OVERVIEW OF INTELLECTUAL PROPERTY LAW PROF. PAUL JANICKE INSTITUTE FOR INTELLECTUAL PROPERTY & INFORMATION LAW UNIVERSITY OF HOUSTON LAW CENTER 2014

OVERVIEW OF INTELLECTUAL PROPERTY

LAW

PROF. PAUL JANICKEINSTITUTE FOR INTELLECTUAL

PROPERTY & INFORMATION LAWUNIVERSITY OF HOUSTON

LAW CENTER2014

2014 IP Survey -- OVERVIEW 2

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– COMPILATIONS


REQUIREMENTS

• FIX THE WORK IN A TANGIBLE

MEDIUM (§102(a))

• PROTECTION IS AUTOMATIC– NO PAPERWORK NEEDED– NO NOTICE NEEDED– NO REGISTRATION NEEDED

2014 4IP Survey -- OVERVIEW

NOT A VERB

• ONCE THE WORK IS FIXED, COPYRIGHT RIGHTS AUTOMATICALLY EXIST

– CAUSES OF ACTION ACCRUE AGAINST ANY COPIERS

PROPER / IMPROPER TO SAY:

• IMPROPER TO SAY “HE IS GOING TO COPYRIGHT HIS POEM”; OR “THE LAWYER WILL COPYRIGHT IT FOR HIM.”

• PROPER: THE WORK IS COPYRIGHTED


PROPER TO SAY:

• THE WORK IS UNDER A REGISTERED COPYRIGHT (IF TRUE)

• REGISTRATION IS OPTIONAL



PROTECTION IS AGAINST:

• COPYING SUBSTANTIAL PORTIONS

• MAKING DERIVATIVE WORK FROM THE ORIGINAL

• NO PROTECTION AGAINST:– INDEPENDENT CREATION– FAIR USE OF SMALL PORTIONS


DURATION

• LIFE OF AUTHOR PLUS 70 YEARS

• IF JOINT AUTHORS, LAST SURVIVOR PLUS 70 YEARS


TRADEMARKS ARE BRANDS

• LIKE CATTLE BRANDS

• MUST BE USED ON GOODS OR CONTAINERS

• THEY SIGNAL A COMMON SOURCE, OR AT LEAST COMMON SOURCE OF QUALITY CONTROL

AUTOMATIC RIGHTS

• RIGHTS EXIST UPON USE IN COMMERCE

• REGISTRATION IS OPTIONAL

• NO VERB “TRADEMARK”


NO RIGHTS

• FROM THINKING ABOUT A MARK, EVEN IF FIRST TO DO SO



TRADEMARK CAN BE:

• A WORD: FORD

• A GROUP OF WORDS: COMPAQ DESKPRO

• A PHRASE: HAVE IT YOUR WAY

• A LOGO: [WE’LL SEE SOME]


REQUIREMENTS FOR MARK OWNERSHIP AND ENFORCEMENT:

1. PLACE THE MARK ON GOODS, CONTAINERS; and

2. MOVE THE MARKED GOODS IN COMMERCE.

• REGISTRATION IS NOT NEEDED!• DON’T SAY “TRADEMARK” AS A VERB!


TRADEMARK’S FIRST COUSIN: SERVICE MARK

• USED “IN CONNECTION WITH” SERVICES, TO SIGNAL COMMON SOURCE

• USE CAN BE IN ADVERTISING

• SERVICES MUST ACTUALLY BE

RENDERED IN COMMERCE


EXAMPLES OF SERVICE MARKS:

• MERRILL LYNCH

• McDONALD’S [WORD]

• [GOLDEN ARCHES] for McDONALD’S

• DALLAS COWBOYS

• HOLIDAY INN


REQUIREMENTS FOR OWNING A SERVICE MARK:

• USE THE MARK IN COMMERCE FOR

ACTUAL COMMERCIAL SERVICES

– EXCLUSIVE RIGHT ARISES FROM FIRST USE IN COMMERCE

– REGISTRATION IS NOT NEEDED


WHAT KIND OF MARK IS THIS?


WHAT KIND OF MARK?


WHAT KIND OF MARK?


WHAT KIND OF MARK?


WHAT KIND OF MARK?


NATURE OF RIGHTS IN MARKS

• PREVENT OTHERS FROM USING SAME OR SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY

• NOT A RIGHT TO PREVENT ALL USES OF THE WORD!– “CADILLAC” FOR CARS AND DOG FOOD

– “CHAMPION” FOR PAPER; AND BOXING GLOVES; AND SPARK PLUGS


DURATION OF THE EXCLUSIVE RIGHT

• FOREVER, 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 [e.g., BY

ALLOWING OTHERS TO USE IT WITHOUT

QUALITY CONTROLS]


TRADE SECRET

• ANY TYPE OF COMPETITIVELY VALUABLE INFO [BUSINESS; TECHNICAL]

• MUST NOT BE GENERALLY KNOWN IN THE INDUSTRY

• MUST BE SUBJECT TO REASONABLE PRECAUTIONS TO PRESERVE SECRECY

2014 IP Survey -- OVERVIEW

STATE LAW

• GOVERNS ALMOST ENTIRELY

• THERE IS NO FEDERAL PRIVATE ACTION FOR TRADE SECRET MISAPPROPRIATION

• CRIMINAL ACTIONS (STATE AND FEDERAL) ARE POSSIBLE, BUT FAIRLY RARE

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EXAMPLES OF TRADE SECRETS:

• COMPANY’S FUTURE PRICING OR DISCOUNT INTENTIONS

• COMPANY’S MARKET-EXPANSION INTENTIONS

• COMPANY’S PLANNED ACQUISITIONS OF OTHER BUSINESSES

• TECHNICAL INFORMATION

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TYPICAL STEPS TO PRESERVE SECRECY

• EMPLOYEE CONTRACTS

• MARKING DOCUMENTS

“CONFIDENTIAL”

• WRITTEN POLICY STATEMENTS

• EXIT INTERVIEWS


FORMALITIES FOR PROTECTION

AND BRINGING SUIT

• NONE

• NO TYPE OF CERTIFICATE IS AVAILABLE


WHAT IS MISAPPROPRIATION?

• USING A PROPERLY LEARNED PROTECTED SECRET WITHOUT PERMISSION [90% OF CASES]

• LEARNING THE PROTECTED SECRET BY BREACH OF CONFIDENCE OR OTHER ILLEGAL MEANS [10% OF CASES]


LEARNING INDEPENDENTLY IS OK

• INCLUDES REVERSE ENGINEERING OF A PUBLICLY AVAILABLE PRODUCT

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PATENT LAW

• EXCLUSIVELY FEDERAL LAW– 35 U.S.C. GOVERNS IT

• THE ONLY TYPE OF I.P. WHERE A

GOVERNMENT GRANT, OR

GOVERNMENT-ISSUED DOCUMENT,

IS REQUIRED


COSTS

• ARE EXPENSIVE

• USUALLY AT LEAST $2,000 JUST TO

GET ON FILE [ATTY. FEES; GOVT. FEE]

• FOREIGN COUNTERPARTS ARE

EVEN MORE EXPENSIVE

• ISSUE FEES AND MAINTENANCE

FEES APPLY IN EACH COUNTRY


WHAT CAN BE PATENTED35 USC 101

• MANUFACTURES

• MACHINES

• COMPOSITIONS OF MATTER

• METHODS (OF MAKING OR USING

SOMETHING)– SOFTWARE IS SOMETIMES ELIGIBLE,

IF NOT TOO “ABSTRACT”

THINGS THAT ARE INELIGIBLE

• IDEAS



A FEW MORE THINGS THAT ARE INELIGIBLE

• ABSTRACT COMPUTER PROCEDURES, e.g., MOVING BITS AROUND

• WRITTEN MATERIAL WITHOUT A NOVEL PHYSICAL STRUCTURE

• NATURALLY OCCURRING SUBSTANCES


WHO CAN FILE

• WITH RARE EXCEPTIONS, ACTUAL INVENTORS (i.e., CONCEIVERS) MUST SIGN

• THE ASSIGNEES OF THEIR APPLICATIONS CAN THEN TAKE OVER, AND USUALLY DO

NOT ALLOWED:

• LETTING SOMEONE OTHER THAN THE CONCEIVER “TAKE OUT” THE PATENT

• THESE PEOPLE CANNOT MAKE THE REQUIRED OATH OF INVENTORSHIP



WHAT DO YOU GET FOR “PATENT PENDING”?

• LEGALLY: NOTHING. TERM BEGINS ONLY AT THE GRANT DATE (SOME MINOR RIGHTS AT 18-MO. PUBLICATION)

• MERELY A WARNING TO OTHERS, BUT CAN BE VALUABLE IN THE PRACTICAL WORLD


NATURE OF THE RIGHTS

• TO EXCLUDE OTHERS FROM COMMERCIALIZING ANY MEMBER OF THE FAMILY CLAIMED

–WHETHER OR NOT CONCEIVED BY THE INVENTORS


• NO RIGHT TO MAKE OR SELL IS CONFERRED ON THE PATENT OWNER– USUALLY, MANY PATENTS OVERLAP– LICENSES NEEDED FROM THE

OTHERS TO PRACTICE YOUR OWN PATENT!

– EXAMPLE: COMPUTER SYSTEM

40


GEOGRAPHIC SCOPE

• U.S. ACTIVITY ONLY

• NO “WORLD PATENT” EXISTS

• TREATIES THUS FAR ARE MERELY FOR PAPERWORK SIMPLIFICATION AND QUASI-COMMON EXAMINATION

• MUST ISSUE PATENTS AND ENFORCE THEM COUNTRY-BY-COUNTRY

Documents

OVERVIEW OF INTELLECTUAL PROPERTY LAW PROF. PAUL JANICKE INSTITUTE FOR INTELLECTUAL PROPERTY & INFORMATION LAW UNIVERSITY OF HOUSTON LAW CENTER 2014