Transcript OVERVIEW OF INTELLECTUAL PROPERTY LAW

OVERVIEW OF
INTELLECTUAL PROPERTY
LAW
PROF. PAUL JANICKE
INSTITUTE FOR INTELLECTUAL
PROPERTY & INFORMATION LAW
UNIVERSITY OF HOUSTON
LAW CENTER
AUGUST 2008
COPYRIGHT
• STATUTE: 17 U.S.C.
– PREEMPTS SIMILAR STATE LAWS
• PROTECTS “WORKS OF
AUTHORSHIP” (§102)
– BOOKS, ARTICLES, POEMS, PLAYS
– PHOTOS, DRAWINGS, PAINTINGS
– FILMS
– MUSIC
– SOFTWARE
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– COMPILATIONS
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NO PROTECTION FOR THE
IDEAS INVOLVED
• IDEA/EXPRESSION DICHOTOMY
• OTHERS CAN USE THE IDEA
(§102(b))
– FISHING TRIP TO MONTANA
• OTHERS CAN’T USE EXPRESSION:
“The trout and sun created a
symphony of sight!”
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ANOTHER EXAMPLE OF
NON-PROTECTION OF IDEA
• BOOK ABOUT HOW TO MAKE A
CABINET
• SOMEONE MAKES A CABINET THAT
WAY, BY READING AND FOLLOWING
THE BOOK CAREFULLY
• THIS IS NOT AN INFRINGEMENT
• COPYING THE BOOK WOULD BE
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REQUIREMENTS
• FIX THE WORK IN A TANGIBLE
MEDIUM (§102(a))
• NO PAPERWORK NEEDED
• NO NOTICE NEEDED
• NO REGISTRATION NEEDED
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EXCLUSIVE RIGHTS (§106)
• DISTRIBUTE COPIES
– TAKING SUBSTANTIAL PORTION IS
INFRINGEMENT
• ** PREPARE DERIVATIVE WORKS
– TRANSLATIONS
– MOVIE OR PLAY FROM BOOK
• FOR MUSIC COMPOSERS:
– MAKE OR AUTHORIZE THE FIRST
RECORDING
– PERFORM THE WORK IN PUBLIC INCLUDES
RADIO, RESTAURANTS PLAYING RECORDINGS
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PERFORMER’S RIGHTS
• COPYRIGHT IN SOUND
RECORDING: FOR RECORDED
PERFORMANCES ONLY
• LIVE PERFORMANCES § 1101:
– PERFORMERS HAVE RIGHT OF
FIXATION
– ALSO ILLEGAL TO TRANSMIT FROM A
LIVE CONCERT WITHOUT PERMISSION
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SOUND RECORDING RIGHTS
(SEPARATE FROM COMPOSER’S
COPYRIGHT)
• RIGHT IS ONLY TO PROHIBIT
MECHANICAL DUPLICATION OF THE
RECORDING
– NO RIGHT AGAINST IMITATION OF
STYLE
– NO RIGHT TO PREVENT PLAYING OF
RECORD COMMERCIALLY
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DURATION
• LIFE OF AUTHOR PLUS 70 YEARS
• IF “MADE FOR HIRE”: EMPLOYER IS
OWNER OF COPYRIGHT; DURATION
IS 95 YEARS FROM FIRST
PUBLICATION (§302)
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AT THE FRINGE
• FAIR USE DEFENSE (§107)
• DEPENDS ON:
– AMOUNT TAKEN
– PURPOSE OF TAKING
– EFFECT ON MARKET FOR THE
ORIGINAL WORK
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AT THE FRINGE
• FAIR USE IN POLITICAL OR PUBLICINTEREST WORKS:
– NO SPECIAL TREATMENT
– COPYING IS GENERALLY ILLEGAL
– NO DOCTRINE AKIN TO “FAIR
COMMENT” IN DEFAMATION LAW
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AT THE FRINGE
• FAIR USE IN PARODY:
– GENERALLY ALLOWED, WITH
RESTRICTIONS
– CRITICISM OF A TARGET WORK IS
ENCOURAGED
– AMOUNT TAKEN CAN’T EXCEED WHAT
IS NEEDED TO IDENTIFY THE TARGET
WORK
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AT THE FRINGE
• HOME COPYING: MERE TIMESHIFTING OF TV PROGRAMS IS FAIR
USE
• SITUATION REGARDING TAPING
MUSIC IS UNCLEAR
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BENEFITS OF REGISTRATION
• NEEDED BEFORE COMMENCING SUIT
• A FEW EXTRA REMEDIES IN LITIGATION
• QUICK AND CHEAP TO GET
– $45
– MAIL [NOT ONLINE – COPIES NEEDED]
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TRADEMARKS
• USED ON GOODS OR IN CLOSE
CONNECTION WITH THEM
• LIKE CATTLE BRANDS
• THEY SIGNAL A COMMON SOURCE,
OR AT LEAST AFFILIATION FOR
QUALITY CONTROL
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TRADEMARK CAN BE:
• A WORD: FORD
• A PHRASE: COMPAQ DESKPRO
• A LOGO: [WE’LL SEE SOME]
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REGISTRATIONS AVAILABLE BY
VIRTUE OF:
• FOR INTERSTATE OR FOREIGN
COMMERCE: LANHAM ACT, 15 U.S.C.
§1051 et seq.
• FOR INTRASTATE COMMERCE: STATE
TRADEMARK LAWS, e.g., COLO. REV.
STAT. §§ 7-70-101 to 113; TEX. BUS. &
COMM. CODE §16.01
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REGISTRATIONS NOT NEEDED
• MARK OWNERSHIP ARISES FROM USE,
NOT FROM REGISTRATION
• STATE COMMON-LAW UNFAIR
COMPETITION ACTIONS STILL EXIST FOR
UNREGISTERED MARKS
• FEDERAL STATUTORY UNFAIR
COMPETITION ACTION EXISTS FOR
UNREGISTERED MARKS 15 USC 1025(a)
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TRADE NAMES, CORPORATE
NAMES, ASSUMED NAMES:
NOT BROADLY PROTECTED
• LAW OF MARKS IS BASED ON USE OF
BRAND ON THE GOODS
• MOST BUSINESS NAMES ARE NOT USED
AS MARKS; e.g., Ford Motor Company;
International Business Machines Corp.
• SOME ARE; e.g., COCA COLA
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REQUIREMENTS FOR MARK
OWNERSHIP AS AGAINST ALL
OTHER USERS:
• PLACE THE MARK ON GOODS,
CONTAINERS, OR, IF NECESSARY,
ON DISPLAYS ASSOCIATED WITH
THE GOODS
• MOVE THE MARKED GOODS IN
COMMERCE
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• NO REGISTRATION IS NEEDED
• EXCLUSIVITY DERIVES FROM USE
IN COMMERCE
– NOT FROM THINKING OF THE MARK
– NOT FROM SAYING THE MARK OUT
LOUD
– ETC.
• FIRST TO USE OWNS THE MARK
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SERVICE MARKS
• USED “IN CONNECTION WITH”
SERVICES, TO SIGNAL COMMON
SOURCE
• MARK CAN BE ON ADVERTISING OR
BUSINESS DOCUMENTS
• SERVICES MUST BE RENDERED IN
COMMERCE
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EXAMPLES OF SERVICE
MARKS:
• MERRILL LYNCH
• McDONALD’S [WORD]
• McDONALD’S [GOLDEN ARCHES]
• DALLAS COWBOYS
• HOLIDAY INN
• MR. GOODWRENCH
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REQUIREMENTS FOR
SERVICE MARK RIGHTS:
• USE THE MARK IN COMMERCE FOR
SERVICES
• EXCLUSIVE RIGHT DERIVES FROM
FIRST USE IN COMMERCE
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OTHER TYPES OF MARKS
• CERTIFICATION MARK:
– “GOOD HOUSEKEEPING”
– “UL” [UNDERWRITERS’ LAB.]
• COLLECTIVE
– “ROQUEFORT” [COLLECTIVE
TRADEMARK]
– UAW [COLLECTIVE MEMBERSHIP
MARK]
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“RESERVING” A MARK
• CAN NOW FILE APPL. TO REGISTER
BASED ON INTENT TO USE
• PROVIDES CONSTRUCTIVE USE AS
OF FILING DATE
• MUST ACTUALLY USE IN
COMMERCE PRIOR TO
REGISTRATION
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WHAT IS NOT A MARK:
• GENERIC NAME OF A THING
– “BREAD” FOR BREAD
• SOME CLOSE ISSUES:
– ASPIRIN
– SHREDDED WHEAT
– Cf.: KLEENEX; PING-PONG; XEROX
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NATURE OF RIGHTS IN
MARKS
• PREVENT OTHERS FROM USING
SIMILAR MARK WHERE CONFUSION
WOULD BE LIKELY
• NOT A RIGHT TO PREVENT ALL
USES:
– “CADILLAC” FOR CARS AND DOG
FOOD
– “CHAMPION” FOR PAPER; AND
BOXING GLOVES; AND SPARK PLUGS
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DURATION OF EXCLUSIVE
RIGHT
• AS LONG AS YOU ARE USING IT IN
COMMERCE, PROVIDED - – IT DOES NOT BECOME GENERIC
– IT DOES NOT LOSE ITS CHARACTER
AS A SINGLE-SOURCE INDICATOR
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TRADE SECRETS
• PRIVATE CIVIL ACTIONS: STATE LAW
ONLY
• MOST STATES HAVE UNIFORM TRADE
SECRETS ACT
– COL. CIV. CODE 7-74-101 - 110
• FEDERAL CRIM. AND GOVT. CIVIL
ACTION STATUTE EXISTS
– “ECONOMIC ESPIONAGE ACT OF 1996,” 18
USC §§ 1831-1839
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SUBJECT MATTER
• ANY TYPE OF COMPETITIVELY
VALUABLE INFO
• CAN’T BE GENERALLY KNOWN IN
THE INDUSTRY
• MUST TAKE REASONABLE
PRECAUTIONS TO PRESERVE
SECRECY
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TYPICAL STEPS TO
PRESERVE SECRECY
• EMPLOYEE CONTRACTS
• MARKING DOCUMENTS
“CONFIDENTIAL”
• WRITTEN POLICY STATEMENTS
• EXIT INTERVIEWS
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FORMALITIES FOR
PROTECTION
AND BRINGING SUIT
• NONE
• NO CERTIFICATE, ETC., IS
AVAILABLE
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WHAT IS
MISAPPROPRIATION?
• GAINING THE PROTECTED SECRET
BY BREACH OF CONFIDENCE OR
OTHER ILLEGAL MEANS
• USING A PROPERLY LEARNED
PROTECTED SECRET WITHOUT
PERMISSION
• NO RIGHT IN REM
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PATENT LAW
• EXCLUSIVELY FEDERAL LAW
– 35 USC
• AND FEDERAL COURT
JURISDICTION
– 28 USC §1338
• THE ONLY TYPE OF I.P. WHERE A
GOVERNMENT GRANT IS REQUIRED
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PATENT TERM
• TERM IS VARIABLE
– BEGINS ON THE ISSUANCE DATE
– EXPIRES 20 YEARS FROM FILING DATE
– TERM IS THEREFORE: 20 YEARS minus
TIME SPENT BEFORE THE PATENT &
TRADEMARK OFFICE (PTO)
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COSTS
• ARE EXPENSIVE
• USUALLY AT LEAST $2,000 TO GET
ON FILE
• FOREIGN COUNTERPARTS ARE
EVEN MORE EXPENSIVE
• ISSUE FEES AND MAINTENANCE
FEES APPLY IN EVERY COUNTRY
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COSTS
• TYPICAL FOR FULL-TERM
COVERAGE IN GROUP OF SEVEN
INDUSTRIAL COUNTRIES,
INCLUDING MAINTENANCE FEES,
TRANSLATIONS, ETC., WHERE
NOTHING GOES WRONG:
$140,000
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WHAT CAN BE PATENTED
• ARTICLES OF MANUFACTURE
• MACHINES
• COMPOSITIONS OF MATTER
• METHODS (OF MAKING OR USING
SOMETHING)
– SOFTWARE IS USUALLY ELIGIBLE, IF
NOT TOO ABSTRACT OR GENERIC
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A FEW THINGS THAT CAN’T
• PURE ABSTRACT PROCEDURES,
e.g., MOVING BITS AROUND
• WRITTEN MATERIAL
UNASSOCIATED WITH PHYSICAL
STRUCTURE
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METHODS OF DOING
BUSINESS
• ARE NOW ELIGIBLE FOR
PATENTING
– STATE STREET BANK v. SIGNATURE
FIN. GROUP, 149 F. 3d 1368 (FED. CIR.
1998), cert. denied, 1999 U.S. LEXIS 493
(1999)
• A NEW FIELD DAY
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WHO CAN FILE
• IN U.S., ACTUAL INVENTORS (i.e.,
CONCEIVERS) MUST SIGN ONE
FORM, IN PERSON OR BY
REPRESENTATIVE
• ASSIGNEE OF THE APPLICATION
CAN THEN TAKE OVER, AND
USUALLY DOES
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WHAT A PATENT COVERS
• A FAMILY OF SIMILAR THINGS,
DEFINED BY A “CLAIM”
• BROADEST POSSIBLE CLAIM IS THE
NAME OF THE GAME
• NO ONE WANTS A CLAIM LIMITED TO
THE STRUCTURE THE CLIENT
ACTUALLY DEVISED -- TOO EASILY
AVOIDED
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LEGAL CONSTRAINTS ON A
CLAIM’S BREADTH
• MUST NOT COVER ANY
COMBINATION THAT’S OLD
• MUST COVER AT LEAST ONE
CONFIGURATION SHOWN IN THE
DETAILED DESCRIPTION PART OF
THE APPLICATION
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SOME HELP IN MEETING
THOSE REQUIREMENTS
• YOU CAN HAVE AS MANY CLAIMS
AS YOU LIKE
• YOU NEED THE NARROWER ONES
IN CASE THE BROAD ONES TURN
OUT TO BE INVALID
– NO ONE KNOWS ALL THE OLD STUFF
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HOW TO FIND THE CLAIMS IN
A PATENT
• THEY ARE AT THE BACK
• THE DRAWINGS AND DETAILED
DESCRIPTION ARE AT THE FRONT,
BUT ARE GENERALLY IRRELEVANT
IN DETERMINING COVERAGE
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WHAT DO YOU GET FOR
“PATENT PENDING”?
• NOTHING. TERM BEGINS ONLY AT
THE GRANT DATE
• MERELY A WARNING TO OTHERS,
AND CAN BE VALUABLE IN THE
PRACTICAL WORLD
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NATURE OF THE RIGHTS
• TO EXCLUDE OTHERS FROM
COMMERCIALIZING WITHIN ANY
CLAIM (MAKING, USING, SELLING,
IMPORTING, ETC.) -- 35 USC §271
• NO RIGHT TO MAKE OR SELL IS
CONFERRED
– USUALLY, MANY PATENTS OVERLAP
– LICENSES NEEDED FROM THE
OTHERS
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GEOGRAPHIC SCOPE
• GENERALLY TO U.S. ACTIVITY ONLY
• NO “WORLD PATENT” EXISTS
• U.S. TREATIES THUS FAR ARE LIMITED
TO JOINT FILING PROCEDURES AND
“NATIONAL TREATMENT” IN PATENT
OFFICES
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• NO COMMON ENFORCEMENT
TRIBUNALS
• U.S. TRIES TO COMPENSATE FOR
THIS LACK BY
– TRADE TREATIES CALLING FOR
STRONG ENFORCEMENT OF I.P.
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WHAT GOOD ARE
SEARCHES?
• NOT MUCH, UNLESS THEY FIND
WHAT THEY’RE LOOKING FOR: ONE
MEMBER OF THE PROPOSED
CLAIMED FAMILY
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• LOTS OF “OLD STUFF” IS HARD TO
FIND - - OBSCURE PUBLICATIONS,
PRIVATE OFFERS FOR SALE,
PENDING APPLICATIONS OF
OTHERS, ETC.
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EACH CLAIM STANDS ALONE
• EACH CLAIM IS A “MINI-PATENT”
• IT IS EITHER VALID OR INVALID
• IT IS EITHER INFRINGED OR NOT
INFRINGED BY SOMETHING
• IN LITIGATION, ONE VALID,
INFRINGED CLAIM MEANS A WIN
FOR THE PATENT-OWNER
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SECRECY OF APPLICATIONS
• MOST ARE PUBLISHED 18 MONTHS
AFTER FILING
• SOME ARE KEPT SECRET BY
STATUTE UNTIL THE GRANT DATE
• UPON GRANT DATE, PATENT IS
PRINTED AND WIDELY PUBLISHED,
AND APPLICATION FILE IS OPENED
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