Www.shipmangoodwin.com HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE Intellectual Property Law What you need to know about copyright, patents

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HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE

Intellectual Property LawWhat you need to know about

copyright, patents and trademarks.

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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)


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


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


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



Trademarks


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


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


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


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”


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”


Descriptive• Weaker• Words/designs that describe the goods/services

CREAMY for “yogurt” WORLD’S BEST BAGELS for “bagels”


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”


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.


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


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


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


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


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


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


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


Federal Registration – Process• Publication

Once all issues are resolved, published in the Official Gazette

• Opposition – 30 days• Opposition proceedings

Negotiated resolution TTAB ruling


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


Protection of Trademark Rights

• Renew registration• Six months after 6th anniversary of date of

publication• Then every 10 years• Can be renewed indefinitely



• Use it or lose it Failure to renew will invalidate registration Non-use for 2 years give rise to a

presumption of abandonment



• 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



• 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


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


Enforcement

• Insurance coverage?


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


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


Questions?



Copyright


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


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



• 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.



• 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).



• 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



• 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



• 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


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


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


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)


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.



• “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.



• 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


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.


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”


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.


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


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


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


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.


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.


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


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


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


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 `


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


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


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


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


Questions?



Patent Basics


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


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.


• 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.


• 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.


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


E.g., The “Georgie Tangerine”


Design Patents

• “any new, original and ornamental design for an article of manufacture”

• Patent term is for 14 years


Design Patents,e.g., Stationary Bicycle Design


Design Patents,e.g., Toothbrush


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


Process Patent Example

• Systems and Methods to Process Transactions Based on Social Networking – see next slide for example



Machine Patent, e.g., Tractor Mounted Cotton Harvester


Article of Manufacture,e.g.,Electric ToothbrushHead


Composition of Mattere.g. CleanerComposition


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”


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.


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.


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


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


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


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.


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


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


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!)


Questions Raised (And Not Answered!) By Smartphone Wars

• Is everything patentable?• Is this good for consumers?• Is this good for society?


Questions?



IP Ownership Issues


Trademarks

• Owned by the entity actually using the marks• Can be assigned• Trademark-like issues


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


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

Documents

Www.shipmangoodwin.com HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE Intellectual Property Law What you need to know about copyright, patents