b law trade secrets

property

ability to exclude something of value from others

EULA

buy license or lease normally not governed by first sale doctrine shrink wrap or click wrap licenses(EULA) end user license agreement-once you download software, you no longer need it and give it to multiple people solution-don't buy software license it -as soon as you take off the shrink wrap you have licensed the software licensing agreement states that you cannot sell the software

what isn't fixed in tangible medium

content in lectures, sporting events, comedy acts-however once recorded, written down they are fixed and protected

injunctions, damage and government can seek criminal actions

copyright owner have the right to seek civil remedies/criminal actions

ip rights when recording a concert

copyright-musical composition-licensed to publisher copyright-lyrics-publisher copyright-performance-label bands right of publicity trademarks owned by bands

how trademarks become generic

improper/sloppy advertising, labeling causes customers to use mark as "name" of the product/service trademark loses distinctiveness, don't pursue those who do use the name of the brand at the product to make them stop

exception to misappropriation

independent creation or reverse engineering-many people have tired to reproduce popular soda recipes-unless a duty exist to keep it secret by employee-must be by a person independent of TS holder

NO FILING PROCEDURE FOR TRADE SECRETS

no filing procedure

us constitution 5th amendment

property rights in general are protected

four factors to balance when using fair use exception for copyrights

purpose and a character of use(parody) nature of the copyright work( in public interest) amount used(what is necessary to achieve purpose) effect of use on potential market(economic impact on owners)

copyright owners rights

right to reproduce, produce derivative rights(sequels), distribute, public performance, display

state law(federal espionage act-criminal activity

majority use uniform trade secrets act

service mark

mark associated with service(GOOGLE)

collective mark

mark representing an organization(major league baseball mlb big ten)

certification mark

mark used(other than owner) to certify quality of goods/services(good housekeeping seal of approval)

trademark

mark, work, picture associate with good indicating source(FORD, TIDE)

martin found liable because he took the clients with him when he left`

martin vs ama actuarial firm-client list meets definition of a trade secret(calue by being protected and not readily ascertainable and kept secret

damages(legal)

monetary loss from losing ts

full price of drugs vs generic (time limits) new competition is eliminate-new drug maker could not afford entry into market or would be bought off by monopolist

must be reasonable limits(consumer protection) to ip

not patentable

myriad genetics own a number of patents that cover Dna for breast cancer genes dna is isolate to identity mutated sequences in dna-useful for testing for cancer/ drug development\ amp vs aclu challenge-gene patents-products of nature longstanding acceptance by courts isolated dna is a product of nature myriad lost MODIFIED DNA IS PATENTABLE

Edward jones(man vs security firm) ford (henry vs cars) Disney (walt vs theme parks, movies)

names for trademark if it acquires a secondary meaning and on the PTOs supplementary register for 5 years

Thomas jefferson

new designs for a plow, clock, dumb waiter, macaroni machine, gunknife, autopen

utility patent

new, non-obvious, useful processes, machines, compositions of matter or improvements thereof- 20 years from filing date

design patent

new, original and ornamental design for an article of manufacture- 14 years from issue date

plant patent

new, variety of plant that can be reproduced asexually- 20 years from filing date

registration and use of trademark

trademark protection:generally based initially on USE-USING trademark prevents others from using it registration creates better rights after its use in commerce-use in commerce is pre-requisite to federal registration(intent to use)

therefore lost

trademarked products can become generic

utility design and plant

types of patents

words, numbers, letters, slogans, pictures, colors sounds, symbols shapes all must be distinctive otherwise they can be lost

types of trademarks

patent

us law offers incentives to investors to invest time/money to creating new inventions-incentive-the right to exclude others from competition for a specified time- a patent both procedural/substantive governed by federal law

trademark becoming generic prevention

use trademark plus word Kleenex plus tissue, I am stuck on band aid BRAND photocopying not Xeroxing use trademark regristration symbol or registered trademark

utility patents

useful inventions that solve problems , submitted to pto long process assigned to patent examiner-to apply the inventor must-explain how to make/use invention-express usefulness, show invention is different from prior inventions or knowledge, precisely detail subject matter that is invention, can't patent some things for reasons of public policy

trolls(also called patent assertion entity)

usually patent holders or buyers of patents who do not sell anything, but merely assert rights in order to collect licensing fees(they invent, own but do not produce)

patent infringement

violation of a patentee's right to exclude from making selling using -damages triple willful/intention infringement-injunction-not automatic, must prove the need to stop infringer`

subject matter

what is the most common attack on patent's validity

trademark dilution enjoy cocaine-wrap you could put around your drink with the same color scheme and basic design as coca-cola

where non-famous(junior) trademark dilutes famous(senior) trademark of its significance, reputation and goodwill- - do not have to prove confusion(infringmenet) or competition just that junior trademark causes an actual dilution of the famous mark

must file first this means that the inventor cannot steal from another no prior art or patent can exist and the inventor must be the first to disclose the invention before filing-disclosure publication- must teach and enable others in how to duplicate invention-have one year from disclosure to file or lose the right to patent(grace period) lenient approach- in Europe if you disclose before you file you lose the right to patent invention-must keep it secret

America invents act became a new law in 2011 this was a big change from the first - to - invent to the first-to file system effective march 16, 2013

ruling was color scheme protected? yes did smack's use of color create confusion -yes smack used colors to create the illusion of affiliation with the universities and essentially obtain a "free ride" by profiting from confusion among the fans of the universities football teams

LSU vs Smack Apparel co a case of confusion t shirts with distinctive university colors- lsus colors were not protected by a trademark by registration

example of non tangible media

POWERPOINTS FROM CLASS taking notes and copying them-not violating copyright because fair use exception is fixing powerpoint and notes in booklet and selling them a copyright violation-yes economic gain from others copyrighted material -university owns the lectures and they would be the ones to pursue violators-don't have to pursue violators but have the opportunity too

trademark federal law governed by lanham act

acquired by first use, us patent and trademark office pto, proposal put in official gazette-existing owners may object, hearing is held to resolve challenges -accepted marks- in principal register, creates nation-wide preemption and presumption of first use(foreign protection if under treaty) regionally may not be preepptive-can harmonize with preexisting state common law/statutory law

state law trademark acquired by first use

acquired by first use, user gains right by simply using brand name or logo in the normal course of commerce, use of tm symbolizes use but doesn't have to exist to have an enforceable trademark-enforceable only in area of business-subsequent federal registration by a competitor of similar or same mark preempts in area outside where business was conducted

trademark identifies the SOURCE of good or service

all brands have trademarks but not all trademarks are brands

often occurs when registrant is applying to be a business entity-corporate or limited liability company status

also can be registered with the state's secretary of state-enforceable only in state -no symbol for this registration

ben franklin

bifocals, discovered electricity, lighning rod, odometer, flexible urinary catheter, franklin stove, swim fins

time and investment research and development

can charge higher prices and create branding advantages without this advantage of ip you could not afford

not copyrightable, but must be within scope of employment- IRS rules in accounting firm is distributed to cpas

can reproduce us government works

injunction, damages, criminal enforcement

civil remedies and criminal enforcement for appropriation of ts

fair use exception

defense of infringement(excuses liability) allows the legal unlicensed citation or incorporation of copyrighted material in another author's work copying commentary, search engines, criticism, parody, news, reporting, research, teaching, library archiving, scholarship

misappropriation

disclosing information you promised to keep secret(duty breach under contract) employee signs a contract promising to keep trade secrets a secret receiving information from someone who promised to keep it secret(one who gives secret has a duty under contract) stealing information from another(hacking)

creates problem for companies making the product example making a cellphone patent on touch screen, patent on hardware switch, patent on copyright on OS

due to expense/ lack of business know-how inventors license(a conveyance of rights to a manufacturer to commercially use an inventor's patent in exchange for royalties) some products have multiple or overlapping rights

protected by intellectual poperty as patents copyrights or trade secrets

employee skills and talents, designs, inventions, technologies, processes and methods of business operations, reports, manuals, databases, customer and supplier lists, brand identity, software, new products research, marketing plans all of these may be

injunction(equitable)

enjoin party from using trade secret-often former employees can be another company or hacker-former employee cannot work for party its revealing ts to -covenant not to compete

reasonable

exclusion of others must be

incentives

exclusivity of intellectual property creates

no copyright

facts are not original since they were created but arranged-- did not arrange facts in a copyrightable way by only putting something into alphabetical order-not original enough

copyrights vs fair use exceptions-professor aalberts using yotube in class is fair used for educational uses and used for uses that are not commercial

fair use: small portion of original material used, commercial value original is not diminished, new work is predominantly original of product of user, benefit to user is predominantly other than commercial , new work is used for critique, satire, or education

criminal enforcement

federal crime under economic espionage act- party appropriating-fines and imprisonment

abandonment another way to lose a trademark

federal law-trademark owner ceases use of trademark without intent to resume use in future, non-use of trademark for 3 consecutive years creates rebuttable presumption of abandonment(whether registered or at common law), temporary or seasonal non-use of trademark( particularly when industry is cyclical)doesn't constitute as abandonment

first renewal 5 years after registration, thereafter every 10 years from registration period(grace period exist)

federal trademark pto process must be renewed

file as quickly as possible but if not at least adequately disclose before anyone else too but you do have a year to file from the time that you disclose the invention

grace period for AIA

what is obviousness

hard to answer- flexible standard-would one of ordinary skill in the art find the invention obvious when filed.

brands

historically was burning a symbol on cattle to associate ownership -symbol was like trademark today

management decision about ts

if the secret can be discovered, then a patent might be a better protection, but you must reveal it first, only protected for a certain number of years, then anyone can use it for themselves, if not ts is better-perpetual protection

trade secret value not being known or ascertainable by normal means, owner must make reasonable efforts to maintain its secrecy

information about trade secrets can be protected if

create or invest, gives people incentive to distribute, many things are licensed off

intellectual property gives you incentive to

ruled in his favor

is genetically modified bacterium ( a living organism, not a plant) patentable -chakrabarty

tanglible property

land personal property-can exclude

can a trademark be cancelled

lanham act allows cancellation of marks that disparage persons, institutions, beliefs, contempt, disrepute of a group-can still use marks but there is no federal registration protections

confidentiality agreement-non disclosure agreement promise not to reveal trade secrets-difficult burden on employers because protection is not presumed also typically includes a COVENANT NOT TO COMPETE-lessens impact of trade secrets revelation damaging the employer

legal means to protect from employees knowing trade secrets

copyright term

life of the author plus 70 years 120 years after creation from 95 years from publication for a work created for a company SONNY BONO COPYRIGHT EXTENSION ACT 1998 AKA MICKEY MOUSE EXTENSION ACT-extended when got close to 70 year deadline

how do you get a copyright

old law-registration and notice required all works after 1978 copyright attatches as soon as work is fixed in a tangible medium(book, magazine, website, etc. federal law) registration with us copyright office is not required but recommended(necessary to maintain infringement action, recover statutory damages and attorney fees- to have better proof with certification in public record author is the owner-exception employee produces works for hire when doe at work company is author

copyrightable subject matter

original expressions-not ideas of facts not mathematical formulas or inventions original-must be your own(not necessarily distinct or good)-very low standard to gain copyright

what can be copyrighted

originally books maps and charts expanded to literary works musical works pictures sculptures and movies architectural work building designs owned by the architect no the builder- cannot protect clover leafs tents and bridges if it can be seen in cannot prevent pictures computer software

first sale doctrine

owner of a copy right has a right to redistribute or display it but cannot make new copies or excessive copying of original must actually buy it

federal governed by lanham act

ownership of a trademark is

once patent is granted:rights

pantantee can exclude others from marking using selling or importing patent subject matter for 20 years(utility, plant) 14 years design minus exam time, when exclusion ends everyone can use it

not patentable

patent claim for a 3 step process for administering drugs to increase efficacy/safety ruling adds nothing specific to the law of nature other than what is well0understood, routine, conventional activity, previously engaged in by those in the field

trolls often pay only contingency fees lawyers paid percentage of recovery no money upfront lawyers agree because there will be a large payout in the end if they win the case-low risk for the trolls-no payment if lost-trolls often demand percentage of successful product's revenue

patent litigation is very expensive, possibly high damages so 97% settled-multiple parties are sued which enhances the chances to collect

royalties decided after the fact-term is sometimes used by those to initiate bad faith infringement suits for a settlement

patent trolls wait to attach those who use them , then attack from a leveraged position of power

intangible property

patents copyrights trade secrets-

not patentable

process that involves mental steps that do not transform an abstract idea(hedging) into an idea

trademarks

source indicators, identifying products/services-creates distinctiveness, recognizability-the real thing avoids confusion with other products/services

use them or loose them,

strict requirements-deadlines protecting IP-without IP protection lost to "public domain"

federal trademark pto process

takes about 16-18 weeks examined for conflict(confusion with other trademarks) no scandalous, disparaging marks no living or deceased person without perfmission distinctiveness

perpetual if kept a secret

there is no filing procedure for a trade secret

natural phenomenon, laws of nature and mathematical algorithms, abstract ideas(can be a trade secret)

things that are excluded for utility patents

the first to come up with the invention

to establish novelty you must be

nature of copyrights

to gain a copyright-federal law promote creative works issue-protects creativity property protections can collide with free speech protections balance because fo the important demand for original works reason for the fair use exception

revealed

trade secrets can be protected forever unless