The purpose of this course is to introduce engineering students, and those interested in engineering projects, to relevant and important legal concepts that the engineer might come across during his or her career. By no means is this course intended to replace the services of an attorney, or a patent attorney, when the services of such are required. Rather one of the primary purposes of the course is to provide the engineer with sufficient knowledge to know when the services of an attorney are required or would be beneficial. By being aware of the basic legal principles that may come to bear in the practice of the engineering profession, the engineer can be expected to more efficiently and knowledgeably approach those legal issues, and obtain a satisfactory result. In addition, engineers are quite often called upon to offer expert testimony in civil lawsuits involving structural malfunction, injuries due to technological failure, cases involving patent infringement issues, and many others. The more attune the engineer is to legal principles, the more the engineer can efficiently carry out these tasks.
The present course is being taught by a registered patent attorney and practicing lawyer of 41 years experience. The student is urged to ask questions via the Internet, and to explore any issues that arise in the student’s mind during the progress of this course. The teaching of law, in itself, is a discussion of topics that sometime have no answer. Therefore, an aggressive conversation taking either side of an issue is a way to discuss legal issues and to ultimately reach a logical conclusion as what a court may decide in a given set of circumstances.
Howard B. Rockman
The courts will often make use of a relevant business custom. For example, silence on the part of one to whom an offer is made usually cannot constitute acceptance of that offer. However, if there has been a history of dealings between persons or if there is a practice in a particular business such that silence constitutes acceptance, the court will consider this and decide accordingly. Also, terminology particular to a trait is given its common trait usage in interpretation in court. Business customs also involve something called the law merchant. Merchants often need certainty about the rules that would be applied to any dispute by courts in various locations. Thus, a body of law developed beginning in the Middle Ages and continues today out of business customs, and this set of law is used by various courts in deciding commercial cases between merchants.
One of the hallmarks that mark the beginning of civilized behavior was determining the truth of an accusation. Court trials with a judge, a jury and attorneys representing the plaintiff and defendant have not always been used. We have seen enough movies and television shows that indicate that the earliest form of trial was usually by battle. The accused and accuser, or their representatives, faced each other in battle with the outcome determining the justice of the accusation. The shortcomings of such a system based upon justice and equity are obvious.
In many early civilizations, trial by battle was replaced by trial by ordeal or trial by jury. The Code of Hammurabi required trial by ordeal, such as throwing the accused into the divine river. If the river held the defendant, as if he couldn’t swim, the guilty verdict and punishment were delivered at the same time. However, more realistically, trial by a jury of your peers in one form or another existed in many ancient civilizations. Our present jury trial system developed with the common law, and is guaranteed in the Sixth and Seventh Amendments of the U.S. Constitution in both criminal and civil cases.
Keep in mind that a jury must usually determine the facts of a particular occurrence after that occurrence has happened. The jury bases its decision upon the evidence that the court allows it to hear, and on the instructions in the law given to the jury by the judge. Keep in mind that once an event has happened, and all witnesses to that event are unavailable, there is no way of knowing exactly what happened, and such may never truly be known. The jury system, although possibly flawed, is still the best system known for determining the truth. As Churchill once remarked about democracy, it is a bad form of government, however, it is better than all the rest. In my judgment, the same principle can be applied to the jury system.
In the United States, a court system exists for each state, as well as a system of federal courts. Both the federal and state systems provide an ultimate tribunal, a supreme court. Beneath the supreme court in each system are the appellate courts. The appellate courts handle appeals from the lower courts. The lower courts are designated as District Courts in the federal system, and usually as county courts in the state systems. One anomaly is that the lowest court in the State of New York as known as the Supreme Court.
The United States Supreme Court is the highest tribunal in the United States. The final court of appeal, the Supreme Court is established under Article III of the U.S. Constitution that provides for a Supreme Court and whatever inferior federal courts Congress may from time to time require. Since the constitution mentions a Supreme Court, all nine justices sit at one time on all cases, and the court is not divided into smaller panels, although this procedure would at least triple the ability of the Supreme Court to hear cases.
There are certain situations in which the Supreme Court has direct jurisdiction to handle cases. These are ones involving ambassadors, public ministers, counsels, cases in which a state is a party, and a few others. In all other cases, matters reach the Supreme Court by appeal, and the Supreme Court has the ability to accept or not accept an appeal. Cases are appealed to the Supreme Court from either U.S. appellate courts or from state supreme courts in the normal course of events. An appeal from an appellate court in the federal system is usually made to the Supreme Court by seeking of "writ of certiorari." If the writ is accepted by the Supreme Court, the Supreme Court will hear the case and render a decision. Only a very small number of such writs of certiorari are successfully accepted by the Supreme Court, presently in the range of 1 out of 20. In those cases where the Supreme Court does not accept certiorari, it may be understood that the Supreme Court agrees that the appellate court decision being appealed from is correct and should be allowed to stand.
The nine Supreme Court justices have the final say about what our law shall be in many important respects. They are not the legislative branch of the government, however they have a highly significant function to interpret what is meant by the wording of the Constitution or of a particular statute passed by Congress. The court also determines the lawful interpretation to be used in future cases of lower courts. If the Supreme Court gives an interpretation to a particular statute of Congress, and Congress disagrees with that interpretation, Congress can then enact legislation that would overcome the Supreme Court’s interpretation of the language of the statute.
The courts of appeals of the federal system normally consist of three-judge panels, which were first established by Congress in 1891 because of the burden of appeals of the U.S. Supreme Court. The appellate courts do not conduct trials, and issues between parties are appealed only on the basis of a conflict in the interpretation of the law, the facts being decided previously in a lower court. The appellate court does not have the ability to make an adverse decision regarding a fact found by a lower court.
The trial courts, those in front of whom witness appear and juries decide cases as well as judges, in the federal system are known as District Courts. There are approximately 100 or so in the United States, such that no state is without a federal district court, and states such as Illinois have several. The number of presiding judges in a U.S. district court is determined by statute and is usually based on federal cases arising in the district. At present, as you may have read in the newspapers, there is a hold up in the appointment of federal judges on political grounds, and therefore the courts are short of judges and their case loads are very heavy. For a case to be tried in a federal court, it must meet one of several criteria: (1) the issue must arise from the U.S. Constitution, federal laws or treaties of the United States, (2) it must arise in admiralty, (3) involve two or more states as parties, (4) involve the United States as a party, (5) be between citizens of different states with the amount of controversy greater than $100,000, (6) must be between a U.S. citizen and a foreign country or its citizens.
Most of the controversies handled involve federal statutes or the U.S. Constitution, better known as federal question cases, or diversity cases, which are those between citizens of different states. Patent, copyright, trademark, restraint of trade, tax, and infringement of personal rights under the Constitution are typical of cases tried in the United States District Courts.
The fifty state court systems in the United States are far from uniform throughout the country. The systems differ and also the names of the courts differ. Also, the law applied in different states may vary.
Each state has a final court of appeal, normally the Supreme Court or the Court of Appeals of that particular state. The highest court practically always confines its work to appeals of cases tried in lower courts. In several states, courts of intermediate appellate jurisdiction are interposed between the higher courts and the lower courts, to ease the workload of the higher court.
Below the appellate courts in a state system, are the trial courts in a general jurisdiction known either as circuit courts, courts of common pleas, county courts, superior courts, or as stated previously in New York, the supreme court. Other courts such as probate courts or surrogate courts handle cases involving wills, trusts and estates. Such courts are usually limited in geographical jurisdiction to a particular county, district or other major political subdivision of the state.
At the lower end of the food chain involving state courts are various municipal courts, police courts, justices of the peace, small claims courts, juvenile courts, and recorders’ courts who handle cases of very limited jurisdiction.
The jurisdiction of a court is defined as its scope of authority, given either by a legislature or constitution, to hear and determine the causes of action presented to the court. The jurisdiction of a court is dependent upon the geographical region in which the injury or activity occurred, where the individuals reside or do business, to types of cases, and possibly to the amount of money or type of relief concerned. The courts not only have jurisdiction over the people in front of them, they have jurisdiction over those individuals’ property, both real and personal, located within their assigned geographical limits. The courts have the authority under the law to take property of one party in satisfaction of a judgment in favor of another party where the latter was damaged by the conduct of the one party. However, a court has no authority in a state over property lying outside its territorial limits. For example, a court in Illinois could force a defendant to sell its property in Illinois to satisfy a judgment against the prevailing plaintiff, however, the court would have no authority to force the defendant to sell property in another state.
Regarding personal jurisdiction, the court has jurisdiction over persons who have had sufficient contacts with the state, as long as the exercise of jurisdiction does not offend traditional notions of fair play and substantial justice, whether the persons are residents or not. Lately for example, assume a company or individual is doing business on the internet offering items for sale worldwide. Even though the internet company is lodged in one building in one state, the mere fact of offering goods over the internet throughout the country will give a court in another state jurisdiction over that person or company and that business, even though that person or company has never been in the state in which the action is brought.
The courts initiate their jurisdiction by serving the accused person with a summons, or other legal process. A witness is served with a subpoena to compel the appearance of that witness before a court. Summonses and subpoenas can be served today in person or by mail.
Jurisdiction of courts may also be limited as to the type of cases they have authority to handle. For example, under many state’s systems, the criminal courts do not handle civil matters. In the federal system, the federal district courts handle both civil, equity and criminal matters. For example, in one federal case in which I was participating, our civil matter was interrupted by the return of a jury in a criminal matter and momentarily I had two gentlemen standing next to me in prison clothes, their feet and their hands shackled while the judge was answering a question posed by the jury. When these gentlemen returned from whence they came, I asked someone who they were, and I was advised that they had killed a rather elderly lady by stabbing her several times and stuffing her body into a freezer. The word "uncomfortable" comes to mind.
The lawsuit commences when a Complaint is filed by a plaintiff with the appropriate court against the defendant or defendants. The complaint sets forth the facts which gives rise to the cause of action and sets forth the relief requested by the plaintiff. The complaint does not set forth all of the law that will be applicable to the particular complaint. The court then issues a summons to the defendant, attaching a copy of the complaint, requiring the defendant to respond to the allegations in the complaint within a certain time period, usually 20 or 30 days. If the defendant does not respond to the summons, a judgment against the defendant by default can be taken, and property of the defendant may be forced into sale to satisfy the allegations and remedies sought in the complaint.
Most answers deny at least some or all of the complaint’s allegations, otherwise there would be no dispute. The answer could also include affirmative defenses and often a counterclaim if the defendant has a legitimate cause of action against the plaintiff. The affirmative defenses set forth reasons why the defendant should not be held liable in the cause of action set forth in the plaintiff’s complaint.
The defendant may also offer several motions, along with the answer, for example a motion contesting the court’s jurisdiction, or asking the court to dismiss the case because the complaint does not set forth a legal claim upon which relief could be granted.
If the complaint is vague, and too difficult to formulate a response to, a motion for a more definite statement, or to dismiss the complaint, would be appropriate.
In the United States’ civil case legal system, between the filing of the complaint and the trial before judge or jury of the allegations set forth in the complaint and the answer and counterclaim, both sides engage in a lengthy period called discovery during which each side has the ability to learn about the other side’s evidence, their versions of the facts, and the other side’s documents it intends to use in pressing its case. This discovery process eliminates the factor of surprise in all civil litigation.
Depositions are one vehicle used to learn about the other sides’ case. In a deposition, a witness, who normally is also one of the of the parties, or other witnesses, are questioned by one of the attorneys before a court reporter who transcribes the questions and answers. The witness is obligated to answer the questions truthfully without prodding by the attorney. The witness takes an oath to tell the truth at a deposition, and if it is later found out that the truth was not told, the witness can be held in contempt.
Another vehicle commonly used for obtaining discovery information from another party is a request for the production of relevant documents. In this situation, one party prepares a request listing the category of documents that it wants the opponent to produce for inspection and copying. The opponent is obligated under court rules to furnish the documents requested that are relevant and not privileged. This allows each side to review the other side’s documents prior to trial. The importance is that documents do not forget, as people sometimes do.
Yet another type of discovery is the use of interrogatories which are written questions to the other side. The other side must respond with appropriate objections if there are any, and with the answers that are sworn to by the party or an officer of a corporate party.
Another way of obtaining discovery is to request that the other party admit a certain fact or deny that fact. If the party denies the fact, and it is later held that the previously denied fact is true, the prevailing party may obtain its costs in proving that particular fact in view of the other side’s improper denial of that fact.
During the trial of a lawsuit, there are several motions that may be filed during the discovery period. One of these, for example, could be a motion for Summary Judgment, arguing to the court that there is no genuine dispute as to any material fact between the parties and the moving party is entitled to a judgment as a matter of law. Other motions that can be issued are ones to compel documents or other discovery that are not forthcoming by one of the parties, motions to force someone to sit for his or her deposition above the objections of that individual, and other routine motions relating to advancement of the discovery process.
A Summary Judgment motion is filed where one party alleges that given all the facts in the case developed so far taken as true, there is still no reason to assess judgment against the moving party. The opposing party will answer by responding that there is a dispute as to the facts, or that even if there were no dispute of the facts, the law favors a decision in favor of the nonmoving party. Prior to trial, the court will decide whether or not a motion for Summary Judgment is appropriate.
During the pre-trial procedure, additional allegations and additional parties may be added to those already involved in the case on either side. Also, the defendant can assert a counterclaim against the plaintiff, and basically have two lawsuits pending in one. Such counterclaims can be asserted whether or not these claims are related to the main cause of action filed by the plaintiff. Under this rule, a person who was injured by a product, such as a toaster, will usually end up suing the store that sold the toaster, the manufacturer of the toaster being brought in as an additional party by the store, and the manufacturer possibly bringing in a producer of component parts that led to the injury causing damage to the original plaintiff.
The U.S. Constitution provides that in any civil case or controversy amounting to more than $20, either party can choose whether they will have a jury decide the facts of the case. The court still determines the applicable law. If one party demands a jury, then the other party has to go along with that choice. If both parties agree that there is not to be a jury, the jury is dispensed with. A jury for a civil action can comprise 12 persons or less, and usually consists of one or two alternates in case one of the jurors gets ill during the course of a trial. A jury is selected by the court, with each lawyer having the ability to ask questions of the potential jurors, to determine whether they have any biases or prejudices that would prevent them from arriving at an impartial decision as to the facts of the case, in the case of conflicting testimony. Each attorney can disqualify a limited number of prospective jurors arbitrarily by exercising a right of peremptory challenge. When the jury has been impaneled, the case proceeds to trial.
Normally, when the pleadings and discovery are all complete, a pre-trial conference is held and a pre-trial order is agreed upon which sets the pattern and roadmap for the trial. When the trial begins, opening statements by the attorneys are made, witnesses are sworn in and the evidence is examined, including cross-examination of each witness by the opposing counsel. The witnesses testify as to facts, except that expert witnesses are allowed to testify as to their opinions regarding the facts. At the end of the receipt of testimony, each attorney sums up the case to the jury, the judge gives the jury instructions as to how the law applies, and the jury retires to reach a verdict. The foreman of the jury then announces a decision and the judge enters the judgment. It is the official decision of the court in the case.
It is during the trial of the case that the witnesses are expected to testify truthfully. Occasionally, to protect one’s own interests, one attempts to lie or shade the truth on the witness stand. The risk in doing this is covered by cross-examination. Think about this for a second. If you tell the truth about a certain fact as to where you were at a certain time or place, or what you saw or did at a certain time or place, every time you are asked the same question, no matter in what way, you will come up with the same answer, because that fact is indelibly cast in your mind, and you know what the truth is. However, if you have lied about a certain fact or circumstance previously, and on cross-examination you are repeatedly asked about that incident by a trained examiner, such as an attorney, and the questions are not always phrased exactly the same, you will not remember what lie you told previously. Therefore, under intense cross-examination, a lie cannot be repeated. Therefore, the jury will be able to determine who was telling the truth and who was not in nearly all situations. Once a witness has been ascertained as a liar on one fact, the jury is probably going to assume that particular witness is lying as to all other facts.
If, after the end of the trial, there was an error in the facts of the case, it is possible to ask the court for reconsideration and/or a new trial, upon your presentation showing the court that an error in the factual determinations has been made. It must be clearly apparent that the error is present. An appeal is differentiated from a request for a new trial, and is concerned with a misapplication or misreading of the law by the court to the jury. There are many reasons for seeking new trials, such as error by the judge in failing to allow evidence that should have been admitted, or admitting evidence that should have been excluded, by false testimony or perjury of a witness, among others. If the trial court refuses to grant a new trial based upon an error of fact, that refusal may be appealed to a higher court.
It is important to note that either party may appeal a decision in a civil case. However, only the accused defendant may appeal from an adverse criminal judgment. The state can never appeal from the trial court’s decision in a criminal case. When appealing, the appealing party is usually required to post an appeal bond, then briefs are filed on appeal and submitted to the appellate court. This is followed by oral argument on the legal issues. The appellate court does not hear witnesses. If the appellate court feels that there has been an error in a factual determination, it may remand the case back to the trial court for a new trial.
In an equity lawsuit, the judge decides both questions of fact and questions of law since there is no jury. If factual questions are long and complicated, the judge has the power to appoint a court "master" to take factual testimony and make recommendations as to the conclusions arrived at by those facts. As stated previously, equity courts act in personam. The court’s judgment directs a person to do or not to do a certain thing. An interlocutory decree, or temporary injunction, reserves the right of the court to act again in the case at some later time. As in law cases, the doctrine of stare decisis is followed. Similar prior cases having related factual situations are followed in deciding present issues. Again, these prior cases are reported by several reporting services, both at the state and federal levels.
Evidence is the generic term defining information used to prove questions of fact in a court of law. Here we can make a distinction between a legal fact and a scientific fact. In science, facts that are developed by experimentation and empirical testing are considered to be scientific facts up to the point they are disproven by further testing or experimentation. Thus, the fact that the sun rotated around the earth was disproven by Galileo who proved the opposite. Prior to Galileo, the accepted fact was that the sun rotated around the earth. However, a legal fact is quite different. The courts do not have the time nor the facilities to test facts over a period of time, through empirical testing. The court must determine the truth of facts prior to the end of the case. Many cases, such as those involving patents and trade secrets, involve scientific facts, which are sometimes disputed between expert witnesses. It is up to the court or jury, however, to determine in a very short period of time which scientific fact is true and which is not. In complicated matters such as these, the courts are not always correct. However, their decisions can be final.
In some cases, the facts presented by the contestants in a lawsuit, and their respective witnesses, often may stray somewhat from the truth, or the truth may be shaded a bit in the presentation to favor one side of the argument or the other. The trier of fact, either the jury or the judge, has the task of determining the true situation as to the facts. Evidence is entered into the court record as a means of establishing proof of these facts.
In a criminal case, the state has a very high burden of presenting evidence that proves guilt beyond a reasonable doubt. In a civil case, by contrast, the standard is not so high where winning or losing is based upon the comparative weight of the proof and evidence.
The burden of proof in a criminal case is always assumed by the state in trying to prove the defendant guilty. However, in a civil case between two civil litigants, the burden usually rests on the plaintiff to prove his or her allegations. However, when the defendant raises certain allegations, the burden of proving those allegations is on the defendant. A counterclaim in a case is one situation where the defendant has the burden of proving its allegations. As a rule of thumb, if you make a charge in a court of law or if you are the defendant or the plaintiff, you have the burden of proving that allegation.
Real evidence is evidence a judge or jury can see or ascertain directly for themselves. A broken or frayed cable, presented to the jury or judge, would be real evidence. Testimony consists of statements by witnesses of things that have come to their knowledge through their own senses, such as seeing, touching or feeling certain situations. For example, observing that the driver in front of you was weaving from side to side in traffic may be evidence supporting a charge of drunken driving asserted against the driver in front of you.
There are certain factual elements that are so well known and accepted that the court will accept them without requiring proof. For example, logarithm tables, steam tables, provisions of a federal or state constitution, Newton’s Laws of Motion, Einstein’s Theory of Relativity, and the like, would be examples of things that the court would take judicial notice of without having readings of experts testify as to such well-known and accepted facts. For example, evidence would not be required to prove that gasoline or dynamite is combustible, but the presence of gasoline or dynamite in a particular location might require proof.
Conclusive evidence is defined as evidence that is incontestable. It cannot in any way be successfully challenged. For example, the existence of a written contract which has been admitted into evidence and each signatory to the contract has admitted that they signed the contract is conclusive evidence that that contract exists and was in force at some time.
Prima facie evidence is something less than conclusive. It is rebuttable evidence capable of being countered by evidence from the opposing side. However, if prima facie evidence is allowed to stand without rebuttal, it is sufficient to establish a fact in the absence of such rebuttal. A signature on a written document would be evidence of this nature.
Consider for a moment that you are driving along a highway and a police car pulls you over and the officer indicates that the radar in his car shows you were going 15 miles over the speed limit. If you challenge the officer’s comments, you then have the right to appear in court where you will present your evidence and the officer will present his evidence. The officer of course will present direct evidence that he had a working radar detector in his car, that it was aimed properly at your car on a certain date and the radar detector indicated you were going 15 miles over the speed limit. You of course would have the opportunity to rebut such testimony. But if your rebuttal testimony was not believable by the court, then the direct evidence of the police officer would stand and you would probably face conviction and a small fine. However, contrast this situation with an accident that takes place with another car, and there is no police officer present. The officer may come later in response to a phone call, and give one or both of the participants in the accident traffic tickets that must be defended in court. In this case, the police officer is not a witness to what happened at the accident and all the evidence is presented in a conflicting manner most likely between the two parties to the accident. The police officer can present circumstantial evidence showing tire track markings on the street that he observed after the accident, or statements made to him by witnesses to the accident afterwards. These witnesses will actually have to appear. The officer’s statement as to what was said to him by somebody else would be hearsay, and may or may not be admissible, as will be discussed later.
By contrast with direct evidence, circumstantial evidence attempts to prove a fact by inference. For example circumstantial evidence might be used to show that the person now denying that a contract was in existence would not have acted as he or she did at some past time unless he or she had entered into the contract. A net of circumstances is often woven to show a high probability that a particular version of an issue is true. For example, blood found on a murder weapon near the scene of a murder, and fingerprints on the murder weapon are circumstantial evidence that a crime has taken place, that the dead person was stabbed, and that the fingerprints would identify who was holding the knife at the time of the stabbing. Remember, under these circumstances, no one witnessed the actual crime, and the defendant cannot be compelled to testify against himself. The conviction must take place by weaving this net of circumstantial evidence.
Courts require that the highest and most original evidence be presented to prove a certain fact. Secondary evidence will not be used, unless for some reason the primary evidence is not obtainable. For example, an original document with original signatures is the best evidence as to the existence of that document and what it says. However, if the original document were destroyed, lost, or unavailable, a copy of that document would be admissible as the next best evidence. In certain situations, if no copy exists, testimony as to individuals who had seen the particular document and had read its contents probably would be admissible in the absence of any other evidence. Thus, the document itself would be best for primary evidence, although testimony about the documents would be secondary.
Everyone has heard the legal term "hearsay evidence." What does it mean? Hearsay evidence is secondhand information. It is testimony about what the witness has heard another person say. Most hearsay evidence is objectionable to the court for three reasons:
However, there are many exceptions to the exclusion of hearsay evidence by the court. For example, the statement of one of the parties to the litigation to the witness is admissible as an admission against interest. Dying declarations are usually admissible. Business records are often admitted. A statement by another person is admitted to prove if the statement was made, but not for the truth of the statement. Business records are often admitted over hearsay objections, as well as properly conducted surveys.
This term means "things done." In a courtroom, res gestae refers to allowable hearsay testimony about spontaneous statements made by someone closely connected with an event. An example is an industrial accident where the victim is killed, yet just before the accident occurred the victim shouted that the safety devices weren’t working. Testimony to that effect by a fellow worker who heard that statement may be allowed under this rule over the hearsay objection. The statement in this case explains the cause.
That is why it is important to remember that if you have an accident, it is not prudent to jump out of your car and shout "It’s my fault." That statement, even though hearsay, would be used against you in a court of law.
Most legal actions take place over contracts or documents that clearly state their intention or purpose. The fact that the document indicates matters that have been reduced to writing is the best evidence of the meaning of the writing. Parole, or oral, evidence that would tend to alter these meanings in a document is objected to, and not admissible, except where the terminology in a document is ambiguous or where unfamiliar trade terms are used. Parole evidence will then be allowed to clarify the meaning, once an ambiguity is established. The admissibility of parole evidence is confined to interpretations of the words of a document, and does not extend to the question of the validity of the document.
We have talked previously about fact evidence in a court of law. However, in many situations, especially those involving high degrees of technology, opinion evidence is necessary to establish a certain fact. However, an ordinary witness or person appearing on the stand generally is not allowed to express opinions or conclusions regarding evidence in the record. This is a general rule, however, just about any perception of anything is a conclusion based on sensory responses and experience. You will recall that the car in an accident was green because you sensed that it was green based on your own observation. This is, shall we say, an opinion as to the color of the car.
However, if more complicated reasoning and conclusions are required in the progress of a court trial, an expert from the field of knowledge involved in the technology can be called to review the evidence and to express an opinion about the facts or the meaning of the series of facts.
Engineers, by training and experience, are qualified, and normally do, act as expert witnesses in certain types of legal matters. Engineers frequently appear as expert witnesses, giving testimony, for which they are paid. The fact that an expert is paid to give testimony does not interfere with the fact that the testimony will be truthfully given and honestly developed.
One of the functions of a judge in a court of law is to determine that a witness is competent to testify. First, the witnesses’ mental capacity or mental ability must be apparent so that the judge or jury can determine that the witness is testifying ably, and is not hallucinating. Also, the witness is required to testify only as to information having some bearing on the case at hand, and information of which the witness has first-hand knowledge. Irrelevancy is the term that is used to refer to the lack of relationship between the issues of the case and the testimony requested or given. Obviously, any testimony about an engineer’s home life is hardly relevant to a case involving machinery specifications and machinery function or failure.
The Fifth Amendment to the Constitution gives any witness the privilege not to testify on certain matters that may tend to incriminate that person. Also, the term "privilege" covers communications between certain people which need not be revealed in court. Examples are communications between husband and wife, doctor and patient, attorney and client, and penitent and cleric. However if such privilege is waived by the party whose testimony is sought, then that party may be forced to testify.
Opinion testimony from ordinary witnesses in a trial is inadmissible. An opinion implies conjecture and the law looks with disfavor on indeterminate factual situations that result from conjecture. However, certain factual situations arise and the truth in these indeterminate situations must be determined as closely as possible. For example, questions as to the adequacy of design of a structure, or the capabilities of a specially designed machine, often must be answered. Those of you who have witnessed films of the Galloping Gertie Bridge failure at Takoma Narrows can understand that testimony regarding allowing a span to be constructed across a windy chasm, after the span has collapsed, can be developed through opinion testimony of others who have studied the situation. Usually the studies take place after the accident has occurred.
Lawyers are not qualified to testify in courts of law about facts, or give opinions as to certain facts. They are just guiding the testimony for the benefit of the court. It is also presumed that the court and the jury is incapable of drawing intelligent conclusions based on complicated technical questions. For such purposes, an expert witness is needed. An expert is a person who because of technical training and experience, possesses special knowledge or skill in a particular field that would not be possessed by an average person. Before an expert witness testifies, that witness presents evidence to the court setting forth his or her qualifications to provide expert testimony in a certain area. The expert testifies about his or her educational background, projects in which he or she has been involved, training, whether he or she is registered, and other similar questions. Upon cross-examination, normally the witnesses’ qualifications are challenged by the opposing counsel, and the witness must be so well qualified as to withstand any such challenge. Based on this type of evidence presentation, the court and jury then determines whether the witness is qualified to give expert testimony.
Consider also that either side will present experts on a certain factual matter, each expert coming to a different conclusion, based sometimes on the same set of facts. Therefore, which expert is to be believed sometimes depends on the extent of qualification of the particular expert. Obviously, the more detailed the examination made by the expert witness and the clarity of the presentation based on that examination, the more that witness’s testimony is apt to be believed.
Remember, that just because you give expert testimony is no guarantee that a judge or jury will ultimately believe that testimony, whether such testimony is the best opinion or not.
As in most matters in life, it is often necessary for a person such as an engineer or a scientist who is thoroughly familiar with a technical or scientific concept to explain that concept to ordinary people, such as a judge or jury. A jury is made up of a cross section of a given community, and is not a panel of experts on some particular scientific viewpoint. Therefore, part of an engineer’s function as an expert witness is to present to their attorney, and the judge and jury, the facts in the case in such a manner that ordinary people can understand them. Thus, the engineer must have not only the technical proficiency but also the ability to effectively express his or her knowledge. Patent attorneys normally find themselves in this same situation.
To make an effective presentation, the engineer as an expert witness must be so thoroughly familiar with the facts in the case that nothing the opposition can attack will come as a surprise. Drawings or specifications may have to be carefully read, material thoroughly tested and building codes or other laws fully examined. You will then be asked to testify about everything you did in conducting your reading, testing and examining. Also, assistance in the preparation of a legal brief requires the best of an engineer’s investigative powers.
An engineer giving assistance to an attorney in the preparation of a trial or trial of a case must have an objective approach to the case. The engineer must present to the lawyer facts to substantiate a client’s claim, as well as opposing facts known to the engineer that may rebut or go against the client’s position. Note that there are two sides to any controversy, and the engineer as an expert consultant must be willing to show the attorney and the client both sides of important issues bearing on the factual and legal questions in the case.
In a case involving complicated technical issues, both parties normally obtain experts to aid them and to testify. The engineer expert may be invaluable in suggesting questions that the attorney should ask the opposing expert witnesses, and the opposing fact witnesses, to convince the jury that your presentation of the testimony is the correct one. The expert engineer witness also helps the attorney prepare cross-examination questions of the opposing expert, and some of these questions arise unplanned during the course of the trial.
For example, an error in the technical argument set forth by an opposition expert witness might escape an attorney’s notice, but it probably would not escape the notice of a technical expert. The expert witness giving trial assistance then will be able to prepare the attorney to ask the appropriate questions by way of cross-examination that may show that the opposing expert did not do his or her homework properly. Also, such assistance may be used to prepare questions to be presented to your own expert when placed on the stand to counter the opposition's expert testimony.
Again, expert technological testimony must be given in a court of law in a simplified manner that will be readily understood by individuals such as the judge and jury. This is done by the technical expert providing a simple foundation for his or her testimony and then laying the complexities of the testimony on top of this simple foundation. This type of presentation is not always easy.
The expert witness is usually called upon to compare technical principles with everyday occurrences, and the use of pictures, slides, electronic presentations and drawings can be used in court to make the meaning of the technology clearer. Normally, the expert must take several hours to prepare such demonstrative evidence. Also, each part of the evidence must be presented such that it is incapable of successfully being adversely questioned by opposing counsel.
The expert is compelled to be honest in presenting all answers, even if it means making a statement that does not fully support the client’s allegations. The opposing attorney will look for any point that you testify upon that is not fully truthful in an effort to demean your credibility. Any small hole in the fabric of truth of the evidence can destroy the total effect of the testimony. Thus, the truth is an imperative.
If an engineer witness does not know the answer to a particular question posed by opposing counsel on cross-examination, the least damaging answer is a simple "I don’t know." If the question involves prior testimony, witnesses may request the reading of the prior testimony before answering the question in the name of clarity. If a question requires mathematical or other calculations, or a consultation with other witnesses, time for such calculation or consultation may be requested from the court, and may or may not be granted.
One of the most important facets of giving expert testimony is the demeanor of the expert on the witness stand. He or she must testify so as to inspire confidence in his or her own ability. The witness’ conduct and attitude throughout the entire proceeding come through clearly to those in the courtroom who are evaluating the credibility of the technical testimony. During cross-examination, opposing counsel will attempt to discredit you, or belittle you, or pick apart testimony damaging to your opponent’s case. Usually, the more damaging the testimony to the opposing attorney’s client, the greater the effort to reduce it to shambles. If this fails, the opposing attorney may attempt merely to enrage the technical expert witness in hopes that your anger will transfer to anger amongst the jurors directed to you. Therefore, calm and considered answers by witnesses, courtesy and self control must be exercised. A simple yes sir, no sir, yes ma’am, no ma’am in your cross-examination answers is greatly appreciated by your counsel.
Your expert opinion testimony may be replete with reference to writings by acknowledged authorities in the technical fields. Sometimes a quotation excerpted from a widely recognized textbook carries more weight that an oral statement on the witness stand by the author of the text.
If you are designated by trial counsel to appear and give expert testimony at the trial of a technically complex case, after you have prepared your testimony you will be submitted for discovery depositions to be taken by opposing counsel, who may examine you as to the experimentations or examinations you’ve made, and the conclusions you’ve drawn from your work, relating to the issues in the lawsuit. This affords opposing counsel the ability to know what your testimony is going to be before you give it. This is a part of the American judicial system, and not only your testimony but the testimony of all witnesses on both sides will be known ahead of time through the use of discovery depositions taken by counsel for both parties.
It is very important that engineers who are requested to testify as expert witnesses first determine whether they really believe that they can honestly testify towards the prospective client’s position. You must firmly believe in the case of your client, and in the testimony you are to give, or else you should decline to act as an expert witness. First of all, you should not be compelled or even asked to testify as to matters that you yourself do not believe are accurate or soundly founded in fact. Secondly, if you testify not having full conviction in the substance of your testimony, your lack of conviction is often apparent in the manner in which you will be testifying before the court, and therefore your testimony will not be worth very much and subject to vigorous cross-examination.
All expert witnesses in litigation are paid for their services, unless they choose not to. Engineers testifying in highly complex matters are also paid fees for the presentation of their testimony.
In no case should a witness’s fee be contingent on the outcome of the case. Normally during trial, the expert witnesses are asked if they are being paid for their testimony, and will be asked how much. These are legitimate questions. If you are getting paid only on the contingency that your client wins the case, then the jury can conclude that your testimony is biased. However, if you were getting paid straight time or a flat fee for your testimony, the jury can assume that you were just paid to present your services, and that your testimony should be taken as credible.
Over the past hundred years, the practice of engineering has reached the level of professionalism often accorded to the professions of medicine, law and theology. While engineering has existed as a separate calling for nearly two centuries, only in recent times is it considered a profession. Also, with the advance of technology, many new and different disciplines inside the profession of engineering have been created. The current technological explosion is causing new areas of technology and engineering to be created regularly.
The meaning of the term "profession" is: "a calling requiring specialized knowledge and often long and intensive academic preparation." It is an endeavor where the labor and skill is predominantly mental or intellectual, as compared to physical or manual. For example, the United States Labor Management Relations Act defines the term "professional employee" as follows:
An employee engaged in work predominantly intellectual and varied in character as opposed to routine, mental, manual, mechanical or physical work, or involving consistent exercise of discretion and judgment in his performance.
Most professions require state registration requirements, the formation of members in professional societies, a public service nature and interest in the occupation, and adherence to a code of ethics. Today, in the profession of engineering, civil engineers and public works engineers, among others, are required to register with the state. Under normal circumstances, engineers working for corporations or as consultants are usually exempt from registration requirements. Many states require professional engineers to be registered before they are allowed to practice, and many states have reciprocal agreements allowing an engineer registered in one state to work in another state. The purpose of the registration laws is to protect the public from shoddy engineering practices, and to this end the engineers have to convince a board of examiners that they are qualified to practice as professionals. This involves an examination of the candidates past engineering work and training in a qualifying examination.
It is quite true that the acceptance of a field as a profession requires continuing efforts to maintain high standards of service to the public.
Many of today’s recognized branches of engineering have formed at least one society of its members. One is the Accreditation Board of Engineering and Technology, which among other things examines at least once every six years accredited engineering and technology curriculum in schools.
The American Association of Engineering Societies was formed in 1979 to advance the science and practice of engineering in the public interest. The association also acts as an information exchange agency for its member activities.
The National Society of Professional Engineers formed in 1934 is largely responsible for the passage of engineering registration laws in the various states, and has advanced public recognition of engineering as a profession.
Ethics is defined as "the discipline dealing with what is good and bad and with moral duty and obligation". Thus, ethics are the ground rules for our moral conduct and consist of our attitudes toward honesty, integrity, trust and loyalty as exhibited in our day-to-day contacts with other people. For example, there are no laws that compel engineers to take an interest in community affairs or to give a completely unbiased report of the results of an investigation. However, the manner in which engineers act depends upon their own moral code or ethics.
One’s personal code of ethics grows out of the experiences and observations of one’s life. As humans, we either inherit or learn a predisposition towards a certain type of moral behavior. Examples set by parents, friends, classmates, teachers and respected professors all contribute. The building blocks for individual codes of ethics constitute punishment for censored acts and praise for achievements. All of these experiences contribute to an engineers moral behavior; to these we added his experiences and observations on the job.
A code of ethics is not meant as a body of inflexible laws to be observed "or else". Ethics consists as a guidepost to be worked into and be the basis for changes in the engineers moral standards. Any standard of ethics is of value in dealing with others, and provides professional standards in the work of the engineer.
This code requires that engineers are expected to exhibit the highest standards of honesty and integrity, where the services provided by engineers must be performed impartially in fairness and equity, and must be dedicated to the protection of the public health, safety and welfare. This latter provision is of utmost importance since the average person who sees or uses the work of an engineer cannot tell what went into that work, but just assumes that the bridge they are crossing or the television they are turning on is safe for their use.
Some of the fundamental cannons of NSPE code of ethics are:
The NSPE code also provides guidelines to enable an engineer to use their own judgment, for example, where their judgment may be overruled under circumstances that could endanger life or property. Under such circumstances, the engineer is ethically bound to notify the employer or client and such other authority as may be appropriate of their opinion or conclusions. Also, engineers shall not permit the use of their name in endeavors in which they believe involve fraudulent and dishonest enterprises. Further, if engineers have knowledge of any violation of the code of ethics by others, they are ethically obligated to report such violation of others to appropriate professional bodies, and when relevant, to public authorities.
Engineers are also obligated under the code of ethics to disclose all or known potential conflicts of interest that could influence, or appear to influence, their judgment or the quality of their services. Also, if an engineer is compel by a client or employer to proceed in an unprofessional manner, the engineer is obligated under the code to notify the proper authorities, and withdraw from further service on the project.
The code also includes a very important provision whereby engineers are not to disclose, without consent, confidential information concerning the business affairs or technical processes of any present or former client, or employer, or public body on which they serve. Such disclosure could result in a trade secret misappropriation legal action against both the new employer and the engineers themselves, which becomes costly and could interfere with the engineer’s new position. A further provision regarding confidentially states that engineers should not participate in or represent an adversary interest in connection with a project in which the engineer has gained particular specialized confidential knowledge on behalf of a former client. This provision requires an engineer, upon taking a new position, to fully disclose to the new employer previous positions and projects he or she has worked on so that any appearance of a conflict can be avoided. Also, any previous non-compete agreements that the engineer has signed should be made fully available to the new employer to avoid conflict.
Under the code, engineers are also obligated to give credit for engineering work to those to whom credit is due, and recognize the proprietary interests of others. This requires engineers to honestly name the person or persons who may be individually responsible for designs, inventions, writings and other accomplishments. For example, the true inventors of an invention must be named in a U.S. patent application, or the patent ultimately issued may be held invalid and unenforceable. Therefore, there is no advantage in naming uninvolved individuals as inventors in patent applications.
Engineers using designs supplied by a client must recognize that the designs are the property of the client and remain so, and may not be duplicated by the engineer for others without express permission of the client for whom the designs were made.
The code also provides that before undertaking work for others in connection with which the engineer may make improvements, plans, designs and inventions or other works that may justify copyrights or patents, the engineer should enter into a written agreement regarding ownership of such improvements, etc. In most situations, if the engineer is being paid to develop such improvements or inventions, the ownership will be in the person making payment to the engineer.
An engineer’s designs, data, records and notes referring exclusively to an employer’s work are the employer’s property, and cannot be taken with the engineer once the engineer leaves the employ of that employer. The employer also should indemnify the engineer for use of the information for any purpose other than the original purpose.
Not all unethical actions are "illegal." Thus, neither the examining boards nor the courts have any rights or responsibilities in most of the ethical practices of engineers. Negligence of engineers is another story, and the courts get directly concerned with negligence in engineering design and engineering practices. Thus, the redress for moral misbehavior comes from engineering societies. For example, the American Medical Association and the local state bar associations have the ability to strip a doctor or lawyer of his right to practice his or her profession in a given state. However, there has not yet been a society developed with equivalent powers in the engineering profession. It is quite possible that procedures for detecting, investigating and holding hearings on unethical engineering practices maybe developed and maintained throughout the United States at some future date. Today, if an engineer is guilty of performing unethical practices, that engineer may be removed from membership in an engineering society. Other penalties would include the loss of a job or project.
The Codes of Professional Ethics lead to the conclusion that people who are honest and loyal in their adherence to a code of ethics in dealing with others often find that, as a result, others are honest and loyal in dealing with them.
In order to maintain the impartiality and integrity of engineers, many corporations which hire engineers have adopted policies restricting or eliminating receipt of gifts by engineers from vendors, where the engineer is in a position to specify the purchase of products from one vendor or another. Those in the engineering profession feels that an engineer’s integrity cannot be bought by the people with whom the engineer deals as the employer’s agent.
In recent years, qualified engineers have been in short supply, and this trend is expected to continue through the next several years. Industry sources have reported that this has lead to some peculiar, and even reprehensible, recruiting activities. In a situation where there is a shortage of engineers, one company will usually contact another company’s engineers in an effort to lure them away. This is considered by some to be unethical, however, it is a common practice. Of course, if the engineer makes the first move, the resulting job change usually is considered to be above reproach.
The blame for a company’s loss of engineers sometimes is it own myopic fault. For example, a large number of companies have a tendency to overlook the contributions made by their engineers, for example, where an engineer’s design change results in a sizable savings to the company. The engineers feel that this should result in some recognition to them in the way of monetary reward for saving the company money. The company, on the other hand, may take the position that engineers are paid both for periods in which their contributions are outstanding and for other periods in which their achievements are quite lackluster. As a result of these conflicting views, engineers often become dissatisfied, and they are easy marks for competing offers. Therefore, one way to maintain the integrity of your workforce is to give praise where praise is due for outstanding jobs. Everyone needs to valued.
An engineer’s ethics will be tested on the job many times during their careers. For example, consider the hypothetical situation where an engineer who knows of a design problem with the steering system of a new car is told that management decided that the $15 per unit required for repair of the design is too much. What should the engineer do? Have a discussion with the supervisor about the design? Send a memorandum questioning the decision and emphasizing that lives are at risk? Provide the press with information about the chosen design and the cost of alternatives? The ultimate decision becomes: when has the engineer done enough to discharge his or her ethical obligation. This has to be decided by each engineer on a case by case basis.
Alternatively, suppose the engineer becomes aware of a discharge of a carcinogenic chemical into a river used for drinking water. Does the engineer have a duty to report the discharge? If so, to whom: the engineer’s supervisor, the Environmental Protection Agency, the local authorities using the river for drinking water, or the press? No clear answers exist, hence the engineer must base such decisions on personal ethics and values. Over a hundred years ago, the Danish author, Henrik Ibsen, wrote a story entitled "Enemy of the People" where an engineer did exactly this – he tried to shut down the water supply of city known for its warming spa and healthful waters because of a bacteria in the water. He was ultimately chastised for his work. And the book bears the title "Enemy of the People". Under today’s standards, the "hero" of Mr. Ibsen’s book would be praised and not condemned.
The Constitution of the United States ensures that individuals who are citizens of the United States have many rights and freedoms. This means that we, as citizens, can do as we please up to the point where the things we do infringe upon the rights or freedoms of others. In other words, I have the right to swing my fist in air back and forth as long as I want to, up to the point where my fist reaches the tip of your nose. A crime is an antisocial act, but of course not all antisocial acts are crimes. Society is injured when a crime is committed, and a main purpose of trying a person accused of a crime and punishing him or her when guilt is determined, is to prevent recurrences of the criminal act.
In a criminal action, the state undertakes prosecution, wherein a civil action the case involves citizen versus citizen. A crime is an act that is prohibited by statute. As time passes and society becomes more complex, we tend to increase the number of laws defining certain acts as crime. For example, cyberhacking was not a crime a few years ago.
Often there is both a physical and mental component of a crime. The mental element is known as criminal intent, and many state statutes eliminate the requirement for proof of intent on the basis that the act speaks for itself, and the perpetrator intended the nature results of such acts. For example, if you point a gun at someone and pull the trigger, it is assumed you had the intent to harm that individual.
It is clear that basic morals and ethics form much of our society’s criminal laws. For example, the crime of homicide is based upon the Old Testament commandment "Thou shall not kill."
The law of intellectual property encompasses the following major subject matters:
1. Patents, design patents and plant patents;
2. Trademarks, service marks, trade dress, and unfair competition;
4. Trade secrets; and
5. Mask work protection.
Each of these types of intellectual property law protection prohibit the copying and/or use of another’s creation, when that creation gives rise to an invention, work of authorship, proprietary right in information, or an exclusive identification of source of goods or services. The purpose of this lecture is to acquaint the engineering student with the different types of intellectual property protection, so that the engineer may determine, when working on a project, what type of protection is or may not be available for the creative efforts performed in carrying out the underlying project.
As a general statement, patents, trademarks, copyrights and mask work protection are covered by federal law, and in the case of trademarks a parallel state law and common law system is also in existence. Trade secrets are controlled by state law and common law, and there is no federal registration system or state registration system for trade secrets. Patents, copyrights and mask work protection are solely within the jurisdiction of the Federal government.
Engineers often find themselves in the fortunate position of being in the forefront of inventing or improving upon the inventions of others. Inventions generally involve the application of scientific or technical principles to practical problems with a practical solution as the objective. Because of an engineer’s training and talents, the engineer should be alert to the possibilities of making inventions, of obtaining protection for the inventions, and of exploiting the inventions. The purpose of this lecture is to enable the engineer to determine whether or not the project they are working on can, will or did result in inventions or other types of intellectual property that should be and could be protected, who is entitled to such protection, what type of protection is available and suitable, and how does one proceed towards obtaining such protection.
One meaning of the word patent is "open or disclosed, obvious or manifest." These terms apply in different ways to the rights issued to an inventor by the United States Patent and Trademark Office, because the inventor must make a full and complete disclosure of the invention for which a patent is sought such that no material feature or component may be withheld from public disclosure upon publication, and later issuance, of the patent. The invention must also be useful, novel and non-obvious to be patented.
In consideration for disclosing the patentable invention to the public, the government grants the inventor the right to exclude others from making, using, selling, offering for sale, or importing the invention for a period of twenty years from the date of filing of the patent application. Following that twenty year period, the subject matter of the patent enters the public domain, and the patent right cannot be extended, except in certain specific cases.
Note that a patent does not give one the right to make, use, sell or import a product, since the underlying invention might violate regulations set down by the EPA, FDA or other governmental law or regulation. Also, use of your invention may involve violation of criminal laws.
Patent rights are property rights that may be bought or sold, mortgaged, licensed, given or willed to another as easy as any other asset. Contrary to common belief, a patent is not a monopoly, since one of the purposes of the patent law is to advance technology by having a competitor design around your patent rights, and thereby create a new and better product, thereby forcing you to get around your competitor’s product, which process continues the advancement of technology.
The U.S. patent laws were embodied in the Constitution when this country was created. The United States colonists brought the idea of patenting inventions to the new world with them, and prior to the U.S. Constitution, patents on inventions were issued by the individual colonies. However, a patent which issued in only one colony secured rights only in that colony. When the U.S. Constitution was written, it provided that Congress would have the 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. Thus, under constitutional mandate, patents and copyrights are issued for only limited times, and the rights they grant cannot go on forever. As discussed later, trademark rights, identifying a source of a product or service, can continue indefinitely.
The first United States patent law was enacted in 1790, and even the Confederacy during the Civil War adopted its own patent laws and issued its own patents.
The United States Patent and Trademark Office, headed by a Commissioner of Patents and Trademarks is now part of the U.S. Department of Commerce. The present Patent Statute was enacted in 1952, and is updated periodically with new legislation.
Under present law and court decisions, anyone who has invented or discovered any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered or sexually reproduced a distinct and new variety of plant may obtain a patent, unless:
Obtaining a patent is initiated by the preparation and filing of a patent application, and then submitting that application to the Patent and Trademark Office for examination for utility, novelty and non-obviousness. After the process of examination, which will be described hereinafter, the patent is issued, or is ultimately turned down.
Patents in the United States are applied for initially by individual inventors, since a corporation cannot apply for United States patent. The law is different in foreign countries, where patents can initially be obtained by corporations or other entities. The patent application in the United States is first applied for by a natural person or persons who are the actual inventors. Foreign nationals can also apply for patents in the United States. Patents may be applied for by sole or joint ventures. However, being a mere partner in an enterprise or providing financial assistance for a project does not make one a joint inventor. An inventor must collaborate and contribute to the conception of an invention. To name an inventor in a patent application who is not truly an inventor could lead to the voidance and unenforceability of the ultimate patent.
A United States patent has the attributes of personal property, and therefore its ownership may be assigned to another person, the same as any other asset. The assignment of rights in patents is accomplished using a written assignment document, and the assignment can take place either before or after the inventor obtains a patent. The Patent Office has a procedure for the recording of assignments, and if the Patent Office is not informed of an assignment within three months of such assignment, the first assignee to record the transaction will be the new owner of the patent even though the second assignee may have obtained the patent previously.
Usually, when an inventor works for a company, all patent rights are assigned upon filing a patent application to the company employing the inventor. Any patent resulting from that application will be granted to the company employing the inventor. It is also possible to assign a portion of the rights acquired in a patent. That is, you could assign an undivided one-half interest in the royalties resulting from a patent, or you can license or assign somebody certain rights under different claims of a patent.
Although patent rights initially belong to the inventor, what happens in a situation where the inventor uses his employer’s time and equipment in his creative activities. Should the employer have any rights to the invention?
Under current law, even if there is no contract providing that the employee assign any inventions over to his employer, if the employer’s time and equipment is used to create a patentable invention, a shop right is created in the employer, giving the employer an automatic non-exclusive, non-assignable license to use the invention. The shop right does not imply that compensation or royalties will be paid to the inventor, since the shop right arises from the employment relationship and the use by the inventor of the employer’s time and equipment. Under this scenario, both the inventor and employer have certain rights relating to the invention, and neither can totally exclude the other.
An employer’s shop right is implied when there is nothing in writing creating the shop right, and is based upon the premise that it would be unfair to allow the employee to use the employer’s resources and then refuse the employer any right to use the invention. However, the duty of the employee to assign patent rights of interest to the employer is normally the subject matter of a written agreement, signed by the employee on the first day of employment. The premise is that the employee is being hired to develop and create inventions on behalf of the employer, and is being compensated by his or her salary for doing so. Normally, such contracts are limited to those inventions in which the company has use. If the inventor comes up with an invention that is not used in the business of the employer, the agreements that I have seen usually state that the employee/inventor will have all rights in that invention. Also, if the employer could have rights in the invention, but is just not interested, the employer can assign rights in the invention back to the employee for exploitation.
Normally, such agreements relate to inventions made only during the term of the employee’s employment. If an employee leaves the services of the employer, the contract usually states that the assignment of inventions requirement will not pertain to inventions made at one’s new employment.
If you ultimately become the owner of a company or an enterprise, it is very important that you have a written agreement signed by all employees that they will assign any inventions they develop relating to the company’s business, whether made on company time or off company time, to you as the employer during the entire course of their employment. Otherwise, legal disputes could erupt regarding ownership of inventions that will only disrupt the continuing operations of the company.
The Constitution of the United States presents a dichotomy, however this is corrected in the patent laws. For example, to obtain a patent, the subject matter of the invention must constitute an invention, not a discovery. Although invention and discovery are used synonymously in the Constitution, the have a different meaning. Discovery refers to the recognition of something in existence that has never before been recognized, whereas invention is the creation and production of something that did not exist before. Under the patent laws, to be patentable, an invention must not only be new or previously unrecognized it must also be useful, and in addition must be something which is not obvious to or normally predictable by a person of ordinary skill in the related art. You cannot get a patent on discovering something that already exists, such as a law of nature or the law of gravity.
The standard of unobviousness as a requirement of patentability is very difficult to apply. Each invention is judged on its own merits, comparing the invention to the present state of the art in the field relating to the subject matter of the proposed invention. The purpose of the patent examiners of the U.S. Patent & Trademark Office is to initially determine whether or not an invention submitted for patenting is new, unobvious, and constitutes patentable matter. If litigation ensues over infringement of an issued patent, it is ultimately the judgment of the court that determines whether or not the patent covers a true invention. Since courts and patent examiners are humans, the decision could be fallible, and in some instances arbitrary. However, no adequate substitute for human judgment on the question of patentability has yet been found.
The constitutional provision requires that the object of patents is to promote the progress of science and the "useful" arts. There is a mandate that to be patentable, the subject matter of the invention must be useful, as well as new, unobvious, and not already known and used by others. For example, a description of the invention or discovery in a printed publication either in the U.S. or a foreign country can bar patentability. By "invention," the patent statute means that you are the first one to have created the particular invention. If the same invention is shown in a prior publication, then your invention is not new, and you are not the first to create it.
The patent statutes in the United States also state that publication of the invention by the inventor or anyone else more than a year before filing a patent application will bar the inventor from obtaining patent rights. In most foreign countries, that one year grace period does not exist, and an inventor must have a patent application on file in his national patent office before any publication or exposure of the invention to the public to prevent the loss of foreign patent rights. Under treaties, the constructive filing date of a foreign patent application is the U.S. application filing date.
Publication consists of making information about the invention available to the general public. A disabling publication does not occur if the information about the inventions is given to a restricted group of persons with the express or implied condition that the information is not to become public knowledge, such as under the provisions of a confidentiality agreement. Therefore, if you as inventors are to disclose your invention to anyone else prior to the filing of a patent application, it is very important that all such disclosures be under the provisions of a confidentiality agreement.
In order for a publication to bar the patenting of an invention, sufficient details must be present to enable the reader to make practical use of the idea. A published article which only presents a small portion of an invention, or hints at an invention, and does not reveal the invention, it not considered a publication that would bar patentability.
To prevent inventors from exploiting their invention publicly for years before filing for a patent, and thus extending their patent rights, the patent statutes provide that public use of the invention more than a year before the filing of a patent application defeats patentability. Under today’s law, the one year bar period begins to run upon the date that the invention was made public, if the invention was ready for patenting at the time of that public disclosure, offer for sale or sale.
The disclosure of an invention which is still in an experimental stage is normally not held to be a public use. Certain cases have held that a use more than a year before filing a patent application can still be experimental, even though the inventor may have made some profit in the transactions in showing the experimental nature of the invention. The "experimental" use is determined by the intent of the inventor and the nature of the inventions. Some things, such as paving for a highway, must be tried publicly during the experimental developmental stage.
Regular apparatus and process (method) patents must also be useful to be patentable according to the constitutional mandate. A design patent however, covers ornamental designs of useful objects. Most patents are considered as "utility" patents, from the requirement of usefulness. An invention that offers the public no benefits or something that is harmful or immoral should not be entitled to a patent.
If you submit an application for a patent, and the Patent Office questions the ability of the invention to perform as claimed, the Patent Office may require a working model to be demonstrated to the examiner. However, the requirement of a model is extremely rare these days, although approximately 100 years ago, models of inventions were required. As a rule of thumb, perpetual motion machines are normally not subject to patent protection, since they are not useful.
Generally, an idea or a concept is not patentable, but the machine, process or thing into which that idea or concept has been incorporated or embodied may be the subject of a patent. There are many categories of inventions which may be patented:
Debate continues today over the scope of the patentable categories. For example, it is possible to obtain a patent on a novel manmade microorganism. However, should public policy allow such patents to be issued on genetically engineered animals and plants, and if so are any limitations needed. At present, many ethical issues are being raised regarding the cloning of animals, patents related to DNA sequencing, and the use of chemically engineered foods without labeling. Also, in the future we can look forward to legislation regarding the patentability of cloning procedures. As a result of these ethical discussions, it is apparent that the patent laws will change over the years. For example, within the last several years, the patent laws were modified such that a method of treating the human body, such as a medical procedure, could not be subject to patentability, while pharmaceutical products maintained their patentable status.
When obtaining a patent, it is always preferable to obtain the assistance of someone who is trained in the patenting process, such as a licensed patent attorney or agent. There are two main reasons: The preparation and filing of a patent application involves many technicalities and complications that arise which require knowledge and skill of the applicable patent laws and rules and procedures. The patenting procedure is intricate, and only those with experience and knowledge of the patent process are normally able to advance a patent application through to issuance of a valid patent. Second, unless the patent is properly prepared to begin with, the inventor is likely to find that the wording used in the patent, which was very clear to the inventor, actually offers little or no protection, since it is quite restrictive. This is because the object of the patent is to obtain the broadest possible protection for the inventions and only those with experience in obtaining patents know how to employ the broad language used to expand the protection that should be accorded by a patent.
Since an inventor normally intends to exploit a patent for his own or his company’s gain, the decision to file a patent application is usually based on economic motives. Individual inventors attempt to get the greatest possible coverage for their invention, and that scope of protection is largely determined by the wording of the claims of a patent, which appear at the end of the description of the invention. An experienced patent attorney or agent always attempts to word claims in such a manner to obtain the broadest possible coverage.
However, the coverage to be obtained by the patent has its limitations. Primarily, the coverage of the claims of any patent extends only so far as justified by the nature of the invention and the novel features of the invention. The claims of the patent are limited by the state of the prior art, and the patent cannot claim any invention that has already been disclosed to the public by way of other patents or publications. Thus, the novelty of the invention and its scope of coverage, is primarily a function of the amount of prior art in the related field. Thus, an improved widget would normally have narrower claims if widgets have been around for a long time.
Also, in a strategic attempt to prevent others from entering the field in which the patent is useful, some companies attempt to patent inventions that are similar to what is already covered, by thus attempting to create a fence around their technology. This process is known as "blocking" and is commonly used by many large enterprises. By obtaining numerous patents that cover many various features, the owner of the patents makes it more difficult for someone to enter the market without encountering an infringement barrier.
When developing a new product, you cannot assume that just because something is not on the marketplace or being manufactured and sold commercially that is not disclosed by a patent or other publication, which would stand as prior art barring the patenting of a presumably new invention. Thus, once an invention has been completed, it is wise to conduct a prior art search amongst the over six million issued United States patents, which are divided into subject matter categories, to ferret out any patents or publications relating to the subject matter of the invention, to determine if the invention is indeed novel, and the scope of the claims of the prior art patents. The search prior to the filing of a patent application is not a prerequisite, nor is it legally required, however, it is good practice to determine state of the prior art before attempting to obtain a patent. In certain cases, the prior art will show the same or a similar invention, thus advising the inventor not to waste money in attempting to file a patent application.
It is also prudent during the conduct of a preliminary novelty search to also conduct a limited infringement search, to determine whether there are any unexpired patents in existence which may be infringed as your development project continues. At this point, however, your invention is not finished and the commercial version has not yet been developed. Therefore, it would also be wise to conduct a further full infringement search to determine whether any third party patents would be infringed when the project is completed.
The patent application includes three parts primarily, the specification, the claims and the drawings. When filing a patent application, a government fee must be filed, and additional fees may later be required regarding various amendments and responses. Also, a final fee is due upon allowance of the patent, and once issued, additional fees are due to maintain the patent in force. These fees usually range in the neighborhood of hundreds or up to a thousand dollars. Therefore, if the patent is successful and the company desires to keep it in force, these patent maintenance fees and government fees are miniscule.
The purpose of a patent specification is to clearly describe the invention such that anyone skilled in the field to which the invention pertains could by using the specification reproduce the invention and use it once the patent has expired without undue experimentation. Again, under present law, patents expire twenty years from the date of filing the initial application. These patents may not be renewed.
The drawings of the invention are required in all cases in which they are meaningful to describe the invention. In certain chemical compound cases, drawings are not necessary. Normally, in patenting an electrical circuit or computer flow diagram, and in mechanical cases, drawings are necessary. Also, certain process and method applications are usually void of drawings. An anomaly occurs today in that flow diagrams normally accompany patent applications regarding software, although the developers of software these days do not use flow charts. The patent attorney or agent will ask the inventor to "reverse engineer" a flowchart for use in the patent application. A patent application can be initially filed with informal drawings, however, eventually the drawings have to be inked and submitted to the Patent Office in a formal manner to allow printing of the patent application.
The specification of a patent application describes the various views shown in the drawings, and describes the invention both in terms of structure, and the functions of each of the structural elements. Before this explanation however, the patent application usually includes a statement of the background of the invention, setting forth the problem in the prior art to which the invention is directed towards solving, examples of other patents and other inventions which have attempted to solve the same problem, a statement as to how those others inventions failed to solve the problem, and a statement of the results or objects which your invention is aimed at reaching. This statement is usually in the form of results, and not a statement of the elements or the function of the invention.
The summary of the invention, which follows the background, sets forth a brief summary of the elements, and the function of those elements, comprising the invention. Following the summary of the invention is the brief description of the drawing figures, followed, by the detailed description of the illustrated embodiment or embodiments of the invention. This description usually uses numerical designations to refer to elements on the drawing, and the drawing uses numerals and lead lines to refer to the elements set forth in the specification.
Following the detailed description of the invention are a series of numbered "paragraphs" which are the claims of the invention. The claims set forth what the inventor considers to be the definition of the invention. The claims sets forth the metes and bounds or limits of the invention, and defines that technology which is exclusively reserved to the patent holder. From the patent applicant’s point of view, the broader the coverage in the claims, the greater the rights which the patent will provide. For example, rather than defining a spring as a spring, the spring should be defined as a resilient member, which would encompass all types of resilient elements, including springs.
The claims as set forth in a patent application should be an attempt to define all products coming in the future that would compete with the invention. At the same time, the claim cannot "read on" any prior art or subject matter that is already in the public domain, such as material described in previous patents or publications. It is normally the function of the patent attorney or agent to define that narrow line between a claim which has elements not shown in the prior art, and at the same time, would be broad enough to cover any future device of similar nature. Copies of issued patents and publications are available to the public, and to the patent examiners when they conduct their searches to determine whether or not the claims in an application are set forth in the prior art.
If a particular patent appears to cover a highly profitable product or process, more competitors are likely to try to approach the invention as close as possible without infringing the claims. This is where the scope of a patent’s claims are tested. Prospective producers of patented articles may go to great lengths to avoid the payment of royalties, and may make the effort to design around a patent claim. This is the way that technology is advanced by way of patents. By a patent owner fencing out the technology which that inventor has a lawful right to claim, other competitors are forced to come up with improved devices to get around the patent.
It is difficult to predict in advance what portion of an invention will ultimately turn out to be most important during the 20 year life of a patent. Therefore, a considerable amount of imagination must be used in drafting patent claims. Experienced patent attorneys and agents are trained in the use of such imagination.
The original claims in the patent application should include some written as broadly as a preliminary investigation will allow. Later during prosecution of the patent application through the Patent Office, these broad claims may be narrowed through amendment, if necessary.
Upon the filing of a patent application in the United States, each inventor must sign a declaration or an oath stating that he or she believes himself or herself to be the first and original inventor for the technology covered in the patent application. The patent application can be filed on behalf of a sole inventor, or several or joint inventors. Each inventor must sign a declaration to this effect. By stating that he is the first inventor, the inventor states that he himself or the joint inventors have participated in the invention. By stating that they are the only inventors, they are stating that they have not seen the object previously anywhere else. For example, an inventor cannot honestly sign such an oath if they observed a device in a foreign country, realized that that product was not available in the United States, and came back to the United States and claimed that they were the inventors of that product. They were not, since the product was seen overseas.
A completed patent application with all formal papers signed is submitted to the United States Patent and Trademark Office, where it is then sent to one of the examining divisions which specializes in the subject matter to which the patent application pertains. In the examining division, the application is submitted to a patent examiner who has experience in examining patent applications relating to the subject matter to which the application pertains. By today’s schedule, an application may wait for 6 months or 1 year or more before the examiner gets to that particular application, conducts an examination, and responds to the applicant or the applicant’s attorney or agent in a first "Office Action."
The application is examined for two primary considerations. First, the form and content of the application must comply with the strict requirements of the patent law and the rules of the Patent Office. For example, each of the claims must be in a form such that they can be understandable by someone skilled in the art, and not indefinite or ambiguous. Also, the patent application can only be directed to a single invention, or else the applicant must select one of the inventions described in the application to proceed through examination, while a divisional application must be filed covering the second invention in the same application.
Next, the examiner gets to the second and more important questions of novelty of the invention, and the unobviousness of the invention. The patent law has two distinct standards for the issuance of patents, the first being that the invention be novel compared to the prior art, which means that the same invention as claimed is not shown in all of its elements in the prior art. The second major consideration is that the differences between the invention and the prior art, assuming there are such differences, would not be obvious to one of skill in the art. This is a very difficult standard to apply, and is usually met by the patent examiners by combining two or more prior art references to show that all of the claimed elements are taught in the prior art, and at least one of the pieces of the prior art shows that the combination itself can be made. To determine obviousness and novelty, the examiner searches a file of prior patents, which are organized in the Patent Office by subject matter. The examiner also searches a collection of foreign patents, trade publications, newspaper articles, and other information readily available to the examiner through computer assisted search tools.
Once the examiner has read the claims of the patent application, and has conducted his or her search, and has reached a conclusion as to the novelty and/or non-obviousness of the claims of the application, the examiner’s work product is communicated to the applicant or the applicant’s attorney or agent in a letter known as an Office Action. The examiner has the option of rejecting all of the claims, rejecting some of the claims and allowing some of the claims, or allowing all of the claims. The normal content of an Office Action is to reject those claims which the examiner considers as not novel or not unobvious, and to allow those claims which set forth allowable subject matter. If some claims are allowed and others are rejected, the applicant may obtain a patent including the allowed claims by canceling the rejected ones, or filing a continuation application with the rejected claims, leaving only the allowed claims in the patent application originally filed. Also, the applicant has the option of rewording or further restricting the rejected claims to resolve the conflict between those claims and the prior art cited by the examiner. The applicant also has the option of choosing to abandon the application. However, if the patent application covers a viable product for the applicant, the patent application process will proceed, rather than result in an abandonment.
The applicant’s attorney or agent, after receiving an Office Action, has the responsibility to determine what amendments and/or arguments can be made to the examiner to overcome the grounds of rejection and objection to the claims of the application. In some instances, the patent attorney or agent decides that it is worthwhile to have a personal interview with the examiner to discuss the content of the prior art upon which the examiner is relying in the Office Action. In reviewing the prior art patents and other materials cited by the examiner, the attorney or agent normally amends the claims of the application to add limitations that are not found in the prior art, and then to argue that these new amended claims are allowable over the prior art. They attorney also has the option of stating to the examiner that the examiner’s interpretation of the prior art is wrong, and therefore the claims are allowable as originally written, and no amendment is necessary. The comments of the attorney or agent are set forth in a document which is filed with the Patent Office within a prescribed time period, and contains all appropriate amendments and changes to cure the defects cited by the examiner. The amendment is then sent to the Patent Office where the corrections are made in the originally filed application in accordance with the patent attorney’s directions.
After submitting the amendment or other response to the first Office Action to the Patent Office, another short waiting period occurs in which the examiner reviews the newly filed comments of the patent attorney, and again responds with a second Office Action. Under normal circumstances, the second Office Action is "Final," however, the applicant has an opportunity to respond to a Final Office Action in an attempt to overcome the rejections and objections stated in that Office Action, and to obtain allowance of the claims. If the second response by the applicant does not cure the deficiency set forth in the examiner’s Final Office Action, the applicant can then (1) appeal the examiner’s decision, or (2) pay a new fee, file a continuation application, and continue the prosecution of the patent application before the examiner.
A Final rejection, as stated above may be appealed to a higher tribunal, which is the Patent Office Board of Appeals and Interferences within the Patent Office itself. Frequently, the Board will respond to your appeal by submitting the appeal issues back to the examiner for further consideration, or the board itself will examine the grounds of rejection and determine whether your arguments on appeal are sufficient to overrule the examiner and allow claims that were previously rejected.
If the Board of Appeals and Interferences of the Patent Office ultimately decides that no patent will issue upon your application, the application also has a further appeal route to the United States Court of Appeals for the Federal Circuit or the United States District Court.
Unlike the patent laws of most major foreign countries, the United States patent system is based on the proposition that one who is the first to invent an invention is entitled to a patent. Most other countries are based on a first to file system, where the inventor who first files a patent application is entitled to the patent, regardless of who the first inventor is.
An extremely low quantity of patent applications filed in the United States Patent and Trademark Office becomes involved in patent interference proceedings, where two inventors claim the same subject matter in each of their applications. An interference may also arise as a conflict between a patent application and an issued patent, which patent issued less than one year before the filing of the pending application. The interference proceeding in the Patent Office is designed to determine who is the first inventor of the subject matter of the patent. The winner of an interference proceeding may proceed to prosecute the patent application to issuance of a patent.
Interference proceedings are decided on the basis of evidence presented to the reviewing body, which is the Board of Patent Appeals and Interference. These proceedings involve examination of records of conception of, and the deligent efforts to reduce the invention to practice, and these records must have been made and kept if a contestant is to have a chance at winning. Therefore, it is often the case that an initial concept of an invention on a cocktail napkin is submitted as evidence in an interference proceeding to show the first time the invention was discussed or written down. The possibility that an invention may ultimately end up in an interference proceeding is the primary reason why most corporations and research organizations require research staff members to keep notebooks of all of their technical activities, with the pages serially numbered and entries dated and witnessed. This is to insure that in the future, a company or inventor can easily establish the first dates of conception and reduction to practice of the new technology.
Two dates are important in determining a date of invention. These are the date of the conception of the invention, and the date of its reduction to practice. If a party proves that it first conceived the invention and also first reduced it to practice, that person is entitled to the patent. The inventor may also be required to prove that he or she pursued the idea of the invention with reasonable diligence between the points of conception and reduction to practice. For example, if the other party in the interference was not the first to conceive the invention, but was the first to reduce it to practice, the first party may obtain the desired patent by proving that the adversary temporarily abandoned the idea between the dates of conception and reduction to practice. Proof of reduction to practice requires the testimony of someone who actually saw the invention in operation, or in a functional form. Note that the filing of a patent application constitutes a "constructive" reduction to practice, as compared to actually building an operable model, that constitutes an "actual reduction to practice".
Most patent issues between the applicant and the examiner are resolved satisfactorily during the prosecution stage, and either a patent results, or the application becomes abandoned. If the patent is allowed, the applicant is sent a notice of allowance and the patent will issue in due course upon the payment of the final issue fee.
Once a patent issues, the patent owner, be it the inventor, or company, or other entity to whom the patent owner has assigned the patent, has a lawful right to exclude others from making, using, selling, importing, or offering for sale the invention covered by the patent claims in the United States and its territories. The U.S. Patent Statutes provide the patent owner with the right to seek injunctions against infringements, and damages for past infringements, by enforcing his or her patent in the United States District Courts. The relief sought in patent cases is normally recovery for past damages for infringements, if there are any, and an injunction against future and additional infringements of the patent until the date of the expiration of the patent. In patent infringement actions, the claims of the patent are compared with the allegedly infringing device or process. It is here that unnecessary restrictions or limitations in the claims placed there during patent prosecution before the Patent Office are likely to prove costly. For example, if the claim includes one or more elements which are absent from an accused device, there is no infringement, unless the accused device includes equivalent structure to those that are eliminated from the patented structure. The infringement question is defined solely by the claims which are allowed, and a narrow scope of equivalence whereby the infringer cannot merely substitute known equivalents for elements in the claim to avoid infringement. By way of example, where a patent claim requires the use of a microprocessor, the use of a hardwired control circuit in the alleged infringing device may lead to a conclusion that there is no infringement. If the original claims in the patent application as filed covered the use of a microprocessor and a hard wired circuit, and the patent owner during prosecution deleted or cancelled the hardwired circuit claims in the face of rejection by the examiner, the hardwire device clearly would not be an infringement. However, where the claims of the patent are broad enough to cover the use both of a microprocessor and a hardwired control circuit, i.e., where the patent claim talks about a "control circuit", there may be infringement under the Doctrine of Equivalents.
In the court, the Plaintiff usually attempts to show that there is infringement of the patent in suit either literally, which is a word-for-word correspondence between one or more patent claims and the accused infringing device, or under the Doctrine of Equivalents which states that if there is a difference between a patent claim and the accused device, and the missing element in the accused device leads the device to function in the same way to produce the same result, there still could be patent infringement under the Doctrine of Equivalents.
The defensive posture in a patent infringement case is based normally on two grounds. First, the defendant attempts to prove that the patent is invalid based upon prior art being introduced into evidence, which prior art was not used by the examiner during the prosecution of the patent in question before the Patent Office. Secondly, the defendant attempts to prove that the alleging infringing device or process is not an actual infringement at all.
The patent statutes state that once a patent issues from the United States Patent and Trademark Office, there is a presumption in favor of the patentee that the patent is valid. Therefore, in litigation, the burden shifts to the Defendant to argue that the invention was not novel, or was obvious, or that during the prosecution in the Patent Office, some disabling "inequitable conduct" occurred, such as a failure by the patent owner to inform the examiner of relevant prior art of which the inventor was aware. Again, the prior art presented in evidence by the Defendant in an effort to overcome an issued patent in litigation must be prior art that was not considered previously by the patent examiner during the prosecution of the patent before the Patent Office.
Patent infringement may result in the patent holder being awarded a right to damages for past infringement, an injunction against future infringement, and if the infringement was proven to be willful, punitive damages up to three times the normal damages may be assessed by the Court. Willful infringement is proven when the evidence shows that the infringer knew of the patent in question, had knowledge of its claims, and yet took no action to avoid infringement.
In practice today, most companies or developers have their patent attorney or agent conduct an infringement analysis prior to making their product available to the public. This infringement analysis normally results in an opinion by the attorney, setting forth reasons why the new product will not infringe any of the patents considered. Then, if one of the owners of the patents that were considered during this infringement analysis decides that there is infringement, and a lawsuit is filed, and that the defendant acted willfully, a defense against the willful infringement charge is presented showing that the alleged infringer acted upon advice of counsel who cleared the device from any infringement problems, and therefore, there is no charge of willful infringement. Thus, it is important prior to introducing a new product to the marketplace, to have a patent attorney or agent review the invention for possible infringement issues. This avoids any later charge of willful infringement that may lead to trebelled damages. Since these opinions are analyzed thoroughly by the Court during litigation, it is highly important that these opinions be thorough in their examination, analysis and conclusion.
Where infringement is found, a patentee may be compensated in an amount which is at least equivalent to the royalties the inventor lost. In a situation where there is no competing product on the market, the inventor may be able to recover lost profits, which normally is a higher measure of award then the royalty basis.
When commencing a suit for patent infringement, the patent owner seeks damages from the time of notice of the patent in suit by the Defendant to the time of the lawsuit, and beyond if there is infringement beyond commencement of the lawsuit. Thus, the Plaintiff must have previously informed the Defendant of the existence of the patent prior to the litigation. This can be done by an actual letter to the alleged Defendant, or it can be done by marking patented products with a patent number from the day that the patent issues. If the patent owner’s products contain the number of the patent beginning on the day that the patent issues, then all potential infringers are constructively held to have notice of the existence of the patent, and the patent owner can then sue for infringement back until the time that the products were so marked.
The terms "patent pending" or "patent applied for" do not have the same legal force as marking your product with a patent number. A negative result can occur when these terms are used when, in fact, no patent application has been filed. The court may hold that the purpose was to defraud the public and the result is that the patent may be held unenforceable.
Criticism aimed at the patent system is based upon time and money. First, it takes a relatively long period of time to obtain an issued patent once the patent application is filed. This is normally due to the staffing of the Patent Office and the increasing amount of patent applications that the examiners have to handle from year to year. However, the delay in obtaining a patent is seldom a hardship. Recently, the patent law was amended to make a patent’s period of enforceability 20 years from the date of filing. Thus, it would be in the applicant’s best interest to obtain the patent at the earliest possible time. However, it is normally the case that the product is being developed for marketing at the same time that the Patent Office is examining the application.
Should the applicant be threatened with an infringement while the patent application is pending, the Patent Office, upon request, will examine the application out of order to expedite the examination process, issue the patent earlier if it covers patentable subject matter, and allow legal action to commence against the infringement. No infringement action can be brought until a patent issues from the U.S. Patent and Trademark Office.
The monetary outlay for obtaining a patent through the use of a professional patent attorney agent presently amounts to approximately $7,000-$20,000. Obviously, some are higher, some are lower. The probable cost in time and money should be balanced against the expected results. If economic analysis shows that the venture protected by the patent is likely to be highly profitable, then the amount of fees paid to the patent attorney pale into insignificance, and the patent should be obtained. Under the system prevailing in the United States and other countries, either a patent is obtained on a product to protect the inventor’s rights in the invention, or the invention is dedicated to the public and falls into the public domain. There is no middle ground.
Members of industrial research staffs sometimes argue that they are not adequately compensated for patents obtained on inventions they develop, which are later assigned to their employers. The argument from the employment side is that the staff member is paid to invent products for the company, and is paid not only for the time during which something worthwhile was produced, but also for the time when the efforts of these research staffs were not so productive. Further, the employer argues that it has an investment in the research facilities which must return a profit.
Some corporations do pay a nominal amount to their inventors upon the filing and/or the issuance of a patent. These arrangements are worked out between the employees and the companies on a case-by-case basis.
One criticism that appears to be reaching a crescendo these days is the public interest and welfare in patented subjected matter. By way of example, if someone invents something of great public benefit such as a cure for a rampant disease, it is possible for the inventor of that cure to produce very limited amounts of the cure and sell it at enormous prices, where all but the wealthy would be deprived of the cure? This is a rather appalling prospect. Today, many critics, including a Supreme Court Justice, are looking into issues just like this and attempting to find a balance within the patent system between the public welfare and the rights of inventors. At present, in the United States and most other industrialized countries for example, you cannot get patent protection on a human medical procedure. You can get patent protection, however, on pharmaceutical products and medical devices used in medical procedures.
Another problem arises when patents, which are exclusive rights to make, use, sell, offer to sell, and import, run into the antitrust laws which set forth our national policy favoring open competition. Sometimes, the attempt to extend the scope of the exclusive rights under patent laws by such elements as pooling arrangements, tying clauses, marketing arrangements and the like are examined very carefully by the courts under the antitrust laws.
A trademark, or service mark, which has nothing to do with patents or copyrights, is the name or symbol associated with a product or service which identifies that product as coming from a single source, such that the reputation or goodwill of the manufacturer or supplier , is embodied in the trademark or service mark. Trademarks and service marks, like other forms of intellectual property, are assets and can be bought, sold, licensed and used by the owner. In the United States, there are two bodies of trademark law. The first is the United States or federal law which is the Federal Lanham Act of 1946, and various amendments thereto up to the present. Second, state statutes and state common law provide protection for trademarks that are not used in interstate commerce. Under the Federal Lanham Act, a trademark is defined as including any word, name, symbol or device, or any combination of the same, adopted and used by a manufacturer or merchant to identify its goods and distinguish them from the goods manufactured or sold by others. A service mark is any of the same which would distinguish services amongst providers of those services. Thus, a trademark or service mark is a source identifier, even though the observer of the mark does not know exactly where the products or services come from. For example, one seeing the "Scotch" brand on various products knows that all of these products come from the same company, and need not know that the company is known as Minnesota Mining and Manufacturing Company, or 3M.
Trademarks evolved many centuries ago where guilds and others put their symbols on their products so that their reputation as being fine craftsmen could be carried through their products. During the early industrial revolution, when goods were manufactured primarily for local sale, there was little need to identify the manufacturer. However, with specialization in manufacture and expanded marketing, successful advertising came to require that the manufacturer’s products be identified. Since the value of a trademark is in identifying the products of a particular manufacturer and distinguishing the goods of one manufacturer from similar goods of the other manufacturers, the goodwill or value of a trademark is considered to be intangible property, something that you cannot put your hands on. Under trademark law, the more common the mark or expression used, the more difficult the mark is to be claimed as a trademark. When a trademark or service mark is created, that term is then taken out of the public domain and can be used only exclusively by the trademark owner. Thus, it is impossible to obtain trademark rights for words that, in themselves, describe something generically, as a pencil or automobile, since these words generically describe the goods. Thus, the first rule of trademark law is that a generic word can never become a trademark.
A "descriptive" trademark is one that describes the goods or services, their characteristics, function, uses, ingredients or target audience. As compared to generic marks which can never be trademarks, descriptive marks can in certain situations be legally protected as trademarks. Under present law, if a mark is deemed descriptive, such as Corporate Woman for clothing directed to women who work primarily in corporations, the mark can obtain trademark status by being used for approximately 5 years, and eventually becoming known as a trademark identifying the goods of the manufacturer who owns the trademark. This "new" value to the trademark is known as "secondary meaning", the descriptive meaning of the term being its primary meaning. Once a descriptive mark obtains such secondary meaning, it is said to have "gained distinctiveness," and the mark may be registered as a trademark or service mark. Likewise, geographical names and family names present descriptiveness problems. These problems can be overcome in some cases if they are used and advertised sufficiently so as to identify the source of the goods or services. For example, a new company, started by people with the name Ford, could not manufacture automobiles because of the strong identity in the name Ford with the present Ford Motor Company. There is still division amongst the law in several states, where some take the position that everyone has an absolute right to use their own name in their business. However, this is not true where the use of that name would infringe the trademark or service mark rights of another.
The next category of trademarks are suggestive marks, those that suggest a quality of the goods, but do not identify that quality. These are marks where it takes some mental gymnastics to identify a characteristic of a product with the trademark. Suggestive trademarks are registrable without showing secondary meaning or gained distinctiveness.
The strongest trademarks are newly coined terms that have nothing to do with the goods, and have no meaning in the English language, or possibly any language. Kodak is a prime example of such a word, which means nothing in English and means nothing in any other language. Strong trademarks also derive from the combination of English words that have nothing to do as a descriptor of the products with which they are identified, such as Blue Bird for televisions sets or Ivory for soap.
Trademark or service mark rights may be ultimately lost if the mark becomes established amongst the public as a term descriptive of or generic of the particular products. For example, "aspirin", "cellophane" and "escalator" were once exclusive trademarks, as well as "thermos". All of these marks are now in the public domain used by competitors to describe their particular products. Thus, you will often see companies engaged in broad advertising campaigns persuading the public not to use their trademark in ways which generically describe its goods or services.
Trademark rights are established in the United States by the first user of the mark, or by one who files an application expressing an interest to use a mark, and then does use the mark within a specified time. Other countries have a different rule which we will cover shortly. Also, trademark and service mark rights must be established by using the mark in connection or association with the sale, or offer for sale, of the particular goods or services. A trademark is never used alone, it is always an adjective followed by the descriptive name of the goods or services with which the mark is being used. Thus, Xerox alone should not be used, the proper use is a Xerox copying machine.
If a marketer of competing goods uses an established mark which is the same as, or is confusingly similar, to an established mark the second user may be enjoined from continued use of the mark, and may have to pay damages to the first user of the mark. If the second use of the mark was intentional, and an attempt to ride on the first user’s advertising coattails, punitive damages as well as attorneys’ fees may be awarded to the first user of the mark.
Infringement under the trademark law is defined as using a mark which is confusingly similar to another. One mark is confusingly similar to another if there is a likelihood of confusion, mistake or deception amongst the public as to the source of the products. Therefore, after a decision has been made by a manufacturer to launch a new product under a new name, a search should be conducted to ensure that that particular trademark is available for use for the intended products. A search is normally conducted amongst the database of registered and used trademarks and service marks in the United States to determine whether anyone else is using a mark, registered or not, that may be confusingly similar to the new mark the company intends to use for related goods or services. If the person conducting the search determines that there is such a likelihood of confusion, the prudent company will select a new mark, and that mark will also be searched to secure its availability.
There are many instances where the second user of a mark has begun use of the mark without conducting an appropriate search to ensure availability of that mark. Upon beginning use of that mark, the second user of the mark usually finds themselves facing a federal or state court defending an action brought by the first user of the mark attempting to stop the second user from using that mark. The issues before the court will be the similarity of the names or marks in their sound appearance and commercial meaning. Also under consideration would be the similarity and the nature of the goods or services, and the similarity in the marketing channels for the goods or services. Also, the strength of the first user’s mark, and the number and nature of similar marks used by third parties also may be factors in considering the ultimate issue of likelihood of confusion. Also, any evidence of actual confusion between the two marks is considered. From this, the court will determine whether there will be a likelihood of confusion, and if there is, the second user is immediately enjoined from using the trademark, which causes costly recalls and the removal of products from shelves and loading dock storage areas.
One of the criteria for determining whether a likelihood of confusion exists between two trademarks is the strength or weakness of a particular mark which has been used first. If many different businesses use a particular word in connection with their goods and services, so that the word has become diluted or weak, then a first user of that word will have great difficulty convincing a court that some subsequent third party use of that same word should be prohibited on the basis that it is likely to cause confusion. Such a word is "United", which is used as a mark by many businesses, alone or in combination with other words. None of these businesses compete, however, so the likelihood of confusion is very remote. The theory is that since so many businesses are already using the word, no harm can result from additional uses of the same word in an unrelated business.
The Federal Lanham Act, and each of the state trademark acts, provide for the registration of marks so that searches can be conducted to determine whether someone else is using a mark, and the second user can avoid infringing another mark. Prior to the federal law and the state laws, under the common law of the United States trademark rights were created upon use of the mark by the first user, and those rights extended only to the geographic areas in which the mark was used. The federal registration system expands those common law rights to the boundaries of the United States. Since 1989 it has been possible to apply for federal trademark registrations in the United States that had not been used as of the filing date of the application for registration. However, the applicant must express a bona fide intent to use the mark in commerce, and prior to obtaining registration must submit proof of such use in commerce to the Trademark Office. Trademark registrations under present law continue for a period of ten years, and if the mark is still in use after the ten-year period, the registration is renewable upon application every ten years. Therefore, unlike patent rights and copyrights, trademark rights may go on forever. For example, it is the author’s understanding that the trademark "Lowenbrau" has been in constant use for many centuries.
A trademark license is created where one owning a trademark right gives permission for someone else to use the mark in a manner that may be considered an infringement were it not for the permission granted by the license. A franchise is a term given to a specific type of license that affords the owner of the mark greater control over the business of the franchisee. Trademark licenses normally are complex arrangements, since the concept of a mark identifying a single source of products is being "stretched" by the license. For example, all of the owners of franchise fast food restaurants in the United States today are not the same company or individuals. The complexities of license arrangements range from a basic license to use a trademark, where the owner of the trademark has the right to inspect and control the quality of the products produced by the licensee under the trademark, to a complex system in which the licensee receives the right to use the trademark, confidential know-how useful in the production of the goods or services sold under the trademark and the benefit of widespread advertising. The latter arrangement probably would be considered a franchise, and once arising to the level of a franchise, a trademark license falls under certain controls and regulatory standards in most states throughout the United States. One provision of both a license and a franchise is that the licensee must submit to strict control of the quality and nature of the products sold under the license, so that each time a person sees the brand name, no matter who owns the store or who made the product, the quality of the product will be the same.
Under the American competitive system, licenses and franchises are generally deemed beneficial to the public since they tend to promote competition and assure a certain standard of quality. They also provide an efficient means of combining centralized planning, direction and standard setting with a degree of local control and initiative. Therefore, by way of example, a local businessman can own one or more local franchises of the McDonald’s, Burger King, Midas, Wendy’s, etc. However, by adhering to a uniform quality control mandate, the customer knows that no matter which of these stores of the same name they go into, they will receive the same product quality. It is also a requirement that the licensor continually monitor the goods and services used and sold under its licensed trademark, to ensure that the standards do not fall, and the good will of the trademark is eradicated.
The United States Constitution, as with patents, provides Congress with the right to enact laws protecting the rights of authors. This has resulted in the enactment of the Federal Copyright Law, the most recent version being enacted in 1976 after 21 years of Congressional hearings. The Copyright Law of 1976 took effect on January 1, 1978. The law was completely revised at that time, since it was updating a previous law of 1909. You can imagine the different types of expression that were created between 1909 and 1976. Radio and television are only two such examples. There have been minor amendments to the law also since 1976, primarily in extending the time in which a copyright may exist in a work. Since copyrights fall under the Constitutional mandate, they also fall under the provision that Congress can grant these rights only for a limited time. Since copyrights now may be granted for up to 120 years, certain groups have taken issue with the Congressional action as extending the copyright for too long a period. This argument is still ongoing, and there remains to be seen whether a conclusion will be reached.
The concept of a copyright is not easy to grasp. The copyright laws are designed to prevent the copying of an author’s, artist’s or other creator’s work, or in some instances, preventing performance of that work in public. Visualize if you would the original, physical copy of the author’s work, be it a written work, software, music, a sculpture, words to a song, a dance or any other material that fits within the realm of a copyrightable work. Imagine, hovering over that work are several intangible rights of copyright provided by the Federal Copyright system. The mere creation of a copyrightable work instantly creates these intangible rights of copyright that are owned by the author of the work. As will be discussed later, the "author" could be creator, or it could be the employee of the creator.
While someone might purchase an original physical copy of an author’s work, such as an original painting, or a lithograph, that purchaser will have the right to look at, privately display, and enjoy the painting, if it’s a book to read the book, and if a piece of music to play the music for his or her own enjoyment. However, unless the purchaser also purchased at the time the intangible rights of copyright in that work, the purchaser does not have the right to make copies of the work, to use the work to prepare derivative works, or to distribute copies of the work to the public. The purchaser does not even have the right to publicly display the work except under certain conditions. The present copyright system, as modified a few years ago, automatically protects all original works of authorship which are fixed in a tangible medium of expression. The requirement of "originality" is met by most works, so long as they embody some creative effort, and are not merely copies or plagiarism. There are some instances where works fail to meet the originality requirements, especially if the work consists of factual, historical information or previously published material. However, compilations of factual or historical information, even the telephone directory, are susceptible to copyright protection as a new "compilation" of material. As soon as the work is fixed in some tangible medium of expression, the copyright laws come into play. For example, fixing an electronic program on a CD, disc, or hard drive is considered as being fixed in a tangible medium of expression. Thus, once the work is reduced to writing or recorded on a tape or a phonograph or on a CD or hard drive, the Federal Copyright Act automatically applies and the intangible rights of copyright are created in the author.
Ownership and transfer of the original, physical copy of the work are covered by state concepts of contract law. However, the federal copyright laws do govern the ownership, transfer and protection of the intangible rights of copyright that flow from the creation and fixation of the original work in a tangible medium of expression. For example, the federal copyright law controls who may inherit rights of renewal in certain copyrightable works. Instances usually arise when music written by a deceased person is subject to copyright renewal and arguments arises to who has the right of renewal.
One of the principle tenets of copyright law is that the copyright laws do not protect ideas; they only protect the form of expression of an idea. By way of an example, the idea of writing a novel about a debonair gentleman living in the south at the time of the Civil War would be an idea. However, flushing that idea out into a novel about Rhett Butler constitutes the form of expression of that idea. Thus, the novel is protectable, the idea is not.
The rights obtained under copyright are exclusionary in nature; they allow the copyright owner certain exclusive rights with respect to the work and the right to prohibit others from engaging in those actions. The federal copyright laws give the owner of the copyright five tangible exclusive rights:
1. The exclusive right to copy or reproduce the work;
2. The exclusive right to prepare derivative works based upon the original work;
3. The exclusive right to distribute copies of the work to the public by sale or other
transfer of ownership, or by rent, lease, lending or license;
4. The exclusive right to perform the work publicly if the work is a literary, musical,
dramatic, choreographic, audio visual work, a pantomime or motion picture; and
5. The exclusive right to display the work publicly.
This bundle or rights can be licensed in one fell swoop, or can be broken up and each right can be sold or licensed independently of the others. For example, the owner of the copyright in a literary work, such as a novel, can license a publishing house to publish the book, and then issue a second license to a movie studio to make the movie. A third license can be granted to present the book in segments over the Internet, and a fourth to create a stage drama or musical adaption of the novel.
Unlike the federal patent system, the rights of copyright do not apply to those who have happened to create an identical work, wholly independent from the original work of the author, without any copying. To prove that the owner or user of the second work is an infringer of the earlier copyrighted work, the copyright owner must prove that the infringer actually copied the copyrighted work, or actually distributed copies of the copyrighted work, or actually used the copyrighted work to prepare derivative works. An independently created work is not a copyright infringement. The theory of copyright infringement lies in the first four letters of the word copyright, e.g. copy.
Also, once the copyright owner has sold a copy of a work, unless specifically provided otherwise in the contract of sale, there is no limitation on certain of the buyer’s rights to "use" the work. For example, when a copyrighted novel is sold to a buyer, the buyer can use the work by reading it as many times as he or she wishes, or the buyer can sell, lease or rent that copy of the work to another, or the owner may even mutilate and destroy the work. However, the user cannot copy the work. The same is true of copyrighted drawings, manuals, or the product literature of a company which is sold to third parties without any specific limitations on how the third parties may use the works. However, a competitor of a company producing product literature cannot copy the product literature of another in advertising and offering its own products.
There is one important limitation on the exclusive rights granted to the copyright owner. This is known as the doctrine of "fair use," which are acts which are not considered an infringement of the copyright. The fair use doctrine was long a part of the court-developed law, and was codified by Congress in § 107 in the Copyright Act of 1976. The Copyright Act sets forth certain examples of copying that can take place without constituting an infringing act. The Act sets forth certain examples, which may have to be extrapolated by courts to other equivalent situations in determining fair use on a case-by-case basis.
Section 107 of the Copyright Act states that making a copy of the protected work for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research is not an infringement of the copyright. The law also sets out certain factors to be considered when the fair use doctrine is applied. The factors given by way of example in the statute are as follows:
1. Consideration of the purpose and character of the use, such as is the use commercial or is it for a non-profit educational purpose;
2. The nature of the copyrighted work;
3. The amount and substantially 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.
Note that these factors are only examples. For instance, making one copy of a video tape of a movie for your home use is considered fair use. If you try to sell that copy or other copies you made from the original work, that would constitute an infringement of the copyright.
In one famous case, the United States Supreme Court noted that the question of when, where and how a work was to be initially published were important decisions reserved to the author of the work. As a result, the court held that the publication of excepts of President Gerald Ford’s memoirs in the Nation Magazine, prior to their scheduled publication in Time Magazine, constituted a copyright infringement and was not a fair use.
The determination of what constitutes fair use varies from case to case. The most important factor is the effect of the use of the work on the commercial market for the original work. Since the purpose of the copyright laws is to provide incentives for authors, usage which adversely impact the commercial market for the author’s work are viewed as frustrating the intent of the copyright law and are not considered fair use. Thus, the parameters of fair use are narrowed when the use of a copyrighted work is commercial.
It is often difficult to prove the act of copying, since the copying by the alleged infringer may have taken place in a darkend room with no one else around but the copier. However, circumstantial evidence, as discussed previously in this course, can be used to prove the act of copying. Under present court decisions, the evidence required to support a finding of infringement is: a) that the alleged infringer had access to the copyrighted work, and b) the infringing work was substantially similar to the copyrighted work. Normally, detailed expert testimony is presented to establish the substantial similarity of works involved in a copyright case.
For many, many years up until recently, the U.S. copyright law required the use of a statutory notice on all publicly distributed works to advise the public of the existence of the copyright owner’s rights. Normally you would see "All Rights Reserved" on a work to satisfy the requirements of a treaty known as the Buenos Aires Convention, which is a treaty to which the United States and several Latin American countries belong, and is a way of protecting works and their copyright. However, most countries, such as the European countries and English speaking countries belong to other treaties which do not require this additional phrase. One such treaty is the Berne Convention to which the United States became an adherent in 1989. The Berne Convention, dates back to 1886, and includes approximately 80 countries within its bounds. To conform to its adherence to the Berne Convention, the U.S. Congress passed a law that as of March 1, 1989, the long-standing U.S. requirement of the copyright notice for works published after March 1, 1989 was abolished. The act defines the term publication as the distribution of copies of the work to the public by sale, rental, lease, lending or license. However, there are many, many copyrighted works that presently exist that were published before March 1, 1989, and the prior laws regarding notice as to works published before that date are still in effect.
The Federal Copyright Act provides that at any time during the existence of a copyright, the owner of the copyright in the work may obtain a federal registration of its copyright claim by applying to the Copyright Office, paying the requisite fee, and making the required deposit of the work to be protected along with the application. No legal action in the courts for infringement of a work created in the United States can be taken until the owner of the copyright has at least applied for copyright registration. However, as to works originated outside of the United States, no registration is required to bring an action for infringement of that work.
The copyright law provides "statutory damages" for infringement. This is in case the actual damages are minimal, where the statutory damages usually are sufficient to prevent an infringer from getting away with a minor slap on the wrist. The copyright act also provides that an infringer is liable for either the copyright owner’s actual damages and any additional profits of the infringer, or statutory damages. Thus, the copyright laws are strict in that an infringer could pay the copyright owner’s actual damages and, in addition to that, the actual profits of the infringer. Statutory damages are defined as not less than $500 or more than $20,000 as the court considers just for each infringing work. If the court finds that the infringement was willful or purposeful, the court may increase the award of statutory damages to the sum of not more than $100,000 for each infringing work.
It is important that registration under the federal copyright law be sought within three months after first publication of the work, since no award of statutory damages or of attorney’s fees may be made for infringement of copyrighted works commenced after the first publication date and before the effective date of the registration, unless the registration is made within three months of the first publication.
Since copyrights cannot be granted in perpetuity, the copyright law grants rights in copyright which expire after a certain time period. At present, that time period is anywhere from 75 to 120 years. After the copyright expires, anyone can slavishly copy the work. For example, if one could lawfully obtain access to an original Rembrandt painting in the museum, since the rights of copyright have expired, one could photograph the painting, creating a derivative work, and then sell the photographic copies. For this reason, many museums are very careful to whom they loan their paintings, and prohibit their patrons from photographing the works.
Today there is a movement afoot arguing that the extension of copyright protection up to 120 years for protection of works is too long, and Congress should not continually extend the rights in copyright which prevents subject matter from going into the public domain. Consider for example that the first Mickey Mouse movie was "Steamboat Willie", shown in 1923. The Mickey Mouse character is still protected by copyright, however if these protagonists have their way, eventually a valuable copyright such as Mickey Mouse, as well as other important literary, musical and theatrical works created during the last 100 years will go into the public domain. This controversy is currently a work in progress, and should be resolved over the next several years.
The individual who creates the work is deemed to be the "author" of the work and is the initial owner of all copyrights. There are two situations where some other entity is the author of the work, both exceptions being referred to as "works made for hire".
The first exception is where the work was created in the course and scope of employment of the creator. In that situation, the employer is deemed to be "the author" of the work and is the owner of all rights of copyright. Note however, that the various federal courts have reached somewhat different results recently as to when certain persons are to be considered an "employee" for purposes of the copyright laws. For example, if the author has an independent contractual relationship with the person who commissioned the work, that may affect the outcome of copyright ownership.
The second exception occurs when the individual who creates the work was commissioned to create the work on an independent contractor basis for one of nine specified purposes, and a written contract is signed by the independent contractor stating that the work is made for hire. The nine specified purposes are:
1. A contribution to a collective work;
2. A part of a motion picture or other audio/visual work;
3. A translation;
4. A supplementary work;
5. A compilation;
6. An instructional text;
7. A test;
8. Answer material for a test; and
9. An atlas.
The present version of the copyright law provides that the sale or transfer of the physical object upon which copyrights are based does not in and of itself transfer any of the rights of copyright. The only way to effect a valid transfer of the copyright is by written document signed the owner of the rights conveyed, or his or her duly authorized agent.
By way of example, if an individual employed by a company creates a copyrightable work during employment, the company is deemed to be the author of the work and is the owner of the work as well as the exclusive rights of copyright in that work. Thus, the company would have the right to prepare derivative works to make copies of the work, to distribute these copies and otherwise license the work. The employee retains none of those rights. However, where the employee creates a work outside the scope and course of his or her employment, the employee is deemed to be the author and the initial owner of all the exclusive rights of copyright. If the individual used the company’s time, facility and materials to create his or her unrelated copyrightable work, the company has a right to use the ideas embodied in the work. However, the company will not have the right to reproduce or market the form of expression embodied in the copyrighted work owned by the employee.
A common situation occurs where a corporation commissions or hires a professional photographer to photographic the corporation’s goods for use in the catalog. The photographer provides the corporation with the negatives. If the contract included the magic words "work for hire", the company would own all rights in the negatives and the photographs. However, if those magic words were not utilized in the contract, and the photographs did not fall within any of the nine specified uses provided in the copyright act under the work for hire definition, since the photographer is not an employee of the corporation, and the photographer is deemed the "author" of the works, the corporation will not have the right to reproduce the work or use the negatives to create additional works without the approval of the photographer. Believe it or not, this instance happens over and over again in the trade. During my career as a practicing attorney, I have run into this situation several times.
Congress passed the Architectural Works Copyright Protection Act in 1990. Prior to that time, the copyright laws protected architectural plans and blueprints, however, this protection did not extend to the design features of the building itself when the building was created. When the United States decided to join the Berne Convention, the U.S. was required to protect architectural works, including the building itself, as well as the architectural plans and the drawings.
Of course, sometimes it is difficult to determine what constitutes the design or overall form of a building, excluding individual standard features which, of course, are not protected by copyright.
The owner of a copyright in the architectural work has the exclusive right to make and distribute copies and to prepare derivative works. However, these rights are subject to "fair use" by others. Congress also adopted new laws specifying that the making, distributing or displaying of pictures, paintings or photographs of a building that has been built is not an infringement of the copyright in the design of that building. For similar practical reasons, the Congress also adopted a provision to allow the owner of a building to make or authorize alterations, or even the destruction of the building. Since this law is new, the total implication of this Act are from clear, and as court cases proceed in the future, a clarification of the scope of protection for architectural works will be derived.
The next aspect of intellectual property protection, apart from the patent, trademark and copyright laws, is the law governing the protection of trade secrets. This law encompasses two broad policies: they provide a standard of commercial ethics, and encourage innovation by providing protection that is supplemental to that offered by the federal patent and copyright laws. Also, unlike a patent or copyright, a trade secret has no limited statutory life, and may last for ever, since the trade secret law does not derive from the Constitutional provision mentioned previously. Moreover, trade secret protection extends to practically all types of information, and protection is acquired without any need to file any applications for registration or without any other formalities, except the provision that efforts must be made to maintain the confidentiality and secrecy of the information.
Trade secret protection is secured without publicly disclosing the secret, in contrast to a patent. Many states have recently enacted a law known as the Uniform Trade Secret Act. Under this law, and under the previous common law affecting trade secrets, one who discloses or uses another’s trade secret is generally liable if he or she discovered the secret by improper means, or the disclosure or use constitutes a breach of confidence. The laws in effect usually define a trade secret as consisting of any formula, pattern, device or compilation of information that gives the owner an opportunity to obtain an advantage over competitors who do not know or use that particular secret. Examples are chemical formulas, manufacturing processes, machine patterns, customer lists, pricing information, future business plans, and the like.
To establish a trade secret right, the owner of the alleged trade secret must show steps taken to maintain the secrecy of the information. If the information sought to be protected is obvious and apparent upon the viewing of an object embodying the secret, or if the information is merely a base of experimental knowledge that is readily available to others in the same industry, it is highly unlikely that a court would protect the information as a trade secret. However, availability of information through publicly available sources is irrelevant if the information is shown to have been maintained in a secret status by the owner, and the defendant has acquired the secret information through a breach of a confidential relationship or through the use of other improper means. For example, if the same information can be obtained through reverse engineering of a product, such as using chemical analysis equipment, but the alleged defendant used improper means, such as theft of a secret formula, to obtain the same information, the tort of theft of trade secrets still applies. The availability of information through public sources is not an adequate defense, unless the defendant actually used that particular public source to acquire the information.
As stated above briefly, only certain information can be maintained in secret. If the information is available to anyone once a machine or process is used in public, that information obviously cannot be maintained as a secret. Certain items, such as chemical formulas and the like, can be maintained in secret so long as the actual use or sale of the product does not divulge that secret.
A breach of one’s trade secret rights may arise from a breach of confidence or confidentiality, such as in a situation arising from technical fiduciary relationships. Examples are the attorney/client relationship, partner and partner relationship, and those relationships arising informally from moral, social, domestic or purely personal interaction. For example, courts have found that confidential relationships exist when the parties’ relationship is that of partners, joint venturers, licensor and licensee, and employer and employee. Generally, not all employment relationships involve a degree of confidentiality. However, where an employee acquires an intimate knowledge of the employer’s business, and the nature of that business is to maintain that knowledge in secret, the relationship can be deemed to be a confidential one. In such situations, the law implies as a part of the employment relationship an agreement not to use or disclose information that an employee receives incident to the employment, when the employee knows that the employer desires such information to be kept secret, or that the employee should have realized that secrecy was desired. Any unauthorized use or disclosure of trade secret information learned through a confidential relationship constitutes a misappropriation of that trade secret. This confidentiality extends even beyond the term of employment.
The courts have developed the rule that a former employee is free to use the general knowledge, skills and experience gained during prior employment. This is true even when the employee has increased his or her skills or has received complex training during the former employment. However, a line is attempted to be drawn in the sand where the employee, at his or her next employment uses information considered to be trade secrets of the first employer.
The use of improper means to obtain the secret information of another is unlawful. For example, it is clear that reverse engineering and independent development are proper ways of acquiring information attempted to be held secret by another. However, one may not avoid these labors by taking the processes from the discoverer when the discoverer is taking reasonable precautions to maintain the secrecy of the processes. To obtain knowledge of a process without spending the time and money to discover it independently is improper, unless the holder of the secret voluntarily discloses the information or if the holder of the secret information fails to take reasonable precautions to ensure the secrecy of the information. The rationale behind this body of law is to maintain the standards of commercial morality.
Injunctive relief prohibiting further use of the information, or selling products produced as a result of the theft of the trade secret, are probably the most common remedies sought in trade secret cases. However, actual damages and punitive damages may also be obtained in appropriate cases. There are three measures of actual damages in trade secret cases:
1. The plaintiff’s actual losses;
2. The defendant’s profits; and
Protection for mask works in creating microprocessor chips is afforded in a separate section of the copyright law created in 1984. The law defines semiconductors, and the mask works used to create the semiconductor. The law also defines what constitutes fixing of a mask work on a chip product. The owner is defined as a creator or one to whom the rights in the mask works have been transferred. If the mask work is made by an employee, the employer is automatically considered the owner of rights in the mask work.
The owner of the mask work can register a claim of protection under Section 908 of the copyright statute with the Copyright Office of the Library of Congress to protect the mask work. The application must be filed within 2 years of the first commercial exploitation of the work anywhere in the world, and identifying material for the mask work is submitted with the application. Protection is effective from the application filing date, when the identifying material and filing fee have been submitted with the application. If the Copyright Office refuses a registration certificate, the refusal can be appealed to the United States District Court.
The law protects a mask work fixed in a semiconductor chip product. There is no protection if the mask work is not original. Also, there is no protection if the mask work consists of designs which are staple, commonplace or familiar in the semiconductor industry, or variations combined whereby when considered as a whole, the combination is not original. In no case does protection for a mask work extend to any idea, procedure, process, system, method of operation, concept, principal, or discovery regardless of the form in which it is described, explained, illustrated or embodied in such work. This follows the general theme of the copyright law that only expressions of ideas are protectable, not the ideas themselves.
The exclusive rights in the mask work belong to the owner of the mask work. The owner may transfer or license those exclusive rights or less than all those rights by a written document. Also, these rights may be bequeathed by will and be passed as personal property upon the death of the owner. Documents relating to ownership or transfer of a mask work may be recorded in the Copyright Office to prove transfer and ownership at a later date. The recordation gives all persons constructive notice of the facts stated in the document regarding the transfer.
Mask works prepared by an officer or employee of the U.S. government are not subject to protection of the copyright law, but the United States government may receive and hold exclusive rights in mask works transferred to the government.
Protection begins on the date a mask work is registered or on the date in which the mask work is first commercially exploited anywhere in the world, whichever occurs first. Mask work protection lasts for ten years from the date upon which the protection commences, and in terms of protection shall run until the end of the calendar year in which the registration would otherwise expire.
The owner of a mask work has the exclusive right to do, or to authorize others to do, the following:
1. To reproduce the mask work by optical, electronic or any other means; or
2. To import or distribute a semiconductor chip product in which the mask work is embodied; or
3. To induce or knowingly to cause another person to do any of the first two acts.
The exclusive rights of the owner of a mask work are not infringed where one reproduces the mask work solely for the purpose of teaching, analyzing or evaluating the concepts or techniques embodied in the mask works or in the circuitry logic flow or organization of components used in the mask work. Also, there is no infringement where a person performs these analyzes or evaluation to incorporate the results of such conduct in an original mask work which is made to be distributed. Further, the owner of a semiconductor chip product made by the owner of the mask work or one authorized by the owner may import, distribute or otherwise despose of or use, but not reproduce, that particular semiconductor chip product without the authority of the owner of the mask work.
An innocent purchaser of an infringing semiconductor chip product shall bear no liability for infringement prior to this time the innocent purchaser has notice of the protection, and shall be liable only for a reasonable royalty only after having notice of such protection.
There is no absolute requirement, however the owner of a mask work protection may affix notice to the mask work and to the semiconductor chip products embodying the mask work to give reasonable notice of such protection. As stated above, this provision is not obligatory. Placing notice of protection on the product is not a condition of protection under the Act, but does constitute prima facie evidence of the fact that you have given notice to others of your protection. If you do apply the notice, it shall consist of the word "Mask Work", the symbol "M" or the symbol "M" in a circle followed by the name of the owner or owners of the mask work or an abbreviation by which the owner can be recognized or identified.
Actions may be brought in the federal courts to enforce mask work protection rights. Exclusionary orders for infringing importation products may be issued pursuant to provisions of the Secretary of Treasury and the U.S. Postal Service.
In an infringement action, one found liable for violating another’s mask work protection rights may be liable for paying the owner of those rights the infringer’s profits plus the amount of damages caused to the owner of those rights. The law also provides for the impounding of semiconductor chips subject to a lawsuit under this statute.
As everyone knows, people living in the United States have certain rights. They acquire these rights under our laws, or just from the mere fact of being. Since we all work, communicate, and interact with other people, what we do may infringe upon the rights of others, and what others do may infringe upon our rights. For example, when the engineer designs a product, a process or a system, it may cause injury to someone’s rights. Characteristically, a design is based upon a mental image of the future, which advances technological progress. However, designing something or a combination of things that has never before existed can be hazardous, because one cannot possibly conceive of all the ramifications of a new concept. As a result of incorporating an untested concept, someone is liable to be injured. However, this injury, which is known as a tort, is an accepted price of progress in new engineering and technology.
The term Tort can be defined as wrongful injury to another person or another’s property rights. The legal system, for centuries, has provided steps to address and redress wrongs that have occurred to an individual by another individual or another entity. The law imposes duties between parties, and tort actions arise from someone neglecting their duty and causing injury to another party. For instance, a driver of a car has a duty to avoid hitting others while driving, and if the driver is negligent and as a result of that negligence injures another, a tort action is available to the victim to make the driver pay compensation for the damage caused.
The United States tort law traces its origins way back to the common law developed in England, and is primarily based on negligence. Besides negligence, a tort can be committed intentionally and sometimes intent can be an element in torts against persons, property, reputation and business. In negligence actions, which forms the basis for most tort actions, someone did something negligently, or neglected to do something he or she should have done.
Negligence is also defined as a failure to live up to one’s duty, which gives rise to liability for damages caused by that failure. In Black’s Law Dictionary, one of the leading legal term authorities, negligence is defined as "the omission to do something which a reasonable man, guided by those ordinary considerations which ordinarily regulate human affairs, would do." To establish the tort of negligence, the allegation must be supported by the following evidence:
In tort actions, the court must determine, first under law, whether one party owed a duty to another party. Unless the actor’s conduct creates some foreseeable danger to the victim, the actor generally does not owe a legal duty to the victim. Therefore, the foreseeability of injury as a result of certain action is considered an important basis for a conclusion that a legal duty does or does not exist between parties.
In the past, the courts held to the rule that one who failed to prevent an injury by failing to act may be found to have no duty, while one who creates a dangerous condition by his conduct has a duty to do something to prevent injury. However, this distinction has been eroded in recent years. The courts have now adopted the rule in many cases that "reasonable care" is required, where the degree of "reasonable" varies with the circumstances.
When one renders services recognized as necessary for the protection of persons or things, the service provider may have a legal duty to exercise care and avoid the risk of denying care to others. A duty to prevent harm can also arise from a contractual obligation, such as a breech of warranty that comes with the purchase of a product.
The plaintiff in a tort action usually must show that the defendant owed the plaintiff a duty of care. This duty of care is defined as that degree of care exercised by a reasonably prudent person in like circumstances. The average person is one possessing normal intelligence, memory, capacity, and skill to handle the circumstances, without handicaps, either physical or mental, that would set them aside as exceptional. While the law always talks about reasonable persons and average persons, it is much harder to find one in reality. However, to utilize the law to address grievances that result in injury, a standard must be established, and then allowance must be made for exceptions to this standard.
The standard of care, of course, is determined by the nature of the particular circumstances that cause the injury. For example, the standard of care by a surgeon in removing a vital organ would be more strict than the standard required of one who had no medical training, but because of an emergency, had to attempt a surgical procedure. An engineer works under an exceptional standard of care when he or she designs or supervises the construction of a machine, structure, or process. Thus, you will find that engineers’ and technicians’ projects are usually subject to quality control standards and supervision to ensure that the standard of care was met by the particular engineer.
In most tort injuries, it is usually quite apparent what action caused the injury. On occasion, more than one act or omission may cause the injury. An example is a motorist driving along a highway at night at a lawful speed, being blinded by oncoming headlights, and striking another car in the rear. Who is liable: The driver who was blinded or the person who failed to dim their headlights? In law, this question is solved by the theory of proximate cause, where the injury must be the proximate cause of the negligent act complained of. In the case of the negligent driver who was blinded, the conclusion would probably be that the driver who could not see should have slowed down to avoid the accident.
To reach the level of proximate cause for an injury, something must have been a substantial factor in bringing about the injury. One standard used to determine proximate cause is the "cause in fact" standard. Cause in fact is met if the but-for standard is satisfied; would the injury have occurred but for the defendant’s conduct. The other theory, legal causation, depends on the connection between cause and effect; the injury must be part of a natural and continuous sequence of events.
An example of the latter is where Black and White are engaged in the electrical repair of an overhead crane. Black turns off the electricity but Gray, another party, throws the wrong switch at the box and turns the electricity to the crane back on. Black receives a shock from the conductor, drops a wrench on White, thereby injuring White. The immediate cause of White’s injury is the wrench being dropped by Black. The proximate cause was Gray’s action in throwing a wrong switch. If the case went to court, a probable result would be a finding for White against Gray.
Now suppose, in the above instance, when White is struck, he falls over knocking over a can of gasoline. When the crane is activated, a fire starts destroying a neighboring house and a nearby garage in which a Rolls Royce is destroyed by the collapse of the roof of the garage from the fire.
The question is: What was the proximate cause of the loss of the Rolls? The fire would probably be considered a proximate cause, but it seems difficult to go all the way back to Gray to find the culprit. Proximate cause is the doctrine by which the courts view certain factual causes as just too far removed to be the basis for legal liability.
In certain instances, it is difficult or even impossible to show evidence of the defendant’s specific acts or omissions, but common sense tells the court that someone was negligent; for example, a sponge left in a patient’s body during surgery in an operating room. The doctrine of res ipsa locquitur was adopted by courts, and the expression means "the thing speaks for itself." For example, the sponge would not have been left in somebody’s body unless someone on the operating team had been negligent, and the defendant doctor had control of the operation sequence which caused the injury. Also, it can be shown that the plaintiff was under sedation, and in no way contributed to the injury. Thus, circumstantial evidence and not direct proof is used to prove the source of the negligence. In such instances, the defendant has an opportunity to rebut, which usually consists of showing evidence that he or she did exercise the requisite care, and that the particular sponges were so covered with blood, that it was difficult, if not impossible, to determine where all of them were. Of course, in an operation, there is a sponge nurse whose job it is to count the sponges going in and coming out to avoid such occurrences.
Negligence has been defined above as doing something that should not be done or neglecting to do something that should be done, either act causing injury. However, where the act is done or neglected to be done intentionally, or with a reckless disregard for the consequences, the term gross negligence is used to define such action. In these cases, the victim is more likely to recover punitive damages as well as ordinary damages if gross negligence can be shown.
In certain cases, the injury may have actually been caused by the injured party. One such doctrine, assumption of the risk, comes into play where the individual who was injured assumed risks for the experience or thrill of the very danger involved. Roller coaster rides immediately come into mind. For example, death by a heart attack during a roller coaster steep decent cannot lead to a recovery in a court action, since the assumption of risk defense relieves the defendant of liability for negligence. The same situation arises when one is injured by a foul ball at a baseball game. It has long been held that one attending a baseball game assumes the risk that they may be hit by a flying sphere off the bat of one of the players. The doctrine of assumption of risk is usually limited today to situations where the injured party knew and understood the risks involved.
A more complicated situation arises where a person accepts employment in a risky occupation, where economic realities often compel employees to engage in risky conduct. Courts have sometimes viewed such risks as involuntary, and under legislation known as the Worker’s Compensation Laws, the employer is deprived of the defense of assumption of the risk.
Assumed risks are those which are normally and naturally involved in any certain undertaking. For example, if the roller coaster became unsupported, which caused the heart attack above, recovery would be quite possible.
What about the good Samaritan or volunteer? The good Samaritan is the one who has assumed the risk, and if a person gives aid to another who is in distress, and this aid results in further injury to the distressed person, the volunteer is liable for such injury. Therefore, the average citizen should be careful as to how quickly they jump into a situation to save someone. Certain other states have good Samaritan laws which prohibit recovery against someone who in good faith made an effort to reduce injury to a person injured in their presence.
Contributory negligence comes from the negligent act of the injured party him or herself, wherein the victim failed to exercise ordinary care. In early common law days, if the plaintiff was found to have acted negligently, the plaintiff could not recover anything, which rule lead to harsh results. Over time, the doctrine of contributory negligence lead to today’s rule of comparative negligence, where if both parties are negligent, and an injury to the plaintiff would have occurred any way, recovery may be diminished by an amount related to plaintiff’s neglect in contributing to the total damage.
Three common causes of injury against a person are the torts of assault, battery and false imprisonment. Assault, which is quite frequently used improperly in common parlance, refers to a threat of violence, without the act of violence having taken place. A battery is also a tort against the person, which consists of intentionally and unlawfully touching or hitting another, person in an offensive manner. Thus, assault could be rising the fists in the presence of another, and battery would be bringing the fist down upon the head of the other person.
The tort of false imprisonment occurs when one is intentionally confined within limits set by the tort feasor. For example, confinement of a person in a car that is traveling too rapidly for exit to be made safely would be false imprisonment.
Malicious prosecution is another tort against a person, where someone sues another person in a court of law only for the purposes of annoyance or harassment, with no true basis for bringing the suit. If such litigation is brought in the civil courts, it is called abuse of process, or if involving the state, it is known as malicious prosecution. In such actions, the one bringing the suit or causing the suit to be bought must have "probable cause" that there were reasonable grounds to believe that the facts warranted the action complained of. If not, the potential defendant has a defense against such a suit for malicious prosecution.
In dealing with others, a person’s reputation is extremely important in attracting the trust and confidence of those with whom they deal, either in a business environment or personally. Thus, if false and malicious statements are expressed either orally or in writing about such a person and their reputation, such statements may constitute defamation, which is actionable at law. Defamation occurs when a false statement is made about a person which tends to expose the person to public ridicule, contempt or hatred. One can defame another person by making false statements regarding a criminal act, or which tends to injure one in a job or profession. Oral defamation is called slander, where written defamation or defamation by pictures is known is liable.
For the action of defamation to lie, someone other than the person who was defamed would have to hear or see the statement that was slanderous or libelous. A defense to a defamation charge is that the statement that was made was absolutely true. Regardless of the malicious manner in which the statements are made, if they are true, there is no defamation. Another defense to a defamation charge is that of privilege, where otherwise defamatory statements are made in carrying out a judicial, political or social duty. This defense arises from the necessity of making a full and unrestricted communication under situations where it is necessary. Thus, a libelous statement made in a court of law by one person against another cannot be considered as libel. Thus, the Supreme Court has held where the speaker makes a libelous statement, and that speaker is part of the media, and the subject matter is a public figure, there is no libel unless the reporter and the newspaper acted with malice in printing the story.
The owner of property in this country has a right to possess the property, to use it as long as that use does not infringe upon the rights of others, and to dispose of the property as they desire. The owner has the right to exclude others from using their property, or of taking possession of it. An invasion of these rights gives rise to a tort.
The tort of trespass to land occurs whenever someone without license enters on the land of another. Even simply walking across a person’s lawn is a tort; however, the law does not concern itself with trifles and a single instance of somebody walking across your lawn would probably not end up in a lawsuit.
Sometimes trespass actions end up in court where a neighbor builds a structure, such as a tool shed, across the property line of another, and the neighbor gets upset.
The person in possession of land has the right to exclude others, however, personal rights do take precedence over property rights. For example, one does not ordinarily have the right to shoot trespassers. This gives rise to the rule that any force used to remove someone from property must be no more than just sufficient to accomplish that purpose. Thus, in most jurisdictions, placing harmful traps around property to capture people trespassing is also illegal.
Over recent years, exceptions to trespass have arisen under the law. Two of these are easement or license, where an easement exists if numerous members of the public use a person’s property as they desire for a period of time. This is common-place near lake-side property where there is usually one path across someone’s property that the public crosses to reach the lake. After a long period of time of allowing people to use this path, an easement will have been created in the law, and the owner will ultimately be prevented from excluding the public. Sometimes this public easement takes 15 to 20 years to be created.
Also, the right to go on another person’s land can be given to that other person by the one in possession. This is known as a license.
The term attractive nuisance is one you usually find attached to unprotected swimming pools in a back yard. If the trespasser is injured by some hidden danger, the trespasser has little chance of recovery against the owner. However, if the swimming pool, for example, acts as an attractive nuisance, pertaining to children of tender age, the owner of the property would be liable for children using the pool, even without the owner’s permission. Attractive nuisance cases could involve children of any age, but children between 5 and 10 years old seem particularly susceptible. The largest factor, of course, is the presence or absence of proper precautions such as fences by the owner or occupant of the premises to keep the nuisance from becoming attractive.
When one steals the property of another, it is known as the crime of theft. The civil or tort counterpart to the crime of theft is known as conversion. Conversion constitutes the wrongful retention of another’s personal property, and also includes the wrongful alteration of property, and the wrongful use of property by persons other than the owner.
To obtain one’s property back from one who has unlawfully converted that property, the original owner of the property may maintain an action in court for conversion. This will net the true owner of the property the market value of the converted property, and gives title to the converter when the judgment amount has been paid. The owner may also maintain an action, called "replevin", to obtain a return of the property, instead of just seeking damages.
The United States laws support the right of people and businesses to compete with each other in a business venture. Usually the result is healthy, in that the public benefits from lower consumer costs as a result of robust competition. Therefore, laws have been developed to preserve competition, such as the antitrust laws, the Federal Trade Commission Act, the Robinson Panman Act, and various other laws to prevent unfair competition amongst businesses and individuals in their relationships with one another. However, this entire field is too large to cover within the metes and bounds of this course. So, therefore, only a few of the more common torts against economic rights will be covered here.
The first of these torts are fraud and misrepresentation. Fraud occurs when one makes a false representation of a material fact, makes the statement knowingly, with the intent that the other person will rely upon it, and the other person does reasonably rely upon the representation, and the other party is damaged due to their reliance on that false representation. The person injured then has a cause of action against the perpetrator of the statement in an action based on fraud.
However, false statements of opinion generally are not actionable. Also, the speaker must truly believe what he or she says is true, or else there is no intent to mislead, and the action or fraud is not made out. Further, if the one responding to the statement does not rely upon that statement, then that person cannot claim that he or she was harmed or injured by the statement.
In recent years, courts have created another tort of negligent misrepresentation. This tort is like fraud, however it is the negligence of the speaker, and not the intentional misrepresentation of the speaker that gives rise to the cause of action. Therefore, if a speaker negligently made a false statement, and the other individual relied upon that statement to their detriment and was injured, there may be liability.
Another tort against economic rights is inducing one to breach a contract with another. This tort is usually referred to as tortious interference with contract. In an early case, in 1953, the modern law was established in a case in which an opera singer was induced to breach her contract and work for another. There was no fraud or violence that had occurred, but the court stated that a right of action against the person inducing the breach of contract existed by the original contractor for the opera singer’s services.
The tort of inducing a breach of contract actually requires the one charged with the tort to actually have taken positive actions to induce the breach of the contract. An example is where Gray offers to sell Black better parts at a lower cost, causing Black to breach his contract with the person he is purchasing parts from at the present time. However, Gray cannot be said to have induced the breach unless he actively advocated Black’s breach of the contract. Merely offering to sell someone better products at a lower cost is not considered to be inducing a breach of contract. However, had Gray made particular statements to Black that he wanted him or encouraged him to breach his contract, a cause of action may arise.
Recently, courts have broadened this tort to cover anyone who interferes with another’s prospective contract, which is the expectation of a contractual relationship. For example, a company is free to submit a lower bid to obtain a contract, however making comments disparaging your competitor’s services or products runs a risk of moving from fair competition to tortious interference.
False or misleading advertising is prohibited under federal and state statutes, and even the common law. Any time one can show that a statement by a competitor is false, and that they have been injured by that false statement, such as losing sales, the person so injured has a cause of action against the person making the false statement. The federal Lanam Act, which regulates trademarks, also has a provision regulating unfair competition which prevents a competitor from making false statements about another competitor.
Three requirements must be met for false advertising to be actionable. First, the statements must be false, misleading or deceptive. Second, there must be confusion or misleading of the consumers, or there must be a likelihood of confusion or deception. Third, the false statements must be material, that is something that would influence the purchasing decisions of consumers.
The law today allows one injured to obtain an injunction against further false advertisement, and to recover damages and in some instances an accounting of the defendant’s profits due to the false advertising.
It is important that an injured party who has been victimized by a tort should take prompt action. Most states have statutes of limitations for tort actions, which provide that the legal action must be instituted within a certain time period, usually two years, after the tortious act has occurred, or after the person injured has become aware of the tortious act. If not timely filed, the right to take an action has expired and cannot be brought.
In equity cases, the term laches indicates a cause in which the plaintiff has slept on his rights too long and therefore cannot bring the case. The theory behind these time limitations is that the court should not be more protective of the plaintiff’s rights than the plaintiff was of his or her own rights.
The law has changed over the last 40 years in those instances where the defendant in the lawsuit is a producer of a product that injured the plaintiff. Issues arise such as what defense can the producer use, can the plaintiff obtain evidence held exclusively by the defendant, and must the plaintiff show negligence to prevail. The new and currently-expanding field of products liability answers these questions.
A century ago, products liability cases were virtually inconceivable, and even several decades ago, products liability cases and recoveries were rare. Revolutionary changes in the field occurred in the 1960’s.
In early English history, producers of goods and services were held in high esteem by the public. Their success meant success as a nation. Logic at that time and social philosophy gave rise to the legal defense that if somebody complained about a product, caveat emptor ("let the buyer beware"). This rule was based on the fact that people should examine closely what they are about to receive before they buy it. If a purchaser is so negligent that they buy something that is improper, the purchaser should live with his bad decision.
Thus, buyers who were injured by a product were considered to be the ones at fault, and the law would not aid those who were negligent in making their purchases. However, products produced in the early days were somewhat more easily examined than what we buy today. For example, a shovel or a hammer was much easier to examine to determine its defects than automobiles, tractors, snow plows and the like. Even were a purchaser allowed to dismantle an automobile before buying it, the consumer would probably not learn much as to whether or not the car was properly made. Therefore, should a consumer be held to be negligent when they buy a product on reliance upon those who produced the product?
Another traditional defense available to manufacturers was that the consumer usually had not bought the product directly from the manufacturer, having purchased the product usually from a retailer. Thus, there as not privity of contract between the manufacturer and the consumer, and therefore the consumer could not act upon a breach of contract rationale against the manufacturer to recover for an injury. If the consumer brought an action against the wholesaler or retailer, they may have a cause of action, however the wholesaler or retailer may not have sufficient funds or insurance to reimburse the injured party for the damage. Also, an action against the wholesaler or retailer does not seem proper since it was the manufacturer, not the wholesaler or retailer who produced the faulty product. However, such was the law in the past.
At the beginning of the 1900’s, the law began to change and injured plaintiffs occasionally recovered from producers of faulty products in court. One famous decision is that in McPherson v. Buick Motor Company, a 1916 New York State case written by Judge Cardozo, one of the leading jurists of his time. In that case, a wheel on a new Buick collapsed and the plaintiff was injured. Cardozo found for the plaintiff in spite of the defenses mentioned above, and Cardozo’s reasoning is virtually a statement of products liability law as it is today. However, after the McPherson case, courts did not entirely rely upon Cardozo’s logic. Also, during this time the courts developed two legal philosophies that ultimately came to be used successfully in products liability cases: negligence and warranty.
Using a negligence theory, the injured party makes a case against the product’s producer by showing (1) that the producer owed the plaintiff a duty to carefully design and manufacture a product, (2) that this duty was neglected, and (3) that the neglected duty was the proximate cause of plaintiff’s injury. Plaintiffs normally had problems in proving negligence in design and manufacture, and a producer could sometimes prove contributory infringement by the plaintiff. However, if the plaintiff could show negligence in design or manufacture, they normally did win.
The courts also developed a warranty theory in allowing plaintiffs to prevail in product liability cases, where when you purchase a product, a promise is made by the manufacturer that the product will work for its intended purpose. This includes a promise that the product will not injure the purchaser while the product is being used as advertised and directed. If injury occurs during the intended use, which is proper use, the injury gives plaintiff a cause of action against the producer of the product. Under this theory, the failure of the product to perform amounts to a breach of contract.
However, the only person protected under state laws governing sales was the person who was the purchaser. Under new laws, particularly the Uniform Commercial Code, which is enacted in most states of the country today, the only person protected was the purchaser.
Thus, under both the negligence and warranty theories, the injured public found that negligence was often difficult to prove and warranty restricted to parties who might be plaintiff and defendant. In the 1960’s, several influential judges and legal scholars believed that those injured by a defective product deserve better. In 1963, the decision, Greenman v. Yuba Power Products, a California state court case, and a change in the Restatement of Torts in 1964, when combined, introduced the concepts of strict liability. The Restatement of Torts is a body of the law propounded by scholars that is normally adapted by judges in deciding cases.
Section 402A of the Restatement (Second) of Torts sets forth the rule most states generally follow in cases of product liability. The wording of this Restatement Section 402A is important and states as follows:
(1) One who sells any product in a defective condition unreasonably dangerous to the user or consumer or to his property is subject to liability for physical harm thereby caused to the ultimate use or consumer, or to his property, if (a) the seller is engaged in the business of selling such a product and (b) it is expected to and does reach the user or consumer in the condition in which it is sold. (2) The rule stated in subsection (1) applies although (a) the seller has exercised all possible care in the preparation and sale of his product, and (b) the user or consumer has not bought the product from or entered into any contractual relation with the seller.
This statement sets forth the concept of strict liability and although fairly clear, has been subject to different interpretations by different courts. An example of how a products liability battle might take place in a courtroom is set forth in the following commentary.
In products liability litigation, the plaintiff or injured party must show that the product was defective as it left the producer’s control. Next, the injured party is obligated to prove a causal connection between the product’s defect and the injury that party suffered. Product liability cases are normally presented to a jury, and engineers are often called upon to testify as expert witnesses for one side or the other as to whether or not the product was defective, and whether or not that defect actually caused the injury.
In instances where it is readily apparent that the product was defective, the injured party relies on the doctrine of res ipsa loquitur (the thing speaks for itself) to establish the defectiveness of the product. Where the defect in the product is not so obvious, expert engineering witnesses are called upon to testify one way and the other to convince the jury to believe their side of the case rather than the other side’s expert. Defects can be classified into three basic areas: (1) design defects, (2) manufacturing defects, and (3) marketing defects.
From a manufacturer’s standpoint, the most serious of these problems would be a design defect, which usually involves not just one unit but an entire run or lot of units that are defective and causing problems. The present situation involving Firestone tires is a case in point. In addition, where there is a design defect, many lawsuits may have erupted, and a decision in one against the manufacturer of the product would set a precedent for recovery in subsequent cases.
In a 1978 California state case, Barker v. Lull Engineering Co., Inc., the court there was particularly thorough in determining the definition of the design defect. The court there held that for the design to be defective, (1) it must be shown that the product failed to perform as safely as an ordinary consumer would expect when the product is used in its intended or reasonably foreseeable manner, or (2) that the product’s faulty design proximately caused the injury. Following this, the defendant must fail to establish that the benefits of the challenged design outweigh the risk of danger inherent in the design. This is known as the risk-benefit or cost-benefit approach. Under this theory, a manufacturer should be able to avoid liability for omitting safety devices that will make products virtually inoperable, and for failing to include production processes that would double or triple the product’s cost for miniscule safety improvements.
The next category of defects are manufacturing defects, that may exist in a properly-designed product. This is a situation where a mistake is introduced in the manufacturing process of the product. An example would be an airplane wing which is properly designed, however flaws were introduced due to an improper joining of components. This would be a manufacturing defect.
Some products are inherently dangerous to use and the manufacturer has an obligation to adequately warn users of the nature of the product. A failure to do so constitutes a marketing defect, which is a flaw due to a failure to adequately warn or instruct consumers. For example, advising someone that a compound is flammable when the substance was actually explosive, and injury was caused by the explosion of the material, the plaintiff could prevail by showing the inadequacy of the label warning. As a result, today most products are accompanied by user instructions, installation instructions, maintenance procedures and repair details. The manufacturer also is obligated to indicate for which purposes the particular product is useful, and in some cases to indicate which uses would cause problems for the user.
If a product defect is not discovered until a very large number of the products have been distributed, the usual procedure is to conduct a recall of that product by the manufacturer. Also, warnings mailed to purchasers of the product would also possibly protect the manufacturer against massive liability. The sincere effort by the producer to warn people likely to be injured provides a reasonable defense.
If a purchaser continues to use an obviously defective product, this sets up a defense available to the producer of contributory negligence on the part of the user. In such situations, the plaintiff must show that the product’s defect was a hidden one, to prevail in a products liability case. In one case, a plaintiff was injured using a forklift truck, and the court said that it was obviously dangerous to operate a forklift truck in a high-stack area without a protective overhead guard, and the manufacturer of the lift truck should not be responsible for injury to the operator.
A hidden defect that would give rise to a cause of action by an injured plaintiff would be, for example, the carbon content of steel being high enough to cause the steel to be brittle in normal use, where the steel shattered causing injury to the plaintiff. Since the carbon content was hidden from view, this would be considered a hidden defect.
Sometimes the hidden defect may not even be shown for a plaintiff to prevail. As an example, part of a hammer splintered off during normal use after the hammer had been in use for eleven months, and struck the plaintiff’s eye. The court found no specific fault in the manufacture or design of the hammer, and there was no proof that a defect existed when the hammer left the defendant’s control. Yet the plaintiff recovered from the manufacturer of the hammer in this case.
Also, assume one is driving a five-month-old car in a reasonable manner and the driveshaft becomes disconnected and drops to the roadway, injuring the plaintiff. Despite an inability to prove a specific defect, the operator of the car recovered damages.
The ability to prove a defect in a product may sometimes be difficult where the plaintiff needs information in the defendant’s hands to prove how the product was manufactured. Therefore, the plaintiff has the ability to obtain quality control records, customer complaints, design factors and design changes, research and product engineering records and design engineering records from the defendant through the discovery power of the court.
In products liability cases, plaintiffs can usually obtain money from the defendant to compensate for their losses or injuries. Sometimes, in cases of hazardous or careless behavior by a defendant, a court may award punitive or penalty damages against the defendant.
We’ve talked previously about the rights of an injured purchaser when purchasing a product that is defective. What about injury to an innocent bystander? A California case in 1969 answered this question by holding that the innocent bystander has the same rights of the user or consumer to recover from the producer of the injurious product.
Suppose that a faulty design or a faulty manufacturing element is readily evident to the defendant’s expert witness, it is logical to presume that the fault would also be evident to the plaintiff’s expert as well. In such a case the best advice the expert can give the client is to settle the case out of court because of a slim chance of prevailing. In contrast, if the defendant believes that it stands a high chance of winning or even of reducing the amount of damages to be paid, the decision as to the best course of action will depend upon what the evidence shows.
A producer of a product is only held responsible for those products that he or she has produced. Close examination of a component may indicate that it was repaired or altered after manufacture -- for example, replacement brake linings or rebuilt wheel cylinder, or a change of electronic components. Thus it may no longer be the original manufacturer’s responsibility. The question becomes who manufactured the product that actually failed.
Suppose for example it was the original brake linings that had failed on the car you had purchased from a dealer. However those brake linings have been supplied to the automobile manufacturer by some other manufacturer of specifically brake linings. Shouldn’t the component manufacturer be held responsible? The answer through the decision is no. It is the producer of the final product that is sold to the consumer who is responsible for its safe performance. However the producer may be able to pass part or all of the loss and liability along to the supplier, but the producer of the final product has primary responsibility.
As discussed previously, if no causal connection exists between the plaintiff’s injury and the manufacturer’s product, the producer should have no liability. Therefore a successful showing by the defendant of the lack of any proximate cause between the product and the injury is generally an effective defense.
A plaintiff will normally have difficulty of winning his case if the defect causing the injury is readily obvious. The same is true where the plaintiff has ignored prominent warning labels attached to the product. There was one case where the warning label indicated that inhaling a propellant from an aerosol product was contraindicated. An individual inhaled it and became brain dead. His lawyer indicated that the warning was not strong enough, it should have said that inhaling would cause death. However, since the warning was on the package, the plaintiff did not prevail in that situation.
The coveat is that something that is obvious to a person experienced with the product might not be obvious to a novice and a label written in English may not be much of warning someone who understands only Spanish. Problems such as these are issues of fact for a jury or a judge in a bench trial to decide.
Producers must expect their products to be subjected to all sorts of abuses and wild uses as well as the uses for which they were intended. Common things like using a typewriter as a hammer, using a screwdriver as a lever to move heavy objects, would not be considered as uses to which the products are intended. However today even television and newspaper advertisements show product abuse as persuasive proof of the rugged nature of the product, but there is a logical limit to which anticipated abuse may be taken. Thus if the abuse given a product is not foreseeable or reasonable, the jury has to decide the question as to whether or not the injury was caused by someone misusing the particular product.
As society gets more and more complex and moves in much more rapid rates, it is impossible to accomplish certain functions without such risks. Consider for example the 30,000 volts of electricity that are behind your television cathergrade tube. Also consider that a completely safe automobile would not even move. A completely safe knife would not cut. However people need these items so we cannot hold the manufacturer to a standard of complete safety. However the doctrine of being reasonably dangerous is one that has evolved through the law. The standard that is set can be stated as follows: "The manufacturer should produce a product as safely as the state of the art will permit." Thus a manufacturer should conduct a survey of other products showing that there is no safer way of accomplishing the particular function and it would be unreasonable to expect more from the producer.
Evidence of compliance with the state of the art in some instances may not be a complete defense for a producer if the jury believes that the state of the art should have advanced more rapidly. If the plaintiff can show that the defendant and other manufacturers responded sluggishly to a rash of injuries caused by a certain product defect, the plaintiff could probably win.
Also, as technology moves rapidly forward, many products are introduced to the marketplace as a new product without comparable products showing safety. Therefore, these producers take an added risks in that the state of the art regarding the safety of their products has not been fully established. In a situation like that, I estimate that the plaintiff would win for a producer does not have the right to place a product on the market until all foreseeable causes of injury from that product can be determined.
Over the last 30 years or so the public and the various federal agencies of the government have become concerned more with hazard reduction and safety issues. The creation of OSHA is result of that concern. Thus, government agencies (particularly the military and the purchasing agencies) have set forth minimum standards to be met whatever products are being considered. Therefore one of the questions in product liability case is whether the manufacturer has complied with applicable standards. In one case, consider that if the hazard was so improbable that those who wrote the standards completely missed it, this might suggest that what caused the injury was truly a hidden design defect. It is normally held that if a producer fails to comply published standards that the plaintiff has strong evidence against the producer of that product.
Plaintiff’s contributory negligence generally will not relieve of its liability. For example if Green proves a hidden defect in Black’s lawn mover that was manufactured by Black, and a causal connection between the hidden defect and the injury Black probably cannot win the case by proving that Green was careless. However, there is advantage in proving that carelessness in court. Even if the claim of contributory negligence fails to win out right dismissal of the case, such a claim is use by courts and juries in minimizing the damages, saying that part of the damages were the fault of the plaintiff and therefore the plaintiff should not recover the full amount of the damages. In cases where the plaintiff was truly reckless, the jury may conclude that the it was the person’s conduct and not the defendant that caused the injury, and dismiss the plaintiff’s claim altogether.
Normally in strict product liability cases, the character or reputation of the defendant producer has nothing to do with the plaintiff’s case. However, such evidence is usually presented in a court to weigh upon the amount of damages to be accessed by the judge or jury. For example if the plaintiff can produce evidence of careless production, sloppy methods in manufacturer, fast and careless product engineering changes, insignificant research and misleading marketing, this may make an impressive case for punitive damages before the jury. On the opposite side of the coin, it the defendant can show great care in design, manufacturer, quality control and attention to customer complaints, damages against that defendant will be held to a minimum. Also the risk of punitive damages would be minimized.
It is clearly obvious that defective products should not have been manufactured in the first place or they should have been removed by the producer once a defect is found. Product recalls today are a normal course of our life. The downside of what we have just discussed, is that the cost of defending products liability lawsuits and paying judgments in out of court settlements is added to the production costs of the product and public pays by way of higher prices. This is a problem that has been recognized by some state legislatures and they have enacted laws to address this problem.
These laws usually set out the following standards.
Today there are advocates urging a federal products liability law that would be uniform in its applicable rather than having 50 separate states apply the law in different ways as today. This would eliminate the problem of a company being concerned with the laws and related risks of every state in the Union.
Each one of us works at a job that presents relative degrees of safety and hazards. It is a cardinal rule that the environment, or location, in which people work should not be hazardous to them. In most jobs today, considering the high technology levels that are required, it takes a long time to train an individual to perform their tasks. Even the milling machines that I used to operate many years ago in the aircraft factories today require a degree of computer skill to operate efficiently. Therefore, when an employee is injured on the job, the employer suffers a sizeable economic loss due to the absence of that employee. As our text indicates, the wealth of a society is measured by the goods and services it produces. Losses due to an employee’s illness diminish that wealth, and the injuries increase the public burden in taking care of the injured employees. Many people today who are on welfare or who are disabled can trace their injuries back to work-related industrial accidents. Thus, beside the personal pathos that one occasions due to a work accident, those who are involved in preventing such accidents must also take into consideration the social and economic ramifications of such accidents.
The law provides Worker’s Compensation as a remedy to partially compensate an injured employee for an industrial related accident or injury. However Workman’s Compensation was not intended, nor is it, a total replacement for the loss suffered. Also, even though an employer faces loss of income due to an employee injury under the Workman’s Compensation laws, in the past these workman compensation laws have been little incentive for manufacturers to spend the money to increase the safety level in their plants. In situations like this, when the private sector does not step in to prevent an increasing problem, the normal procedure in this country is to have the government step in.
Thus, in December, 1970, the United States Congress passed the Williams-Steiger Occupational Safety and Health Act ("OSHA"), which took effect in April of 1971. Congress’ stated purpose in enacting OSHA was to ensure so far as possible every working man and woman in the nation safe and healthful working conditions.
As we discussed before, a completely safe car would be one that did not run. In the same vein, complete safety is a virtual impossibility. You would end up working in a padded cell where you would be able to accomplish very little. On the other hand, any work environment should be safe and healthful so as not to present a risk to the health or safety of the worker, and yet not so safe as to represent a stultifying atmosphere. Thus, the compromise is to provide working conditions which are safe and healthful as far as technology and prudent economics will allow. The OSHA Act required a federal determination of an appropriate minimum level of safety. The policy statement of the act, which was read previously, acknowledges that there are practical limits of providing a healthful and safe working environment.
Section 5 of the OSHA Act embodies the legal essence of the act:
(a) Each employer --
(1) shall furnish to each of his employees employment and a place of employment which are free from recognized hazards that are causing or likely to cause death or serious physical harm to his employees;
(2) shall comply with occupational safety and health standards promulgated under this Act.
(b) Each employee shall comply with occupational safety and health standards and all rules and regulations and orders issued pursuant to this Act which are applicable to his own actions and conduct.
Since the federal government only has jurisdiction to pass laws that affect interstate commerce, the OSHA Act is limited in its application to companies that affect interstate commerce. However, whether or not a company is involved with interstate commerce is often a matter of judgment, and the courts to date have taken a very expansive view of what constitutes interstate commerce. For example, in the 60s, the law was established that owning a single restaurant in single location was business that still involved interstate commerce, since people from different states could, if they wanted to, stop in the restaurant and have a meal. This thinking led to the applicability of the federal civil rights laws to individual restaurants throughout the country during the 60s. The same expansive view of what constitutes interstate commerce is also prevalent in the applicability of the OSHA Act. Further, various states have enacted their own OSHA laws to cover situations where interstate commerce may not be involved.
Since the OSHA Act was not intended to replace coverage by other federal laws or the Workman’s Compensation Act, the OSHA Act states that it does not apply to working conditions where other federal agencies exercise statutory authority affecting occupational safety and health. For example, the Interstate Commerce Commission ("ICC") has regulations regarding safety and health in the trucking industry.
The OSHA Act referred to above created the Occupational Safety and Health Administration to enforce the safety standard set forth in the Act, and the power to set these appropriate standards was given to the U.S. Department of Labor. Today, a company’s main contact with the OSHA agency usually comes from the local inspector or compliance officer, who may visit the plant to determine whether OSHA Act regulations are being maintained. If the local compliance officer does cite the company for a violation, the company has several avenues of appeal. For example, the three-member commission of the OSHA Agency can assess contested citations for violations issued by the officer. We will cover these particular citations further in this lecture.
In 1978 the OSHA Agency created a new entity known as the National Institute for Occupational Safety and Health ("NIOSH"). The NIOSH Institute has research and education responsibility, particularly those concerned with toxic substances. Note also that the Environmental Protection Agency ("EPA") also deals with toxic substances, and therefore the Act suggests that cooperation between the two agencies is desirable in this one area.
NIOSH cannot adopt, create or enforce standards of safety and health. However, the NIOSH findings regarding safety such as maximum levels of toxic substances in water supplies, are suggested to the Secretary of Labor as prospective industry standards. This follows a period of approval and publication of the findings in the Federal Register by the Department of Labor. Upon receiving commentary from the industry on the standards, the Department of Labor has the authority to adopt the rules with the enforcement of law. An example of a toxic substance with which both EPA and OSHA are both concerned is lead, and all of us have heard much about the lead content of paint and other products over the last several years.
Section 20 of the OSHA Act requires the Health and Human Services Secretary of the United States to respond to a request by an employer or employee for information about the possible toxic nature of substances used or found in the workplace. If, for example, someone found a harmful concentration of lead or other toxic substance in the air in the work environment, NIOSH would investigate, report its results and assess whether or not the lead would have potential negative effects in the concentrations found. Obviously, certain concentrations of lead in the air are acceptable, and if levels above these amounts are found, the company is advised.
The federal OSHA Act provides for state occupational safety and health programs to replace those of the federal government. Thus, if a state adopts a plan that is as effective as OSHA, the state will have jurisdiction over safety matters, and not the federal OSHA Agency. To determine whether or not a state program has met certain requirements, the state prepares a plan and submits it to the OSHA agency. If the OSHA agency approves the plan, for three years after such approval, the state program is considered as developmental. The state must show that it is capable of doing an effective job, and if the state shows adequate legislative backing, standard setting ability, standard enforceability and competent personnel, OSHA may enter into an "operational status agreement" with the state. Final approval of the state plan may occur after an additional year or more of effective operation. One inducement for the states to initiate their own program is that the OSHA Agency will pay up to half of the operating cost of the state programs once approved and operating.
On the other side of the coin, the OSHA Act provides for decertification of state programs if they do not continue to meet standards, and historically some states have voluntarily given up their programs, which will allow OSHA to apply its standards in that particular state.
A company which is seriously concerned about the safety of its employees may turn to the OSHA agency for advice prior to any complaints or citations being forthcoming. If such advice is requested, a consultant will visit the facility in question and attempt to identify hazardous conditions. The consultant than recommends certain corrections to be made to bring the site up to compliance. The consultant sent by a state agency is likely to be a state employee, however, if the federal OSHA agency is called upon for advice, the consultant will be a private firm or individual, however the consultation costs the company nothing.
In general, once a consultant arrives, an opening conference is conducted with the employer, followed by a tour of the workplace wherein hazards and possible violations of the OSHA Act are identified. During this tour, the consultant may also interview employees to determine their on-the-spot views of the health and safety conditions of the plant. Following the tour, a closing conference is held with the employer, followed by a submission to the employer of a written report which identifies observed hazards, and instructions on how the employer can correct these hazards. It is important to note that the consultant cannot issue citations. Thus, you do not have to be in the awkward position of inviting a consultant to come and review the health and safety conditions of your plant, and then have that particular consultant issue you citations. This cannot be done, and the obvious reason is to encourage employers to invite the consultation and to provide a better workplace for their employees. Also, the fact that the consultant’s visit occurred will not result in an investigation or enforcement proceeding by OSHA. Thus any company could benefit tremendously from a free safety consultation and health consultation without fear of being penalized by the consultant’s findings.
Since it is virtually impossible to have an absolutely safe workplace, the question of safety in a workplace becomes a relative one. Thus Congress when enacting the OSHA Act, was faced with a situation of determining what is "safe enough". In the OSHA Act, Congress directed that the standard should adequately assure, to the extent feasible, "functional capacity even if such employee has regular exposure to the hazard dealt with by such standard for the period of his working life."
When it was first created, the OSHA agency had two years to examine and promulgate consensus standards. This resulted in the wholesale adoption of existing industry standards, state standards, American National Standard Institute ("ANSI") standards and a group of standards of various other sources. As with any other wholesale adoption of rules and regulations, most of these became highly useful, some had to be modified and others have been totally useless.
By way of an example of the standard setting process, OSHA originally adopted the Ground-Fault Protection Standard for the 1971 National Electric Code ("NEC"), which was in existence at the time OSHA was created. The 1971 NEC Code provided that all 15 and 20 ampere receptacle outlets on single phase circuits for construction sites will have approved ground-fault circuit protection for personnel. The requirement became effective on January 1`, 1974. This meant that the exclusive protection device was to be the ground-fault circuit interrupter. Using these devices, the time required for the device to react is quite short, such as 1/40th of a second, whereby electrocution of the worker may be avoided but the worker may still suffer a severe shock.
Shortly before the effective date of the ground-fault protection standard, the OSHA advisory committee recommended a delay since a competing concept known as the assured equipment grounding program was coming into existence. This later program required usually stringent inspection and testing of each cord set, circuit, receptacle and equipment for grounding before each day’s use, plus other periodic tests. If this program were carried out, the risk of shock of any sort is diminished to an insignificant level. Thus, the OSHA standard for protection against shocks effective February 22, 1997 included the option of either method of protection.
When OSHA makes a determination, for example that a toxic material or harmful physical agent must be handled in a certain way for sake of safety, it creates a standard to deal with the situation. The standard is then published in the Federal Register, which is a publication put out by the Congress on a daily basis, and the published standard requests objections, data or comments by anyone who is interested or would be affected by the standard. If no one responds within the 30-day period set in the Federal Register, the rule may be finalized by a second publication of the rule in the Federal Register. On the other hand, if interested parties do submit objections, there is often a hearing before the OSHA agency.
As in tax law, sometimes an employer may legally avoid compliance with the OSHA standards. Exceptions can be made to the various standards, for example if a company has a better or equivalent means of protecting its employees than the OSHA standard provides, or if the company cannot comply with the standard within the time allotted.
For example, a company may be required to do massive reconstruction, hire new personnel or bring in new materials to make the change requested by the new rule. Also, materials necessary to comply with the rule may be difficult to find. This type of variance is allowed, however, during the interim period, the company must do all it can to protect its employees from the hazard involved.
Another reason for granting a variance is where an OSHA standard conflicts with an employee’s religious views. For example, there is an OSHA regulation requiring carpenters to wear hard hats. However, Old Order Amish are required by their religion to wear wide brim black felt hats. In this particular case, which actually happened, OSHA has issued a permanent variance to allow Old Order Amish carpenters to comply with their religion. However, if the issuance of the variance would have endangered the life, healthy or safety of others, the problem would have been more difficult to resolve.
Previously we discussed the way that the initial OSHA standards were adopted. In fact, many were taken from existing standards. As a result of this wholesale adoption of standards, many trivial regulations were adopted along with those that are truly important. Now this became increasingly difficult because Congress required inspectors from the OSHA agency to issue a citation for any violation they observed. In 1978, OSHA began a purge of such rules, and the editing efforts have subsequently resulted in the removal of many unnecessary regulations. OSHA’s efforts to clean up its act are continuing.
The greatest source of contention in OSHA enforcement is the unannounced inspection. According to the authors of our text, OSHA appears to suffer from an apparently well-deserved adverse image acquired during the early years of its operation. In those days, the investigators and compliance officers had little or no industrial experience, and the companies they visited were subjected to unannounced interruptions of their operations by a compliance officer who had no knowledge of the practical effects of the inept inspection upon the production facilities.
The other side of the coin was that surprised investigations and inspections were the only way to catch industries violating the rules, since the employer had an opportunity to change the conditions of the employment environment.
In this situation, enter the United States Constitution. The Fourth Amendment states that warrantless searches are not allowed. Thus the question arose as to whether a warrantless and unannounced inspection violated the Fourth Amendment. This issue reached the Supreme Court in 1978 in the case of Marshall v. Barlow’s, Inc., the latter being a electrical and plumbing installation business in Pocatello, Idaho. Barlow’s had twice refused the OSHA inspector access to its premises. The court found that the OSHA Act allowing unannounced inspection’s was unconstitutional in regard to warrantless searches. The court said the following:
The business man, like the occupant of a residence, has a constitutional right to go about his business free from unreasonable official entries upon his private commercial property. The business, too, has that right placed in jeopardy if the decision to enter and inspect from violation of regulatory laws can be made and enforced by an inspector in the field without official authority evidenced by a warrant.
Thus, today, the OSHA inspector can get into a facility and make his inspection, but he or she must first obtain a search warrant if the attempt to inspect is refused. The OSHA Act provides statutory authority for the issuance of such warrants.
As a current student of political history, it is apparent that no one in this country can say that they have led such perfect lives that they have not done anything wrong. In the same vein, a zealous inspector from the OSHA agency can most likely find rule violations present in almost any establishment. The complicating factor is that the OSHA law and the OSHA agency’s regulations require the compliance officer to cite the employer for all observed violations. The is no room for latitude.
After receiving such a citation, the employer has 15 working days to file a contest against the citation, providing the employer has a disagreement with it and is willing to spend the necessary time and money to fight the citation. To begin this process, the employer files a Notice of Contest.
The OSHA agency citation can be challenged on several bases. One of the more common ones is objection to the lack of specificity in the citation. This occurs when it is difficult to tell from the citation just what the complaint was. Excessive penalties may also be challenged. The time period allowed for abatement of the hazard may also be challenged, and the employer may argue that their own safety practices are superior to the agency’s rules.
The citations issued by the inspectors may or may not include penalties for the violation. A serious violation, one involving a substantial probability of physical harm and death requires a mandatory penalty of up to $1,000. A willful violation runs a considerably greater risk of penalty. The maximum penalty for willful violations runs up to $10,000 per violation and/or six months in jail. A second violation can double these maximum penalties.
Safety hazard citations usually state an abatement period during which the employer is expected to remove the hazard. Failure to comply with this time limit may also result in fines of up to $1,000 per day of abatement period violation.
Other penalties exist for falsifying records, failing to post notices of citations and, believe it or not, actually assaulting an OSHA inspector.
Under the OSHA Act, all but fairly trivial work-related injuries or illnesses must be recorded, and the records must be available for inspection by the compliance officers. The purpose of these records is to assemble a body of anecdotal knowledge of work-related human problems, which apparently is a worthy and desirable motive. On other side, is such record keeping a cost effective way of gathering such information?
The requirement for record keeping pertains to all employers having more than 10 employees. However, the Bureau of Labor of Statistics may even ask small businesses for a sampling of such information to help compile its data bases. Certain small businesses are exempted, such as small service companies, and farmers with respect to records for members of their families.
OSHA began its life in a healthy business climate. During such times people tend to be concerned with the health and well-being of workers. On the other side of the coin, in an economic downturn, people tend to be more concerned about the health and well-being of businesses and the unemployment rate. Thus, as the economic climate varies, the emphasis placed by OSHA changes to reflect the change in the public attitude. Thus, OSHA’s actions are not only viewed from the law under which it is created, but also from the prevailing economic and political environment in which OSHA operates. Therefore, keep your eye on the way the health and safety laws in the country are enforced and publicized when the government changes from a middle of the road policy to a more conservative policy, and vice versa.
Environmental protection began with controls of releases to water and the air, through smoke stacks and sewer pipes. These "end of pipe" controls began the steady increase of environmental regulations that makes it imperative that individuals and companies be aware of the controls on the development and manufacturing processes directly, irrespective of the question of whether or not the release of pollutants into the air, water or ground violates an applicable requirement.
There are several different requirements for reporting the use of hazardous and toxic substances used in manufacturing processes and facilities. These requirements include specifications for the manner in which materials are stored, and reporting obligations when it is discovered that a chemical may pose a risk to human health, safety or the environment, no matter whether or not the injury has occurred or is imminently likely to occur. Consider the previous example I gave during the lecture on safety, Lecture 11, wherein tanks of acetone are stored together in a factory manufacturing nail polish. These acetone tanks must be wired together electrically so that no spark be transmitted from tank to tank and cause a fire.
Title III of Super Fund Amendments and Reauthorization Act (SARA) is a self-implementing law entitled the Emergency Planning and Community Right to Know Act of 1986, which was enacted largely in response to the December 1984 release of methyl isocyanide in Bhopal, India, and in response to a similar release in August 1985 in West Virginia. The Act has four major sections which include emergency planning requirements, emergency release notifications, community right to know reporting requirements, and toxic chemical release inventory reporting. From the heading of these sections, you can tell the detail and the importance which is placed on emergency planning and community right to know policies where there is a chance that a hazardous or toxic substance may cause an environmental problem.
These laws also provide for protection of trade secrets, for responses to public requests for information, and include enforcement and penalty provisions for failure to comply. The ultimate purpose of the Act is to require industrial facilities to report and disclose how they handle and use hazardous and toxic chemicals, and make this report available to the community in which they are located. Further, the Act was designed to create a working partnership between industry, business, state and local governmental officials and interested local citizens. However, this working partnership does not come inexpensively. Early estimates by at least one occupational health and safety trade group are that it would be required to invest more 13 million person-hours of time to fill out the required forms at an approximate cost of $4 billion. Also if compliance with the Act is unsatisfactory, the EPA (Environmental Protection Agency) is authorized to impose civil, administrative, and criminal penalties ranging from $10,000 to $75,000 per day.
The emergency planning provisions of the Emergency Planning and Community Right to Know Act of 1986 (EPCRA) require state and local governments to develop emergency response and preparedness capabilities by coordinating with the local regulated community. Each state has to designate a State Emergency Response Commission (SERC) to oversee the emergency planning process. Each SERC must also designate local emergency planning districts and appoint Local Emergency Planning Committees (LEPC) for each district. Each LEPCs primary responsibility is to develop an emergency response plan and review it at least once per year. Some of the ingredients in these plans must be the identification of locations at which hazardous chemicals are present, methods for determining the occurrence of a spill of toxic or hazardous chemicals, the probable affected area and population that could be affected from a spill, evacuation plans, and plans for implementing emergency response measures.
Any facility that has at present on its premises any chemicals listed on the list of Extremely Hazardous Substances (EHS) must file an appropriate report. It must first be determined whether an extremely hazardous substance is present in the facility in an amount equal to or greater than a designated Threshold Planning Quantity (TPQ), or whether the facility has been designated by the governor of the state as being required to report anyway. The facility must calculate the total amount (such as weight in pounds) of each substance present at the facility at any given time. That sum can then be compared to the TPQ listed in Title III’s list of lists.
Within sixty days after beginning to have present any of the extremely hazardous substances in an amount equal to or excess of the amount on the list, all facilities must notify the state and local EPC. The facility owners are also required to submit updated information to the appropriate planning committee when any relevant changes in the facility occur or are expected to occur.
The law also compels the disclosure of the release of any listed hazardous substance. Facilities "at which a hazardous chemical is produced, used or stored" that experience a release of a regulated substance must immediately notify the local emergency planning committees and the state emergency response commissions that are likely to be affected. Reporting is required for the release of a listed substance which exceeds the reportable quantity for that substance.
In addition, in the event of a release of an extremely hazardous substance or a release of a substance subject to the emergency notification requirements, immediate notification to the community response coordinator is required. Also, there are certain non-stationary transportation vehicles which are also considered facilities, which are likewise required to report releases.
Not all releases must be subject to notification. The exempted releases include, amongst others, continuous releases, the disposal of hazardous substances at an approved disposal facility, and releases from a facility that neither purchases, uses or stores hazardous chemicals.
In the event of the release of a covered chemical substance exceeding a reportable quantity, the facility must submit an emergency notification, which can been made by telephone, radio, or in person initially. This report must include the chemical name, the estimate of the released quantity, the time and duration of the release, where the release occurred, and to what media (i.e., either the ground, water or air), and any known or anticipated health risks associated with the chemical and/or the release.
Certain portions of the SERA Act establish an ongoing mechanism to keep the government and community aware of the manufacture, importation, processing and use of hazardous chemicals in a nearby facility. The term "hazardous chemical" is defined as any element, chemical compound, or mixture of elements or compounds that is a physical or health hazard. The Act contains threshold quantity requirements and because of the broad definition of a hazardous chemical, reporting requirements can include manufacturers, importers, distributors and any downstream user who receives a shipment of hazardous chemicals.
The Act also contains several exemptions from reporting requirements such as tobacco products, wood products, consumer products and food, drugs and cosmetics.
The EPA has established an inventory of routine toxic chemical emissions from certain facilities. Specified facilities must complete a toxic chemical release inventory form for specified chemicals and submit it to the EPA and to appropriate state emergency response officials. The purpose of this legislation is to compile data on releases of toxic chemicals in an effort to assist in the research and development of regulations, guidelines and standards to reduce the impact of such releases.
On December 1, 1993, the EPA added 11 hydrochloroflurocarbons, 21 other chemicals and two chemical categories to the toxic release inventory because of their potential ozone depleting and adverse health effects. In November 1994, EPA officials also added many additional chemicals to the list which were classified as "probable human carcinogens. Also, additional chemicals added to the list include polycyclic aromatic compounds, synthetic mineral fibers, chlorinated paraffins, nicotine, and strychnine.
The EPA has also exempted certain toxic chemicals from release reporting. These include "articles" such as manufactured items which are formed to a specific design, which have an end use function dependent on their disposal, or which do not normally release toxic chemicals. Also exempted are toxic chemicals used as structural components of a facility, used in routine janitorial and maintenance, used by personnel such as in food, drugs and cosmetics, and used in non-contact cooling water or in process water.
As a result of the confidential nature of much of the information that is required to be disclosed under the EPCR Act of 1986, the law provides for the confidential treatment of certain information. However, one must be careful in reporting since the information submitted under the Act becomes a matter of public record, absent a designation by the facility’s owner of trade secrecy. Such information for which a facility may wish to pursue trade secrecy status includes:
To assert a trade secret claim, a facility must submit two separate filings. The first filing contains the confidential information. The second report should include only information about the generic category in which the protected chemical is classified but should exclude the confidential information. With the two reports, the facility must also submit an assertion of confidentiality and evidence that substantiates why the withheld information complies with the trade secrecy requirements set forth in the law and in regulations.
In asserting that your information is actually a trade secret, the following information should be submitted to the government:
The Toxic Substances Control Act (TSCA) was intended to allow the EPA to prohibit or significantly regulate the use of any chemical to the extent it imposes an "unreasonable risk". However, the EPA has seldom used its powers. The TSCA regulates virtually any chemical, except pesticides, tobacco, drugs, food products, cosmetics and certain nuclear materials which are all regulated by other federal statutes, most of which preceded the environmental laws. Any chemical in use that has not been authorized for that use by TSCA is essentially contraband and is subject to seizure.
TSCA requires parties engaging in commerce in a new chemical, or making a significant new uses of an existing chemical to notify the EPA. The EPA then subsequently determines if the new chemical or new chemical use presents an unreasonable risk to the health and the environment, if testing of the new chemical must be performed.
The EPA’s initial list of regulated chemicals was compiled from information submitted by chemical manufacturers, and contained more than 62,000 chemicals and chemical groups. By 1999, approximately 23,000 additional chemicals have been added to the original data base.
While the EPA’s primary focus has been on new chemicals and new uses, the TSCA does authorize the EPA to require testing of its inventoried chemicals. As a result, the EPA has instituted controls on a variety of substances that are on the original inventory.
A facility planning to import, manufacture or process a new chemical substance must give the EPA at least 90 days notice prior to manufacture. This gives the EPA a opportunity to determine whether a chemical, or the chemical use, is new.
There are two classes of chemicals. Class I consists of chemicals whose composition can be represented by a unique chemical structural diagram. The EPA then compares that substance with the molecular formulas and chemical structures of chemicals in the TSCA’s inventory to determine whether or not the similarity in structures of the chemical compound will lead to the conclusion that there may be harmful effects.
Class II consists of chemicals whose composition cannot be identified by a unique molecular formula or chemical structure diagram. For these chemicals in Class II a new substance determination is made by comparing molecular formula and chemical structure information with similar TSCA inventory information and by comparing reactant and reaction information with similar information maintained on file by the EPA.
Once a new substance determination is made, a facility must submit a pre-manufacture notice or PMN. The PMNs provide a variety of information to the EPA such as:
The issues relating to TSCA inventory for polymers are extremely complex. However, we will attempt to touch the tip of the iceberg here.
In general, polymers are high molecular weight substances with repeating subunits. The subunits are known as monomers. Since polymers do not tend to bio-accumulate, they are relatively non-toxic. This led the EPA to promulgate a polymer exemption rule. To qualify for the exemption the substance must be composed of a simple weight majority of polymer molecules. In addition, the substance must have a numbered-average molecular weight greater than 1,000, or be a polyester polymer manufactured from certain reactants. The exemption also lists certain polymers that are excluded from the polymer exemption. Companies that manufacture, process, or import polymers must periodically check on the EPA’s most recent rule-making efforts in this area.
In addition to requiring the submittal of pre-manufacture notices for new chemicals, the EPA can require a similar type of process for existing chemicals. The agency requires companies to undertake this process for existing chemicals by promulgating something called a significant new use rule. In identifying significant new uses, the EPA must consider all relevant factors related to the chemical. These factors include the amount that will be manufactured, the extent to which the new use will increase human and environmental exposure, and the anticipated methods of manufacturing, processing, distributing and disposing of the substance in its new use.
The EPA issues significant new use rules where certain chemicals may present minimal risk when manufactured in small quantities or when used in a manner that minimizes exposure to humans or the environment. However, if increased output or a change in the intended application increases risk, the chemical is a candidate for a significant new use rule. Therefore a corporate environmental compliance program should identify any products in which the operation may be covered by significant new use rules.
If the EPA determines in a review of screening that there is a reasonable basis to conclude that the manufacture, processing, distribution in commerce, use or disposal of a chemical substance presents or will present an unreasonable risk of injury to health or the environment, the Agency may regulate the chemical. Having made such a determination, the EPA may invoke a variety of powers under the section of the law set forth above, which among others could completely prohibit the manufacture of the chemical or prohibit or limit certain uses.
Therefore, if you someday become the manager, director, owner or supervisor of a facility whose operations fall within the scope of the Toxic Substance Control Act, a compliance audit and program should be instituted, which includes at the very least the following:
The EPA is authorized to set forth rules requiring that specified chemicals be tested for their effects on the health of people and the environment.
To establish a rule, the EPA must first determine either (1) that a chemical presents an unreasonable risk of injury to the health of the environment, or (2) that the chemical is produced in substantial quantities (i.e., more than 1 million pounds per year) and they enter the environment in substantial quantities or result in significant or substantial human exposure. In hope of minimizing the need for such burdensome fact finding and formal rule making, the EPA is exploring voluntary testing agreements with industry.
A manufacturer of a chemical substance must maintain, for example, records of consumer allegations of personal injury, harm to health, occupational disease, or injury to the environment related to such chemicals. Also, the manufacturer or processor must retain this type of information received from any source, such as employees or customers. Also, allegations by employees of adverse reactions must be kept on file for 30 years. All other allegations must be kept on file for five years.
TSCA contains explicit provisions with respect to polychlorinated biphenyls (PCBs). The law prohibited the manufacture of PCBs after January 1, 1979 and prohibited their processing and distribution in commerce after July 1, 1979.
Exempted are PCBs that are totally enclosed (i.e., will not be exposed to humans and the environment) and also exempted are PCBs whose manufacturer, processing, distribution or use will present an unreasonable risk of injury to health or the environment. The EPA initially defined, for example certain uses of PCBs in electrical transformers and capacitors as totally enclosed. The EPA also established a 50 PPM (parts per million) cut-off: substances containing less than 50 PPM PCBs were deemed as not presently an unreasonable risk. The totally enclosed and 50 PPM use exemptions were successfully challenged in a court case which ultimately led the EPA to promulgate a series of follow-up rules.
Under the current system, PCBs are regulated for use in certain types of equipment, identification, storage and disposal. Approval for use of these chemicals is generally not required as long as a disposal procedure conforms to EPA regulations.
The EPA has also issued regulations on the use and retirement of PCB-containing transformers in or near commercial buildings. The Agency also regulates the unintended by-product manufacture of PCBs.
Given this tight control of the production and use of PCBs by the EPA, a sound corporate environmental compliance program should address the company’s preview of the substances. A program should include the periodic review of the company’s facilities and processes for the presence or inadvertent manufacture of PCBs.
In 1989 the EPA issued a final rule under the TSCA to phase out the use of asbestos in commercial products. The rule was staged as follows:
In 1990 the felt used in construction, pipe wrap, cement sheet, floor tile, and clothing was to be phased out;
In 1993 friction products, such as gaskets, clutches, automatic transmission components and new brake linings were phased out;
In 1996 cement pipe, corrugated paper, specialty paper, roof coatings and replacement brake linings were phased out.
Therefore, if you were driving a car manufactured within the last five years, and your brakes squeak when applied, it is because asbestos could no longer be used in the manufacture of brake linings, and the brake linings had to be harder and therefore squeak when applied. At least that was the answer I received when I owned a new car with brakes that squeaked.
The above phase out program was set aside in litigation against the EPA. However the EPA may attempt to revive an asbestos phase out program. Most importantly, from the prospective of a corporate environmental compliance program, it must be considered that the decision which eliminated the phase out program of the EPA did also uphold the ban on all future new uses of asbestos.
The TSCA was amended in 1992 by a law entitled the Residential Lead-Based Paint Hazard Reduction Act. The title of this act tells it all. Pursuant to this new legislation of 1992, the EPA proposed rules to identify lead-based paint hazards, lead contaminated soil, and lead contaminated dust. The EPA is also authorized to propose rules on lead-based paint contractor training, the accreditation and certification, and disclosure requirements for the transfer and renovation of housing. Under this act, the EPA has initiated an investigation to determine if certain uses of lead present an unreasonable risk to the health and the environment. We also should be aware of the fact that lead has been eliminated from gasoline for many, many years.
The EPA and the Federal Department of Housing and Urban Development have adopted regulations governing disclosure requirements for lead-based paint. These regulations impact sales and leasing transactions for nearly all residential real property built before 1978. Therefore, those of us who live in houses built in the 1900s, such as myself, must be aware that nobody in the house starts gnawing at the paint on the window sills.
Under these new regulations the sellers and lessors of most resident housing are require to:
The environmental regulations and laws impose direct and indirect requirements for a variety of manufacturing processes in commercial activities. Some of those recurring types of activities are not intended to cause environmental injury. However, because of the potential for an accidental occurrence or gradual leakage, several environmental requirements should be noted.
The Super Fund law imposes liability for release of a "hazardous substance". The list of what constitutes such a material is extraordinarily long. Therefore a critical issue is evaluating storage, handling and other plan processes to be sure that leakage does not occur. The law defines a release into the environment as including essentially any release into the soil or water or any release that escapes from a manufacturing building into the ambient air beyond the building or which may seep through the floor of the building.
Above ground storage tanks that hold virtually any category of chemical are potential sources of liability in regulatory response. Any above ground tank that holds a petroleum product may be required to have a spill prevention and clean up plan. These plans are required under the Clean Water Act for preventing spills of oil or hazardous substances which may reach a navigable body of water, and particularly those that may contain potable water.
The hazardous waste regulations designate some materials as U materials, or P materials. Above ground tanks which store these materials raise an additional issue. The release of these materials may mean that all of the soil that is contaminated by them at the time of clean up also will be deemed to be hazardous waste. This result is due to the "mixture rule" which holds that the resulting mixture of a listed hazardous waste with a soil is deemed to be a hazardous waste. Once the raw material escapes its intended storage vessel, the hazardous waste rules deem that material to now be a "waste".
The Super Fund law and the Resource Conservation Recovery Act apply liability requirements to underground tanks the same as they do to above ground tanks. In addition, the EPA has adopted specific rules for underground storage tanks containing hazardous substances and hazardous waste and has also adopted detailed requirements for underground tanks holding petroleum products. Today it has been found that many businesses do not have sufficient staff and resources available to control costs on these projects. An example is someone purchasing the site of an old gasoline station, and then having to clear the ground of all toxic waste that may have seeped from the fuel storage tanks previously on the site.
The renovation of a site or renovation of a building may bring forth environmental issues. The basic law that has to be looked at at this point is the Federal Super Fund Law.
Buildings which contain asbestos containing materials pose frequent and potentially expensive problems. Asbestos, which is friable, which means it is flaking or in disrepair, is deemed by the EPA to constitute a threat, and its condition to create a threat of a release of a hazardous substance. Therefore, these materials should be remedied promptly.
Asbestos which is not friable is not viewed by the EPA as posing an imminent threat. However, demolition of a building containing asbestos is strictly regulated and all asbestos material must be removed before a building is demolished, and sometime remodeled.
It is also possible that in the course of demolition of a building or other renovation a contamination may be found in the soil. This will more likely raise clean up and reporting issues. These activities also impact other environmental requirements particularly the requirement to obtain a permit before construction in any "wetland".
This act is a source of significant EPA authority. The act defines a pesticide as any substance intended for preventing, destroying, repelling or mitigating any pests, or any substance intended for use as a plant regulator, defoliant or desiccant. Note that these definitions are based on uses that are intended or claimed for the product. A substance that does not have labels or advertising making pesticidal claims, even though the substance may be a very effective pesticide, is not a pesticide under this Act.
Before any pesticide can be manufactured, distributed or imported, it must be approved by the EPA. The person seeking permission must submit the complete formula of the product, the proposed label, and a full description of the tests made and the results that support the pesticidal claims. To grant registration, the EPA must find that a product’s composition warrants the proposed claims and they will not cause unreasonable adverse affects on the environment.
In 1996, a court decision required amendment of the Federal Insecticide Fungicide and Rodenticide Act. A court had held that the EPA had no discretion to permit any residue or food additives, including pesticides, on food products, if those additives are known to be carcinogenic. After the enactment of new laws after this decision, the EPA is allowed to establish safe levels of pesticide residues on food products.
Under the law, the EPA has also established a data collection program to assure the safety of incidents in children whose consumption or vulnerability to pesticides might possibly require measures beyond those in place for adults. Finally, the amended regulations will be EPA’s platform for implementing a strategy for regulating endocrine disrupters. These new regulations require the EPA to establish a screening program to determine whether substances, including pesticides, have endocrine-disrupting effects.
In the following portion of this lecture, we will turn to the more traditional pollution control concepts which talk about the control of waste gases, the control of waste water and the control of solid waste material. The regulatory net is ever expanding, particularly with respect to waste gases. Many businesses that were previously exempt from permitting requirements, or viewed as too small to be regulated, now potentially face significant regulation or significant involvement with environmental agencies. Many of the current requirements may have significant impact on business flexibility to respond to changing market demands.
The first Clean Air Act was passed in 1967, and provided authority for the federal government to establish air quality standards. The Clean Air Act of 1970 was far stronger and more comprehensive, laying the foundation for regulatory efforts during the ‘70’s and the ‘80’s. Most recently, the Clean Air Act Amendments of 1990 represent the fifth major effort by Congress to address clean air legislation. If you have any doubts that these regulations and laws are working, take note that the air in Los Angeles has become increasingly better over the last 10 to 20 years.
Until the Clean Air Act Amendments of 1990, the entire national strategy to improve air quality was based upon the concept of national ambient air quality standards. The purpose behind these standards is to determine the threshold level of air pollution below which no adverse effect will be experienced by humans or the environment. The system contains requirements to prevent the deterioration of air quality which is already purer than the standards would require. The program was also intended to require efforts to reduce air emissions to improve air quality.
There are two types of standards. Primary standards which define the air quality required to prevent any adverse impact on human health, and secondary standards which establish lower numerical limits to provide adverse effects on vegetation property or other elements of the environment. The short term and long term standards are also set in certain cases reflecting the fact that people can tolerate brief exposures of higher levels of air pollution and that prolonged exposure to much lower concentrations can lead to adverse health effects. Ambient air quality standards have been established for only a small number of the most common pollutants such as carbon monoxide, sulfur dioxide, nitrogen dioxide, ozone particulate and lead.
In 1997, the EPA published in the federal register revised ambient air quality standards for ozone and particulate matter. The revised ozone standard phases out and replaces the current 0.12 ppm 1-hour primary ozone standard with a new 0.08 ppm 8-hour standard, designed to protect against longer and more significant exposure.
The Clean Air Act places most of the responsibility on the States to achieve compliance with the air quality standards. The prime vehicle for implementation is known as the State Implementation Plan (SIP). The SIP establishes a control strategy’s emission limitations and timetable for compliance, as well as the regulatory framework for evaluating projects and individual facilities for consistency with air quality goals. The SIPs also include emission limits for specified pollutants.
In October 1998, the EPA issued a final rule requiring 22 states and the District of Columbia to revise their State Implementation Plans to address the regional transport of ground level ozone in the eastern United States. These regulations address the regional transport of NOx, which is an ozone precursor. These regulations were prompted in part by petitions filed by eight northeastern states under the law, and in these petitions the states sought to prompt EPA regulation of specific emission sources in various states that contribute to non-attainment in or interfere with attainment in their respective states. Thus, these states were concerned that a factory emitting releases into the air in Ohio might eventually affect the air quality in Vermont and New Hampshire for example. The EPA has proposed NOx budgets for the 22 states that are subject to the call and the 126 petitions.
A principal feature of the non-attainment provisions enacted in 1977 was a requirement that the states require existing sources in non-attainment areas to achieve reasonably available control technology. The requirement is generally applicable to a "major source" which is defined as a source with a potential to emit 100 tons per year or more of a particular pollutant. These regulations may now even be applied in serious ozone areas to smaller sources, including those which lose as little as two gallons of solvent per day by evaporation.
The 1970 Clean Air Act authorized the EPA to set special standards for hazardous air pollutants. These rules were intended to establish additional controls which would directly restrict emissions of the large number of toxic substances not covered by those standards. Until the 1990 Amendments, national emission standards for hazardous air pollutants were promulgated only for a few substances.
Under the various State Implementation Plans (SIPs) each source of air pollution is obligated to know which requirements in the SIP are applicable to it and to be in compliance with the regulations. Sources must also obtain permits to construct and operate sources of air pollution. These permits will allow the source to conduct operations as ascribed in the application.
The law now creates a new federal operating permit program which is required for any facility defined as a major source. In most metropolitan areas sources with at least 25 tons per year of volatile organic compound (VOC) emissions are likely to be subject to requiring a permit.
In areas which already satisfy air quality standards, rules are designed for the prevention of significant deterioration of the air quality. These requirements apply to new major sources and major modifications to existing sources of pollution. These sources must install the best available control technology which is defined as an emissions limitation based on the maximum degree of reduction for each pollutant subject to regulation which would be emitted from any proposed major stationary source or major modification. This must take into account energy, environmental and economic impact, and other costs, which the EPA determines to be achievable for such source.
In recognition of the substantial contribution of mobile sources such as automobiles and trucks and snowmobiles to the ozone problem, the 1990 Clean Air Act Amendments require increased attention to mobile source emissions. One way these 1990 Amendments anticipate reductions in the emissions is through transportation control measures. For example those states that have severe or extreme non-pollution attainment areas must identify and adopt specific and forceful regulations to offset any growth in vehicle miles traveled. Affected areas will include Chicago, Milwaukee, the Los Angeles area, San Diego, New York City, Philadelphia, Houston, and my hometown of Baltimore.
The Clean Air Act specifies broad categories of transportation control measures from which the state can choose. These include, for example, motor vehicle emission inspection and maintenance programs, programs for improved public transit, programs to establish exclusive bus and car pool lanes in area-wide car pool programs, and programs to institute road user charges, tolls or differential rates to discourage single occupancy automobile trips.
One of the proposals that is mandatory for severe and extreme non-attainment areas is a program to reduce work-related vehicle travel miles. The objective is to reduce the automobile usage during the morning rush hour period when traffic congestion is likely, and thus when automobile exhaust emissions contribute more directly to the ozone formulation. Having said all this, you will note that there are no large visible indications that this portion of the law has been enacted. The reason is that both EPA and the states have not implemented this program to a great degree due to political and public opposition. Therefore, are we in a position where our love of our cars creates a situation that will ultimately exterminate us? I am reminded of the mating habits of the praying mantis, where after the mating ritual, the female bites off the head and kills the male.
The Federal Water Pollution Control Act prohibits the discharge of a pollutant except in compliance with certain sections of the Act. Discharge of a pollutant is defined as (A) any addition of any pollutant to navigable waters from any point source and (B) any addition of any pollutant to the waters of the contiguous zone or the ocean from any point source other than a vessel or other floating craft.
Navigable Waters are defined as the waters of the United States. The bodies of water protected are extraordinarily broad and the Act has been interpreted to apply to internal waste waters and treatment ponds, wetlands that form the border or are in reasonable proximity to other waters of the United States, even though there is no apparent surface connection, to non-navigable tributaries to traditionally navigable waters, and to intermittent streams.
A point source is any discernable, confined and discreet conveyance including but not limited to any pipe, ditch, channel, tunnel, conduit, well, discreet fissure, container, rolling stock, concentrated animal feeding operation, or vessel or other floating craft from which pollutants may be discharged. The term "point source" has been interpreted to include the various items such as shipboard guns and a bulldozer blade.
Discharges only occur if one adds a pollutant to a navigable water from a point source or from a vessel or other floating craft.
Pollutant is defined as dredged spoiled, solid waste, incinerator residue, sewage, garbage, sewage sludge, munitions, chemical wastes, biological materials, radioactive materials, heat, wrecked or discarded equipment, rock, sand, cellar dirt, and industrial, municipal and agricultural waste discharged into water.
The Clean Water Acts prohibit the discharge of any pollutant to waters of the United States unless the discharge is authorized by a National Pollutant Discharge Elimination System permit.
All storm water discharges associated with industrial activity that discharge directly through waters of the United States or through municipal separate storm sewer systems must be covered by a permit. Storm water is defined to include storm water runoff, snow melt runoff, and surface runoff and drainage. Such facilities which fall within the aegis of the storm water discharge regulations are manufacturing and industrial facilities, construction operations of five or more acres, hazardous waste treatment plants, storage or disposal facilities, landfills, etc.
Discharges to wetlands are regulated by the Water Discharge Laws. The term wetlands is not specifically defined but it is incorporated into the regulations definition of "waters of the United States". The regulatory program governing wetlands is administered by two government agencies, the Army Corp of Engineers and the EPA. For example the Secretary of the Army acting through the Chief of Engineers has permanent authority for the discharge of dredged or fill materials into navigable waters. The term fill, material, however, is defined differently by the EPA and by the Army Court of Engineers. As a result, although this is an oversimplification, if the discharger’s primary purpose is to fill the Army Corp of Engineers has jurisdiction. On the other hand, if the discharger is discharging a pollutant primarily to dispose of waste, that activity is regulated by the EPA under the permitting program. Therefore, one’s characterization of the primary purpose of a discharge can determine which agency issues the permit.
As with any other new environment law, there are exemptions. The exempt discharges under this law include construction or maintenance of farm or stock ponds or maintenance of drainage or irrigation ditches, and construction at a construction site of temporary sedimentation basins that do not involve discharge of fill material into navigable waters.
This law enacted in 1995 promises to have a major impact on companies that operate facilities in the Great Lakes Basin, including the Chicago area. The law will greatly affect municipalities located in the basin that operate waste order treatment plants.
The "Guidance" as it is called, contains water quality criteria for human health, acute aquatic life, chronic aquatic life and wildlife. The Great Lakes States, which include Illinois, Minnesota, Ohio, Indiana, Wisconsin, New York, Michigan and Pennsylvania are adopting programs that are consistent with the provisions of the Guidance to apply to all waters in the State that are part of the Great Lakes Basin, and those waters which discharge into those waters. If a state has submitted an insufficient program, the EPA will take action to impose the Guidance provisions in those states. You will note, a few years ago when Chicago proposed to open the locks downtown to drain water from Lake Michigan, which was exceedingly high, the other surrounding areas vetoed Chicago’s right to open the locks.
The management of solid waste is governed at the local, state and federal levels. Initially, the regulation of solid waste was largely a state and local matter.
Most of the federal requirements regulating hazardous and non-hazardous solid waste are promulgated under the Solid Waste Disposal Act, the Used Oil Recycling Act and the Medical Waste Tracking Act. All of these Acts date from the 1970’s and 1980’s. Subtitle C of this Act establishes a comprehensive management program to regulate hazardous waste from the point of generation to disposal. Another subtitle of the Act provides a minimal federal framework for management and disposal of solid wastes, such as municipal waste, mining waste, and other industrial waste not defined as hazardous. Under these laws, federal involvement in solid waste management is substantially increased, particularly in the area of solid waste landfills.
A waste generator facility operator should determine whether its waste is regulated as "solid waste" and if so whether the waste is also "special waste" or "hazardous waste".
A material is a solid waste if it is a discarded material that has been abandoned, recycled or is inherently waste-like. There are several exceptions, as there are in everything, to this definition. Thus, many materials fitting within the definition are not regulated.
Special waste, which is not regulated under the Act, but which are considered potentially hazardous. Generally speaking special waste is regulated under State Waste Management Programs. These wastes include for example materials containing PCB’s and asbestos.
The regulations also define what solid wastes are also hazardous, and what waste can be listed as a hazardous waste. These are specifically listed in part 261 of the legislation. Waste can also be hazardous by characteristic. That is, they exhibit one or more of the following characteristics: ignitability, corrosivity, reactivity, and toxicity. In the event of a spill or leak of a listed waste material, the resulting mixture, whether soil, water, or other chemicals, is regulated as a hazardous waste and, in the event of cleanup, is subject to stringent land disposal requirements. If the hazardous waste also is radioactive, it may be regulated as a mixed waste requiring special handling.
With the increasing cost of disposal of non-hazardous and hazardous waste, and the predicted shortage of waste disposal capacity, both state and federal governments are placing increased emphasis on recycling and waste minimization. Many hazardous wastes that are recycled receive special treatment under the law. Recyclable materials are hazardous wastes reclaimed to recover a usable product. If the materials can be sold in the commercial market place, they probably, but not necessarily, will be exempt from regulations.
Materials falling within part 266 of the definition of the Act include recyclable materials used in the manor constituting disposal, and used oil that is hazardous by characteristic and burned for energy recovery in boilers and industrial furnaces. Materials which are excluded from regulation include reclaimed industrial ethyl alcohol, used batteries returned for regeneration, used oil that is recycled by a method other than burning, scrap metal and certain hazardous waste derived fuels or oils from petroleum refineries.