Unit 4 Intellectual Property: Module 7 Intellectual Property

Two Requirements of Copyright Law

(1) Original work of authorship. (2) Fixed in a tangible medium of expression. // Does not have to be completed.

Four factors of 'Fair Use'

(1) The *purpose* and character of the use (educational purpose or making a profit?). (2) The *nature* of the copyrighted work (is the work part of the "core" of the intended protection). (3) The *amount* and substantiality of the portion used (excerpt or whole book). (4) The effect of the use on the *potential market* for the copyrighted work.

Three factors determine who wins the patent

(1) The date and time that the product or process was conceived. (2) The date and time that the product or process was reduced to practice. (3) The diligence that was used to pursue patent protection and to perfect the discovery. // Generally, the first inventor to conceive the product or process has priority in the application process.

Licensing Agreement

Formal permission from a patentee that authorizes others to sell, make, or use the product.

Utility Patents

May be granted for machines, processes, articles of manufacture, compositions of matter, or for improvements to any of those items. This is the most common type of patent issued. // Generally granted for 20 years from the date the patent application is filed; however, periodic fees are required to maintain the enforceability of the patent. // Example: iPhone.

Design Patent

May be granted for ornamental designs for an article of manufacture (manufactured items). // Generally granted protection for 14 years measured from the date the design patent is granted.

Major Forms of Intellectual Property

Patents, copyrights, trademarks, trade secrets, right of publicity.

Patent Infringement

Possessing a patented product without permission. // Once the patent has been granted, infringers may be sued even if the infringed has made the product and offered it for sale before the patent was granted.

Defenses and Remedies to Patent Infringement

You haven't infringed. Patent misuse. Inequitable conduct by patent owner. Experimental use. Exhaustion.

Trademark Law

Law that protects brand names. // Examples: product names, company names, slogans, logos, colors.

Suits for patent infringement can arise in three ways

(1) The patent holder may seek *damages and an injunction* against the infringer in federal court, requesting damages for royalties and lost profits as well. (2) Even before being sued, the accused party may take the patent holder to court under the *federal Declaratory Judgment Act*, seeking a court declaration that the *patent is invalid*. (3) The patent holder may sue a licensee for *royalties claimed to be due*, and the licensee may counterclaim that the patent is invalid.

How long does a copyright last?

*Individuals*: time the last surviving owner dies +70 years. *Corporations*: 95 years from the date of publication, or 120 years from the date of creation, whichever comes first. *Exception*: works created outside the US become public domain if they are published prior to 1923 or if they were published outside the US without complying with US formalities prior to 1977.

DRM Digital Rights Management

A set of access controls that limits the number of copies and devices a digital file can be transferred to and, in some cases, even permits the copyright holder to delete the purchased work.

Doctrine of Equivalents

A doctrine that state that one device is an infringement of another if the two devices do the same work in substantially the same way, and accomplish substantially the same result even though they differ in name, form, or shape. ///// The court must choose between these two extremes: legitimate "design around" and infringement through some equivalent product

Lanham Act

A federal law that protects trademarks. /// Trademark infringement, trademark dilution, and false advertising. /// Enacted by Congress in 1946 based on the power granted to it by the Commerce Clause. It protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur.

DMCA Digital Millennium Copyright Act

A law that helps internet service providers by expressly stating that those providers cannot be sued for copyright infringement if others use their networks for infringing uses.

Service Mark

A legally registered name or designation used in the matter of a trademark to distinguish an organization's services from those of its competitors. // If a company provides a service (as opposed to selling goods), it too can receive trademark protection. // Example: Facebook.

Copyright License

A license that allows members of the public to view or use a copyrighted work for free or for a fee. ///// Sometimes called an End-User License Agreement (EULA) for software (a software license agreement that allows members of the public to view or use a copyrighted work for free).

Patentee

A party that owns a patent.

Trade Secrets

A secret process, formula, pattern, program, device, method, technique, customer list, compilation, lists of suppliers, costs, margins. Used by a company in manufacturing its product. // Can last forever if the owner can keep it a secret. // If someone uses lawful means to uncover the secret, then the secret is no longer protected by the secret's owners. // Reverse engineering is allowed. Misappropriation is not allowed. /// The Uniform Trade Secrets Act's definition of trade secret information includes a formula that derives independent economic value and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Not all states have adopted this, so the definition of trade secret can vary by jurisdiction. Unlike patents, trademarks, and copyrights, there is no federal law protecting trade secrets.

Dilution

A trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. // Federal Trademark Dilution Act of 1995. Only protected "famous" trademarks. It also failed to clearly define "dilution," and what was required for trademark owners to win a lawsuit. The Supreme Court issued some clarification. The Court ruled that to win a dilution case, a trademark owner had to show that it had suffered actual economic damage from the dilution, not merely the "likelihood" of dilution. They have to wait for the diluting mark to hit the market and be used in commerce and must be able to prove that they suffered economic damage from the diluting mark. // Unhappy with the Court's decision, corporations lobbied Congress to pass the Trademark Revision Dilution Act of 2006, which overturns the Moseley case. Now, trademark owners of famous trademarks only need to show a likelihood of dilution before filing a dilution lawsuit.

Collective Mark

A trademark or service mark that identifies members of a union, cooperative, or other collective organization.

GPL General Public License

A widely used free software license, which guarantees end users the freedom to run, study, share, and modify software.

Intellectual Property

A work or invention that is the result of creativity, such as a manuscript or a design, to which one has rights and for which one may apply for a patent, copyright, trademark, ect. // It is the product of the human intellect that is embodied in the goods and services a company offers and by which the company is known.

Patent

An exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something or offers a new technical solution to a problem. // Grants property rights to the inventor for a specified period of time. // Confers the right to make and market the invention and to exclude others from making, using, or selling the product unless granted permission by the patentee like through a licensing agreement.

Contributory Copyright Infringement

Also occurs when you assist someone in violating a copyright or create a device that assists in violating a copyright.

Patentable Item

An invention that is *useful, new, and nonobvious* in light of current technology, and if you are *capable of describing* it in clear and definite terms. /// NOT: an idea alone without a definite description, physical phenomena, the laws of nature, abstract ideas, are not useful, items that are offensive to public morality, and artistic works (copyright). /// New: If you invent something without knowing someone else already invented it then you can't patent the idea = "first to invent" rule. Many other countries use "first to file" rule, first applicant to file for a patent regardless of who invented it. /// Living things count. Congressional intent was "anything under the sun that is made by man."

Procedures for Obtaining a Patent

An inventor cannot obtain a patent automatically; obtaining a patent is an expensive and time-consuming process, and the inventor will need the services of a patent attorney, a highly specialized practitioner. The attorney will help develop the required specification, a description of the invention that gives enough detail so that one skilled in the art will be able to make and use the invention. A 'U.S. Patent and Trademark Office' USPTO examiner will receive the application and search the records and accept or reject the claim. // The inventor will often need to secure patent protection in other countries as well. //// Once the patent has been granted, infringers may be sued even if the infringed has made the product and offered it for sale before the patent was granted.

'Public Use for Patent Eligibility'

An inventor who fails to apply for a patent within a year of that date would forfeit the rights granted to an inventor who had published details of the invention or offered it for sale. // But until the year has passed, the U.S. Patent and Trademark Office (USPTO) may not issue a patent to X if Y has described the invention in a printed publication here or abroad or the invention has been in public use or on sale in this country. ///// As a practical matter, however, someone who invents a product or process but does not file immediately should keep detailed research notes or other evidence that would document the date of invention.

Right of First Sale

As the owner of the physical work, you can do with it as you please, including resell the original work.

Patent Ownership, Transfer, and Licensing

Because it is a species of property, it may be transferred. Patentee can assign part or all of his interest in the patent or keep the property interest and license others to manufacture or use the invention in return for payments known as royalties. The license may be exclusive with one licensee, or the inventor may license many to exploit the invention.

Certification Mark

Certification of meeting certain standards, such as the Good Housekeeping Seal of Approval or ISO International Organization for Standardization. ///// The Forest Stewardship Council (FSC) allows its logo to be used on paper products that come from sustainable forests, while certain foods can be labeled "Organic" or "Fair Trade" if they meet certain standards as established by governmental or nongovernmental organizations.

Plant Patent

Covers inventions or discoveries of asexually reproduced plants (e.g., plants produced through methods such as grafting). // Expires 20 years following the original patent application. // Utility patents. Patents on genetically modified agricultural products. Typically protect new plant breeds as well as parts of the plants. // Plants that cross pollinate and result in hybrid plants are the property of the patent owner and possessing that plant without the patentee's permission is patent infringement. // Examples: cotton, soybeans, canola, and corn.

Trade Secret Law

Law that protects anything that has value and has been kept secret. // Examples: coca-cola formula, weed killer and pesticide formulas, KFC's chicken recipe.

Patenting Pharmaceutical Drugs

Large drug companies rely on patent law to protect their massive investment in research and development into new drugs, the vast majority of which never make it to market. For the few drugs that eventually find government approval and commercial success, manufacturers seek to extract the highest possible price during the period of patent monopoly.

Copyright Law

Law that protects original works of authorship in a fixed or tangible form. Can't protect an idea. It has to be a tangible expression of the idea. Something that has been created. // You cannot copyright an idea, just the particular expression of an idea. Someone can later copy your idea imbedded in the expression. // Does not work for primarily functional items (bike rack). // Database can be protected but the data in the database is not protected. // Examples: book, poem, painting, video, photography, sculpture, computer code.

Rights of Publicity Law

Law that protects the rights individuals have with their name, likeness, persona, and voice.

Patent Law

Law that protects useful, utilitarian devices. Need to be novel things that have not been done before. // Examples: new technology, computer software, applications, pharmaceuticals, consumer products.

Defenses Against Trademark Infringement

Most obvious, arguing that no infringement has occurred because the two marks are sufficiently different that consumers will not be misled. // Fair use, blur or cover a logo so you aren't infringing. // Fair use. Comparative advertising, using another name to show a comparison. // The First Amendment also recognizes the use of parody, comedy, or satire as fair use. //

Brands vs Trademarks

Not interchangeable terms because not all trademarks are brands. // All brands are either registered trademarks or are trademark-able because they share the common feature of consumer identification. /// Not interchangeable terms because not all trademarks are brands.

Copyright Infringement

Occurs when someone uses a copyrighted work without permission, infringing certain exclusive rights granted to the copyright holder, such as the right to reproduce, distribute, display, or perform the protected work, or to make derivative works.

Trademark Infringement

Occurs when someone uses someone else's mark, either completely or to a substantial degree, when marketing goods or services, without the permission of the mark's owner.

CC Creative Commons

One of several public copyright licenses that enable the free distribution of an otherwise copyrighted work.

Exhaustion

Patent infringement suit defense. Where patent owner's rights are exhausted upon sale of the patented product. ///// Reselling a computer.

Tangible vs Real vs Intellectual Property

Tangible: machines, inventory. Real: land, office buildings. Intellectual: formless.

Misappropriation

The act of wrongfully obtaining a trade secret, such as through corporate espionage or bribery. // Occurs if the secret was acquired by improper means, or if the secret was disclosed or used without permission from the secret's owner. /// A claim for misappropriation may be brought when a trade secret has been wrongfully obtained, such as through corporate espionage or bribery.

Fair Use

The doctrine that brief excerpts of copyright material may, under certain circumstances, be quoted verbatim for purposes of commentary, criticism, news reporting, teaching, or research, without the need for permission from or payment to the copyright holder.

Who owns the copyright?

The owner is the creator of the work unless there is an agreement to the contrary. // Agreements to change ownership: employee-employer relationship, formal agreement for contract employees. // Contract employee agreement types: Assignment, contract to assign copyright ownership to the employer. Work for hire, contract assigning the company as the creator and owner of the work.

Right of Publicity

The right of every individual to control the commercial use of one's identity, including their name, image, and likeness.

Copyright

The right to exclude others from using or marketing forms of expression. /// A legal device that gives the *creator* of a literary, artistic, musical, or other creative work the *sole right to publish and sell* that work. /// A bundle of *intangible rights* granted by statute to the *author or originator* of certain *literary or artistic productions*, whereby, for a limited period, the exclusive privilege is given to that person (or to any party to whom he or she transfers ownership) to *make copies* of the same *for publication and sale*.

Trademark

The right to prevent others from using a company's product name, slogan, or identifying design. // Any kind of name, logo, motto, slogan, device, sound, color, or look that identifies the origin of a particular good or service.

Shop Right

This is a right created by state courts on equitable grounds giving employers a nonexclusive royalty-free license to use any invention made by an employee on company time and with company materials.

Three Types of Patents

Utility, design, and plant.

Compulsory Licensing

When a government declares a national health emergency and by international treaties force the drug company to license the formula to generic drug makers.

Genericide

When a trademark comes to reference a class of goods rather than a specific brand. //// To prevent genericide from occurring, trademark owners must take active steps, often costing millions of dollars, to educate consumers on the importance of using their trademarks properly and to prosecute infringers.

What can be trademarked

Words, 'Google'. // Phrase, 'You're Fired'. // Names if it is distinctive to a company, Ben & Jerry's, Ford. // Color // Sound, THX. // Bottle Shape, Coke. // Trade dress, restaurant color/décor images, Starbucks and TGI Fridays // Service Mark // Certification Mark // Collective mark, organization membership, NFL. /// NOT smells. //// Can have simultaneous registrations if they are different business categories like Delta Airlines and Delta Faucets.

Public Domain

Works that may be freely recorded, performed, or modified without permission due to the fact that their copyrights have expired. ///// If you perform a public domain song then your performance is copyrighted even though the original manuscript isn't.

How long does a *trademark* last?

can last forever and are not subject to the Constitution's "limited time" restriction. Since the objective of trademark law is to prevent consumer confusion, the public good is best served by allowing companies to maintain their trademarks as long as consumers associate a trademark with a specific origin. //// The moment they no longer make that association, however, the trademark ceases to exist.