Ch. 9 Intellectual Property

Remedies for Infringement What are the three elements of monetary damages?

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

If a court rules that a trademark has become "____" 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 _____ in the United States, so other companies may use that name for acetylsalicylic acid as well (although it is still a trademark in Canada) (same word)

"generic"

Copyright law defines a "work made for hire" as (2):

(1) a work prepared by an employee within the scope of his or her employment; or (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 what (4):

(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, and (4) is the subject of reasonable efforts to maintain its secrecy.

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 patent

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

A patent for an invention

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

A service mark

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.

Dupont v. Christopher (cont.)

Patents that force other competitors from entering industry due to patent a company that obtains the rights to one or more patents in order to profit by means of licensing or litigation, rather than by producing its own goods or services.

Patent trolls

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

Plant patents

-Educate employees and provide guidance as to what constitutes a trade secret. -Employee commitments -Preemployment Clearance -Confidentiality Agreements -Noncompetition Agreements

Protection program

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.

Protection program

Shredders Complete records of location of sensitive information. Review public speeches and publications Exit interviews and Exit Agreements Correspondence to other employers

Protection program

was the first trademark registered in Britain in 1876.

The Bass Red Triangle

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 .........

The Lanham Act

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.

The Lanham Act

The Federal Act that protects trademarks

The Lanham Act

Many trade secrets are revealed by _____

employees

What is granted is not the right to make, use, offer for sale, sell or import, but the right to ____ 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

exclude

In our system today, its the first person to _____ for the patent gets the patent. In the olden days, it used to be the first person to _____ patent would get patent. (different words)

file discover

Xerox for copiers and Band-Aid for adhesive bandages are both trademarks which were at risk of succumbing to _______, which the respective trademark owners actively worked to prevent.

genericide

Just like with patents, copyrights do not protect the ____. It has to be the written expression of the idea

idea

You cannot patten an ____. It has to be useful

idea

any person who "_____ or _____ any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,"

invents or discovers

What are not patentable subject matter (3)

laws of nature, physical phenomena, and abstract ideas

With a patent, you technically have a _____

monopoly

A complete description of the actual machine or other subject matter for which a ____ is sought is required.

patent

In order for an invention to be ____ 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," or "(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 . . ."

patentable

Work is _____ 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.

protected

Trade secret protection does not apply to information in the _____ domain or otherwise ____ available to customers or competitors. -Information disclosed by mistake -Information obtained by legitimate reverse engineering (different words)

public generally

In the case of a ____ ____, 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.

trademark registration

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

transferred

"_____" 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.

useful

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.

In cases of ___ ___ ___ ___, the employer or commissioning party is considered to be the author.

works made for hire

(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.

Fair Use exception

Notwithstanding the provisions of sections 106 and 106A, 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

Fair Use exception

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;

Fair Use exception

THEFT MISREPRESENTATION BRIBERY BREACH OF CONTRACT ESPIONAGE BREACH OF CONFIDENTIALITY Dupont v. Christopher 431 F.2d 1012 (5th Cir.1970) Cert. Denied, 400 U.S. 1024 What are these examples of?

IMPROPER ACQUISITION

No trademark shall be refused registration unless it—(4)

1. Consists of or comprises immoral, deceptive, or scandalous ma 2. 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. 3. Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office 4. 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 are the two remedies for infringement?

1. Injunction 2. Monetary Damages

Any person who shall, without the consent of the registrant- (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.

15 U.S.C. §1111 Section 29 of the Lanham Act

Notwithstanding the provisions of section 22 hereof [15 USC 1072], 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.

15 U.S.C. §1111 Section 29 of the Lanham Act

The Apple and Kodak logos are examples of what?

A trademark

is a source indicator

A trademark

____ 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

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. 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.

Copyright

are registered by the Copyright Office of the Library of Congress.

Copyrights

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

Design patents

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 v. Christopher

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.

Dupont v. Christopher (cont.)

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.

Dupont v. Christopher (cont.)

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.

Dupont v. Christopher (cont.)

We think, therefore, that the Texas rule is clear. 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.

Dupont v. Christopher (cont.)

Allen wrench aspirin - ASA (acetylsalicylic acid; remains as a registered trademark in many places around the world in the name of Bayer, but not in the United States) bikini - two-piece swimsuit for women cellophane - transparent paper celluloid - film material cola - soft drink; genericized part of Coca-Cola dry ice - frozen carbon dioxide escalator - moving staircase formica (plastic) - laminated plastic surface frisbee - toy plastic flying disc granola - oat and fruit bar gunk - thick, liquid soap hoagie - sandwich What are these examples of?

Examples of trademarks that were lost

hula hoop - toy hoop; originally made of various materials, generic name trademarked by Wham-O when it was redesigned in plastic in the late 1950's jungle gym - play structure (from 'Junglegym') lanolin - purified, wax-like substance from sheep's wool linoleum - floor covering milk of magnesia - saline-type laxative; Phillip's mimeograph - reproduction machine plasterboard - formed gypsum building material pogo stick - bouncing stick (trademark was one word, 'Pogo') spandex - polyurethane fiber; an anagram of "expands" [2]; DuPont later introduced new trademark, Lycra tarmac (or tarmacadam) - road surfacing; the word tarmac is sometimes used to refer to airport runways, but properly it is the hardstanding or parking area that is the tarmac toll house cookie - chocolate-chip cookie. Nestlé lost trademark rights in the 1970s What are these examples of?

Examples of trademarks that were lost

touch-tone - dual tone multi-frequency telephone signaling trampoline - sports equipment white-out - correction fluid; derived from the brand name Wite-Out windsurfer - sailboard yo-yo - toy zip code - postal code (US) zipper - zip fastener What are these examples of?

Examples of trademarks that were lost

The Congress shall have 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 . . . Article I, Section 8, U.S. Constitution

Intellectual Property

Trademarks Patents Copyright Trade Secrets What do these make up?

Intellectual Property

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

Legal remedies

What are trade secrets protected from?

Misappropriation

-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 What is all this?

More reasonable efforts to maintain secrecy

Sales and Marketing plans formulas Customer lists and data recipe (Coca Cola recipe) software survey results computer files manufacturing techniques What are these examples of?

Trade Secrets Types of Information which can be protected

-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.

Trade secrets

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.

Trademark

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.

Trademark protection

must be maintained through actual use of the trademark. These rights will diminish over time if a mark is not actively used.

Trademark rights

are effective only within the United States, U.S. territories, and U.S. possessions

U.S. patent grants

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;

Utility patents

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....

What is a work made for hire?

Copies of all works under ______ 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.

copyright

Once you write something down, it is considered what?

copyright protection

Under the copyright law, the ....... 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

creator of the original expression in a work

Many choose to _____ their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. _____ 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. (same word)

register

The ____ 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.

right

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." Following the trademark with the word "brand" helps define the word as a ______.

trademark