Intellectual Property

When does PTO deny registration for a trademark?

If the mark is the same or similar to a mark currently used on similar related goods. If the mark contains prohibited or reversed names or design, including the U.S. flag, other government symbols, names of people without their consent. If the mark merely describes a product or service for example fast food for a restaurant franchise. If the mark is generic and represents a product or service, for example cell phone for a wireless communication company. ****However a mark that is descriptive or generic in one context maybe unique and distinctive in another. Such as apple with their electronic company but it would not be applicable to a company that sold fruit.

Criminal enforcement of trade secrets

In addition to civil enforcement of trade secret boundaries, criminal prosecution can also result from the misappropriation of trade secrets. State laws often make intentional trade secret misappropriation a crime.

Can a patent be obtained upon and idea or suggestion?

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Patent

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States

Defend Trade Secrets Act

Federal law that applies to the elements of trade secret cases.

Trademark owners must be vigilant in protecting their marks because if a trade mark becomes...

Generic, it loses its distinctiveness and statute as a protected trademark.

A service mark is...

The same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

Following the trademark with the word...

"brand" helps define the word as a trademark.

Utility of patents

Except for patents issued on designs or plants, an invention to be valid must have utility; that is, it must do something useful. Establishing utility is not difficult. Any utility is sufficient even if it is not the use that is eventually commercialized. Patents with no utility that do not work are inoperable inventions.

Uniform Trade Secrets Act (UTSA)

A model law to protect trade secrets, adopted by many states. Similar to common law.

Copyright laws protect...

Authors rather than inventors. An author creates works of a literary, dramatic, musical, graphic, audio, or visual nature. Ranging from printed material to photographs to records and motion pictures, these works receive automatic federal protection under the Copyright Act of 1976 from the moment the author creates them.

Two types of dilution under federal law.

Blurring: occurs when firm uses another trademark in a way that blurs the distinctiveness of a famous mark. Tarnishment: Occurs when a firm uses a trademark in a way that creates a negative impression about the famous company. Dilution is limited to only famous marks.

The great debate with intellectual property laws...

Whether they are truly calibrated to provide a net benefit to society.

Nondisclosure and noncompete agreements

a. Establish legal framework for formally identifying trade secrets. b. Clarify employee responsibilities regarding trade secrets c. Provide contractual basis for enforcing and recovering damages for disclosure d. Support corporate security infrastructure to protect trade secrets

It is a fundamental principle that copyright does not cover...

functional or utilitarian aspects of a product. However, it is possible for useful item to be able to be copyrighted with things like the Darth Vader head on a pez.

Remedies for Infringement

Injunction Monetary Damages defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

International intellectual property rights.

Improper acquisition of trade secrets include...

THEFT MISREPRESENTATION BRIBERY BREACH OF CONTRACT ESPIONAGE BREACH OF CONFIDENTIALITY Dupont v. Christopher

Lanham Act of 1946

The lanham act protects the following marks used to represent a product, service, or organization. Trademark Service mark Certification mark Collective mark

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if...

"(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent," "(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . ."

The right conferred by the patent grant is, in the language of the statute and of the grant itself...

"the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.

Copyright law defines a "work made for hire" as...

(1) a work prepared by an employee within the scope of his or her employment. (2) a work specially ordered or commissioned for use as: a contribution to a collective work; a part of a motion picture or other audiovisual work; a translation.

A trade secret is protected as long as...

(1) any information, including any formula, pattern , compilation, program, device , method, technique, or process, that (2) provides a business with a competitive advantage, (3) is not generally known by a company's current or potential competitors and cannot be readily discovered by them through legitimate means (4) is the subject of reasonable efforts to maintain its secrecy.

Any person who shall, without consent of the registrant of the trademark...

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) ............shall be liable in a civil action by the registrant for the remedies hereinafter provided.

If a court rules that a trademark has become "generic" through common use...

(such that the mark no longer performs the essential trademark function and the average consumer no longer considers that exclusive rights attach to it), the corresponding registration may also be ruled invalid. ***The Bayer company's trademark "Aspirin" has been ruled generic in the United States, so other companies may use that name for acetylsalicylic acid as well. ***Xerox for copiers and Band-Aid for adhesive bandages are both trademarks which were at risk of succumbing to genericide, which the respective trademark owners actively worked to prevent. ***Xerox provides one successful example of a company which was able to prevent the genericide of its core trademark through an extensive marketing campaign advising consumers to "photocopy" instead of "Xeroxing" documents. ***Johnson & Johnson changed the lyrics of their BAND-AID television commercial jingle from, "I am stuck on BAND-AIDs, 'cause BAND-AID's stuck on me" to "I am stuck on BAND-AID brand, 'cause BAND-AID's stuck on me."

Obtaining a Patent

1. File an application with the PTO 2. Filing fee with PTO 3. Explain how to make and use the basic invention 4. Show why the invention is different from prior art, or previously related inventions. 5. Precisely detail the subject matter that the inventor regards as an invention (called claims) 6. PTO assigns a patent examiner to consider the application, and there is usually a great deal of communication between the examiner and the applicant over the adequacy of the applicants explanations, the scope of the patent (what the patent applies to), and whether the invention even qualifies for a patent. The applicant can amend the application and the process can take several years from start to finish. A patent is an exclusive right created by statute and conveyed by the U.S. Patent and Trademark Office (PTO) for a limited period of time. This property applies to inventions which are new applications of information.

Copyright is...

A form of protection provided to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.

Copyright Act of 1976

A law that recognizes the rights of an individual creator (in any medium) from the time he or she has created a work and that protects a creative work for the lifetime of that author plus 70 years

Trademark infringement is...

A major business problem which may involve intentional use of the owners mark or accidental design of ones own mark to similar to anothers.

Service mark

A mark associated with a service, such as LinkedIn.

Collective mark

A mark representing membership in a certain organization or association, The NFL logo is an example.

Certification mark

A mark used by someone other than the owner to certify the quality, point of origin, or other characteristics of goods or services. Example is the Good Housekeeping Seal of Approval

Patent Law

A patent is firmly associated with an inventive act, and conveys a right to exclude others from making, using, selling, or importing the covered invention. The U.S. constitution authorizes congress to create patents and pass laws concerning exclusive patent rights as a from of property. Patent lasts for a limited period of time; 20 years from the date the application is filed with the Patent and Trademark Office.

Utility patent

A patent that protects the way an invention is used and works New, non obvious, useful, processes, machines, compositions of matter or improvements thereof. Term: 20 years from filing date.

What is a work made for hire?

A supplementary work, a compilation ,an instructional text, a test answer material for a test a sound recording, an atlas, or ***if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire....

Trademark

A trademark is a distinctive mark, motto, device or implement that a manufacturer stamps prints, or otherwise affixes to the goods it produces so that they can be identified on the market and their origin made known. A trademark is a source indicator

Patenable Subject Matter

After the PTO issues a patent, the patent may choose to maintain its exclusivity in the invention. Alternatively the patenee may license the patent by making, using, selling, or importing the invention without permission, the patent owner may have to defend his property. When a patent owner issues a lawsuit is common for the person being sued to question the validity of the patent. Validity can be challenged in a court by an infringer or by the PTO. If patent found invalid it is eliminated. Attacking the subject matter of a patent is one way of challenging the validity of a patent. Subject matter can be quite broad and is usually true with utility patents. Courts have carved out categories of subject matter that cannot be patented because they do not represent true inventions. One of the most controversial areas of potentially patentable subject matter contains processes. Mere abstract ideas are not a patentable process. Laws of nature, natural phenomenons, and abstract ideas are not patentable. Many of the Supreme Courts opinions on patentable subject matter refer to the idea or concept "preemption" One of the most common ways of challenging a patent is that the invention is obvious to someone with knowledge in this field.

Copyright enforcement

Although copyright protection attaches at the moment the work is created, and action for copyright infringement cannot be undertaken unless the author has properly registered the work with the Copyright Office. No accidental infringement in copyright and it is essential to prove that an infringer actually used the copyrighted work. They look to see if the defendant had access to the original work and then produced something that was substantially similar. If successful the copyright owner can obtain an injunction to stop the defendants infringement, may request actual damages (set by the judge regardless of whether they lost revenue). ***can only obtain statutory damages if the work is registered. Criminal penalties for willful copyright infringement include piracy and can be illegally reproduced copies can be seized, fines may be imposed, and defendants could go to jail. ***Only US government deals with these cases.

The proper use of a trademark means using the mark as...

An adjective, not as a noun or a verb though for certain trademarks, use as nouns and, less commonly, verbs is common.

Covenants not to compete are valid if they are...

Ancillary to another contract -Sale of Business -Employment Contract To protect interest created in the contract No more restrictive than necessary to protect those interests.

Trademark

Any mark, word, or picture or design that attaches to goods to indicate their source.

Who may obtain a patent and what are the requirements?

Any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent," "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Plant Patent

Apply to new varieties of asexually reproduced plants Many inventions related to plants may also be protected as utility patents. New variety of plant that can be reproduced asexually. Term: 20 years from filing date.

Trademarks

Are a form of intellectual property. Like patents you can register them with the PTO, and also like patents, trademarks are some of the most valuable properties that the business own. Although registration systems exist at the federal and state level, it is important to understand that trademark rights come from USE of the mark in association with goods and services. One can have rights in an unregistered trademark and even sue for infringement. You cannot presume that simply because a mark is unregistered its is open for use in you field.

Patent Enforcement

As the U.S. constitution specifies, the property represented by patents runs for limited duration. Statutes limit... -Utility patents and plant patents= 20 years from filing date -Design patents = 15 years from issue date When an patent expires, the invention is in the public domain, and others may use it without permission of the patentee. The explicit purpose of patents is to make inventions public following the limited period of property right. For the duration of the patent the owner can sue for infringement. If the lawsuit is successful, the owner can get an injunction prohibiting future infringement and collect damages, including triple damages for willful infringement. Simply owning a patent is not a license to produce a product or service. A fundamental concept in patent law is that patents only convey the right to exclude others from making, using, selling, and importing the invention and do not exclude the right to use the invention. Overlapping patents and licenses (multiple intellectual property rights) are the only way to produce a product like with the I-Phone and the inventions all coming from different patents.

Nondisclosure and noncompete agreements

Common law confidentiality: Employees expected to safeguard interests of employer. Contract Law: Nondisclosure and Noncompete agreements signed by employee

No trademark should be refused registration unless it...

Consists of or comprises immoral, deceptive, or scandalous mark Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof. Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office Consists of a mark which... (1) merely descriptive or deceptively misdescriptive of them, (2) is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.

What does copyright not protect?

Copyright does not protect ideas, concepts, systems, or methods of doing something. You may express your ideas in writing or drawings and claim copyright in your description, but be aware that copyright will not protect the idea itself as revealed in your written or artistic work.

Copyright Ownership

Copyright law grants property in certain creative expressions & prohibits others from reproducing it w/o the owners permission. The copyright attaches not to an idea or facts but to the original expression of an idea or facts. Criterias necessary for copyright protection to occur... 1. A work must be original. It must be created and not copied. Facts are not original, though collections of facts might be depending on selection and arrangement. 2. The work must be fixed in a tangible medium of expression like a book, canvas, compact disk, hard drive, or flash memory. 3. The work must show some creative expression.

The counter to intellectual property

Costs

Legal remedies for stealing trade secrets

Court order preventing disclosure Money damages Punitive damages Criminal Charges Once secrets have become public they cease to be trade secrets. ***Best course is to prevent both improper and inadvertent disclosure

What does the owner have to do to protect secrets and have court protect secrets?

Court will not protect secrets unless owner does also. Owner must make reasonable efforts to protect information. Courts will consider -Value of information protection resources -How broadly info known inside and out.

Patents may overlap to..

Cover a single product, and in some fields the number overlapping right can be quite large. It can be difficult to get all of the licenses and not infringe. Investment firms may purchase patent rights and sue existing companies.

Protecting trade secrets with employees

Employees may leave an employer and use the knowledge they have gained to compete against their former employer or work for the former employers competition. Employers sometimes require employees to sign confidentiality contracts promising not to disclose what they learn in confidence in the workplace. This promise only applies to knowledge that is unknown publicly and amounts to trade secrets. Sometimes employers require that employees agree to not compete against them if they leave employment. These are not always required. The law sates that employers can enforce agreements not to compete when there is a valid business purpose for the contract Laws of unfair competition limit the extent to which employers can prevent employees from competing against them.

The different kinds of intangible, mostly knowledge-based assets that businesses may possess include the following...

Employer skills and talents Production designs, inventions, and technologies Processes and methods of business operation Customer lists and data about preferences and purchasing habits Relationship with suppliers Brand identity and logo Software, including web-pages and apps New product or service research Marketing plans ***all fall under property law

The essence of a trade secret case requires the establishment of two primary elements...

Establishing that a trade secret exists Demonstrating misappropriation

Problems with registering someones name with trademarks.

Generally the PTO will not accept a persons name or a descriptive term for protection on the Principal Register. However, if its listed on the PTO's Supplemental Register for five years and acquires a secondary meaning, it can then be transferred to the Principal Register for full protection. Secondary meaning refers to a public meaning that is different from its meaning as a persons name or as a descriptive term, a public meaning that makes the name or term distinctive.

Copyright

Gives those who have this property a monopoly over the right to exclude others from copying and marketing for a limited period of time. Unlike patents, copyright deals with original expression rather than invention.

Trademark Registration

If one wishes to register a trademark with the PTO, one must use the mark in interstate commerce. Posting the trademark on an internet website in association with their product or service meets this qualification. An intent to use application may be filed as well followed by an amended application when actual use begins. To be registerable a trademark must be distinctive.

The information economy...

In which some successful businesses never produce a single product has increased the importance of intangible information. Also business community has become aware of the advantages of intellectual property ownership.

The basic economic system of intellectual property is grounded in the idea of...

Incentives We give firms and individuals the ability to secure property rights if they produce certain types of information. Can lead to market advantages such as the ability to charge premium prices or utilize consumer recognition. The possibility of economic return on investment leads to increased investment in intellectual property.

Liability for infringement

Inducing others to infringe Helping others infringe

For some types of intellectual property...

Information is disclosed to the public in exchange for exclusive rights which supports follow-on research efforts.

Civil violation of a trademark (or patent) is termed...

Infringement. The violator infringes on the trademarks property right though an unintentional or a willful unauthorized use, misappropriating the goodwill and reputation that the trademark represents and confusing the public about the identity of the user. Remedies for civil infringement include injunctions prohibiting future infringement, and orders to destroy infringing products in anyone's possession.

What cannot become a patent?

Laws of nature, physical phenomena, and abstract ideas are not patentable subject matter

Digital Millenium Copyright Act (DMCA) of 1998

Legislation passed to protect copyrighted digital data while also making it more widely available

Are copyrights transferable?

Like any other property, all or part of the rights in a work may be transferred by the owner to another.

Why register if copyright protection is automatic?

Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney's fees in successful litigation. Finally, if registration occurs within five years of publication, it is considered prima facie evidence in a court of law.

How to protect trade secrets?

Mark documents "Confidential" Disclose information on need to know basis Keep information on site Passwords and security codes Clean desk policy Avoid insecure conversations. e.g. cellular phone, elevators, restaurants, airplanes. Shredders Complete records of location of sensitive information. Review public speeches and publications Exit interviews and Exit Agreements Correspondence to other employers Educate employees and provide guidance as to what constitutes a trade secret. Employee commitments... -Preemployment Clearance -Confidentiality Agreements -Noncompetition Agreements

Design patents

May be granted to anyone who invents a new, original, and ornamental design for an article of manufacture;

Plant Patent

May be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Utility patent

May be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

Is intellectual property protection necessary for the production of all information?

No

Registration with copyright

No registration required to obtain a copyright under federal law. Businesses often assume the work of an author is copyrighted because of this. When an employee works for hire and creates something that can be copyrighted the employer is the author. Copyright runs for the authors lifetime.

How corporate countermeasures to disclosure of trade secrets by personnel?

Nondisclosure/noncompete agreements Screening -Background investigations -Credit -Polygraph -Integrity -criminal -Workplace Monitoring -Surveillance -Monitoring communications

Obviousness of patents

Nonobvious refers to the ability of an invention to produce surprising or unexpected results; that is, results not anticipated by prior art. The nonobvious standard is measured in relation to someone who has ordinary skill in the prior art. Obviousness is assessed as the date of the application opposed to later in the litigation. Courts are careful to avoid highlight bias which is the tendency to see any invention as obvious after it is revealed and its significance is known. Patent litigation over the obviousness of an invention is typically very subjective and the courts make the ultimate decision.

Trade secrets

One of the most common ways of asserting property in knowledge-based intangible business resources. Trade secret law arose to protect the employers valuable knowledge. A trade secret is any form of knowledge or information that has economic value from not being generally known to others or readily ascertainable by proper means and has been the subject of reasonable efforts by the owner to maintain secrecy. Valuable, secret information that has no limit on how long it can last as long as it is still secret.

U.S. patent grants are effective...

Only within the United States, U.S. territories, and U.S. possessions

Patent trolls

Out of the belief that such non-practicing patent owners are nothing more than a self-appointed toll-taker on a bridge, they have been widely referred to as patent trolls. This term suggests that non-producing patent owners do not contribute as much to the innovation environment compared to the costs imposed by their enforcement. As a counter to patent troll rhetoric, one might consider the fact that non-practicing entities are exercising a legitimate right under their property grants and do not actually have to make or sell the product.

How to maintain secrecy with trade secrets

Reasonable measures include physically locking away written material, securing computer-stored knowledge with protective firewalls and encryption to keep hackers from obtaining access, and imposing confidentiality restrictions on those who have contact with the firm. Some companies maintain two different computer systems. Companies also regulate who can come visit the business and what the visitors can see. Visitors sometimes required to sign agreements not to disclose to the public what they learnt or saw. Prospective business partners, customers, suppliers, and repair technicians often have to sign nondisclosure agreements. Must prove it is a secret and protect it or competitors may be able to access it.

Function of trademarks

Recognizability or distinctiveness is the function of trademarks. Trademarks let people know that the goods or services represented are the real thing and that they come from one source. They are information property, exclusively distinguishing the reputation and goodwill of a particular business from that of all other businesses. Trademarks protect both businesses and consumers from confusion regarding who makes or provides what.

Property rights in information....

Reduce competition (at least temporarily) that could otherwise increase availability and keep prices low for consumers. Presume that the long term benefits are better than the short term costs. Incrementally increases the production of information and investment over that which would normally occur. Society has this benefit in exchange because they allow this information to be protected.

Design Patent

Registered protection for the appearance of a (article of manufacture) product and its inseparable parts, unrelated to function. New, original, and ornamental design for an article of manufacture. Term: 15 years from issue date.

To make a case of copyright infringement, a copyright owner must establish that a defendant violated one of the owners exclusive rights including...

Reproduction Creation of derivative works Distribution Performance, in the case of music n shit. Display in the case of pictorial or graphic works.

Types of trade secrets that can be protected?

Sales and Marketing plans Formulas Customer lists and data Recipe Software Survey results Computer files Manufacturing techniques

Limitation on trade secret rights

Secrets can get out through normal product marketing sometimes.

Inevitable disclosure

Soft drink manufacturer established that its managerial employee would inevitably disclose trade secrets to competitor if he accepted competitor's offer of employment, warranting preliminary injunctive relief in manufacturer's trade secret misappropriation action although employee had agreed not to disclose trade secrets from former employment, Employee possessed extensive and intimate knowledge about manufacturer's strategic goals in sports drinks and "new age" drinks, and such secrets would enable competitor to achieve substantial advantage "inevitable disclosure" rule which permits a former employer to enjoin an employee from working for a direct competitor where the "new employment will inevitably lead [the employee] to rely on the [former employer's] trade secrets. In other words, an injunction against the new employment may issue where the new employment is "likely to result" in the disclosure of a former employer's trade secrets, or where it would be "impossible" for an employee to perform his or her new job without using or disclosing those secrets.

Rules with capturing intellectual property

Some have very strict deadlines for asserting rights or other formal requirements. Failure to follow rules can result in the information becoming public. Once information is in the public domain, an intellectual property right cannot be applied to recapture it.

American Invents Act

Switched the US from a "first to invent" patent system to "first to file". First person who gets to the patent office wins. Prior user rights help to keep internal processes secret and avoid infringing another patent. Makes it harder for defendants to join together in a single case (joinder).

Copyrights are registered by...

The Copyright Office of the Library of Congress.

Trademark Protection : Lanham Act

The Lanham Act is found in Title 15 of the U.S. Code and contains the federal statutes governing trademark law in the United States. However, this act is not the exclusive law governing U.S. trademark law, since both common law and state statutes also control some aspects of trademark protection. Any registration .... shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration

As a part of the trademark application process

The PTO places a proposed mark in the Official Gazette, which gives existing mark owners notice and allows them to object that the proposed mark is similar to their own. If existing mark owners object to the proposed mark registration the PTO holds a hearing to resolve the objection and, possibly, to deny registration. Finally, if the PTO determines the mark acceptable, it registers the mark on the Principal Register. This provides notice of official trademark registration status.

Economic Espionage Act (EEA)

The act makes it a crime to steal (intentionally misappropriate) trade secrets and provides for fines and up to 10 years in prison for individuals and up to a 5 million dollar fine for organizations. Only the federal government can bring up a case under the EEA Misappropriation to benefit a foreign government or true espionage can enhance penalties. This is because of the concern that foreign governments are spying on us.

Novelty of patents

The characteristics of novelty indicates that something is new and different from prior art. The test is met when no single piece of prior art meets all the elements of the inventions claims. However, under patent law, even if an invention is otherwise new, it fails the novelty test if it has been described in a publication, sold, or put to public use more than 1 year before a patent application is filed. This exists even if the inventor performs these actions. Activity by others before a patent is filed precludes patentability, even within a year.

Copyright Fair Use

The copyright act specifies that a fair use of copyrighted materials is not an infringement of the owners property. Fair use includes copying for criticism, comment, news reporting, teaching, scholarship, or research. In determining whether it is fair use or not a court will look at these factors... -The purpose and character of the use, including whether such use is for commercial or nonprofit educational purposes. -The nature of the copyrighted work -The amount and substantiality of the portion used in relation to the copyrighted work as a whole. -The effect of the use upon the potential market for the copyrighted work. Made on a case by case basis.

Dupont v. Christopher

The defendants were photographers who were hired by an unknown third party to take aerial photographs of new construction at the Beaumont plant of E. I. duPont deNemours & Company, Inc. Sixteen photographs of the DuPont facility were taken from the air on March 19, 1969, and these photographs were later developed and delivered to the third party. DuPont contended that it had developed a highly secret but unpatented process for producing methanol, a process which gave DuPont a competitive advantage over other producers. This process, DuPont alleged, was a trade secret developed after much expensive and time-consuming research, and a secret which the company had taken special precautions to safeguard. The area photographed by the Christophers was the plant designed to produce methanol by this secret process, and because the plant was still under construction parts of the process were exposed to view from directly above the construction area. Photographs of that area, DuPont alleged, would enable a skilled person to deduce the secret process for making methanol. DuPont contended that the Christophers had wrongfully appropriated DuPont trade secrets by taking the photographs and delivering them to the undisclosed third party. The Christophers argued that they committed no 'actionable wrong' in photographing the DuPont facility and passing these photographs on to their client because they conducted all of their activities in public airspace, violated no government aviation standard, did not breach any confidential relation, and did not engage in any fraudulent or illegal conduct. In short, the Christophers argue that for an appropriation of trade secrets to be wrongful there must be a trespass, other illegal conduct, or breach of a confidential relationship. One may use his competitor's secret process if he discovers the process by reverse engineering applied to the finished product; one may use a competitor's process if he discovers it by his own independent research; but one may not avoid these labors by taking the process from the discoverer without his permission at a time when he is taking reasonable precautions to maintain its secrecy. To obtain knowledge of a process without spending the time and money to discover it independently is improper unless the holder voluntarily discloses it or fails to take reasonable precautions to ensure its secrecy. Improper' will always be a word of many nuances, determined by time, place, and circumstances. We therefore need not proclaim a catalogue of commercial improprieties. Clearly, however, one of its commandments does say 'thou shall not appropriate a trade secret through deviousness under circumstances in which countervailing defenses are not reasonably available.' Having concluded that aerial photography, from whatever altitude, is an improper method of discovering the trade secrets exposed during construction of the DuPont plant, we need not worry about whether the flight pattern chosen by the Christophers violated any federal aviation regulations. Regardless of whether the flight was legal or illegal in that sense, the espionage was an improper means of discovering DuPont's trade secret.

The 1976 Copyright Act generally gives the owner of copyright...

The exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

Fair use of copyrighted work

The fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or Research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include- (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality 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. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

To win a trademark infringement lawsuit the following defenses will be presented.

The mark is not distinctive. (mark is descriptive or generic) There is little chance of the public being confused by use of a term trademarked by someone else. (Public will not be confused between the marks) The use is a "fair use". (Allowed by the Lahamn act and relates to a discussion , criticism, or parody of the trademark, the product, or its owner.)***also comparative advertising ***A court can declare a mark invalid even if the PTO accepted registration

Civil Enforcement of Trade Secrets

The owner of a trade secret may go into court and get an injunction to prevent others or former employees from sharing or using trade secrets. Injunction is an order by a judge either to do something or refrain from doing something. In the case of trade secrets the injunction orders those who have been misappropriated the trade secret to refrain from using it or telling others about it. In rare cases the injunction may order that one delay in taking a new job.

The justification for intellectual property is...

The same for the private property system generally. Property relationships are believed to be more productive in allocating scarce resources and producing new ones than legal relationships that merely divide resources equally. Intellectual property gives incentive to create new things because you have an exclusive right to what you acquire. The justification for securing the right to intellectual property is to promote the progress of science (knowledge and creativity) and useful arts (inventions) Constitution also ensures that after limited times defined by congress, the resources of new expression and invention, which were formally exclusive to the authors and inventors will be freely available to everyone. Investments in R&D are expensive and if copied they will be at a competitive disadvantage.

Unlike a patent which specifies a limited property duration...

The trademark enjoys a potentially unlimited protection period. However after 6 years the trademark owner must notify the PTO that the trademark is still in use. Currently, every ten years, the owner must renew the trademark registration.

Misappropriation of infringement

The wrongful taking of any kind of intellectual property

Judges have limited trolling by...

They have the ability to reduce trolling incentives by forcing the losing party to pay the winning sides costs and a troll who has no real case will be less likely to make a threat under these circumstances. A law on trolls prevents patent owners from suing multiple parties merely because they infringe on the same patent, a change that makes litigation more expensive for trolls. State governments have taken action against trolls under the consumer protection laws. A troll can be considered to be acting in bad faith.

Federal Trademark Dilution Act

This law prohibits you from using a mark the same or similar to anothers famous trademark so as to dilute its significance, reputation, and goodwill. Even if the famous owner of a trademark cannot prove the public is confused they can still get an injunction prohibiting further use of the junior mark on the basis of trademark dilution. Court can offer remedies if the infringer willfully intended to trade on the owners reputation or to cause dilution of the famous mark.

Criminal trademark penalties apply to...

Those who manufacture or traffic in counterfeit trademarked products such as imitation of Rolex watches or Levi jeans. What makes it criminal is the deliberate intent to pass off, or palm off, fake products as real by attaching an unauthorized trademark.

Demonstrating Misappropriation

To be liable in a trade secret case, a defendant must have misappropriated the information. Misappropriation occurs when one improperly acquires secret information through burglary, espionage, or computer hacking. It also occurs when one discloses information that one had a duty to keep secret even if the original acquisition is proper. Innocently acquiring a trade secret from another without knowledge of heft is not misappropriation. Independent creation does not constitute misappropriation. If by your own effort you are able to recreate the same information that another considers to be a trade secret no misappropriation has occurred. Reverse engineering a secret by looking at a product and trying to figure out how it works or formulated is not misappropriation. (exception if they contractually agreed to keep it secret then liable)

Novelty, nonobvious, and utility

To be patentable, it is not enough for something to be appropriate subject matter. An invention must also have certain characteristics such as being novel, nonobvious and useful. An alleged Infringer can always defend himself by proving that the patent is invalid because the invention is previously known, obvious, or lacks utility.

Intellectual Property: The Congress shall 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 . . .

Difference between trade secret rights and intellectual property rights

To violate anothers trade secrets rights one must misappropriate the information. This is different that intellectual property rights that impose liability simply for unauthorized use. Wrongful behavior, some would all it theft, is necessary for a trade secret violation.

Similar to trademarks and also protected by the Lanham act is...

Trade dress which refers to a color or shape associated with a product or service. the red color scheme of coke when associated with the general design of coke constitutes trade dress. Trade dress protection prevents coke competitors from designing a shape that resembles a coke bottle and attaching the color scheme to it similar to coke. Supreme court defines trade dress as the total image and overall appearance of a business.

Where does trade secret protection not apply?

Trade secret protection does not apply to information in the public domain or otherwise generally available to customers or competitors. Information disclosed by mistake Information obtained by legitimate reverse engineering

Trademark Enforcement

Trademark law protects the trademarks owner from having the mark used in an unauthorized way Using a mark that is confusingly similar to the trademark owners mark violates the law. The standard for liability is proof that a defendant's use has created a likelihood of confusion with the plaintiff trademark. To make this determination, courts use a multi factored test that considers elements such as the defendants intent and proof of actual consumer confusion. The law establishes both civil and criminal trademark causes of action.

When do trademark rights diminish or are removed?

Trademarks rights must be maintained through actual use of the trademark. These rights will diminish over time if a mark is not actively used. In the case of a trademark registration, failure to actively use the mark, or to enforce the registration in the event of infringement, may also expose the registration itself to removal from the register after a certain period of time.

Particular at the federal level...

Under the Lanham Act, registration conveys important advantages. It is advisable for a business to pursue a federal trademark registration for its source indicating marks whenever possible.

3 types of patents

Utility patents Design patents Plant patents

Patent Types

Utility, design, plant

The Bass Red Triangle

Was the first trademark registered in Britain in 1876.

Establishing the Existence of a Trade Secret

When a business has spent time, effort, or money in employee training, preparing materials, making plans, or developing relationships with customers and suppliers, the business may wish to keep competitors away from this knowledge. To protect information as a trade secret the information must actually be a secret and the business must take reasonable measures to keep it so. A first step in protecting trade secrets is to identify confidential knowledge based resources or a trade secret audit. Trade secrets do not need to be unique and 2 businesses may have trade secret property in substantially the same knowledge. For example they may each have customer lists that overlap with many of the same names. As long as potential competitors are not aware of all the customer names the knowledge still has economic value.

When do trade secret disputes often arise?

When employees leave to join a competitor. Violations can occur voluntarily or inadvertently. ***Showing new employer presentation prepared for former employer to demonstrate skill.

When is work protected?

Work is protected the moment it is created and fixed in a tangible form so that it is perceptible either directly or with the aid of a machine or device. Copies of all works under copyright protection that have been published in the United States are required to be deposited with the Copyright Office within three months of the date of first publication.

How does one apply for a trademark?

a registrant of a mark registered in the Patent Office, may give notice that his mark is registered by displaying with the mark the words "Registered in U. S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." or the letter R enclosed within a circle, thus (R); and in any suit for infringement under this Act by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this Act unless the defendant had actual notice of the registration.

Under copyright law who is the author?

the creator of the original expression in a work is its author. The author is also the owner of copyright unless there is a written agreement by which the author assigns the copyright to another person or entity, such as a publisher. In cases of works made for hire, the employer or commissioning party is considered to be the author.