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
