Chapter 8: Intellectual Property Rights

Primary function of a trademark/brand is to

distinguish the source of a product/service from goods and services of other manufacturers and merchants. Trademarks help avoid consumer confusion!

Explicit written non-disclosure agreements ("NDAs"):

employer-employee; buyer-seller; licensor-licensee; distributors; resellers.

Stamp and legend documents:

"Confidential" "Proprietary Information of..." "Do Not Duplicate or Distribute".

Patent Duration

20 years from the date of the application for design patent: 14 years

remedy for copy right infringement

Actual damages plus profits received by the party who infringed or statutory damages under the Copyright Act, plus costs and attorneys' fees in either situation.

Copyright

Copyright is an intangible property right granted by federal statute to the author or originator of a literary or artistic production. The right of an author or originator of a literary or artistic work, or other production that falls within a specified category, to have the exclusive use of that work for a given period of time.

Key Patentability Standards:

Invention must be "novel, useful, and non-obvious" in light of current technology. Patent application "prosecuted" with examiner from Patent and Trademark Office ("PTO") in Washington, D.C.

Duration of copyright protection

Life of the author plus 70 years. For copyrights owned by publishing houses: 95 years from date of publication or 120 years from date of creation, whichever comes first. For authors: the life of the author, plus 70 years. For publishers: 95 years after the date of publication or 120 years after creation.

Copyright Infringement The "Fair Use" Defense.

No infringement if limited amount of reproduced material is used for criticism, comment, news, teaching, research. Commercial exploitation does not quality as Fair Use!

Copyright Holder's Bundle of Exclusive Rights:

Right to reproduce the work. Right to distribute the work. Right to modify the work. Right to perform 'derivative work'

Trade Dress.

The image and overall appearance of the product or service: e.g., distinctive shop décor or packaging. Same protection as trademark. Caterpillar "Yellow"

Intellectual property rights

Trademarks Patents Copyrights Trade Secrets

Limit internal disclosure -

implement security measures and strict "need to know" standard.

What is not patentable?

laws of nature, natural phenomenon, abstract ideas.

Intellectual property (or "IP") is becoming more important because

of the significant proprietary value of IP (an "intangible" asset) which in some cases may exceed the value of physical, tangible assets (such as buildings, product inventory, etc).

Model Trade Secrets Act

"Trade Secret" means information, including a formula, pattern, compilation, program, device, method, technique or process that: (1) derives independent economic value...from not being generally known to, and not being readily ascertainable by proper means by, other persons..., and (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy."

Copyright Act of 1976

(also expressly designated computer software as a protected literary work). Works cre- ated after January 1, 1978, are automatically given statu- tory copyright protection for the life of the author plus 70 years.

PATENTS First person to file

(may not be the first to invent) gets protection.

What Expression is Protected?

1. Literary works (including newspaper and magazine articles, computer and training manuals, catalogues, brochures, and print advertisements). 2. Musical works and accompanying words (including advertising jingles). 3. Dramatic works and accompanying music. 4. Pantomimes and choreographic works (including ballets and other forms of dance). 5. Pictorial, graphic, and sculptural works (including cartoons, maps, posters, statues, and even stuffed animals). 6. Motion pictures and other audiovisual works (includ- ing multimedia works). 7. Sound recordings. 8. Architectural works. re.

Trade secret

Any information that a business possesses and that gives the business an advantage over competitors (including formulas, lists, patterns, plans, processes, and programs A trade secret is basically informa- tion of commercial value, such as customer lists, plans, and research and development.

What is patentable?

Any new or useful process, method, machine, or composition of matter...

Trade Secret Examples:

Customer lists; Research and manufacturing know-how; Formulae, specifications; Pricing information; Marketing techniques. Trade secrets may also include pricing information, marketing methods, production tech- niques, and generally anything that makes an individual company unique and that would have value to a competitor.

Trademarks

Distinctive mark, name, motto or emblem that a manufacturer stamps, prints or otherwise affixes to the goods it produces. a trademark is a source indicator. Famous "brands" (Kodak; Xerox) Any distinctive word, name, symbol, or device (image or appearance), or combination thereof, that an entity uses to distinguish its goods or services from those of others. The owner has the exclusive right to use that mark or trade dress.

Patents

Exclusive federal grant from U.S. Patent and Trademark Office allows inventor to prevent others from making, using, offering to sell, or importing the patented invention A patent is a grant from the government that gives an inventor the exclusive right to make, use, or sell his or her invention for a period of twenty years. Patents for designs, as opposed to those for inventions, are given for a fourteen-year period. A grant from the government that gives an inventor exclusive rights to an invention

The First Sale Doctrine:

No infringement occurs when a person who lawfully owns a copyrighted work re-sells the copy Original copyright holder no longer has the right to control the distribution of that copy the owner of a particular item that is copyrighted can, without the authority of the copyright owner, sell or otherwise dispose of it.

What is Protected Expression?

Only the expression of an idea can be copyrighted -- not the idea itself. Thus, anyone can use the underlying ideas in a copyrighted work. Little Red Riding Hood example

Remedies for Patent Infringement.

Patent holder can seek an injunction, monetary damages, and perhaps attorneys fees and costs. Infringing goods being imported into U.S. can be seized at U.S. Customs. Monetary damages, Including royalties and lost profits, plus attorneys' fees. Damages may be tripled for intentional infringements.

Trademark Infringement Remedies:

The most commonly granted remedy for trademark infringement is an injunction to prevent further infringement. Under the Lanham Act, a trademark owner that successfully proves infringement can recover -Damages, plus profits wrongfully received from unauthorized use. - Destruction of goods bearing the unauthorized trademark 1. Injunction prohibiting the future use of the mark. 2. Actual damages plus profits received by the party who infringed (can be increased under the Lanham Act). 3. Destruction of articles that infringed. 4. Plus costs and attorneys' fees

Work-For-Hire Doctrine

Works of authorship created by employees: employer is automatically attributed as the 'author' of the work and owns any copyright interest. WFH doctrine may not apply to works created by independent contractors (non-employees) for a commissioning company: the contractor may retain ownership of the copyright interest in the work unless formally assigned in writing to the commissioning company/party.

Lanham Trademark Act (1946)

induce companies to invest in development of brands; prevents unjust enrichment of companies who infringe. 1 The Lanham Act was enacted, in part, to protect manufacturers from losing business to rival companies that used confusingly similar trademarks. The act incor- porates the common law of trademarks and provides remedies for owners of trademarks who wish to enforce their claims in federal court 1. The plaintiff owns a famous mark that is distinctive. 2. The defendant has begun using a mark in commerce that allegedly is diluting the famous mark. 3. The similarity between the defendant's mark and the famous mark gives rise to an association between the marks. 4. The association is likely to impair the distinctiveness of the famous mark or harm its reputation.

Remedy for trade secret

monetary damages for misappropriation (the Uniform Trade Secrets Act also permits punitive damages if willful), plus costs and attorneys' fees