Chapter 25

misappropriation of trade secrets

. Individuals misappropriate trade secrets when they use or disclose another's secret or learn of a trade secret by an improper means. A. Inevitable Disclosure Doctrine recognizes that former employees who work for a competitor may rely on or disclose the trade secrets gained through former employment. B. Remedies. The typical trade secret case may involve more than one form of relief: 1. Injunction. 2. Damages. 3. Punitive Damages are available for willful violations.

ownership and scope of protection for trademarks

1. Definition. 2. Purpose: There are four different purposes of a trademark: (a) To provide an identification symbol for a particular merchant's goods, (b) To indicate that the goods to which the trademark has been applied are from a single source, (c) To guarantee that all goods to which the trademark has been applied are of a constant quality, and (d) To advertise the goods. 3. Distinctive Characteristics. Trademark law also protects distinctive shapes, odors, packaging, and sounds. Color may also qualify as a trademark

Loss of trademark Rights

Failure to use one's mark may result in the loss of rights. A. Actual Abandonment an owner discontinues use of the mark without intent to resume use. B. Constructive Abandonment results when the owner does something, or fails to do something, that causes the mark to lose its distinctiveness (allowing "thermos" to be used as a noun rather than a brand name).

direct infringement

The doctrine of equivalents allows a patent holder to claim infringement when the replication works in substantially the same way as the patented device.

choosing a trademark

Under trademark law, the degree of protection is based on its distinctiveness. Marks that are the most distinctive generally have the greatest protection. A. Fanciful and Arbitrary Marks, often called strong marks, need no proof of distinctiveness. 1. Fanciful Marks have no meaning until used as a trademark in connection with a particular product (Exxon). 2. Arbitrary Marks are real words whose ordinary meaning has nothing to do with the trademarked product (Apple, Camel). B. Suggestive Marks suggest something about the product without directly describing it (Chicken of the Sea tuna). C. Descriptive Marks specify certain characteristics of the goods, such as size, quality or color (Gold Medal flour). 1. Geographic Terms are generally non-distinctive. 2. Personal Names are not inherently distinctive. However the PTO granted a trademark to AOL for its "buddy list." 3. Secondary Meaning. Marks can become protected if they acquire secondary meaning. D. Generic Terms. Trademark law grants no protection to generic terms, such as "spoon" or "software," not even via a secondary meaning.

design patents

protect any novel, original (rather than non-obvious), and ornamental design for an article of manufacture e.g., the shape of a "Coca-Cola" bottle. Design patents are easier to obtain than utility patents.

utility patents

protect novel, useful, and non-obvious process, machine, manufacture, or composition of matter, or any novel, useful, non-obvious improvement. The application must show that the "invention" has utility and is novel.

Remedies to copyright infringement

1. Piracy and Current Responses. In the music area, the Recording Industry Association of America is using technology and lawsuits to prevent file sharing. 2. Civil Copyright Remedies. Plaintiff is entitled to recover actual damages, the defendant's profits, and attorneys' fees 3. Digital Millennium Copyright Act may apply to copyright. DMCA outlaws devices used to copy software illegally and criminalizes circumvention of anti-piracy measures in commercial software. Courts may order injunctions and the destruction of equipment. 4. Criminal Liability. Infringers may face criminal penalties including fines and imprisonment under the No Electronic Theft Act of 1997. The law requires no proof that the defendant made profits from the violation.

invalidity

A court may rule a patent invalid if the invention was not novel, or failure to meet statutory requirements.

Patents

Article I of the U.S. Constitution specifically grants Congress the authority to grant patents.

copyrights

Books, novels, films, software and CDs are all copyrightable. Under the U.S. Copyright Act, works must be fixed in a tangible medium and original. If an author can establish fixity and originality, copyright protection is automatic. A. Ownership and Scope of Protection. The author is either the creator of the work or, employer in the case of a work made for hire. 1. Expression Versus Idea. 2. Useful Article Doctrine. Copyright protection does not extend to the useful application of an idea. B. Preemption of State Law. C. Term of Protection. Copyright now extends for: (1) the life of the author plus 70 years (if the author is known); or (2) the lesser of 95 years after the first publication or 120 after the creation of works of unknown authors. D. Copyright Formalities. 1. Copyright Notice is not required, but advisable for it prevents a claim of innocent infringement. 2. Copyright Registration with the U.S. Copyright Office is required prior to filing an infringement suit for a work of U.S. origin. Damages of up to $100,000 per violation and attorney's fees are available. E. Exclusive Rights. Copyright owners are given certain exclusive economic rights in the work to: (1) reproduce the copyrighted work; (2) prepare derivative works; (3) distribute copies of the copyrighted work; (4) perform the work publicly; and (5) display the copyrighted work publicly.

non-infringement

Defendant asserts that the allegedly infringing matter does not fall within the claims of the issued patent.

patent misuse

Defendant asserts that the patent holder has abused her patent rights and therefore should lose her right to enforce them.

innocent infringement

Defendant sserts that the defendant lacked adequate notice of the patent.

remedies for trademark infringement

Owners can petition for injunctive relief, an accounting for lost profits due to customer confusion, and damages on a case-by-case basis.

remedies for infringement

Patent holders may seek remedies for alleged infringement of their patent rights. 1. Injunctive Relief . 2. Damages may also be awarded, based on a reasonable royalty for the infringer's use, as well as court costs and attorney's fees.

trade secrets

TRADE SECRETS law is designed to prevent the unauthorized disclosure of sensitive information. A. Scope of Protection. Generally trade secret law is covered by state laws on contracts and tort. Some awards range in the millions. B. Common Law. Section 757(b) of the Restatement (Second) of Torts addressed trade secrets. Courts examine five factors to determine liability. C. The Uniform Trade Secrets Act defines trade secrets and covers (1) information that has potential value from being secret; (2) information regarding one-time events; and (3) negative information. D. Criminal Liability Under the Economic Espionage Act falls upon any person who intentionally or knowingly steals a trade secret or knowingly receives or purchases a wrongfully obtained trade secret.

trade dress

The Lanham Act also protects trade dress, is the overall look and image of a product such as a menu at a restaurant, the appearance of a fast food restraint or the packaging of a product for example.

filing for patent protection

The inventor must file a patent application with the U.S. Patent and Trademark Office (PTO). Each application has four parts: (1) Specifications; (2) Claims; (3) Drawings; and (4) Declaration by the inventor. 1. Continuation application (or appeal). The PTO rejects 99 percent of all initial applications. One may file an appeal to the PTO and after exhausting administrative remedies, to the U.S. District Court for the District of Columbia or the U.S. Court of Appeals for the Federal Circuit. 2. Provisional applications. Since 1995, inventors can file a provisional application without formal patent claims. This tool allows an inventor to file earlier than they would otherwise.

creating and protecting a trade secret

There is no formal process to establish a trade secret. The information merely must remain private. Protection of the trade secret is best maintained through the implement of a protection program covering notification, identification, security, and exit interviews.

Trademark infringement

To establish infringement, a trademark owner must prove a valid mark, priority of usage, and a likelihood of confusion in the minds of the purchasers.

Trademarks

Trademark law concerns itself with how trademarks are created, how its rights arise, are preserved, and why certain trademarks gain more protection than others.

other marks of trademarks

Trademarks should not be confused with other forms of protected marks, such as service marks, trade names, and certification marks. 1. Service Marks are used in connection with services 2. Trade Names identify a company, partnership, or business. 3. Certification Marks placed on a product indicate that the product has met the certifier's standards of safety or quality ("Good Housekeeping" seal).

the federal trademark dilution act of 1995

allows owners of famous trademarks to sue defendants who willfully trade on the reputation of the famous mark owner or cause dilution of the famous mark.

plant patents

are granted for man-made inventions of any distinct and new variety of plant that is asexually reproduced.

types of copyright infringement

direct infringement, contributory infringement, vicarious infringement

Types of infringement

direct infringement, indirect infringement, contributory infringement

Defenses to the copyright infringement

include fair use, first sale and copyright misuse. 1. The Fair Use Doctrine permits certain limited use of a copyright by someone other than the copyright holder without permission of the copyright holder i. Quotation of the copyrighted work for review or criticism in a scholarly review or technical work, ii. Use in a parody or satire, iii. Brief quotation in a news report, iv. Reproduction of work by a teacher of a small portion of the work to illustrate a lesson, v. Incidental reproduction of an event in a news reel or broadcast of an event being reported, vi. Reproduction of a work in a legislative or judicial proceedings 2. First Sale Doctrine. Once the copyright owner sells the copyrighted item the owner has waived exclusive right to control distribution of the item. 3. Copyright Misuse. Defendant may allege that the copyright holder seeks to exercise authority outside the scope of the copyright.

defenses against trademark infringement

include first sale and fair use doctrines, nominative use, genericity, and the First Amendment. 1. First Sale Doctrine provides a trademark seller cannot act against resellers. 2. Fair Use Doctrine allows a competitor to use a rival's trademark to identify the other's product. 3. Nominative Use. A defendant is not in violation of trademark infringement if the defendant only talks about the mark itself. 4. Genericity. The defense holds that the trademarked term is a generic term. 5. First Amendment. Parties may use trademarked names in their political expressions.

copyright infringement

includes copying, modification, display, performance, or distribution of a work without the permission of the copyright owner.

indirect infringement

is defined as the active inducement of another party to infringe a patent.

Intellectual property protection: comparative advantages

look at picture

Infringement Defenses

non-infringement, invalidity, patent misuse, innocent infringement

contributory infringement

occurs when one party knowingly sells an item that will result in the infringement of another's patent.

direct infringement (copyright)

occurs when one party violates at least one of five exclusive rights of the copyright holder

vicarious infringement (copyright)

occurs when the defendant has the right and ability to control the infringer's act and receives a direct financial benefit from the infringement

contributory infringement (copyright)

occurs when the defendant induces or causes or participates in the infringing conduct of another