View
213
Download
0
Category
Tags:
Preview:
Citation preview
www.shipmangoodwin.comwww.shipmangoodwin.com
HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE
Intellectual Property LawWhat you need to know about
copyright, patents and trademarks.
www.shipmangoodwin.com
What Is Intellectual Property
• Creations of the mind Inventions (Patent Law) Literary and artistic works (Copyright Law) Symbols, names, images and designs used in
commerce (Trademark Law)
www.shipmangoodwin.com
Patents• Patent law protects unique and new inventions• Right to exclude others from using, making or
offering for sale• Limited life
Monopoly lasts 20 years
www.shipmangoodwin.com
Copyright• Protects original works of authorship fixed in
any tangible medium of expression• Does not protect ideas
Ideas can be protected, if at all, by non-disclosure agreements and as trade secrets
• Limited Life Life of author plus 70 years 95 years from publication
www.shipmangoodwin.com
Trademarks
• Word, symbol, name or device used in trade to identify and distinguish the source of goods or services.
• Not limited in time So long as continuously used in connection
with the goods or services
www.shipmangoodwin.comwww.shipmangoodwin.com
HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE
Trademarks
www.shipmangoodwin.com
Trademarks• A word, phrase, symbol, or design, or a combination of
these, that identifies and distinguishes the source of the goods of one party from those of others.
• Includes: Service marks Trade dress Certification marks
• Primary function: identifying for consumers the source of the goods or services to which they are applied
www.shipmangoodwin.com
Creation of Trademark Rights
• Principally arise from use of the mark• “Common Law” protection
Use “TM” or “SM” to alert public to claim• Registration schemes
Federal State
www.shipmangoodwin.com
Trademark Selection• Strong mark is preferred• Care required in selection• Have to understand how protected to appreciate
selection• Four categories
Fanciful or arbitrary Suggestive Descriptive Generic
www.shipmangoodwin.com
Fanciful/Arbitrary• Strongest and most easily protectable because inherently
distinctive
• Fanciful Invented words with no dictionary or other known meaning
► BELMICO for “insurance services”
• Arbitrary Actual words with a known meaning that have no association
with the goods/services► APPLE for “computers”
www.shipmangoodwin.com
Suggestive• Also strong• Suggest, but do not describe, qualities or a
connection to the goods/services QUICK ‘N NEAT for “pie crust” GLANCE-A-DAY for “calendars”
www.shipmangoodwin.com
Descriptive• Weaker• Words/designs that describe the goods/services
CREAMY for “yogurt” WORLD’S BEST BAGELS for “bagels”
www.shipmangoodwin.com
Generic• Weakest “marks”• Can never be enforced• Common, every day name for goods/services
BICYCLE for “retail bicycle store” MILK for “dairy-based beverage”
• Strongest marks can become generic because of long-term, non-trademark use ESCALATOR for “moving staircases” ASPIRIN for “pain relief medication”
www.shipmangoodwin.com
Registration• Trademark rights obtained by use
Registration is not required in the U.S.• “Common law” rights can be limited to a
geographic region• State registrations are limited to confines of the
state.
www.shipmangoodwin.com
Federal Registration• Federal registration confers important benefits
Protection extends to entire United States Presumption of validity and ownership Right to use the federal registration symbol ® Listing in the USPTO’s databases (notice) Ability to record registration with U.S. Customs Ability to sue in federal court using federal trademark laws
► Enhanced remedies for infringement► Attorneys’ fees
www.shipmangoodwin.com
Federal Registration- Process• Trademark search
Identifies potential problems• Mechanics of search
USPTO offers a free search system► Limited to USPTO’s database of federal registrations and
applications► Does not include marks of parties who may have trademark rights
but no federal registration Attorneys and search services
► Conduct comprehensive trademark searches► Others may have stronger protected legal rights in marks similar to
yours
www.shipmangoodwin.com
Federal Registration – Process• File application with USPTO• Identify class(es) of use
Grouped into separate “Classes” which separate different types of goods and services
Marks can be protected under more than one class• Provide “specimen”
Must show the mark as used on or in connection with the goods in commerce
• Provide statement of (1) use or (2) intent to use• Can be done electronically
www.shipmangoodwin.com
Federal Registration – Process• Filing does not guaranty registration
USPTO has significant review process Determines whether the applied-for mark meets the
requirements of federal registration Conducts a search If examiner finds another registered mark or an
earlier-filed application that is confusingly similar to yours for related goods/services, it will refuse registration
• Seek professional assistance
www.shipmangoodwin.com
Reasons for Rejection• Likelihood of confusion
Marks are similar Goods/services are related, such that consumers would
mistakenly believe they came from the same source► T.MARKEY for “shoes” and TEE MARQUE for “shirts”
Marks are similar because they sound the same Goods are different, but considered related for the
purposes of the likelihood of confusion analysis Importance of pre-application search
www.shipmangoodwin.com
Reasons for Rejection
• Generic or merely descriptive• Immoral, scandalous or deceptive• Disparages or falsely suggests a connection with
persons, institutions, beliefs, national symbols• Depicts the flag of the United States, or any
state, municipality for foreign country
www.shipmangoodwin.com
Reasons for Rejection• Office action • Can respond within 6 months
Technical objections can be addressed Substantive issues
► Mark rejected for being merely descriptive may still be allowed with demonstration of secondary meaning
• Review within USPTO
www.shipmangoodwin.com
Federal Registration – Process• Publication
Once all issues are resolved, published in the Official Gazette
• Opposition – 30 days• Opposition proceedings
Negotiated resolution TTAB ruling
www.shipmangoodwin.com
Federal Registration – Process
• Use based applications Absent opposition, registration certificate issues
approximately 11 weeks after publication• Intent to Use applications
Absent opposition, notice of allowance issues approximately 8 weeks after publication
► 6 months to being using the mark► Can be extended
www.shipmangoodwin.com
Protection of Trademark Rights
• Renew registration• Six months after 6th anniversary of date of
publication• Then every 10 years• Can be renewed indefinitely
www.shipmangoodwin.com
Protection of Trademark Rights
• Use it or lose it Failure to renew will invalidate registration Non-use for 2 years give rise to a
presumption of abandonment
www.shipmangoodwin.com
Protection of Trademark Rights
• Keep mark strong Use ® (or “TM” / “SM” if unregistered) Defend strength of mark
► Consistency in goods/services► Control use by others
Unauthorized users Permitted users (licensees)
» Naked licenses will invalidate mark
www.shipmangoodwin.com
Protection of Trademark Rights
• GENERICIDE – loss of secondary meaning Aspirin, Escalator Always use mark with common product or
service name Always capitalize mark Never abbreviate Never use mark as a verb
www.shipmangoodwin.com
Enforcement• Cease and desist letters• Litigation
State or federal court Registered or unregistered marks Cases turn on priority and likelihood of confusion
► Strength of mark► Similarity of goods/services► Channels of trade► Actual confusion
www.shipmangoodwin.com
Enforcement
• Insurance coverage?
www.shipmangoodwin.com
Domain Names• Part of a web address that links to the internet protocol
address of a particular website.• Not a trademark
Other prominent use apart form the web address may qualify as a trademark use
Registration of a domain name does not give rise to any trademark rights
► May have to surrender it if it infringes someone else’s rights
www.shipmangoodwin.com
Domain Names
• Cybersquatting• Two avenues for relief
Litigation under Federal Trademark Dilution laws Uniform Domain Name Dispute Resolution Policy
(“UDRP”)► Non-binding arbitration► Does not prevent either party from filing suit
www.shipmangoodwin.com
Questions?
www.shipmangoodwin.comwww.shipmangoodwin.com
HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE
Copyright
www.shipmangoodwin.com
Copyright: What It Is• Federal law protection for “Original Works of Authorship”
that are “fixed in a tangible medium of expression” Must be fixed and tangible
► E.g., a song is copyrightable but not until the lyrics are written down or the performance is recorded
Some degree of creativity is necessary to qualify for copyright protection
Level of creativity necessary is very low
www.shipmangoodwin.com
Copyright: What Kinds of Works Are Protected?
• Literary Works Textual works with or without illustrations Any nondramatic literary work, e.g.,
► Fiction and nonfiction► Poetry► Speeches► Theses, dissertations or reports► Directories, catalogs, pamphlets,or brochures► Manuscripts► Computer programs► Instructions or directions, test questions
www.shipmangoodwin.com
Copyright: What Kinds of Works Are Protected?
• Dramatic Works, including any accompanying music Plays and scripts for cinema, radio, and television. May be with or without music. Generally, dramatic works are intended to be
performed. Dramatic works usually include spoken text, plot, and
directions for action.
www.shipmangoodwin.com
Copyright: What Kinds of Works Are Protected?
• Pantomimes and Choreographic Works Choreography is the composition and arrangement of
dance movements and patterns usually intended to be accompanied by music.
Pantomime is the art of imitating or acting out situations, characters, or other events.
Need not tell a story or be presented before an audience, but must be fixed in a tangible medium of expression from which the work can be performed (e.g., videotaped or embodied in a written description).
www.shipmangoodwin.com
Copyright: What Kinds of Works Are Protected?
• Motion Pictures and Other Audiovisual Works Motion pictures are audiovisual works consisting of a series of
related images that, when shown in succession, impart an impression of motion, together with any accompanying sounds.
► So, the copyright in a motion picture is distinct from the copyright in the underlying script (which is a dramatic work)
► Motion pictures are typically embodied in film, videotape, or videodisk.
Other audiovisual works include things such as filmstrips, slides, videotapes, or videodisks
www.shipmangoodwin.com
Copyright: What Kinds of Works Are Protected?
• Musical Works Includes any accompanying words So, includes vocal music and instrumental music Author(s) are the composer (for instrumental music)
or lyricist (for the lyrics) or both
www.shipmangoodwin.com
Copyright: What Kinds of Works Are Protected?
• Sound Recordings the fixation of a series of musical, spoken, or other
sounds► Songs, speeches, any original sound recording
Author(s) are the performer(s) whose performance is fixed, or the record producer who processes the sounds and fixes them in the final recording, or both
Copyright in a sound recording is not the same as, or a substitute for, copyright in the underlying musical composition
www.shipmangoodwin.com
Copyright: What Kinds of Works Are Protected?• Pictorial, Graphic and Sculptural Works
Photographs, paintings, drawings, murals, cartoons, comic strips, collages, lithographs
Ads and labels Bumper stickers, decals, stickers, greeting cards, postcards, stationery, stencils Posters, record jacket artwork or photography Engravings, etchings, silk screen prints, woodblock prints Maps, globes, architectural plans, blueprints, diagrams Artificial flowers and plants Dolls, toys, games, puzzles Fabric, floor, and wall-covering designs, artwork applied to clothing Holograms, computer and laser artwork Jewelry designs Sculpture, such as carvings, ceramics, figurines, molds, models Stained glass designs, mosaics Designs or patterns for weaving, tapestries, sewing, knitting, crochet, needlework
www.shipmangoodwin.com
Copyright: What Kinds of Works Are Protected?• Architectural Works
Protects design of a building Previously could only register and protect architectural plans as a
pictorial, graphic or sculptural work, but the constructed building was not protectible.
Law was amended in 1990 to protect the design of a building created in any tangible medium of expression, including a constructed building or architectural plans, models, or drawings
Architectural Works include any structure that is habitable by humans and intended to be both permanent and stationary, such as a house, office building, church, museum, gazebo
Architectural Works do not include bridges, dams, walkways, tents, recreational vehicles, mobile homes, boats
www.shipmangoodwin.com
Copyright: What Kinds of Works Are Protected?• Some works span more than one category
Song► Can be both a musical composition and a sound
recording and can be both at the same time Comic strip
► contains elements of a pictoral, graphic and sculptural work (illustration) and elements of a literary work (text)
Design of a building► Can be both a pictorial, graphic and sculptural work
(blueprints) and an architectural work (constructed building)
www.shipmangoodwin.com
Copyright: What Works Are Not Protected?
• Ideas, concepts, discoveries, principles• Formulas, processes, systems, methods, procedures• Words or short phrases, such as names, titles, and
slogans• Familiar symbols or designs• Mere variations of typographic ornamentation, lettering,
or coloring• Information that is in the public domain and contains no
original authorship. For example, a standard calendar, a ruler, a height and weight chart.
www.shipmangoodwin.com
Copyright: What Works Are Not Protected?
• “Useful Articles” Something with an intrinsic utilitarian function
that is not merely to portray the appearance of the article or to convey information.
E.g., clothing, furniture, machinery, dinnerware, and lighting fixtures.
Some designs of useful articles may qualify for protection under the federal patent law.
www.shipmangoodwin.com
Copyright: What Works Are Not Protected?
• A work can be made up of both copyrightable and uncopyrightable elements. Work that incorporates material that is in the public
domain, e.g., an anthology of Shakespeare's plays Useful article may incorporate copyrightable subject
matter, e.g., design of appliqué on a sweater or the carving on the back of a chair
www.shipmangoodwin.com
Copyright: Who Can Claim It?• Copyright Act gives the owner of a copyright certain rights.• Who Is an “Owner?”
“Author” who created the work ► The person who fixed the work in a tangible medium► Only the author or those deriving rights through the
author can claim copyright• Mere ownership of a copy of a work does not give the
possessor the copyright. Ownership of any material object that embodies a
copyrighted work (e.g., a book or cd) does not of itself convey any rights in the copyright.
www.shipmangoodwin.com
Copyright: Who Can Claim It?• “Works made for hire”
Two situations where the original “author” of the work is not the copyright owner.
where the work is prepared by an employee within the scope of his or her employment; or
where the work is specially ordered or commissioned, but only if the work is one of a specifically enumerated kind (e.g., an atlas or a translation) and the parties expressly agree in a written instrument signed by them that the work shall be considered a “work made for hire”
www.shipmangoodwin.com
Copyright: Who Can Claim It?
• A copyright owner can transfer any of all of his or her rights in the copyright or any subdivision of those rights the transfer of exclusive rights is not valid unless it is
in writing and signed by the owner or the owner’s duly authorized agent.
Transfer of a right on a nonexclusive basis does not require a written agreement.
• A copyright may also be conveyed by operation of law and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.
www.shipmangoodwin.com
Copyright: Who Can Claim It?• Joint works
works created by two or more people the authors of a joint work are co-owners of the
copyright in the work, unless there is an agreement to the contrary.
• Collective Works E.g., periodical, anthology, etc. Copyright in each separate contribution to a collective
work is distinct from copyright in the collective work as a whole
www.shipmangoodwin.com
Copyright: What Does It Do?• Law Gives the Owner Certain Exclusive Rights With Regard to
the Copyrighted Work: Make copies of the work Make derivative works based on the work Distribute copies of the work to the public Perform the work Display the work
• Copyright Act makes it illegal for anyone to infringe these rights and affords the owner of the copyright a cause of action against the infringer
www.shipmangoodwin.com
Copyright: Limitations on Owner’s Exclusive Rights• Term of Copyright
Author’s life plus 70 years Joint Work – 70 years after the last surviving author’s
death Works made for hire and anonymous works - 95
years from publication or 120 years from creation, whichever is shorter
www.shipmangoodwin.com
Copyright: Limitations on Owner’s Exclusive Rights• Statutory Limitations on Rights, e.g.,
Fair use► Permits copying of a copyrighted work for purposes such as
criticism, comment, news reporting, teaching, scholarship or research
Copying by libraries and archives Performance or display of a work in the classroom for teaching activities “Compulsory license” scheme
► certain limited uses of copyrighted works are permitted upon payment of specified royalties and compliance with statutory conditions.
www.shipmangoodwin.com
Copyright: How to Protect It
• Register the copyright with U.S. Copyright Office• Copyright comes into existence when the work is created
When it is fixed in a tangible medium of expression Work does not need to be published and it does not
need to be registered• BUT, the law affords the owner of a copyright a cause of
action against an infringer ONLY if the copyright is registered
• If the work is not registered, no claim can be brought.
www.shipmangoodwin.com
Copyright: How to Protect It• Owner can register the copyright after becoming aware
of infringement • The owner of a registered copyright may sue an infringer
in federal court Can recover actual damages and any profits of the
infringer attributable to the infringement not taken into account in computing actual damages
Can get an injunction to stop the infringement
www.shipmangoodwin.com
Copyright: How to Protect It• If the copyright was registered at the time the
infringement took place Can recover “statutory damages”
► Alleviates the need to prove actual damages and/or profits
► Statutory damages can range from $750 to $30,000 per infringement
► Where the infringement is “willful” statutory damages can be increased to $150,000.
Can recover attorneys’ fees if prevails in the lawsuit
www.shipmangoodwin.com
Copyright: How to Protect It• Copyright Notice
No longer required by the Copyright Act Use of a copyright notice can be beneficial
► Informs the public that the work is protected by copyright
► Identifies the copyright owner► Shows the year of first publication.
If the work is infringed can help to rebut a defense by the infringer that the infringement was “innocent”
Unlike TM – can use © whether registered or not
www.shipmangoodwin.com
Copyright and the Internet• Enormous Uptick in “User Generated Content” on the Web
Social Media (FaceBook, Twitter) Blogs YouTube Photo sharing websites (Flickr, Instagram)
• Two issues that arise: Many more people creating copyrightable works that are
accessible to a large audience Many unsophisticated or unethical people using the
Internet to disseminate illegal copies of copyrighted material `
www.shipmangoodwin.com
Copyright and the Internet• Copyright Act addresses online infringement in the Digital
Millennium Copyright Act (“DMCA”)• DMCA provides a mechanism for a copyright owner to notify an
internet service provide of infringement and have that service provider remove the infringing material
• Provides the service provider with a safe harbor from liability for infringement by its users taking place on its network
• Purpose is to foster cooperation between service providers and copyright owners to detect and deter infringement and provide greater certainty to service providers for potential liability for the actions of its users
www.shipmangoodwin.com
Copyright and the Internet• “Service Provider” is, generally, any entity that provides
online services or network access Basically, any business that has a website is a
“service provider” DMCA helps to alleviate threat of liability to the
service provider for information posted by users of the website
www.shipmangoodwin.com
Copyright and the Internet• If a Service Provider complies with the DMCA, provides a “safe
harbor” for liability. • Most commonly:
Must have a policy for the termination of repeat infringers and inform users of the policy
Must accommodate “standard technical measures” (e.g., digital watermarks)
Must designate an agent to receive notification of repeat infringement and that information must be publically available on the website and filed with the Copyright Office
Must act expeditiously to remove infringing material upon receiving a DMCA compliant notice of infringement
www.shipmangoodwin.com
Copyright and the Internet
• DMCA also insulates the service provider from liability from its users for removing allegedly infringing material
Service provider must provide the user with the notice of infringement and give the user an opportunity to respond
If the user does not respond, the service provider cannot be held liable for removing the allegedly infringing material
If the user does respond, the service provider must put the material back up and forward that response to the copyright owner
www.shipmangoodwin.com
Questions?
www.shipmangoodwin.comwww.shipmangoodwin.com
HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE
Patent Basics
www.shipmangoodwin.com
Patent: What It Is• Form of Intellectual Property• Government Grant of Limited Monopoly
Exclusive right to exclude others from making, using and selling patented invention (the “bundle of rights”)
Not the exclusive right to practice invention if your invention uses someone else’s protected technology
www.shipmangoodwin.com
Example:
• You invent a bicycle that can fly over buildings using rockets, BUT the only bicycle that works
• with your invention is one covered by patents owned by Schwinn.
• You don’t have the right to make your invention unless you have Schwinn’s permission.
• All you have is the right to keep others from making your flying bicycle.
www.shipmangoodwin.com
• In order to get this limited monopoly, the inventor must publicly disclose the invention at the time the patent is granted.
• The disclosure is in the patent itself and must be detailed enough to allow a person “skilled in the art” to make the invention.
www.shipmangoodwin.com
• Balancing act between disclosure and the limited monopoly received from the patent.
► A 20 year right to exclude others from making your invention.
• Policy decision that rewards inventors, but allows innovation to continue by not keeping scientific progress hidden.
www.shipmangoodwin.com
What Kinds of Things Can Be Patented?
• Plant Patents “any distinct and new variety of
plant, including cultivated sports, mutants, hybrids, and newly found seedlings” that are asexually reproduced
www.shipmangoodwin.com
E.g., The “Georgie Tangerine”
www.shipmangoodwin.com
Design Patents
• “any new, original and ornamental design for an article of manufacture”
• Patent term is for 14 years
www.shipmangoodwin.com
Design Patents,e.g., Stationary Bicycle Design
www.shipmangoodwin.com
Design Patents,e.g., Toothbrush
www.shipmangoodwin.com
Utility Patents
• Granted to one who invents or discovers any new, useful and nonobvious: Process - a act or method, of doing or making
something, and primarily includes industrial or technical processes.
Machine – e.g., a clock, tractor or computer Articles of Manufacture – e.g., a brush, shirt, box Composition of Matter - a chemical composition and
may include mixtures of ingredients as well as new chemical compounds
Any improvement of the above
www.shipmangoodwin.com
Process Patent Example
• Systems and Methods to Process Transactions Based on Social Networking – see next slide for example
www.shipmangoodwin.com
www.shipmangoodwin.com
Machine Patent, e.g., Tractor Mounted Cotton Harvester
www.shipmangoodwin.com
Article of Manufacture,e.g.,Electric ToothbrushHead
www.shipmangoodwin.com
Composition of Mattere.g. CleanerComposition
www.shipmangoodwin.com
What Cannot Be Patented?• Laws of Nature• Physical Phenomena• Abstract Ideas
Examples: law of gravity; human organisms; minerals found on earth; E=mc2
Morse received patent on telegraph NOT on electromagnetism
• Inventions which are “not useful” – PTO example of “perpetual motion machines”
www.shipmangoodwin.com
Obtaining Patent Protection
• Process by which a patent is obtained from the PTO is called “prosecution.”
• Only attorneys and patent agents registered to practice before the PTO can prosecute an application.
• Application can only be filed in name of inventor (a person).• Application must disclose the invention, as well as
sufficient detail to allow one to make and use the invention.• Process takes approximately 3 years from filing to
issuance.
www.shipmangoodwin.com
Common Bars To Obtaining A Patent
• Invention has already been disclosed by someone else in any country (other patents, articles, presentations, etc.).
• Inventor failed to file for a patent within one year of a disclosure of the invention.
www.shipmangoodwin.com
The AIA – What Every Patent Attorney Is Talking About!• AIA – The America Invents Act – passed in September 2011• Most significant changes to the American patent system in
decades• Fundamental Change happening today –
Starting tomorrow becoming a 1st to File patent office (the race to the PTO – whoever files the application first receives the patent)
Applications filed today are still based on the 1st to Invent, no matter who filed for the patent first
Attempt at more global harmonization/Simplicity
www.shipmangoodwin.com
Patent: How To Protect?• Mark your invention with “patent pending” or patent
number • Enforce patent against infringers
Federal court litigation An infringer is someone who is making, using or selling
your invention without your permission (e.g. license) Two primary defenses
► Patent is not valid ► I don’t infringe
www.shipmangoodwin.com
Recent Developments• Patent Trolls (also known as “non-practicing entities”)
Buy patents usually for the sole purpose of litigating and “buying” a stream of income from accused licensees
Do not typically practice the invention House has introduced a bill that seeks to indirectly curb
litigation brought by patent trolls by awarding attorneys fees to defendants who successfully defend an action
AIA attempted to make “mass” litigation difficult by patent trolls by prohibiting one plaintiff from suing multiple unrelated defendants in the same case
www.shipmangoodwin.com
Recent Developments• Bowman vs. Monsanto – argued before Supreme Court in February
Do Monsanto’s patent rights in its genetically modified soybean seeds (“Roundup Ready® seeds) extend to seeds from the resulting crop?
Farmer purchased patented seed for primary crop, but purchased additional Roundup Ready® seeds from local grain elevator as a commodity for late-season crop.
In later years saved seeds from late-season crop for planting the next year’s second crop.
Undisputed that second crops were covered by claims of Monsanto’s patent. Issue was whether doctrine of “exhaustion” – authorized sale of patented product
extinguishes additional patent rights – precluded infringement claim because original sale was authorized.
Problem here is that the invention is a self-replicating technology – how does that square with the doctrine of exhaustion.
Most observers believed that the Supreme Court would rule in favor of Monsanto who were primarily focused on the third generation of seeds not the purchase of the commodity.
www.shipmangoodwin.com
Recent Developments
• Apple/Samsung Smartphone Patent Wars Two largest smartphone makers More than 50 lawsuits in 10 countries Patents cover virtually everything associated with
smartphones► Rectangular shape with curved edges► Swipe to unlock► Flat, clear surface on front of product
www.shipmangoodwin.com
Apple/Samsung Dispute
• Recently Apple has had success in the US $1 billion infringement award
• BUT Lost injunction to prohibit sales of Galaxy in US Damage award reduced by $450 million as a result of
“incorrect legal theory” Remanded for new trial on damages
www.shipmangoodwin.com
Apple/Samsung Dispute• Samsung has had some success abroad
Winning infringement actions against Apple in South Korea
A ruling that it did not infringe certain of Apple’s patents (technology to synchronize music and video between devices and servers)
Britain – winning a declaration that its Galaxy tablet was not too similar to Apple’s products (Judge said Galaxy tablet was not “cool” enough to be confused with the iPad!)
www.shipmangoodwin.com
Questions Raised (And Not Answered!) By Smartphone Wars
• Is everything patentable?• Is this good for consumers?• Is this good for society?
www.shipmangoodwin.com
Questions?
www.shipmangoodwin.comwww.shipmangoodwin.com
HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE
IP Ownership Issues
www.shipmangoodwin.com
Trademarks
• Owned by the entity actually using the marks• Can be assigned• Trademark-like issues
www.shipmangoodwin.com
Copyrights• Ownership vests in the author
Person who fixes work in tangible medium of express
Work for hire Written agreements with
non-employees/independent contractors• Can be assigned
www.shipmangoodwin.com
Patents• The inventor of a patent (an individual) is the owner of a
patent • Ownership is transferred through a written assignment• In employment context, best practice is to have written
agreement with employee agreeing to assign any intellectual property (including patents) to the employer
• In the context of joint inventors, each inventor is a co-owner with full rights to make, use, sell the invention that are associated with the patent without regard to the other co-owner
Recommended