BL Chapter 11 Rough Draft: Intellectual Property

Copyright Notice (Copyright Formalities)

-- Use of proper notice (making the product with a sign showing a copyright element and year copyright owner) prevents infringers from claiming innocent infringement in mitigation of actual or statutory damages.

Non-infringement of the patent (Defenses to Patent Infringement)

--Assets that the allegedly infringing matter does not fall within the claims of the isued patent --Successful when the alleged infringing matter is not described by the patent claims --FILE WRAPPER ESTOPPEL: prevents patent owners from asserting any claim interpretation at odds with the application on file with the PTO.

Misuse of the Patent (Defenses to Patent Infringement)

--Can be used if the defendant can prove the patent holder abused its patent rights and therefore has lost their right to enforce them --"Improperly expanding the physical or temporal scope of a patent"

Innocent Infringement (Defenses to Patent Infringement)

--Claimed if the patent item did not carry adequate notice of its patent status --Patent owner can't recover damages arising out of infringement occurring before the defendant received actual notice of infringement

Expression Versus idea

--Copyright Act --Merger doctrine Explain this idea

1. Notification (4 elements to a trade secret program)

Written notice to confirm that all employees are aware of the trade secret program --Written notice should be given to consultants, vendors, joint ventures, or other parties (non-disclosure agreement often is basis for recovery)

Trade Dress

Refers to the packaging or dressing of a product: which is the elements that make total visual image of a product There is a ten-factor test to determine the likelihood of confusion in a trade-dress case **Also, May not be claimed for functional product features i.e. when it is essential to the use or the purpose of the article. Or, if it affects the cost or quality of the article

State Registration (trademark rights)

Registration can be obtained within a few weeks of filing and is proof of ownership of the mark

Federal Registration (trademark rights)

Registration provides: --Constructive notice of a claim of ownership in all fifty states --> makes it easier to enjoin subsequent users --Prima facie evidence of ownership --Incontestable right to use the mark --The right to prevent importation into the US of articles bearing an infringing mark **Can file for actual or intent to use

Tort Theory of Trade Secrets (Remedies for Trade Secret Misappropriation of DAMAGES)

Repay owner completely and also disgorge any profits the misappropriator may have made --> key is if there was either harm or unjust gain

US Copyright Act of 1976

Requires copyrighted material be original and fall within one of NINE categories: Pretty much every industry --Requires that the works be fixed in a tangible medium from which they can be perceived, reproduced, or communicated --Copyright protection is automatic for a person that establishes fixity and originality of a work.

What Uniform Trade Secrets Act REQUIRES

Requires: --Reasonable steps be taken to preserve the information as a trade secret --Owner derive independent economic value from secrecy

Constructive Abandonment (loss of trademark rights)

Results when the owner does something, or fails to do something that causes the mark to lose its distinctiveness --> Can result when a mark lapses into genericism, or an owner's failure to adequately control companies licensed to use its mark

Other marks - should not confuse trademarks with these

Service mark Trade Names Certification marks

4. Exit Interviews (4 elements to a trade secret program)

Should be conducted when an employee who had access to a trade secret leaves --Enables punitive damages to be given if there is explicit warning regarding the agreement between employer and employee about the trade secrets.

2. Identification (4 elements to a trade secret program)

Specifies as much information as possible while also including a limited number of catch-all categories --Can't have an umbrella approach protect everything but also can't have a narrow approach that specifies every detail.

Descriptive Marks (The Varying distinctiveness of trademarks)

Specify certain characteristics of the goods, such as size or color, proposed uses, the intended consumers of the goods, or the effect of using the goods.

Suggestive Marks (The Varying distinctiveness of trademarks)

Suggests something about the product without directly describing it i.e. Chicken of the Sea canned tuna

Known Author (Terms of Copyright Protection)

Term is the life of the author + 70 years.

Copyright act and Expression versus Idea

The act that prohibits unauthorized copying of the protected expression of a work but the underlying ideas embodied in the work remain freely usable by others

Vicarious Liability

Two Prong test 1. Availability of the infringing material attracted customers, thereby increasing the user base on which Napster's future revenues depended 2. Napster's ability to control access to its servers and its hub-and-spoke software was sufficient to give it the requisite right and ability to supervise the infringing activity

Three Types of Patents

Utility Design Plant Patents

Prior art (Novel Utility Patents)

When a invention is not NOVEL beacause it was obviously developed based on existing technology

2 things plaintiff must show

When a plaintiff wants to find someone guilty of copyright infringement they must show 1. the work in question is substantially similar to the protected expression and not merely similar in the ideas contained in the work 2. The alleged infringer had access to the plaintiff's work.

Only to prevent irreparable harm

When can a trade secret injunction be used when a trade secret is misappropriated?

Trademarks

Words or symbols such as brand names that identify the source of goods or service and are protected by the law

Can transfer ownership through assignment of copyright (Ownership and Scope of Copyright Protection)

Work made for hire this happens when ownership changes employer ____

Certification Marks (Other marks - should not confuse trademarks with these)

Indicate that the product has met the certifier's standards for safety or quality.

Copyright Registration (Copyright Formalities)

--Copyright owners can't sue for infringement until they register with the Copyright Office --It helps mostly with the recovery of damages and attorney fees, particularly for a start-up or a company coming out with a new product since it is hard to prove damages without historical sales --Also creates credibility to the owner of the copyright which can be useful if an infringement suit

Fair Use (Defenses to trademark Infringement)

--Defense available when a trademark user truthfully uses a competitors mark to identify the competitor's product for the user's own purposes --Defendant must show that it used the mark: other than as a mark, in a descriptive sense, AND, in good faith (user must not have intended to capitalize on the mark's goodwill or reputation)

Types of Patent Infringement

--Direct Patent Infringement --Indirect Patent Infringement --Contributory Patent Infringement

The Varying distinctiveness of trademarks

--Fanciful and arbitrary marks --Suggestive Marks --Descriptive Marks --Generic terms

Defenses to trademark Infringement

--First sale Doctrine --Fair Use --Nominative Use --Genericity --First Amendment

Geographic and Personal Names

--Geographic terms are usually non descriptive unless a secondary meaning is established --Personal names or surnames are not distinctive but historical names like Lincoln are protectable

Terms of Copyright Protection

--If the author is known, the term is the life of the author plus 70 years --If the author is unknown or it is work made for hire, the term is either 95 years after the first publication or 120 years after creation of the work

Remedies for trademark infringement

--Injunctive Relief is the most common remedy for trademark infringement --Damages could also be awarded based on owner's lost sales and profits to infringement or by economy injury to the owner's goodwill and reputation

Defenses to Patent Infringement

--Non-infringement of the patent --Invalidity of the patent --Misuse of the patent --Innocent infringement --First sale (patent exhaustion) doctrine

Remedies for Copyright Infringement

--Plaintiff can recover both actual damages and defendant's profits attributable to the infringements when they aren't duplicative --Plaintiff can collect statuary damages for infringement and attorneys' publication or prior to alleged infringement --Injunctive relief is also available --Right to have the jury determine amount of statutory damages under the seventh amendment --Can also be found criminally liable

Rules of Trademarks

--Protected for an indefinite time and can be valuable marketing and business assets --Trademark law concerns itself with questions like how trademarks are created, how trademark rights arise, how such rights are preserved, and why certain marks are given greater protection than others --Companies have a real incentive to sue infringers' ability to tarnish the trademark --You could see parody in trademarks as a defense if there is sufficient dilution of the trademark

Fair use doctrine (Defenses to copyright Infringement)

--Provides that a person may infringe the copyright owner's exclusive rights without liability if the person uses the copyrighted material while engaging in such activities as literary criticism, social commenet, news reporting, education, scholarship, or research --Consider how the defendant's use benefits the public vs. any detrimental effect on the copyright owner's interests ^Parody is an exception if the work is identifiably making a joke

First Sale (Patent Exhaustion) Doctrine (Defenses to Patent Infringement)

--States that authorized the sale of a patented article exhausts the patent holder's exclusive rights to that article, to the extent that the article embodies the invention --Patent holder is precluded from obtaining further royalties or imposing further restrictions on the article or its subsequent sale or transfer --E.g. Monsanto case with the soybeans

Requirements to prove for Nominative Use (Defenses to trademark Infringement)

--The use of the plaintiff's mark was necessary to describe both the plaintiff's product or service and the defendant's product or service --The defendant used only as much of the plaintiff's mark as reasonably necessary to identify the plaintiff's product or service --The defendant did nothing that would suggest sponsorship or endorsement by the holder of the trademark

genericity (Defenses to trademark Infringement)

--Used when a trademark owner brings suit over a trademark that is arguably a generic term --Must take appropriate measures to ensure their marks are not generic or become generic

Types of Copyright Infringement

--direct copyright infringement --Contributory copyright infringement --Vicarious copyright infringement and active inducement to infringe

Four factors test to obtain injunctive relief from patent trolls

1. An irreparable injury exists 2. The remedies available at law, such as monetary damages, are inadequate 3. An injunction is appropriate given the balance of hardships between the plaintiff and the defendant 4. The public interest would not be dis-served by a permanent injunction

Defenses to copyright Infringement

1. Fair use doctrine 2. First sale doctrine 3. Copyright misuse

Remedies for Patent Infringement

1. Injunctive relief and the perils of patent troll 2. Damages

Protecting a trade secret (Trade Secrets) (4 elements to a trade secret program

1. Notification 2. Identification 3. Security 4. Exit Interviews

4 components of scope of trademarks (Ownership and cope of trademark protections)

1. Provides an identification symbol for a particular merchant's goods 2. Indicates that the goods to which the trademark has been applied are from a single source 3. Guarantees that all goods to which the trademark has been applied are of a constant quality 4. Advertises the goods --Can also protect distinctive shapes, odors, packaging color, and sounds.

Obtaining Patent Protection (4 Parts)

1. Specifications 2. Claims 3. Drawings 4. Declaration by the inventor

two exceptions of Statutory bar (Novel utility patents)

1. if the original inventor disclosed the invention or sold it prior to filing a patent then the inventor can sill obtain a patent as long as they file it within one year of disclosure. 2. If the person who disclosed or sold the invention or filed the patent derived it from the original inventor's work, the patent will go to the original inventor even if the person who derived the invention from the original work filed it first as long as the original inventor files a patent within one year after public disclosure or sale by the other person

Fanciful marks (The Varying distinctiveness of trademarks)

A coined term that had no prior meaning until used as a trademark in connection with a particular product (kodak or Exxon)

First sale doctrine (Defenses to copyright Infringement)

A copyright owner has exhausted its statutory right to control distribution of a copyrighted item once the owner sells the item and thereby puts it in the stream of commerce --I.e. If the copyright owner sells a copyrighted product, he can't prevent its resale or transfer to others

Ways defendant faces copyright liability

A defendant faces copyright liability for a direct infringer's actions if the defendant had: 1. The right and ability to control the infringer's acts 2. Receives a direct financial benefit form the infringement --Doesn't' require the defendant to have known of the primary infringement (different from contributory infringement)

First sale Doctrine (Defenses to trademark Infringement)

A defense that: --Provides that a trademark owner cannot act against resellers of products after the first sale of the product --Attempts to strike a balance among: 1. Trademark law's goal of allowing products to reap the benefits of reputation 2. Consumers get what they wanted 3. Interest in maintaining competition by limiting a producer's control of resale --Only applies when the seller is legally selling genuine trademarked goods

Post Grant Review (Other implications of Obtaining Patent Protection)

A third party can petition the PTO to review validity of a patent after issuance. --Must be requested within 9 months of issuance

Loss of trademark Rights

Abandonment: which is the failure to use one's mark, may result in the loss of rights and can be used by a junior user in two types: --Actual and constructive abandonment

Indirect Patent Infringement (Types of Patent Infringement)

Also referred to inducement to infringer - it is a party's active inducement of another party to infringe a patent

Misappropriation of trade secrets

An individual misappropriates a trade secret when they: --use or disclose trade secret of another --Learn a trade secret through improper means --Inevitable disclosure doctrine

Novel (Utility Patents)

An invention is this if it is not anticipated i.e. not known or used by others --Can't be an obvious development over existing technology (prior art) Statutory bar prevents people from tying to file patents for things that have already been made public but this has two exceptions: 1.already disclosed 2. derived from someone else's work

Intellectual Property

Any product or result of a mental process that is given legal protection against unauthorized use --> 4 types (Patents, copyrights, trademarks, and trade secrets --Each type is protected in different ways.

Arbitrary Marks (The Varying distinctiveness of trademarks)

Are real words whose ordinary meaning has nothing to do with the trademarked product (camel cigarettes or shell gasoline)

Punitive Damages (Remedies for Trade Secret Misappropriation of DAMAGES)

Available when misappropriation was willful and deliberate

Provisional patent applications (Other implications of Obtaining Patent Protection)

Can be filed w/out formal patent claims to establish an early filing date for a later, non provisional patent application --Allows the inventor to use the term "patent pending"

Doctrine of equivalents (Direct Patent Infringement)

Can be used to find direct patent infringement even if the product or process doesn't have precisely each element in the patented invention but still accomplishes substantially the same result in mostly the same way

First Amendment (Defenses to trademark Infringement)

Claimed when the defendant's use of another's trademark is part of their communicative or expressive message and thus is protected as free speech

Trademark Searches (Creating rights in a trademark)

Company about to use a new trademark should search to see if any existing trademarks exist that would cause their use to be infringement --Searching is evidence of a good faith effort to determine whether any other entity has pre=existing rights in a mark

Consideration if the fair use doctrine is allowed

Considerations taking to see if it is acceptable. Looks at the defendant's use and how it benefits the public vs. any deterimental effect on the copyright owner's interests --Purpose and character of the use (including whether it was for profit) --Economic effect of the use on copyright owner --Nature of the work used --Amount of the work used ^Parody is an exception to these rules if it is obvious.

Copyright Formalities:

Copyright laws don't require authors to register their works but offers benefits to those that do There is Copyright REGISTRATION and NOTICE

Disadvantages to creating rights in a trade secret

Could be expensive since confidentiality procedures must be continuously and rigidly followed to preserve trade secret status --No protection against reverse engineering or independent discover

Invalidity of the patent (Defenses to Patent Infringement)

Court may find a patent invalid if: --Invention was not novel, useful, or non obvious when the patent was issued --Patent covers nonstatutory subject matter such as an abstract idea, a scientific principle, or a mental process --A statutory bar was created by a publication or sale of the invention prior to the filing of the patent --Any other requirement of the patent law was not met

Non obvious (Utility Patents)

Courts conside scope and content of prior art, differences between the claimed invention and prior art, the level of ordinary skill in the art, and secondary indications of non obviousness

When a Defendant is found criminally liable for copyright Infringement

Defendant can be punished with fines and prison for copying things worth more than $1000 without permission of copyright holder --Fraudulent to remove copyright notices --Criminal when a court finds violators willful and motivated by financial gain.

Vicarious Copyright Infringement and Active Inducement to Infringe

Defendant faces vicarious copyright liability for a direct infringer's actions if the defendant: 1. has the right to control infringer's acts. 2. Receives direct financial gain from infringer Doesn't require the defendant know of the primary infringement (different from contributory infringement) --E.g. Napster: liable for both contributory and vicarious infringement 1. Contributory: Knew about it 2. Vicarious Liability: two prong test: attracted customers, and control aspect Active inducement to infringer means knowingly trying to foster infringement

2. Claims (Obtaining Patent Protection) (4 Parts)

Describe the elements of the invention that the patent will protect --Elements not specified are unprotected

Cybersquatting

Developed whereby an individual registers famous trademarks as domain names and then offers to sell them to the trademark owner for ransom.

Packaging or dressing of a product (trade dress)

Elements making up the total visual image by which a product is presented to customers as defined by its composition and design.

Exceptions to the rule of first use (common law rights in a trademark)

Exceptions to this rule is a junior user that has identified a consumer base that strongly identifies with it's mark in a separate geographic are i.e. the senior user can lose its status in a distant are --> Only works if the junior user has acted in good faith --The geographic rule is inapplicable if there is federal registration for the mark

Copyright Misuse (Defenses to copyright Infringement)

Exists when a copyright owner leverages his or her statutory copyright to gain control over areas outside the copyright's intended scope --Copyright owner can't enforce its copyright against infringers until the misuse has been purged

Uniform Trade Secrets Act (UTSA)

Expanded common law definition to be more broad --Intention was to cover know-how, includes technical knowledge, methods, and experience --Show-how is opposite and is non secret information used to teach someone how to make or do something --Also deleted the requirement where the trade secret be continuously used in business --Includes: Information that has potential value from being secret. -and information regarding one time events -And Negative information like negative results REQUIRES: --Reasonable steps to be taken to preserve the info as a trade secret --Owner derive independent economic value from secrecy

Common law rights in a trademark (Creating rights in a trademark)

First person to sell goods under a mark is the owner and senior user of the mark --This makes the mark protected immediately, provided that it was adopted and used in good faith and without actual or constructive knowledge of any superior rights in the mark.

3. Security (4 elements to a trade secret program)

Hard copies of trade secret information should be locked --Photocopying machines should be placed far away from trade secret files --Digital confidential information should be password protected --Physical barriers to visitors may also be important Employers should remind employees and contractors of when and how to talk about company's activites

Trade Names (Other marks - should not confuse trademarks with these)

Identify a company, partnership, or business - can't be registered under federal law unless they are also used as trademarks or service marks: Wheras a trademark is used to identify and distinguish products

Criminal Liability under the economic espionage act (Trade Secrets)

Imposes criminal liability on ppl who intentionally or knowingly steal trade secrets or receive or purchase a wrongfully obtained trade secret --Definition of trade secret is basically the same as in the UTSA --Applies to violations outside US by a US citizen, a resident alien, an organization made in the U.S., and to violations outside the US if any act in furtherance of the offense was committed in the US.

What the Uniform Trade Secrets Act INCLUDES

Includes: Information that has potential value from being secret --Information regarding one time events --Negative information like negative results

Trade secrets (4 Types of intellectual Property)

Information that gives a business an advantage over its competitors that do not know the information --Protected for an indefinite time --Common Law --Uniform Trade Secrets act (UTSA) --Criminal Liability under the economic espionage act --Creating rights in a trade secret --Protecting a trade secret -- 4 elements to a trade secret program --Misappropriation of trade secrets: Inevitable disclosure doctrine --Remedies for Trade Secret Misappropriation: Injunctions, Damages, Criminal Liability

Copyright Infringement

Infringement occurs when a party copies, modifies, displays, publicly performs, or distributes a copyrighted work without the owner's permission. Plaintiff must show two things: 1 that work is similar enough 2. infringer had access to plaintiff's work.

Remedies for Trade Secret Misappropriation

Injunctions Damages Criminal Liability?

Actual versus intent use for federal registration

Intent to use means the applicant must state a bona fide intent to use the mark and must begin using it within 6 months

Domain Names

Internet addresses --> top level domain is the name (e.g. edu) and the secondary domain name identifies the specific organization (CNN of CNN.com)

Patentable as to subject mater (Utility Patents)

Invention must be a process, machine, manufacture or composition of matter --Or, it must be novel, useful, and no obvious improvement thereof

Patent

Is a government granted right to exclude others from making, using, selling, or importing an invention There are three types: Utility, design, and plant patents

Patent and trademark office (PTO)

Is the agency responsible for issuing patents

Copyright

Is the legal right to prevent others from copying an original expression embodied in any original work of authorship fixed in a tangible medium --Protects the expression in the work - not the udnerlying idea --Owner has rights to reproduce, distribute, display, and publicly perform the work as well as the right to create derivative works - works based on the copyrighted work.

Genericity (The Varying distinctiveness of trademarks)

Is the use of the product name as a generic name --Becomes a problem when products are made by multiple companies and isn't as big of a problem when only one company makes it --Once the public uses the mark as a synonym for the product instead of distinguishing its source, the trademark usually is taken away.

Service mark (Other marks - should not confuse trademarks with these)

Is used in connection with services - law is very similar to trademark --Whereas a trademark is used in connection with a tangible product

Nine Categories of the US Copyright Act of 1976

Literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial works, hraphic and sculptural works, motino pictures and other audiovisual works, and sound recordings

Damages (Remedies for Patent Infringement)

May be awarded based on: --Patent holder's lost profits (in the case of a patent holder practicing its invention) --The infringer's profits --A reasonable royalty for the infringer's use of the invention **Court can also increase damages by 3 times if the infringement was intentional or willful **Court can also award attorney fees in exceptional cases.

Common Law (Trade Secrets)

May consist of any formula, patter, device, or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it **There are Factors that go into determining.

Contract Theory of Trade Secrets (Remedies for Trade Secret Misappropriation of DAMAGES)

Measures damages by the loss of value of the trade secret to the owner based on the breach of contract

1. Specifications (Obtaining Patent Protection) (4 Parts)

Must describe the invention in its best mode and the manner and process of making and using the invention so that a person skilled in the filed could make and use it BEST MODE refers to the best way the inventor knows how to make the invention at the time it is filed.

Useful (Utility Patents)

Must satisfy the utility requirement i.e. must have some practical or real-world benefit

3. Drawings (Obtaining Patent Protection) (4 Parts)

Must show the claimed invention

4. Declaration by the inventor (Obtaining Patent Protection) (4 Parts)

Must state that the inventor has reviewed the application and believes they are the first inventor of the invention --Make known any prior act

Napster example and Contributory versus Vicarious Liability

Napster as an example was liable for both contributory and vicarious infringement --Contributory: knowingly encouraged and assisted its users' direct infringement --Vicarious Liability: Met two prong test: 1. attracted customers. 2. Ability to control

Creating rights in a trade secret (Trade Secrets)

No Lengthy application and filing procedures are needed for trade secret protection and no review or approval by a governmental agency is required either --Only need to develop and maintain a trade secret protection program --Material only needs to provide a competitive advantage to be a trade secret --Trade secrets protect against the risk of disclosing valuable info to obtain --> something that's required for patent and copyright protection --Disadvantages to using trade secrets: expensive and no protection

Actual Abandonment (loss of trademark rights)

Occurs when an owner discontinues use of the mark with the intent not to resume use --> After two years of nonuse, there is a presumption of abandonment

Contributory Patent Infringement (Types of Patent Infringement)

Occurs when one party knowingly sells an item with one specific use that will result in the infringement of another patent.

Direct Copyright Infringement (Types of Copyright Infringement)

Occurs when the copyright owner alleges that the defendant violated at least one of the five exclusive rights of the copyright holder

Tarnishment infringement of trademark (Trademark Infringement)

Occurs when the famous mark is used in connection with a particular category of goods or goods of inferior quality, resulting in damage to the positive image associated with the products bearing the famous mark. Damages available only if the defendant willfully intended to trade on the reputation of the famous mark's owner

Patent Litigation

Often times get very expensive and not worth pursuing if the big company purposely lengthens and complicates the litigation process

Injunctions (Remedies for Trade Secret Misappropriation)

Orders the misappropriator to refrain from disclosing or using the stolen trade secret --Available only to prevent irreparable harm --> can't be used if trade secret has already been disclosed --Can be combined with damages --Can be used against other people or businesses associated with the use of that trade secret --Can be used when someone threatens to disclose

Other implications of Obtaining Patent Protection

Other implications include: Review by patent examiner and patent issuance --Post grant review --Provisional patent applications

cancel

Owner of trademark can ____ the cybersquatters domain name if he proves: --The disputed domain name is idential or misleadingly similar to a trademark to which the complainant has rights --The respondent has no legitimate rights in the domain name --The domain name is being held and used in bad faith

Review by patent examiner and patent issuance (Other implications of Obtaining Patent Protection)

Patent examiner usually rejects the initial application as being precluded by prior inventions or failing to meet statutoey requirements --Inventor can refile as a continuation application or appeal to the PTO's board of appeals or can sue the director of the PTO --If examiner and applicant agree on the precise language of claims, a patent will be issued

4 Types of intellectual Property

Patents, copyrights, trademarks, and trade secrets

Injunctive relief and the perils of patent trolls (Remedies for Patent Infringement)

Plaintiff must satisfy the four-factor test to obtain a permanent injunction from the district court by demonstrating that: Injury, available with law, appropriate, injunction doesn't hurt public

File Wrapper Estoppel (Non-infringement of the patent)

Prevents patent owners form asserting any claim interpretation at odds with the application on file with the PTO.

Statutory bar (Novel utility patents)

Prevents people from trying to file patents for things that have already been made public. But, has two exceptions 1.already disclosed 2. derived from someone else's work

Plant Patents (Utility Patents)

Protect any distinct and new variety of plant that is asexually reproduced (not produced by means of seeds) --The variety must not exist naturally i.e. you can't claim a patent on a newly discovered wild plant --Duration of 20 years

Design Patents

Protects any novel, original (other than non obvious), and ornamental (rather than useful) design for an article of manufacture --Protect against copying the appearance or shape of an article --Design dictated by function and not aesthetic concerns can't be protected by a design patent --Duration of 14 years --Application is simpler and less expensive than for utility patents

Useful article doctrine

Provides that copyright protection does not extend to the useful application of an idea e.g. a blank forms used to record information instead of convey information are considered noncopyrightable useful articles --Can't copyright a useful article e.g. can't claim that the batmobile is a useful article because there is way more to the batmobile beyond just typical "car" functions, therefore you can't copyright it.

Inevitable Disclosure Doctrine (Misappropriation of trade secrets)

Recognizes that former employees who go to work for a competitor in a similar capacity will inevitably rely on and disclose the trade secrets gained in their former employment

Active Inducement to infringe

Refers to an intent to promote infringement as shown by clear expression or other affirmative steps taken to foster infringement, the distribution of a device suitable for infringing use, and evidence of actual direct infringement by a third party would be examples.

Ownership and Scope of Copyright Protection

The creator of the work is the author of the copyrighted work --When work is made for hire, the party for whom the work was prepared is the author of the copyrighted work --Happens when an employee created the work within the scope of employment or when the work is in one of seven listed categories and is specially commissioned through a signed writing stating that the work is a "work made for hire"

Direct Patent Infringement (Types of Patent Infringement)

The making, use, or sale of any patented invention within the US during the term of the US patent --Doctrine of equivalents can be used to find direct patent infringement even if the product or process doesn't have precisely each element in the patented invention but still accomplishes substantially the same result in mostly the same way

Utility Patents

The most frequently issued patent. Needs to be: Novel Useful Nonobvious Patentable as to subject matter Has the exclusive right to exclude others from making, selling, and importing the invention for a nonrenewable period of 20 years from the date of its filing.

Improper means (of Misappropriation of trade secrets)

Theft, bribery, misrepresentation, breach or inducement of a breach of duty to maintain secrecy, espionage

Ownership and cope of trademark protections

There are 4 components when dealing with the scope of a trademark

Generic terms (The Varying distinctiveness of trademarks)

These terms are not covered by trademark laws to avoid monopoly over a term and are not covered even when they have secondary meaning

Contributory Copyright Infringement (Types of Copyright Infringement)

This includes causing, or materially contributing to the infringing conduct of another with knowledge of the infringing activity

Nominative Use (Defenses to trademark Infringement)

This means that the use is for the mark to reference a competitors product, even if the defendant's ultimate goal is to describe its own product. Certain Requirements to prove.

Trademark Infringement

To establish infringement owner must prove: --Validity of the mark --Prior usage of the mark --A likelihood of confusion in the minds of the purchasers of the products in question through subjectively weighting number of factors **dilution of trademark can result from blurring or tarnishment

Contributory infringement

To knowingly encourage and assist its users' direct infringement

Damages (Remedies for Trade Secret Misappropriation)

Tort theory of trade secrets: repay owner completely and also disgorge any profits the misappropriator may have made --> key is if there was either harm or unjust gain --Contract theory of trade secrets: Measures damages by the loss of value of the trade secret to the owner based on the breach of contract --Punitive damages: Available when misappropriation was willful and deliberate

Creating rights in a trademark

Trademark searches Common law rights in a trademark Federal Registration State registration

patent trolls (Remedies for Patent Infringement)

describes a nonpracticing entity that purchases one or more patents with the intent to enforce the patents against infringers, rather than to manufacture the patented product or supply the patented service ***Also can refer to companies that file patents for new technologies, waits for others to develop and create markets for the technologies, and sues them for patent infringement after they are locked into using the patented technologies

Merger Doctrine and Expression versus Idea

dictates that when an idea and its expression are inseparable, the expression is not copyrightable e.g. a maker of a karate video game can't get a copyright for all karate video games but can get a copyright for original graphics.

Blurring infringement of trademark (Trademark Infringement)

infringement occurs when the nonfamous mark (infringer) reduces the strong association between the owner of the famous mark and its products. Only damaging if the defendant willfully intended to cause dilution of the famous mark

Unknown Author (or work made for hire) (Terms of Copyright Protection)

term is either 95 years after the first publication or 120 years after creation of the work.

When Descriptive Marks are NOT protectable

these are not _____ unless they acquire secondary meaning i.e. mental association by the buyer that links the mark with a single source of the product, causing the mark to obtain distinctiveness --E.g. Holiday Inn needing secondary meaning to make the public's association specific to the brand of hotels

Factors determining common law (Trade Secrets)

this is the extent to which information is known outside of business --Extent to which measures are taken to protect information --Value of the information --Amount of money or time spent to develop the information --Ease of duplication the information