ³law of freedom.´356 It is because all law, by the entire multitude of its
instruments serves this purpose. In that context property is protecting one aspect of

, or 
. 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 
. 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
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.357 However, this quality is not qualitatively different from
other forms of expression of reality. In other words, whichever code we may use to

356
We find support for this view in the decision of the United States Supreme Court
stated in  ? ?
?j
?„ , 405 U.S. 538, 552 (1971), that ³the 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, j, footnote 11, together with the
references, among others, to Stewart J. Charles Reich, ³The New property,´ 73 Yale Law
Journal 733, (1963-1964), and B. Ackerman, ³Private Property and the Constitution,´ (1977).
357
Vilmos Csanyi, ? 
?
 ??j?uj ?
?„ , (1989), at 2-3: ³Usually,
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.´
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.358

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
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, , 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

358
Gleick, j, 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.´
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 ³[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.´359

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.360 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 ³artistic´ message

359
McLuhan, j, at 71. He also said: ³No 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
 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
reckon by the ability to recognize it for what it is.´ , at 70. It was Wyndham Lewis who said:
³The 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 ('),j, at 70.
360
For an excellent study of the relation between the scientific comprehension of the
reality and its artistic  
,
 Sidney J. Blatt, in collaboration with Ethel S. Blatt,
„ j j ?
?„
?j ? ?
?  ??u
?? 
 
j , (1984). At 94-
97 is a table in which the author provides an chronological overview of the individual and
cultural development.  j j
?   consists of „ 
??

 and „ ??

; while „
?   consists of the periodizations of the periods of the j
 ?
?
, prevailing scientific construction as the „
j
?  ?j and of the „ ??
á
j .
was ³scientifically´ 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.361

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.362 It may sound banal, but the
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.363 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
361
Goethe, regarded most often as an artist, did not hesitate to pursue into the
exploration of the environment. Two of his treatises, ³Theory of Colors,´ and ³On the
Transformation of Plants´ in their para-scientific approact to the matter did influence modern
physicists. á Gleick, j, at 197.
362
??In an article by Rebecca Nemser, entiteled appropriately ³A different way of seeing,´
³Boston Phoenix,´ March 2, 1990, John Coplans, artist and critic, author of ³Serial Imagery,´
said regarding the Monet¶s exhibition at the Museum of Fine Arts: ³Why 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 

.
Monet is about fast perception of the change of light, how it changes as you look. Monet¶s
paintings are as much about  j 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 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: ³The
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.´
363
Michael Mazur, artist and a teacher at Harvard, in the same article outlined this effect
of removal of the time and space boundry: ³With Monet, no matter how many times you á
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
 . And when you are in front of that painting,  ? . (Italics in original.) ?
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: ³Poincare, 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.´364

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. 365

Above everybody, Albert Einstein whose mathematically expressed

message of the relation between space and time Picasso painted.366 The relation of

364
Gleick, j, at 46. It was Poincare who have said ³I know it must be right, so why
should I prove it?´ Such a statement, we believe is paradigmatic for the ³science after
science,´ j, at 88, as it stands today. The ³idiotism 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; ³After 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, j, at 20. Aside McLuhan¶s sometimes not easy penetrable lingo, the expression
³global 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.
365
? Baudelaire, 
?? j?
366
??For more on the development of the history of art in the last century and the events
that preceeded,
 Blatt, j, ch. 5, at 290-363, entitled ³From linear Perspective to
Conceptual Art: Impressionism, Cubism, and Modern Art.'
the space and the time is relative.367 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.
Beckett wrote ³Waiting for Godot,´ showing how one space relates to infinite time, as
consequence by losing its recognizability as 
 .Piet Mondiran wrote: ³Both science
and art are discovering and making us aware of the fact that  
 ï


 

, an evolution from the individual towards the universal, of the
subjective towards the objective, towards the essence of thing and ourselves.´368

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 µautomatic¶ thinking. By the way of

367
Lippold, j, u ?„ , at 215. ³[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
µtraveled¶ at the speed of light.. Or their movement in space, which we now µknow¶ is infinite
and endless, would imply that they really are going nowhere, because there is no µwhere.¶ We
can no longer ask µwhere¶ or µwhen.¶ (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 µwhere¶ he is or µwhen¶ he is, can we even ask µwhat¶ 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: ³But 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 µLaws of Chance,¶ of the scientist approximates with his µSecond Law
of Thermodynamics.¶ The wildest of neo-Dada µhappenings¶ can be as carefully calculated
and reconstructed as a master plan for the sewers of New York City. In fact, since there is no
µtime¶ and µspace,¶
 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.
368
Mondrian, j, at
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 ³programing´ was strong. When the new music appeared cultural
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.369 Any music in history is but the code,

369
Roger Sessions, ³The Listener,´ from ³The Musical Expirience of Composer,
Performer, Listener,´ (1950),  j  in u ? „ ?
? ? 
, at 126. Sessions, in
trying to grasp the notion of the ³musical understanding´ offers following: ³The 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 ³[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. „ has been definedUUUU Linguists have been interpreting language as the code. In
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.

These changes require efficient laws which will regulate the new
relations emerging in post industrial societies. Peter Dormer says that: ³[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.´370 å
 Sapir, Worf

 
# ,c+

For Csanyi history of the development of the languages and the history
of production of artifacts are inseparable.371 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   

 by which
the mind of the toolmaker is able to separate different shapes, the other serving as the

that sense music, as being code, is nothing else than a specific ³language,´ through which we
may express certain feelings, thoughts, or both.
370
Peter Dormer,
?
j 
??u ?
j ??


??
  ?j
?„  
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, (u ?j??
 
, botany), Ian McEwan,
? „j?  ?
j, mathematics, physics), Tom Stoppard, (
, small particle physics)
and John Updike, ( 
?j
j ).
371
Csanyi, j, at 176, ?
 He is stating that ³[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.´
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 ³first
unquestionably cultural idea.372 Csanyi, referring to Vertes, Marshak, Schwartz and
Skoflek, further states that ³first 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 ³[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.´373 

THE EXHAUSTION OF RIGHTS

 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 ³exhaustion doctrine´ as a
specific version of the ³first 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.374 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
372
G.L. Isaac, ³Stages 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.)  jj
?
?  j ? ? 

?
? á, Ann. N.Y. Acad. Sci.
280:131-142.
373
Csanyi, j, at 177.
374
á? , B.I. Cawthra, 
 ? j
j ? j ?  , (1978), at 86 ?
 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 ³should 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,
³by 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.
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 ³materialize.´
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 ³a built-in sunset´ of
intellectual property.375 Other authors - But the perishable nature of the right over the
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 ³Billy 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 ³black hole´ of the premature ejection in the public domain. It is

375
Hughes, j, at 296. ³Perhaps 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 
j of intellectual property rights and improves the fit between
these laws and the theories by which they can be justified.´ (Emphasis in original.) „

Hughes¶ suggestion on social neutrality of intellectual property to our suggestion that power
acquired through creativity is inherently democratic in nature.
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 ³black hole´ of intellectual property, or a ³built-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 ³
 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 ³aspirin,´376 ³cellophane,´ or ³thermos.´377
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
trademarks ³Xerox®,´ ³Singer®,´378 ³Kleenex®,´ or ³Band-Aid®.´ We will quote
entire part in which Hughes suggest that a process of ³depropertization´ 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 ³public idea.´ but it is
hardly a self-evident reason why it   be public. Yet widespread use of
something, like columns and vaulted ceilings, has another effect: it makes
a particular idea
ïï
to be basic truth or process.[* * *]
In short, some ideas become ³depropertized.´ 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 ³enough
and as good´ if the rights to the idea continue to be privately held.´379

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 ³Billy Jean,´ to a piece of the computer software, which may be
a game called ³Tetris,´ at the certain point turn in the independent entities in the

376
@  ?„? ? j? ?„, 272 F. 505 (S.D. N.Y. 1921).
377
j á ?
 
?„? ? 
j ? 
 j
? , 321 F.2d 577 (2d Cir. 1963).
378
áj  ?u?„? ? ?u?„, 163 U.S. 169 (1986).
379
Hughes, j, at 320. For distinctionbetween the categories of extraordinary ideas

our footnote ('),

?j 
.
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.380 Specially so long as
the important part of the protection, which does not expire at all in most of the
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

380
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.
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: ³It 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.´381 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

381
Hyde, j, 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: ³The 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 µworth¶ to refer to those things
we prize and yet say µyou 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: ³Because 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,
 the following pages.
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: ³If 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.´382 It is easy for us to conceive
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 ³work 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

382
Hyde, j, at 62.
 sale of a necessity to a friend). '

-trade draws the boundary, 
trade
erases it.383

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,
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.384 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

383
Hyde, j, at 61.
384
For an excellent overview of the development of commodity exchange
 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.
the gift exchange.385 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
(µpure,¶ µbasic¶) research, and they are less well remunerated. Those who hire out the
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.´386 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  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. µAcademic 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.387

385
Hyde, j, at 78: ³Scientists 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 µ³work for hire¶; he is paid µfee 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.´
386
Hyde, j, at 81. In the pertinent footnote Hyde cites Hagstrom: ³Industrial 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.´
387
Hyde, j, at 82-83.
 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 ³Essay 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. ³On the one hand, it seems correct to see the felt bond of gift exchange -
µthe obligation to return¶ - as an archaic form of the legal  . 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 µtotal 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.´388 Hyde follows Mauss into an
examination of Roman law. Mauss noticed that early Roman law did not distinguish
the legal concepts of ³thing´ and ³person´ (  and ï 

), but conceived them
simply the parts of a ³hausehold´ (

). 389 That leads Hyde into the critique of the
social role of law in modern Western societies:

But just as the Roman saw the


  
 res and
ï 

, 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.390

388
Hyde, j, at 86.
389
Hyde, j, at 86.Hyde acknowledges that the later Roman law increasingly
distinguished the two, and cites Mauss saying that in so doing it ³passed 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: ³This
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.´
390
Hyde, j, at 88.
 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.391

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 

which springs up from the formalistic
interpretation of the contracts by early common law court. 

, 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.392 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 ³peppercorn of consideration´ will suffice. Dawson cites Wright and Ashley as
proposing the abandonment of the doctrine in the American law.393 In his words ³[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¶ ³invention´ of the old English idea unecesarilly complicated the
American law. Finally, his opinion is that the concept of consideration is ultimately

391
John P.Dawson, ? j
?
?  j

? „ j  
?
?  j
? 
? ? „
,
(1980), at vii.
392
Dawson, j, 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.
393
Dawson, j, at 197. There he also quotes Rodell as characterizing the consideration
as ³enormous and shapeless grab-bag,´ and Havighurst which calls it ³primitive´ (after Sharp),
and ³uncouth.´
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.394

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.

  !
,,

 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
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.

394
Dawson, j, at 230: ³This 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.´
 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 ³kitch,´ the
ultimate substitute for artistic creativity.395 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 ³high culture´ to
relate to a marketing of itself, critically examines Perreault µs 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 
. 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

395
_ 
 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 µart¶ that is in museums and µart¶ 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 µart¶
objects, is a useful strategy in the marketing of design as high design. 396

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
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

396
Dormer, j, at 141.
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.397

That is possible because of the nature of the  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-
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.

  ."!c , 

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-

397
Lewis Hyde,
?j?
j
j ?
?? j?j??   , (1979, 1983), at 21.
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.398
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: ³Today¶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
wonder that architecture now is light in weight and lightweight: light visually, light
phisycally and light intellectually.´399

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,

398
á our footnote (').
399
Paul Goldberger, ³After Opulence, a New µLite¶ 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 ³lite´ architecture as ³the 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.
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.400 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 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.401

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
³anything 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

400
It was again Mondrian, j, at 52-53, who in analyzing the role of the art noted: ³The
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 µseeing.¶ In the
art the search for a content which is collectively understandable is false; the content is always
individual.´
401
á, e.g., ³Legislators 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 ³Officials 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: ³It 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.´
an unquenchable thirst for the creation, , information from abroad, as well as
sprung up domestic response to creation of the information not imported.402 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.403

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
³black,´ as oposed to ³white´ 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

402
Peter Dormer,
?u
j 
???u ?
j ?


??
  j
??„  ,
1990, at 34, supports our conclusion, nontheless recognizing all of the disadvantages and
limitations of the creative activity in socialist societies: ³Centralist 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.´
403
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 characterizes the game, j, 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.
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 ³Beehive´--) 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 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.404 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 ³independent,´ or ³alternative´ 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
³Sonic 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 creat ivity.
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

404
During the week while I was writing this portion of the text it was announced on the
ABC¶s ³Entertainment 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.
do gain popularity in the countries which are able to read their information, never
became popular at home.

Because of the high entropy405 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.406 Even the American authors sometime realize how dramatic is the
impact of the denial of the protection of moral rights: ³The 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.´407 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.

405
Shannon & Weaver, j, at 12-13. The measure of the quantity of the information,
information meaning the freedom of choice.
406
Related are also theh rules regulating the ³work for hire,´ 17 U.S.C. § lll, 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 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.
407
Susan L. Solomon, ³Monty Python and the Lanham Act: In Search of the Moral
Right,´ 30 Rutgers Law Review 452, (1977), at 477.



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

 (in the sense of first embodiment, not as the
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 
ï
, meaning plenty. English law
distinguished the verb to copy, from the noun the copy as the rights ³to copy´ and
³the 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.408 

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

408
English case 
? ?@
 , 4 H.L.C 815, (1854), opinion of Baron Parke.
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 ³actual time-space
relationship of the system¶s components,´ and the characteristic of ³the biological
system¶s structures that in the course of time they are assembled and decomposed,´
Csanyi focuses on replication, as ³the type of organization that characterizes the
biosocial system,´ which he distinguishes as either ³self-maintanance,´ or
³reproduction.´409 After the necessary distinctions are drawn, Csanyi procedes to
explain the essential position of copying, mentioning the access to information as a
necessary prerequisite.

³Therefore, 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 ï ï


 
 
  
ï, 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. $
 
 
  
 


 ï







ïï
.
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.´410 (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
³bio-social,´ , global system. Accordingly when giving on outline of cultural
evolution, 411 emphasizing the utmost importance of the role of the ³linguistic models
of reality,´ he baldly states that ³[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 ï

, that is, propagation of the concept

409
Csanyi, j, at 6-8.
410
, at 8.
411
, the chapter on ³Cultural Evolution,´ at 148-189. For the definiton of the term
 ? j , and its place in the cultural anthropology, á pages 148-150.
components in a physical sense. As a consequence, the evolution of concepts is no
longer restricted by an individual¶s life span.´412 Kaplan indirectly responds when he
states that ³[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.´413 When more specific, in the context of the social activity whose results
are the object of the intellectual property protection, he holds that ³[t]he most
common process of design is 
ï. 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
examples are earliest automobiles, which resemble the mail coach in most of their
details, because designers copied the mail coach.´414

 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, 415 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 ³the real purpose´. The one because of which ³the real purpose´ was

412
, at 165. (Emphasis in original.) Hyde, j, at 112 discusses Aristotle¶s opinion on
money interests from his jj
. He cites Aristotle saying: ³And this term interest [
,
µoffspring¶], which means the birth of money from money, is applied to the breeding of money
because the offspring resembles the parent.´
413
Abraham Kaplan, ³The Aesthetics of the Popular Arts,´ ³Journal of Aesthetics´ (Spring
1966),  j  in ³Modern Culture,´ at 69.
414
, at 162.(Emphasis in original.)
415
For the Duerer litigations
 Bowker, j, 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.
established in the first place. To bring general benefits to the public. 416 It was
recognized through the creation of the ³fair 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 ³progress´ is in entirety fueled by the creativity based on the
creative permutation of imitation. One may try to be witty and ask whether
³copyright´ 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
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
á
/
ï
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

416
? j? „ ? ? 
, 286 U.S. 123, at 127, 52 S.Ct. 546 (1932).³The 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.´
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 
ï
Justice Black stated one objective as: ³to
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 á
/
ï
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.417 Finally, á
/
ï
 court did one mistake under our interpretation of
the permissibility of copying, and rightfully deserved criticism for doing this. The
obvious wrong of ³reaping 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.418 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

417
á
 ? „
 ? „? ? „

?  ? „
 ? „, 353 F.2d 641 (7th Cir. 1965).
Specially so in  ? ?á

?„
j
?  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,
 opinions of Judge Rich, first as the dissent in  ? ? u ? 
j? j ?
„ , 328 F.2d 295 (C.C.P.A. 1964), and as matured into the law making opinion  ? ?
  ? 
 j?  
?  , 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.
418
It is challenging to consider that the decision of the court in the 
 ?u
?
? ?  ? j 


?  ,? 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).
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.

 

  ! 

" c# !  c""#" 
*    .  (# 
# !  + (  
) "!
*   
&&c
+  

Two cases decided by the Supreme Court of the United States

represent the two opposite poles of the irrreconcilable interests which any intellectual
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
! 


 , á   

 *  419 and á
  à 
 
á 
420 Before we start analyzing each of them, let us briefly explain how do we
see the difference between the two. !,á 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
  property shelter to the ³owner´ 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 @

, 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 !,á was both
public and commercial, while the use in @

 was private and non-commercial.

419
 
j
?

?á j? ?

j
? 

, 248 U.S. 215 (1918). We will refer to
it as 
á, as it is commonly known.
420
á ?„ ??  j
? ? j 

?„j ?áj
? , 464 U.S. 417, 104 S.Ct. 774,
L.Ed. 2d 574 (1984).We will refer to it as @

, as it is commonly known.
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.

c


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
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 ³time-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.

? ?
!

It is important to understand that doctrine of the fair use relates to the

all of the rights that constitute a ³bundle 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 ³equitable´ 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

³fair 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 ³fair´ 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: ³[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 µScience and useful Arts.¶´421
In our opinion the encouragement of the individual effort is not achieved only through
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


) á in reasoning its opinion in @

 case which was actually reversed
on appeal. ³Despite what is said by some of the authorities that the author¶s interest in
securing an economic reward for his labors is a ³secondary consideration,´ 


 
ï ï

 
ï 
 

 

,
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 ³will not impose unacceptable costs to society in terms of limiting
access to published works or pricing them too high.´422 (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

421
u
 ? ?áj , 347 U.S. 201, 219 (1954).
422
 j 

?„j ?áj
? ? ?á ?„ ??  j
, 659 F.2d 963 (1981).
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
 social system containing self-
interested actors. Even without governmental assistance, individual
innovators will do their utmost to create a regime that rewards creativity;
the only question is whether the results will be better or worse than the
governmental alternative. (Emphasis in original, footnote omitted.)423

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.424
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: ³The
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.

423
Suchman, j, at 1290-1291.
424
Robert Christgau, in his article on the future of the pop music in the coming nineties
³Rockism Faces the World³ in the Village Voice, January 2, 1990 concluded that in the
eighties: ³[r]ock was mere music no longer. Reconcieved as intellectual property, it was a
form of capital itself,´ and further ³When art is intellectual property, image and aura subsume
aesthetic substance, whatever exactly that is; when art is capital, sales are intrinsic to
aesthetic quality.´
[* * *] Under the assumptions of exchange trade, property is plagued by entropy and
wealth become scarce even as it increases.´425

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
³the 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.

426
å
  That is basically what @

 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 107427 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: ³The
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
425
Hyde, j., at 22 and 23.
426
á ?„ ??  j
? ? j 

?„j ?áj
? , 464 U.S. 417, 104 S.Ct. 774,
L.Ed. 2d 574, (1984).
427
§ 107. Limitations on exclusive rights: Fair Use
Notwithstanding 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.
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....428 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
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 ³reproduction
in copies or phonorecords´ in plural, not recognizing that the modern needs of
copying are fulfilled by individual copying for individuals. The essence of ³the
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 interest429 inevitably

428

? ?u

, 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
 j
.
429
Leaffer, § 10.11 [C], at 306, commenting jj

?? jj
?„? ? j?á

487
F.2d 1345 (1973),
? ?
?
 ?j j?„ , 420 U.S. 376: ³The 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.)
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
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.430 Here, we have essentially different situation
in which the court is inferring the ³factual´ 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
³the 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 @


 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: ³The 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.´

 
+#." 

430
u
j ?j 

?„? ?áj
, 171 N.Y. 384, 64 N.E. 163 (1902). The court stated:
³But 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,...´
 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
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 @

 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.431 The remuneration is sufficient to achieve goal of progress by the
means of the ³incentive,´ and need of society to copy for individual purpose,
whichever it may be, is recognized. Intuitively, one may say, but @

 case
protects these interests by the law, anyhow. However, ³the 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.

431
Christgau notices this phenomenon in the mentioned article and concludes:
³Technology 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.

CHAPTER FIVE

c

(

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.432 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.

  ," !

  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. ³Although 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; 
ï 
 ï




  

ï
´.´433 (Emphasis added.) It is possible to find different
approaches in understanding relation between copyrights and patents. For instance, in
discussing the ³duplication´ in the context of the doctrine of ³fair use´ in copyright,
another commentator concludes that the fair use ³is 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.´434 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.

432
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. ³The Random House Dictionary of the English
Language´, Sec.Ed., (1987).
433?
Stanley Rothenberg, 
? j ??j
 ? ?
?u
j, (1960), at 3-4.
434
Leon H. Amdur, „ j?
?
?
j, (1936), at 754-755.
 
&"

The Supreme Court, discussing the apportionment of profits regarding

the determination of the damages on the appeal in á
  
  
435
found that ³[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: ³[w]e
see no reason why these principles should not be applied in copyright cases.´436

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 thirties 437, this time in the copyright licensing case
examined, which ended in dispute over the tax issues lead the Court into the
following comparison: ³[a] copyright, like a patent, is µat 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: ³[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

438
Court case 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
always was analogy upheld. The Court held for the appellee avoiding to compare the
rights over the creation under the following explanation: ³[w]e may say in passing,

435
á ? ?u  ?j 
?„ 
j ??
., 309 U.S. 390, 402. In 
j ?
u? „? ? u
? 
? „, 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 
j @  ?á?„? ? ?@ 
??„, 240 U.S. 251, 36 S.Ct. 269, 60
L.Ed. 629, that ³[t]he procedure is analogous to that in patent cases.´
436
., at 405.
437
?j?„ 
j ? ?
??
 286 U.S.123, at 127, 131, 76 L.Ed. 1010, at
1016, (1932).
438
@
u j?„? ?á

 210 U.S. 339, at 345, 52 L.Ed. 1086, at 1091, (1908).
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 @

.439
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.440 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 ³the copyright case of the century´ the Supreme court said: ³[t]he
closest analogy is provided by the patent law cases...´441 Professor Leaffer writes:
³For thorough understanding of copyright law, one should be able to place it into the
439
á footnote (') ,

, at .
440
á 35 U.S.C. § 271.
441
á ?„ ??  j
? ? j 

?„j ?áj
?  464 U.S. 417, 104 S.Ct. 774,
L.Ed. 2d 574 (1984).
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.´442 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 ³goal´ 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.

³All 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).´443 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.

  ( "'*#c""#"

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. 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.

442
Marshall A. Leaffer,  

j ?„ j?
, (1989), § 1.8, at 14.
443
, § 1.8. The determination the content of intellectual property right as the
information was discussed in previous chapters.

 One of typical examples of such would be the analogy between the
444
³first sale´ copyright doctrine and ³reverse 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 2
  #
. The issue was not discussed thoroughly as the
plaintiff abandoned its misappropriation claims on the appeal.445

 Another such analogy helpful for understanding internal relations in
intellectual property is the issue of rejection of moral rights doctrine under common
law systems.446 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 ³paternity
right´, the unalienable right of the author to be acknowledged as one447 . 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 ³integrity right´, moral right to control
mutilation and adaption of a work of authorship given to its author. It also
corresponds to the exclusive right to ³do and to authorize [* * *] derivative works´448
granted to the copyright owner, in a measure as that right corresponds to the ³integrity
right´.

444
á 17 U.S.C. § 109 (1976).
445

? „ ? ? 
j? á
? ? 847 F.2d 255, 57 U.S.L.W. 2016, 1988
Copr.L.Dec. P 26,293 7 U.S.P.Q.2d 1281 , 
?„ ? ?
j?á
??655 F.Supp.
750, 55 U.S.L.W. 2494, 1987 Copr.L.Dec. P 26,103, 2 U.S.P.Q.2d 1407.
446
Article 6 bis(1) of the Berne Convention: ³Independently 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.´
447
Some continental system recognize such inventors rights explicitly as moral rights,
á . 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.
448
See 17 U.S.C. § 106(2).
 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.449 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 ³fair use´ is to be found both in copyright and trademark law. However, the
content of the doctrines is entirely different. The ³fair,´ or ³permitted use´ doctrine in
the trademark law ³[i]n essence, [* * *] prevents a trademark registrant from

ïï
ï 

  ï   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.´450 The doctrine, as defined by the Fifth
Circuit, is clearly corresponding to the ³merger´ doctrine in copyright, and the name

449
This similarity was pointed out by professors Marcus Hurn and Hugh Gibbons of the
Franklin Pierce Law Center, in their lecture ³Rethinking Similarity: Conceptual Problems
Underlying the Doctrine of Equivalents in Patent Law and µLook and Feel¶ Cases in
Copyright,´ held on January 16, 1990 as the part of the program of ³Patenting Software´
Conference, on Massachusetts Institute of Technology.
450



j
? ? ?
?  ?á
? , 698 F.2d 786 (5th Cir. 1983), citing
á? ? ?á?j??„ 617 F.2d 1178, at 1185. The court also refers to 1 J. McCarthy,
³Trademarks and Unfair Competition,´ § 11.17, (1973), at 379. á also j

j ?„ ?
?  j
? ? ? ?„, 429 F.2d 1079 (2d Cir. 1970). Interesting question is whether
another ³permitted use´ case, áj? „j ? ?  
 j? „ j ? 
j

 
?
@


? ? 
 
? 
 ? á 
?   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 ³Anti-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 ³likelihood 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 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 ³likelihood 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.
³fair 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.

 
#!


  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
subject matter,451 novelty, 452 usefulness,453 and non-obviousness454 are not

451
á 35 U.S.C. § 101 (1982).
452
á 35 U.S.C. § 102(a) (1982).
453
á 35 U.S.C. § 101 (1982).
454
á 35 U.S.C. § 103 (1982). We have discussed inappropriateness of the standard of
the ³flash 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 ³Escaping 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: ³[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
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 ³utility´455. Talking about said statutory requirement
Judge Rich expressed the distinction in !  @  as ³the questions of whether a
particular invention is 
 or   are questions wholly apart from whether the
invention falls into a category of 
 
 

 .´456 (Emphasis in original.)
he also said that: ³[t]he requirements of novelty, utility, and non-obviousness are not,
as the good judge said, µthe statutory definition of invention¶¶; they are the statutory
prerequisites to ï


 
. There is always an invention.´457
(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.458 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.
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

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.´
455
Donald S. Chisum, „j
? ?
 
, (1988), §§ 4.01 
?
456
 ? ?@  ??„

?
?u
j? 596 F.2d 952, at 960-961 (C.C.P.A. 1979).
457
Rich, j, at 302. He concludes the article by proposing: ³Let¶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.
458
Fritz Machlup, ³An Economic Review of the Patent System,´ Study No. 15, S.
Res.236, (1958), at 14 and 24.
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.

  (
34! "! ,"

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 Act459 will be copyright issues brought up
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

459
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, j, at 303, quoting Robert,
?
??

u
?u

, (1947) at
186-188, point out that ³[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 µappelations 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 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.
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.460 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 
  @ case.461 In addition to
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).462 The mutilated version was found to constitute a false

460
á? Nimmer, j, § 8.21. á also Leonard D. DuBoff and Sally Holt Caplan, ³The
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 ?
 (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 ?
 (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: ³Legislation 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,´ j?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.
461
jj
? ?  j
?@ 


j ?„
j
? , 538 F.2d 14 (2nd Cir.1976). á
Joseph P. Bauer, ³A Federal Law of Unfair Competition: What Should be the Reach of
Section 43(a) of the Lanham Act,´ 31 UCLA Law Review 671, (1984), at 693-694. Comment,
³Moral Right for Artists Under the Lanham Act: Gilliam v. American Broadcasting Cos.,´ 18
William and Mary Law Review 595, (1977); Susan L. Solomon, ³µMonthy Python¶ and the
Lanham Act: In Search for Moral Right,´ 30 Rutgers Law Review 452, (1977).
462
In the very conclusion of the opinion the court expressly stated: ³We 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.
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 "
    
 ! 


 *  !
established the pattern which 
 followed, but with the different outcome.463
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 
 case were different
regarding the right to ³re-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 51464 , and the paternity right under federal
Trademark Act, section 43(a). Interesting pattern of the legal reasoning is the
translation of the violation of the author¶s integrity right, , 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, , 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

463

 ? ?  j
? 
j
?j 
, 330 F.Supp. 274 (S.D. N.Y. 1971).
464
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, j, 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 additional clause of the section explicitly provides
that ³nothing 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 

? ?„
j? 
, 279 F.Supp.
582 (S.D.N.Y. 1975),  jj
?j
 j ?

? ? ??  
?393 F.2d 91 (2d Cir.
1968) in interpreting § 51 referred to  ? ? „j
? @ 


j ? á
?  , 29
Misc.2d 394, 214 N.Y.S.2d 752 (N.Y.Co.Sup.Ct.1961), and to  ? ? 
?  
?  ,
76 N.Y.S.2d 133 (Sup.Ct.1947).
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
³re-editing´465 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,
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 ›
, 
'
 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.466 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,

465
The court in 
 said: ³There 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 ³re-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.
466
? ?
?  j
?j
? , 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.
one line of the claim was related to the section 51 of the Civil Rights Act. 467
However, the court addressed the issue brought up under the section 43(a), as the
³key 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.

Finally, the similar cases which were misleading regarding the

statement on the cover of the record. In @
 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. 468 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.

467
The court refereed to: @ 
? ? @ 
áj ? 
?   123 N.Y.S.2d 872
(N.Y.Co.Sup.Ct.1953); uj
? ?á

???„, 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);  ? ? „j
? @ 


j ? á
, 25 Misc.2d
129, 205 N.Y.S.2d 661 (N.Y.Co.Sup.Ct.1960); á

 j? ?
 j? „  ? j?
„ , 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 j
? ?
, 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  ? ? „j
? @ 


j ? á
?  , 29 Misc.2d 394, 214 N.Y.S.2d 752
(N.Y.Co.Sup.Ct.1961), and j? ?
j ? , 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 j
j ? ? 
j
?  
?  , 17 Misc.2d 1034,
1035, 155 N.Y.S.2d 171 (N.Y.Co.Sup.Ct.1956) citing the following: ³µ ?    ? 

?
?
   ? j? j ? j
?   
 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 µThe Gentlemen of
16 July.¶´ (Emphasis added.)
468
Following cases provided by Bauer, although related also to the copyright issues, are
in our opinion publicity right and trademark cases: @
 ? ? 
? j  ?  ? á

?
„ , 452 F.Supp. 516 (S.D.N.Y. 1978);„j
? @ 


j ? á

? ? á j 
??
 
j
? 
 429 F.Supp. 563 (S.D.N.Y. 1976); j? ?„ ?„ , 390 F.Supp. 530
(S.D.N.Y. 1975);

? ? „
j?  
, 279 F.Supp. 582 (S.D.N.Y. 1975),  jj
?
j
 j ?

? ? ??  
??393 F.2d 91 (2d Cir. 1968).
 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 ³likeness´
is involved. ', 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.469

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.470 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
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.471 Although the

469
Bauer,?j, at 693. Bauer provides us with an example;?? 
j
? ?
, 499
F.Supp. 791, 792 (E.D. Wis. 1980).
470
„u?

?„? ?
335 F.Supp.189 (N.D.TX., 1973), and á

? ?
? ?
?  j
? 


?  , 188 F.Supp.255, (S.D.N.Y., 1960), 
 ? 
?  ? ?



?

 ? , --- › ----, WL 128504 (9th Cir. 1989).
471
It seems as the courts felt necessary to address that issue. The court in 

,

footnote ('),

, stated: ³Although 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, µFederal 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 ,

footnote ('),

, contended that:³Section 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,  j
?? 
?„ ? ?
 ??
 , 577
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
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
    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

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.
protection in the first place, rather than deeper concerns on the unpatentability of the
software as subject matter.472

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
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.473

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.474 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 ³writings´ and ³authors´ under the
Constitution would broaden the protection to the point that it may become general

472
Gregory J. Meier, ³Software 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 ³had its origins in
bureaucratic concerns over workload, rather than in careful theoretical analysis.´ Reichman,
j, footnote ('), at 11, calls it ³the foolish decision of the United States Patent and
Trademark Office.´ But not all of the software ³inventors´ do share relief that PTO started
granting patents to their creations. The group called ³Professors against Software Patents´
distributed on the mentioned Conference on Patent protection for Software, held on MIT,
January 16, 1990 a leaflet that stated: ³The 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.
473
Pamela Samuelson³The 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 ³look
and feel´ of computer programs: Russo & Derwin, ³Copyright in the µLook and Feel¶ of
Computer Software,´ 2 Computer Lawyer 1 (February 1985), Daniel J. Kluth and Steven W.
Lundberg, ³Design patents: A new Form of Intellectual Property Protection for Computer
Software,´ 5 The Computer Lawyer 1 (August 1988),  j  in Journal of Patent and
Trademark Office Society 847 (December 1988), and Ronald Abramson, ³µLook and Feel¶ of
computer Software,´ 95 Case and Comment 3, (No. 1 1990).
474?
CONTU Final Report, (1979), at 12, also Pub. L.No. 96-517, § 10, 94 Stat.3015,
3028.
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: ³Neither Hershey¶s nor
Nimmer¶s approach was adopted, and all manner of programs are now copyrightable,
regardless of their nature or output.´475

Reichman considered the problem of emerging technologies and the

legal aspect of the relations caused by the impact of new technologies.476 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 ³bear their know-how on their face.´477 He defines the reasons that cause the
problems in protection of new technology as following:

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  
 

 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.)478

  *
",5#"



475
Leaffer, j. § 3.4[B]
476
Jerome H. Reichman, ³Implications 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.
477
, at 7, quoting Galbi, ³Proposal for New legislation to Protect Computer
Programming,´ 17 Bull. Copyright Soc¶y 280, (1969-1970).
478
Reichman, j, at 7-8.
  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.479 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
required result. Software is no less material, only because it appears to us as
³immaterial´. 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 µchain¶ 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 algorithm480 (not necessarily a mathematical algorithm, so far)

479
Semiconductor Chip Protection Act of 1984, Pub. L.No.98-620, 98 Stat.3347.
480
³A 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, ³Computer Dictionary and Handbook,´ (1972) , at 1246 n.8, 197 U.S.P.Q.
at 471 n.8. Csanyi, j, at 9, for the purposes of his system-component theory defines
is protectable in the hardware context as the means-plus-function481 , 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 ï , 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
result. Software is no less material because it appears to us as ³immaterial´. 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 algorithm482 (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 ï .

THE INDUSTRIAL DESIGN

algorithm as ³the interrelationship of components within various organizational levels, which [*

* *], are specific only at the given level.´
481
 ? ? j  j? 


j? 
jj?
j
j
?
? uj
j ? 

j
j? 888 F.2d 1370
12, U.S.P.Q.2d 1908, (Fed. Cir. 1989).
482
³A 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.
 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 ³beautiful and
useful´483 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 
)   á as the problem of ³Copyrightability for Patentable
Works´. ³There 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.´484 The problem relates to the patentability of
copyrightable works485, 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 ³election 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 ³authors.´ Scholars

483
Leaffer, j , § 3.11
484
Nimmer, j, § 2.19.
485
 ? ?
 , 493 F.2d 1389 (C.C.P.A. 1974).
 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. 486 (Footnotes omitted.)

In an article entitled ³Functional Works of Art: Copyright, Design

Patent, or Both,´ Joan Paul gives an exemplary clear overview of the situation in the
United States law.487 Pointing out the fact that the patent and copyright systems ³have
undergone a rather extensive but separate evolution,´ she is explaining not entirely
justified development of the ³election doctrine.´488 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 
) 
á.The 1976 Copyright act, although it went generally further in that direction, in
the definition of the ³pictorial, graphic or sculptural work,´489 ³has also codified the
old copyright regulation refusing copyright registration to the form or shape of a
utilitarian article, regardless of the artistic merit of the creation, unless the work has a
separate and independent artistic identity.´490 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 ³independent artistic identity test,´ as provided by the Copyright

Office Regulations,491 serves as the poor substitute to the clear Congressional
definition which the new Copyright act is lacking. In the absence of such guidance
³the 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.´492 As the consequence, the two approaches
developed, one broader, in accordance with the 
)   á, 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 ³independent

486
Reichman, j, at 6.
487
Joan Paul, ³Functional Works of Art: Copyright, Design Patent, or Both,´ 3
Comm/Ent Law Journal 83, (No. 1, 198l).
488
, at 84, citing j
? ?  ? ? „? ? @  ? ? 

 ? „, 182 F. 150
(C.C.S.E.D. Pa. 1910),
, 191 F. 35 (3d Cir. 1911),
, 235 U.S. 33 (1914).
489
35 U.S.C. §§ 101 and 113(b), (1982).
490
Paul, j, at 85.
491
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
³election doctrine,´ and as such not necessarily in accordance with the rest of the body of the
law.
492
Paul, j, at 96.
artistic identity´ proves to be impractical. -- In some respect it reminds of the
distinction between the creation and artifact proposed in the introduction, as in the
case of ³conceptual´ 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, , 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
Patent Act493 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.494

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 1989495 in the House or Representatives on October 19,
1989 Hon. Carlos J. Moorhead (CA) said: ³[t]he Bill would have features in common
with both the patent law and the copyright law´, and further ³[t]he Bill would not
affect protection provided by the copyright law, the design patent law, or any other

493
35 U.S.C. §§ 171-173 (1982). For the ³lethal´ effects of the interplay between these
sections with the sections 101-103 which define the patentability of the creation see Paul, j
87-90.
494
Joan Paul in her article concludes the same,
?j, at 110.
495
Design Protection Act Bill, H.R. 3499.
Federal or State law.´496 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 ³date of publication of the registration [* * *] or the date the design is made
public anywhere in the world, whichever occurs first.´497 Hon. Moorhead concluded:
³Prior 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.´498

  "( !

Even more interesting are proposals to include the trademark

protection principles in the protection of industrial designs made by Dratler.499 If such
proposals would be accepted, and the bill amended so that it would include all three
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 á
/
ï
500 and @

@

501 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 ³[i]n retrospect, it appears more accurate to view industrial designs as a
precursor of the 

  that the intellectual property law would strain to
accommodate in the latter half of the twentieth century.´502 (Emphasis added.) In our
opinion he is pointing to the same phenomenon which is obvious to us. The principles

496
Cong. Rec. 10/19/89, at E3485.
497
Bill (H.R. 3499) § 4.
498
Cong. Rec. 10/19/89, at E3485.
499
Jay Dratler, Jr., ³Trademark Protection for Industrial Designs´, 1988 University of
Illinois Law Review, No.4, at 887.
500
á

???„? ?áj?„ 376 U.S. 225 (1964), „?„ ? ?
@ j?
jj ? , 376 U.S. 234 (1964).
501
@ j?@

? ?
  ?„
?@

?  109 S.Ct. 971 (1989).
502
Reichman, j? , at 6. He further points to a similarity between the software and the
industrial design: ³[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.´
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.

  !)!#

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 ³useless´. 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.

å- 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, 
) á. The
protection to the clothing as ³the 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 ³soft 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 ³garments´ will be wore. To the lesser
extent it is true for all fashion designs. But, the copyright law never insisted, and
specially since @O


, did not require high level of creativity in order
to grant the protection.503

å 
  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
identification of the two states realises that when he states ³[t]hat some tools look
aggressive is not, of course, simply a result of a macho styling. › 





 
 
. You cannot have an entirely non-aggressive-looking circular
saw, chain saw or electric drill.´504 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.505 In an
503
@j
j ? ? 

 ? j
j ? „, 188 U.S. 239 (1902). Paul, j, at 96, cites



? j
 ? ? „? ?  j ? ?  
? „, 433 F.2d 409 (2d Cir. 1970), as to the
standard for the works to be accepted by the courts being ³any work which by the most
generous standard may arguably be said to evince creativity.´
504
Dormer, j, at 93. At 102 Dormer provides us with the analysis of teh bycicle frame
design and redisign attempts, and qutes design journalist graham Vickers: ³Basically
unchanged for half a century, the familiar µsafety¶ 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.)
505
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,
attempt to solve this problem Dormer introduces a distinction of the ³above the line´
and ³below the line´ designing in which the first relates to ³styling´ and second to
³engineering.´506 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
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 ³Albeisa.´ 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

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.
506
á Dormer, j 13-32. In the first chapter of his book, under the title ³Designing
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 ³above and below the line´ objectives of design.
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 ³Albeisa´ 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 ³Memphis´), 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. ³The 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.´507 Supposing that the coffe tables are ³usefull´ 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

507
Suzanne Slesin, ³Furniture as fine Sculpture,´ New York Times, Thursday, May 10,
1990. á also about the category of ³narrative´ 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 ³Small 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.
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 ³gun´ shape of the most existing hairdryers as sterotyped
³form 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
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.508

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

508
Dormer, j, at 99-100. This description relates to the design (in the meaning of the
³above the line´ design), while the part in which the designer explains the engineering design
aspect (³bellow the line´) is equally interesting
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 ³above 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 ³bellow
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:
³The 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  
 of the body.´ 509

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. ³below the line´ design, as well
as with the ³above 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 

 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 µproduct 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

509
Dormer, j, at 111. (Emphasis added.)
 director of industrial design at Philips, told Alex Freedman of the 

á "

: µSo many products are the same today. You could take of
the labels and you would not know 

ï

 ´510

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 ³black-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 ³[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 (* * *).´511

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
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 !  á


512the 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 ³the expired utility patent is adequate evidence that the under-rim
configuration here sought to be registered is indeed functional,´ and ³that a feature

510
Dormer, j, at 110. (Emphasis in original, footnote omitted.)
511
Dormer, j, at 176.
512
 ? ?á
?„
j
? , 363 F.2d 286 (CCPA, 1966).
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.

å 

 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
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.513 Certainly

513
Process is described by Marshall McLuhan. he is calling it ³re-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 ³virtual reality,´ the new
computer technology which he is the leading developer of. Adam Heilbrun asked the
question: ³We 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: ³Most 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:
³But, 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
literary most obvious field where cross-applying is possible. Although U.S.A.
struggled for long time to achieve it 
)   á ended this unpleasant
undecidedness in favor of cumulative concept known in some other countries514 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
Copyright Office do not follow entirely the state of the law established by 
) 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 
)   á as the problem of ³Copyrightability for Patentable
Works´. ³There 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.´515 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

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
³bad´ but that the telephone is ³good´.
McLuhan would certainly like to hear this; it¶s the principle idea of his book here
expressed in the few words.
514
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.
515
³Nimmer on Copyright´, § 2.19, p. 2-223
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 ³IDEAS´

The starting point in suggesting reconsideration of the statutory

language should be the fact that numerous authors actually use the term ³idea´ 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
³extraordinary 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
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.

å 
 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. ³Idea´ 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.

å 
  Obviously, thirties were higher in understanding the nature of creation, but not
always were the Court ready to change the law. In '
"

á 

á





516 was very good in articulating the problem: ³And 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.´

å 
  The best example of how recent law fails to reach the necessary level of
understanding of the reality before it applies the rules is 
 

 ! 
"

 O
'



!517 . In this, what is considered an computer case the
Supreme Court missed the chance to establish the law on protection of the ideas, idea
here used in its traditional misnaming sense. This is similar to the problem which the
Court in 
 *

 0 
518 failed to solve. ³When the
uncopyrightable subject matter is very narrow, so that ³the 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 ³if 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 the

 court missed.

å 

 Real issue which the parties and the court closely missed was whether the
protection of the ³idea´ how an dental laboratory works. In other words expression of
the idea (reality) of how the dental laboratory works is not embodied neither in

516
29 F.Supp. 287 (N.D. Cal., 1939)
517
797 F.2d 1222 (C.A. Third Circuit 1986), cert. denied, 479 U.S. 877 (1987)
518
379 F.2d 675 (1967)
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 $
!

›0
519 . We are not saying that
³everything 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
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 
) á :
³The 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.)´520
Theanalysis of how the snowman looks like and how it is made is pathetic: ³For
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

519
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?j??„?675 F.2d 498 (1982).
520
347 U.S. 201, 217-18, 74 S.Ct. 460, 470-71, 98 L.Ed. 630 (1954).
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.