Patent- Protects Ideas Reduced to Some Working Model

Patent- protects ideas reduced to some working model

Trademarks (good) and Service marks (svcs)- symbol or word used to identify producer/mfr of a good/svc

Trade Secret- based on tort law, info that has separate monetary value

Patents and Copyrights are based on Const. (Art. 1)

Trademarks- commerce clause- Lanham Act

Trade Secrets- state laws

Justifications for IP

use
exclusivity
ability to transfer
rights to fruit of property

Hegel- property is about personhood, moral right to protect (liberty/individuality)

Locke- property is an expression of labor, must leave enough for others, idea of public domain in IP

Utilitarian/Economic Incentive Theory- multiple people can have/use same idea and won’t diminish value, Prop. rts are a means to an end-reward (money) people for time/money spent developing idea

Trade Secrets

Historically protected by tort law, favor patent b/c we want knowledge to be available to all

41 states have adopted UTSA

trade secret and patent overlap

3 elements of a Trade Secret claim

subject matter- info not generally known
misappropriation- info acquired wrongfully
protected- rsbl measures taken to prevent disclosure

Reasons why Trade Secrets are protected

property- IP is property and public disclosure would be taking
Duty based (Tort/K) a duty is owed to trade secret holder

Metallurgical v. Fourtek – mods combined in separation container, all generally known but not put together in this way, outsources process, outsource company begins copying, Ct- duty not to disclose (special confidence w/ outsourcing- promotes sharing)

Rockwell Graphic Systems v. DEV- provide blueprints to multiple bids, empee seen taking info out, Ct- rsbl efforts to protect (distribution to vendors not enough for disclosure)

UTSA- requires trade secret to have monetary value

Rohm v. Haas- misapprop. enough for protection

“Blind Alley problem”- person changes jobs and takes knowledge of unsuccessful ave’s with. Hiring co. can be precluded from using if prior co. can show knowledge gained from prior work (not personal knowledge) (negative lead time- protected by UTSA and Rest. b/c it can change lead time if futile paths are known)

EI Dupont- overfly and take pictures, Ct- rsbl efforts taken by Dupont and overfly is improper means

“Fencing Costs”- how much money needs to be spent on protection of process to make it a trade secret.

“Right of Publicity”- way for celebrity etc. to protect their image

Ways to protect

limit access
sign confidentiality agmts w/ empees
locked away

What law focuses on:

UTSA- secret material
Rest. of Unfair Comp.- $ making potential
Tort law- economic value

Pioneer Hi-Bred- no actual evidence of theft but seeds too genetically similar to be accident

Smith v. Dravo- Shipping containers, confidential rltnshp

confidential rltnshp- rest. (3rd) of Unfair Comp. §41, (a) person made express promise of confidentiality before disclosure of trade secret; (b) circumstances surrounding disclosure such that (1) knew or had reason to know secret (2) other party to disclosure rsbl in inferring that person consented to keep secret

Chicago Lock- create master book on locks, was it misapprop? reverse engineering legal, if you buy a product can do whatever w/ it

UCITA- K’ing around IP law, self-help provisions- s/w shut down if EULA broken

Departing empees- can be K of confidentiality

Types of Protective K’s for Emper

Confidentiality agmts
Non-compete clause- not valid in legal profession, cannot work for competitor w/in geographic region for while (must be rsbl)- some jurisd. require consideration
Non-solicitation agmts- won’t solicit past customers/coworkers for new business

Inevitable disclosure- person so linked w/ secret impossible to separate

Pepsi- Mktg VP goes to rival co.

“negative injunction”- no expiration

“partial inevitable disclosure”- can work in same industry but must keep secret

Wexler v. Greenberg- no confid. agmt, Ct- gen. info known by Greenberg, free to use

3 approaches when no Agmt for allocating rights

hired to invent
shop right- invention happened while working as empee
Independent invention- questionable

Trailer Clauses- K’ual provision assigning empee’s rights to co. during employment and short time after (2yr limit- lot of states say unconst.)

Warner-Lambert- Listerine rts, Ct- no time limit on pmts

Unsolicited unilateral disclosure of secret not protected

Solicited disclosure most likely protected (confidential)

Remedies for misappropriation of trade secrets

injunction- lasts only as long as secret, unless to stop commercial advantage
quantum meruit- unjust enrichment at another expense
difficult to estimate b/c
speculative
specialized
indivisible
Torts
punitive dmgs- deterrence/ br/duty
way to determine
actual loss
emotional (punitive)
K- actual dmgs

UTSA remedies

injunction
actual or threatened activity
biggest club
time of injunction- to stop head start
dmgs
unjust enrichment
exemplary dmgs
criminal remedy
industrial espionage

Litton Systems- determining dmgs, lodestar

actual gain ∆ made
expected gain ∆ thinks they will make
actual loss

Lamb-Weston- misapprop. of curly cue method, Ct- head start injunction (negate any lead time)

Patent Law

What is patentable? process, machine, manufacture, composition of matter

patentable
novelty
useful (utility)
nonobvious
enablement- show how to do

Chakrabarty- oil eating bacteria, opened ability to patent life, process and product patent approved

Frank Bros Seed Co- can’t patent naturally occurring bacteria, must be some transformation

Parke-Davis- Adrenalin/Adrin- synthetic v. purified, Ct- new utility

Brenner- must show utility, just b/c similar product useful not enough

“Pioneer Patent”- 1st patent on idea, usually covers a lot of ground (overarching future developments)

Different Kinds of Utility

general utility- whether invention does anything
specific utility- does it do what it is intended to do
beneficial or moral utility

Novelty

Rosaire v. Nat’l Lead- patent on method for finding oil/gas, Ct- method known before, not new

“Inherency Doctrine”- accidental creation of chemical, followed by later purposeful fabrication, split view 1) purposeful v. 2) prior art

Statutory Bars: Publications (§102)

In re hall- doctoral thesis, indexed and filed, accessible so prior use
(a) before invention
(b) 1 yr or before prior to app. filing
public sale

Progress report (Gov’t reqd) on development of metal- ltd dissemination, implied confidentiality

City of Elizabeth- experimental use exception- testing pavement permissible, look to see if abandoned; commercial sale takes out of experimentation

Have 1yr from time product is reduced to practice or sold to get patent protection

Public Use?

was there a confidentiality rqmt
use in ordinary course of business

Novelty and Loss of Right

Griffith- conception to practice- 3 yrs, Ct- 3 mo. lapse on work is not rsbl diligence

Graham- nonobviousness, plow modification, could person w/ skill in art arrive at idea

“sub-patentable ideas”- can get inventors certificate if don’t want to patent or not quite patentable

Utility patents- material not quite patentable

In re Vaeck- combining past arts (thumb sucker), How to overcome claim of obviousness (2nd ary considerations): 1) commercial success; 2) long-felt need; 3) others have tried but failed

Enablement Rqmt- must so describe idea that others in field can make it.

Infringement (literal/Doctrine of Equivalence)

Larami- supersoaker didn’t infringe

Claim- boundaries of invention

2 types of:

dependent- further discussion of item (color of lights)
independent- can stand on its own

functions of:

facilitates enforcement
delineates public domain and patented material
public policy/interest (so others can use)
force you to narrow scope of idea

Literal infringement- requires every claim of infringing patent to be same as every claim of infringed patent

Doctrine of Equivalents- prevent fraud on inventor/public

Graver Tank- must perform both substantially same function and in substantially the same way, Ct- not enough change to be original (key case Doct. of Eq)

Werner Jenkins- fabric dyes, diff. pHs in claims, no lit. infr.

Hilton Davis-can infringe around

prosecution history estoppel- if claim refused during prosecution can be defense to infringement
element by element review
Ct assumes is claim amended, then amended to make good

Markman (and Hilton Davis)- Judge determines scope of claims, jury determines infringement

Reverse doctrine of equivalents- tool for pushing back claims of inventor, literal infringement but such significant change it process there is a diff. result (subservient patent)

Genentech- blood protein factor VII:C, recombinant v. purified form, Ct- radically different

C R Bard- catheter, literature has induced infringement (must be knowledge of patent, intent)

Defenses

Experimental use- testing patented product for research purposes

Kingsdown (inequitable conduct)- ostomy bag, modifying claims to include others developments while litigating, Ct looks to gross negligence or intent to deceive

laches- failure to bring claim/issue w/in rsbl amt of time, then lose right to

Remedies

Injunction- most powerful remedy
damages
rsbl royalties
lost profits

Design Patent- 14 years

novelty
nonobviousness
ornamentality- ornamental features cannot be dictated by necessity

Plant Patents- must be asexually produced plant varieties

For latest on remedies look to Supp. 28-30 (do not need utility)

Copyright

§102 (a)- fixation

originality- is assumed (everyone looks at things a little differently)

What you get with ©: exclusive rt to reproduce

“Sweat of the Brow” (US rejects)- any amount of labor put into work

Feist- copying phone directory, Ct- to get © protection must have an element of creativity, Alphabetical compilation not

Pure work (sweat of brow) is not enough to prevent copying, must have some transformative value

Database Bill- based on comm. cl. for congressional auth. (compilations)

2 versions:

sui generis system- protects all compilations for a period of time
stealth bill (property right)- almost as strong as ©

How can you protect your right in compilations?

K (EULA)
mass market- Pro CD v. Zeidenberg- can you do by K what you can’t do by ©? Judge Posner says yes. How to argue against: preemption- K is c/l and © is statutory, so Fed. law trumps
Technological Solutions (self help- passwords, etc.)
DMCA- anyone trying to circumvent technological barriers is guilty of © infring.

Formalities

Notice of ©
Publication of the work
Registration of work w/ © office
Deposit of copy of work w/ Library of Congress

Notice

Berne Convention- no need for formalities to get ©

Congress kept incentive for notice- must provide to receive exemplary damages

Publication- when notice is req’d

1976 Act- © protection starts at moment of creation

Duration of ©- life of author + 70 years

Limitations on Copyrightability

§110(5)- fair use of music in public areas

Baker v. Selden-(key © case) §102 (b)- idea/expression dichotomy- copyright protects the expression not the idea

Judge Learned Hand- idea of abstraction- separation of idea/expression

Morrisey v. Proctor & Gamble- sweepstakes forms, Blank forms are not ©able, unless it convey info. (creativity)

“Merger Doctrine”- if there is only a ltd # of ways express a particular idea, the idea and expression merge and no ©

Feist + Merger Doctrine- some creativity in expression of data compilations (thin license)

Formation of © Law

Baker- expression (is there an expression)
Feist- thin copyright (is there some creativity or just fact)
Morrisey- merger doctrine (idea/expression same)

P, G, S (Pictorial, graphic, sculpture works)

Brandir Int’l- bike rack, Ct- can you split functional aspect and ©able aspect? if so then ©able; Why not design patent? novelty, originality, nonobviousness, ornamental- not really ornamental

3 tests from Brandir

does the work stimulate the mind as an aesthetic work?
separability tests
physical- can you physically separate functional and aesthetic
conceptual- can separate the idea
Original intent of the artist- Was original idea for functionality or aesthetic appeal?

Scénes a fair- stock ways of expressing an idea are not copyrightable (caption cloud, hearts in eyes)

Architectural works- under Berne, had to protect design of a structure

Movies and Audiovisual works- music soundtracks are protected under audiovisual works

Roth Greeting Cards (total concept and feel- 9th Circ. creation) applied often by dist. cts, compares both protectable and unprotectable elements, questioned as violative of idea/expression dichotomy, broad protection for © holders, must show access, substantial similarity for infringement

CCNV v. Reid- work for hire, if empee and work done w/in scope of employmentbusiness owns (best to have in writing/K), Ct- not empee, but both receive rt to 20 cys

Work for Hire- if K must be signed before work

at direction of emper
emper supplies materials
degree of emper input
range of duties (position of hire)

Can receive (buy/bequest) right to work (Zapruder/JFK film)

Duration and Renewal

1909- 28 yrs from 1st published, must apply for renewal during 27th year, otherwise lost

1976 (enacted 1978)- life + 50 years- req’d notice

1998- life + 70 yrs, Berne requires no formalities (sonny bono act- add 20 years to prior copyright), anything after Jan 1 1978 runs for life + 70 years

§ 305- runs to end of calendar year

Work for Hire- 95 yrs from pub or 120 yrs from creation

Mechanics of ©

ownership
duration
transfer, division
termination

Division

1909 Act- could not assign all rts, derivative wk = license

1976- can assign all rts

Armstein v. Porter- proof of copying, 1) access, a)admission, b)circumstantial evidence, 2) substantial similarity

Substantial Similarity

used to show backdoor/access to work
improper appropriation- must prove it has been taken

Sid & Marty Krofft (9th Circ)- McDonalds infringing on HR Pufnstuf, Ct- look to extrinsic (compares similarity in general ideas- use of expert testimony)/intrinsic (particular expression used), questioned as violative of idea/expression dichotomy, broad protection for © holders (somewhat less than Roth)(not only appearance (extrinsic), but do they remind you of one another (intrinsic)

3 Cases for Substantial Similarity tests- Roth Greeting cards- total concept and feel, Krofft- intrinsic/extrinsic, Abstraction filtration

Abstraction/Filtration (10th Circ.)- developed initially for computer programs, post Feist test-similarity of protectable elements, eliminates non-expression elements, filter unprotectable elements, compares ltd protectable elements, narrow protection for © holders

improper appropriation
rt to make derivative works
translations are derivative works
Justification for derivative rights?
channeling investments into new mkts (movies from books)
tax for right to use

§ 106 (3)- Distribution right

Sebastian Int’l- beauty supplies to Africa, author can only control 1st sale

§ 602 (a)- copyright owner can prevent importation of copyrighted material back into US

20th Century Music Corp- public display/performance, rest. owner plays music

AHRA (Audio Home Recording Act)- individuals may makea copy for personal use (does 20th Century survive?)

Moral rights- §106 (a) of copyright act

Defenses

Harper & Row- § 107- unauthorized use of quotations from Ford’s biography, Look to:

purpose of use
editorial
news reporting
commercial/noncommercial
degree of creativity (more creativityless chance for fair use)
Amount and substantiality
effect on market

Commercial use- ways against you but not closed case (2Live Crew- S.Ct.- version parody, so comm. use not determinitive)

Sony- contributory infringement, Ct- to be guilty of contributory infringement must actively participate; “Sale of copying equipment, like sale of other articles of commerce, does not constitute a contributory infringement if the product is widely used for legitimate, unobjectionable purposes”; “Challenge to a noncommercial use of the ©ed work requires proof either that the particular use is harmful, or that if it should become widespread, it would adversely affect potential market for the ©ed work; actual present harm need not be shown nor is it necessary to show with certainty that harm will result; what is necessary is a showing by a preponderance of evidence that some meaningful likelihood of future harm exists and if the intended use is for commercial gain, that likelihood may be presumed, however, if it is for a noncommercial purpose, the likelihood must be demonstrated”

Trademark

Symbol that distinguishes your product in the mkt.

Surnames are normally not trademarkable, names, sounds, colors and fragrances can be

No fed. legislation, comes from commerce clause, Lanham Act § 1127

To get a trademark, must be used, or intent to use, by a person in commerce

Qualitex v. Jacobsen- green dry cleaning cloths, Ct- color can be trademark to signify maker

®- registered trademark, national rights; if not nationally registered, will still have rights in region, but that’s it

Must be likelihood of confusion for trademark infringement (Muffler-r-us)

Strength of mark depends on how arbitrary it is (Arbitrary-Apple comp, Exxon; suggestive- rollerblades, lakeside diner); an arbitrary mark can become generic (Kleenex, Xerox)

4 Ways to classify a potential trademark

generic- name of a particular genus or class of which an individual article or service is but a member- can never be trademarked
descriptive term- identifies a characteristic or quality of an article or service (vision center, Alo)- may be protected if they have reached a secondary meaning for the public-π must show that the primary significance of term in the minds of the consuming public is not the product but the producer; can still be fair use by others if used for descriptive purpose
suggestive term- suggests, rather than describes, some particular characteristic of the good or service to which it applies, ie coppertone- protected w/o proof of secondary meaning
arbitrary term- bears no rltnshp to service or good, ie Exxon, protectable w/o proof of secondary meaning