IP Law

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IP Law Fall 2015

I. IP Overview

Article 1: Sect 8 Clauses 3 and 8 of the US Constitution enables Congress to enact laws

+Maintain to produce/create to benefit and enrich society + Balances interests of

Creator/Inventor & Consumer/Public

1. Power to regulate interstate & foreign commerce

2. Power to enact patent & copyright laws.

3. Cl 3- Trademark

4. Cl 8-copyright and patent

II. TRADE SECRETS

Remains a matter of STATE LAW, unlike patent, trademark and copyright law.

A. General Definition of a Trade Secret. A trade secret is information (a formula, pattern, method, technique or process) that (1) derives actual or potential economic value from the fact that it is not known or readily ascertainable by others, and (2) is subject to reasonable efforts to maintain its secrecy.

B. 6 Factors Considered in Determining Trade Secret Status:These factors focus on 2 primay issues: 1) is the info or idea “secret”?; and (2) does the information or idea have competitive value?? In determining whether information constitutes a TS, courts will consider:

1. (1) how widely the info is known outside the claimant's business(not matter of general knowledge;

2. (2) who within the claimant's company knows the information;

3. (3) whether the claimant has taken reasonable measures to ensure that the info remains secret;

4. (4) how difficult it would be for others properly to acq. or duplicate the info

5. (5) whether the info gives the claimaint a commercial advantage over others who do not know it(must have commerical value); and

6. (6) how much effort or money the claimant expended in developing or acquiring the info.

C. Misappropriation of Trade Secrets. How does it happen?

1. acquiring a trade secret improperly or wrongfully

2. disclosing a trade secret that was acquired in breach

3. using the trade secret w/o permission

D. Defenses

1. Disclosing by independent investigation!

2. Disclosing by reverse engineering

E. Remedies for TS Misappropriation

1. Injunctions: ∆ enjoined from using or disclosing the π's TS.

2. Damages: Damages may be measured by (1) profits the π lost as a resul of the ∆'s misappropriation; (2) a reasonable royalty for the∆'s use of the TS; or (3) the amt of the profits ∆ made as result of the misappropriation

3. Criminal Prosecution. Many states have made theft of TS a criminal offense. (i.e.

The Economic Espionage Act of 1996)

F. Licencing Trade Secrets may be exclusive OR non exclusive.

III. PATENTS

Limited monopoly that PTO confers to the PH the right to exclude others from making, using, offering for sale or importing the claimed invention in the US for a term of 20 years from the date of application.

A. PATENTABILITY: Patent Law establishes 4 basic conditions an invention must meet to qualify for patent protection.

The invention must be (1) in a statutory subject matter category ,(2) useful, (3) novel in relation to prior art, and (4) not obvious the prior art to a person of ordinary skill in the art at the time the invention was made.

1. 3 specific exceptions to §101's broad patent-eligibility principles:

1)laws of nature 2) naturally occurring phenomena, and 3) abstract ideas THESE CANNOT be patented.

2. Limitations on Patents: Patents are available only for inventions that are:

a. specific, substantial and credible utility (ITS DOING SOMETHING

b. be capable of practical application (IT HAS SOME COMMERCIAL

BENEFIT OR operable

c. can be reduced to practice (FULLY DISCLOSED)

3. Types of Patents

a. Utility Patents

b. Design Patents

AGAIN NOT OBVIOUS!

i. also called ornamental

ii. must be new, original, and non-obvious design for...

iii. must be non-obvious to persons of skilled art

c. Plant Patents

i. must be asexually produced

ii. planets need only be

4. Novelty Req. under 35 USC §102- invention must differ from prior art!

a. BUT Statutory Bar DEFEATS NOVELTY §35 USC 102(b),(c), and (d)

5. Unpatentable inventions are:

a. already patented

b. described in a printed publication

c. in public use

d. sold more than 1 year before application

6. Experimental Use Exception: An invention may require experimentation or testing in a public area or through the public’s knowledge. Such use may be an exception to the “public use” bar to patentability.

A patent is valid even if the invention is put into public use for the purpose of experimentation and testing its qualities. City of Elizabeth v. American Nicholson

Pavement Co.

B. UTILITY PATENTS

Statutory Subject Matter of a Utilty Patent. Patent Act §101 authorizes patents for "any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof." A newly discovered use for a known process, machine, manuf, or comp of matter may also qualify as a patentable process. req. 35 USC § 101

1. Process

35 USC §100(b)

2. Machine

phyiscial object consisting of parts or....

3. Manufacture

production of artificats

4. Composition of matter=putting 2 or more compounds together

C. DESIGN PATENTS

A design patent gives its owner a 14 year monopoly in the design(appearance) of an article of manufacture. To qualify for a design patent, a design must be novel, non-obvious to persons skilled in art, and ORNAMENTAL. The novelty standard is essentially the same for design and utility patents.

1. Design must be:

a. Novel

b. Non-obvious; AND

c. Ornamental

- Ornamentality depends on

o Existence of altenative designs

o Best design?

D. Patentable Subject Matter. (4 utitly patent categories)Sec §101 defines what is eligible for a utility patent: "Whoever invents or discovers any new and useful (a) Process,

(b) Machine, (c) Manufacture, OR (d) Composition of Matter

E. NOVELTY STANDARD

1. must be different from prior art

PTO examiner determines which patent is prior art

2. actual disclosure or sale of invention NOT sold one year before application

F. THE NON-OBVIOUSNESS STANDARD.

Non-obviousness Requirement 35 USC § 103. To qualify for a patent, subject matter claimed as an invention must meet the non-obviousness requirement. A patent may not be obtained IF the subject matter intended to be patented and prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art (and in light of earlier invention and publications)to which said subject matter pertains at the time the invention was made. See KSR International Co. v. Teleflex, Inc.

1. To make this determination a court must ascertain: the (1) scope & content

of the prior art (2) the differences btw the pertinent prior art and the invention; and (3) the ordinary level of skill in the pertinent art.

a. invention must be more than just an obvious advance on prior art.

b. measured against a hypothetical person of ordinary skill or art

- PTO examiner bears the burden of proof in determining.

2. Secondary Considerations: In determining non-obviousness, a ct may also consider relevant objective factors, including:

In order to determine non-obviousness, a court must determine the state of the prior art, the differences between the prior art and the claims, and the level of skill of one of ordinary skill in the art, and, taking into consideration any secondary factors, determine if the claims are patentable. Graham v. John Deere Co.

a. (1) the commercial success

b. (2) longfelt but unmet need

c. (3) Failure of others

G. UTILITY STANDARD: An invention must also be useful or have utility to qualify for a patent.

GENERALLY useful IF there is a current, significant beneficial use for the invention.

H. Patent Application

Gotta tell the world what you are doing. MUST reveal information that would allow the invention to be reproduced.

1. invention must be more than just an obvious advance on prior art.

2. measured against a hypothetical person w/ ordinary skill or art

3. PTO examiner bears burden of proof

I. PLANT PATENTS

1. Nature of Plant Patents: Aval to persons who discover or invent a distinct and new variety of plant AND asexually reproduce it. To qualify for a plant patent, a new variety MUST BE novel, distinct, non-obvious and it must have been assexually reproduced(in a lab).

J. PATENT INFRINGEMENT [Infringing Acts]: Patent infringement occurs when the D’s product/process infringes (1) literally OR (2) pursuant to the doctrine of Equilvants.

Ø Any unauthorized manufacture, use, sale or offer to sell= patent infringement

Ø Strict liability

Ø Intent only relevant as to damages

Ø Infringement via the Doctrine of Equilivants

Under the doctrine of equivalents, where an accused device performs the same task as a patent claim, in the same manner as the patent claim, to achieve the same result as the patent claim, though it may be different in form, the device infringes the patent claim. Graver Tank v. Linde Air Products Co .

OR whether the difference btw the D’s element and the claimed element is insubstantial:

- “insubstantiality” depends on (1) whether persons reasonably skilled in the art would have known that the differing elements were interchangible at the time of infringement…………………………….

K. Defenses to Patent Infringement

1. License to Repair: Its okay to repair the machine but reconstructing it is not ok

2. Patent Invalidity one who claims patent invalidity has burden of produce (in re to obviousness, utily, novelty etc.)

3. shop rights (employer/employee can use patent)

4. SOL

K. REMEDIES FOR PATENT INFRINGEMENT

1. Injunction

2. Monetary $$ Damages

Incl. lost profits or reasonable royalty

3. Prep treble damages (punitive) atty fees for wilful infringement/in bad faith

IV. COPYRIGHT LAW

Copyrightable subject matter protects original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced or otherwise communicated, either directly or w/ aid of a machine or device. There are two basic conditions of copyrightability: a work MUST BE (1) Original, and (2) Fixed in a tangible medium of expression.

A. Originality- A work of authorship must be original in order to qualify for copyright protection. THIS MEANS THAT:..... protects only the original expression of ideas, NOT THE IDEAS THEMSELVES.

(1) the author must have engaged in his own intellectual endevor, rather than merely copying from a preexisting source;

AND

(2) work must demonstrate a minimal amount of creativity.

B. The Fixation Requirement: To be copyrightable, a work of authorship MUST BE FIXED

IN A TANGIABLE MEDIUM OF EXPRESSION "from which it can be perceived, copied, or otherwise communicated...

***Categories of Protectable Works of Authorship

(1) Literary works (books)

(2) Musical woks include any accompanying lyrics

(3) Dramatic works, including any accompanying music

(4) Pantomines and cheorography

(5) Pictorial, graphic and sculptural works

(6) Motion pics & other audiovisual works

(7) Sound recordings; and

(8) Architectural works

C. Merger Doctrine. If we have an idea and it can only be expressed in one way....we can't allow that

D. Joint Authorship.

Prepared by 2 or more authors w/ intent to merge into inseparable whole. Each contribution must be copyrightable on its own.

1. Tenants in Common:

each may independently license the work & MUST SHARE IN PROFITS!!!

E. Works for Hire.

+works completed prepared by employee within the scope of employment. AND COMMISSIONED WORKS MUST BE IN WRITING!

1. ISSUE - WAS THE SCULPTOR AN EMPLOYEE OR NOT?

Absent a written agreement to the contrary, the Copyright Act of 1976 vests copyright ownership in the actual author or authors of the work unless the material is a “work made for hire,” in which case the employer or the person for whom the work was created owns the copyright. See Community for Creative Non-violence v. Reid

a. Factors to Consider

In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party's right to control the manner and means by which the product is accomplished. Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party's discretion over when and how long to work; the method of payment; the hired party's role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party.

i. hiring party's right to control

ii. skill requirment

iii. source of the tools

iv. duration of relationship

v. Does the Hiring party have the right to assign additional projects?

vi. method of payment

vii. Hiring party's role in hiring and paying assistants

viii. Is work in the regular business of hiring party???

F. Duration of Copyright

Since 1978, 70 years after year of longest living author. G. Exclusive Copyrights: Gives the...

1. Right to....

a. reproduce

b. make derrivative copies

c. distribute (1st Sale doctrine: Once, its distrubuted..thats all you get.)

d. performance

e. display holder has the right to license the play, movie; have the right to control what musuem has the painting etc.

H. COPYRIGHT INFRINGMENT.

1. copyright must be registered BEFORE SUIT

2. π MUST show valid copyright

3. π must PROVE COPYING by:

a. by Direct or Circumstantial evidence

b. show access; AND

i. Access= reasonable opportunity to view, hear, or experience protected work.

c. substantial similarity

i. Abstract-Fitrartion Comparision Test:

Determines what part of it is protected. [This is helpful for comp. programs. Toss the (unprotectable) pulp, and compare the two o show substantial similarity.

I. Secondary Infringement.

1. Vicarious

2. Contributory

3. Sony Corporation of America v. Universal City Studios, Inc .

The sale of articles of commerce does not constitute contributory infringement if the product is widely used for legitimate, non infringing uses.

4. Both vicarious b/c ability to control and make $$$ on sales and contributory b/c knew of past violations and cont. to provide facilities for future violators.

J. Defenses to Copyright Infringement

1. Fair use

2. independent creation

3. copies for personal use

4. backups

5. educational use

6. statutory license.

K. Fair Use Balancing Act FACTORS

1. the purpose and character of the use, including whether such use is of a commercialnature 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.

1. Purpose & Character of USE

2. Nature of copyrighted work

3. Amount and substantality of portion

4. Effect of use on the market

L. Copyright infringement Remedies

1. Injunctions

2. impoundments

3. $$$ Damages inclu. lost of profits, goodwill 4. Atty's fees

5. statutory damages generally ________ per

M. What is not copyrightable?

+ideas, +processes, + methods, +fatcs, and + materials in PUBLIC DOMAIN; +standard stock expressions

1. underlying ideas, copyright only protects the expression of ideas

2. facts not copyrightable, but selection/arrangement of facts i.e. an alamanac is copyrightable b/c it amounts to an expression.

3. computer programs

Lotus Development Corp. v. Borland International

V. TRADEMARK LAW (under Federal and State Law)

[KEEP ASKING...WHERE IS THE TRADEMARK VALID???? What is the geographic area? Is it

federal coast to coast or in a state]

A. Definition of Trademark.

Any mark, symbol, device, emblem used by a business to identify and distinguish its goods from the goods of others.

1. usually helps consumers identify goods

2. can be a color

B. Distinctiveness Requirement.

Trademarks must IDENTIFY origin of goods/services in order to be eligible for protection.

(May be inherent or obtained secondary meaning)

C. USE Requirement:

1. TM must be used in commerce or have intent to use

2. priority given to 1st user.

D. INFRINGEMENT AND DILUTION OF TMs: Requires....

1. Proof of VALID MARK.

a. Owner used TM commercially

b. Owner is senior user

c. TM is distinctive.

2. Likelyhood of Confusion

a. likely to cause confusion as to the source of the goods/services

b. likely to as to affilation w/ or sponsorship by senior user.

c. FACTORS OF CONFUSION

i. Proof of actual confusion

ii. similarity of appearance,

iii. similarity in marketing and distribution of products/services

iv. sophistication of relevant consumers

v. strength of the mark

1)conceptual strength: descriptive, suggestive, arbitrary, fanciful

2) Market Recognition: How strong is the mark's

secondary meaning??

vi. similarity of related goods or services

- the more similar the goods/services, the less similar the mark must be to support infringment

vii. Likelihood of Bridging the gap by expanding into other user's geographic territory.

viii. Intent to deceive or cause confusion

E. DEFENSES TO TM INFRINGEMENT 15 USC §1115

1. TM not used commercial

2. TM is not senior mark

3. TM is not distinctive

4. Fraud in registration

5. Abandonment

6. Fair Use

7. Limited Geographic Area

a. The owner of a trademark registered under the Lanham Trade-Mark Act, 15

U.S.C.A. § 1051, et seq., may not enjoin another’s unauthorized use of the mark in a geographically separate market where there is no likelihood of public confusion.

Dawn Donut Company, Inc. v. Hart's Food Stores, Inc .

8. Violation of Anti-Trust Laws

9. Functionality of Mak

10. Estoppel

11. Unclean Hands

12. Mark has become generic and ceased to be a TM

F. REMEDIES FOR TM INFRINGEMENT

1. Injuctions

2. Profits

3. Damages

4. Attys Fees

5. Description of Infringing Articles

6. Treble Damages if possible for inital......

G. TM DILLUTION

Occurs when famous mark's distinctiveness (dillution by blurring) or reputation (dillution by tarnsishment) is impaied by other mark, even though no likilhood of confusion

1. must prove that the mark is famous

2. must prove that ∆'s use caused a likelihood of confusion

3. To state a trademark dilution claim, a plaintiff must show that it owns a famous and distinctive mark, that the defendant has commenced using a mark that is allegedly diluting the famous mark, that a similarity between the marks gives rise to an association between the marks, and that the association is likely to impair the distinctiveness or harm the reputation of the famous mark.

See Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC

H. DEFENSES TO TRADEMARK DILLUTION

1. Fair use, incl.....

2. news reporting and parodies ok

3. SOL

4. Equal

I. DILLUTION REMEDIES

1. Injunctions etc.

J. Tradedress: must be distinctive

VI.