LEGL 2700 Chapter 11 Intellectual Property

What are the four types of Intellectual Property?

Copyright

Trade Mark

Patent

Trade Secret

What is a Copy Right?

The creator of an original work/object has the EXCLUSIVE right to use and distribute their product/work.

What is a Trademark?

Word/Phrase/Symbol/Design that distinguishes good from one party from another.

Think of brands for example

What is a Patent?

It is the LEGAL MONOPOLY/RIGHT to an inventor to give them exclusive right to Use/Make/Sell something for a limited time.

What is a Trade Secret? (2 Parts)

A trade secret is any knowledge or information that must be

1) Kept Secret

2) Has economic Value

What is the Uniform Trade Secret Act?

The UTSA ensures that valuable business information is kept secret.

Ex: Employees who leave companies can be sued if they disclose private information.

What is required for a Trade Secret Case?

1) Prove it is a Trade Secret

2) Prove the Defendant breached the Trade Secret

When it comes to intellectual Property, what does congress have the power to do?

They have the power to decide what is or what is NOT protected.

They also determine how long it can be protected for.

What happens to an intellectual property right once the property enters public domain

Once the Intellectual property enters public domain, IP RIGHTS CANNOT be used

Are employees apart of Intellectual Property?

Yes

Are Reports and Manuals apart of Intellectual Property?

Yes

What are four important parts of intellectual property?

Justification

Importance

Competition

Capturing

What is the justification of Intellectual Property?

Intellectual Property must be justified by balancing private rewards with public benefits.

Ex: Inventors/Innovators should be rewarded for their ideas

People should be able to benefit from their work

It must provide protection to individuals/businesses

What is the importance of Intellectual Property?

Intellectual property plays a central role in both protecting and promoting business innovation

What is Competition in Intellectual Property?

Intellectual Property Rights limit competition for a certain amount o time

It also promotes healthy competition by pushing companies to innovate rather than copy

What is Capturing?

The steps that have to be taken in order to transfer something into valuable intangible rights

What is Article 1, Section 8

Gives congress the power to create laws to protect authors/inventors.

Generally through Copyright/Patents/Etc

How do you establish the existence of a Trade Secret

You must conduct a trade secret audit to identify confidential knowledge-based resources

How do you preserve secrecy?

- Lock Written Material

- Secure Computer-Stored Knowledge with firewalls and encryption

- Impose Confidentiality Restrictions

- Regulate Visitors

- Ask employees, customers, and business partners to sign nondisclosure agreements

What happened in Al Minor & Associates, Inc. V. Martin, 881 N.E.2d 850 (Ohio 2008)?

Martin started his own company while working and AMA.

He left the company but DID NOT take any documents/files

However, he remembered client details and poached them.

AMA sued for trade secret violation

Court ruled in favor of AMA since trade secrets were deemed to apply to memorization of client lists as well.

When does Misappropriation occur?

When one improperly acquires or discloses secret information

What is Exempt from Misappropriation?

Independent Creation and Reverse Engineering

What is employee mobility and trade Secrets?

Companies can make employees sign NDAs (Confidentiality Contracts) to prevent employees from disclosing trade secrets.

Courts generally uphold NDAs IF they are:

1) Clear

2) Reasonable

3) Limited to truly confidential information

Is Reverse Engineering Misappropriation?

NO, No

What is Criminal Misappropriation?

ONLY CHARGED BY THE FEDERAL GOVERNMENT

- Based on criminal statutes like EEA or state criminal codes

(Basically considers stealing trade secret a crime)

What is Civil Misappropriation?

Generally charged by a private party (Business/Individual)

Filed under the Uniform Trade Secrets Act (UTSA)

How does a Patent Law Work?

New Invention -> Legal Monopoly

What exactly is a Patent?

Exclusive Right to Invention

What are the 3 types of Patents?

Utility Patent

Design Patent

Plant Patent

What is a Utility Patent?

New, non-obvious, useful processes, machines, compositions of matter or improvements thereof

What is a Design Patent?

New, original and ornamental design for an article of manufacture

What is a Plant Patent?

New, variety of plant that can reproduced asexually

How do you obtain a Patent?

File Application

Filing Fee

Explain the Invention

Describe the patentable aspects

What are 3 Characteristics of Patents?

Novelty

Non obviousness

Utility

What is Novelty?

Something new and different from prior art/works

What is Non-obviousness?

Ability of an invention to produce surprising or unexpected results

What is Utility?

Must do something useful

Can Natural Phenomenon's be Patented?

THEY CANNOT

Can Mere Abstract Ideas be Patented?

No, THEY CANNOT

Can AI be patented?

AI cannot apply for patents

What happened in Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) BRCA - 1, BRCA -2

Myriad discovered a genetic sequence of genes BRCA1/BRCA2 which linked to cancer.

They patented it, making them have a monopoly on potential lifesaving tests.

AMP Sued saying that genes are NATURAL therefore cant be patented.

Court ruled in Favor of AMP

What happened in Alice Corporation Pty. Ltd. V. CLS Bank Int'l, 134 S.Ct. 2347 (2014)

Alice owned patents for Computer-implemented methods regarding financial transactions

CLS took it to court saying that Alice's "Inventions" were just an abstract idea.

Court ruled AGAINST Alice since putting abstract ideas on a computer does NOT make it patentable

How do you enforce Patents?

Patent Owners can sue against infringement for injunction and damages

What do Patents help protect?

Methods and Articles

Can patent rights overlap over Methods and Articles?

Yes

Why can overlapping patent rights be valuable?

It provides an opportunity for firms to purchase patent rights

What are patent trolls?

People that own patents but DO NOT produce or sell products.

Their main goal is to enforce their patents and sue the defendants for money.

What are Trade Marks?

A "Mark" (think of logos) on a product to represent the origin of the good.

What are trademarks used for?

Used to help with Recognizing where the product is coming from, as well as distinctiveness

It also helps with preventing confusion

What Marks are Protected by the Lanham Act of 1946

Trademarks

Service Mark

Certification Mark

Collective Mark

Trade Dress

Sound Trademarks

What is a Service Mark?

Rather than protecting a product, it protects a service

What is a certification mark?

Used to "certify" if the goods or services meet a specific criteria

What is a collective mark?

Used to identify membership in an organization

What does PTO stand for?

Patent and Trademark Office

What is Trademark Registration?

Basically the usage of a mark in interstate commerce requires registration with the PTO

When can PTO deny registration?

1) Too similar/The same to another mark

2) Prohibited or reserved names or designs

3) Names or Likeness without permission

4) Descriptive

5) Generic

Which two options to DENY PTO registration is unconstitutional?

Disparaging

Immoral/Scandalous Names/symbols

What happened in Matal v. Tam, 582 U.S. __, 137 S. Ct. 1744 (2017)?

Is the disparagement clause in the Lanham Act invalid under the first Amendment?

Simon Tam tried to make a trademark named "The Slants"

USPTO rejected it due to disparagement since they deemed it as disrespectful towards asians.

Simon Tam stated that it was meant to empower Asians, so they took it to court.

Court ruled in favor of Simon Tam.

Yes, the disparagement clause is invalid under the first Amendment. The supreme court ruled that it violated free speech.

What happened in Iancu v. Brunetti 588 U.S. ___, 139 S.Ct. 2294 (2019) FUCT

Does the "immoral or scandalous" clause of the Lanham Act violate the First Amendment?

Brunetti founded a clothing brand "FUCT" and wanted to make it a trademark.

PTO declined saying that it is immoral due to it name.

Court ruled in FAVOR of Brunetti stating that it violates the first amendment to not allow them to have the name FUCT.

What are the steps for trademark registration?

PTO places trade mark in the Official Gazette

Registered on the Principle Register if the Mark is Acceptable

If listed on the Supplemental register for five years, and acquires a secondary meaning, a name or descriptive item can acquire full trademark status.

What exactly is Trademark Enforcement?

The law protects the owner from unauthorized use of the mark.

What is Infringement?

A civil violation of a trademark

What are some remedies to infringement?

Damages, injunctions, and giving the order to destroy infringing products

Can Generic Marks be Protected?

NO, they cannot be protected

What type of violation is Manufacturing and Trafficking counterfeit products

Criminal Violation

What happened in Jack Daniel's Properties, Inc. V. VIP Producrts LLC, 599 U.S. (2023)

VIP Products essentially copied the design of Jack Daniel's Whiskey bottle for their dog toy.

Supreme court ruled in favor of Jack Daniel's stating that since VIP products are a copy of Jack Daniel's trade mark, it could not be protected by the first amendment, subjecting it to standard trademark infringement

What happened in Kraft Foods Group Brands. V. Cracker Barrel 2013

Kraft Foods was selling "Cracker Barrel" branded cheese.

CBOCS tried to introduce a line of meat under "Cracker Barrel"

Kraft Argued that it would cause confusion due to the name.

The lower court and Seventh Circuit Court of Appeals agreed, and stated that CBOCS could not sell it under that brand.

What is the Federal Trademark Dilution Act, 1995

It prohibits the usage of a mark the "same as or similar to" another's trademark to dilute its significance, reputation, and good will.

What are 2 types of Trademark Dilution

blurring

tarnishment

What is Blurring?

When the iusage of a mark blurs the distinctiveness of a

What is Tarnishment?

When usage of a mark creates a negative impression about the famous company

What is Copyright?

The legal right given to individuals for their product.

Essentially allows them to create a monopoly of their goods.

What are the 3 parts of a copyright monopoly?

Copying and Marketing

Limited Period of Time

Original Expression

What is Copyright Ownership

It is a law that grants property in certain creative expressions & prohibits others from reproducing it without permission

What is Criteria for Copyright Protection (There are 3)

1) The work must be original

2) Must be fixed in a tangible medium of expression

3) Must show creative expression

How long do Individuals have Copyright Ownership?

The author's life + 70 additional years

How long do Company's have Copyright Ownership?

95 Year from publication or 120 years from creation of the work

WHICHEVER EXPIRES FIRST IS THE CHOSEN ONE

What day is Public Domain Day?

January 1 of EACH year

As of Jan 1, 2025, works published IN OR BEFORE ____ are in public domain

1929

When can an owner claim copyright infringement?

The owner has to establish that the defendant has violated his/her right OF:

1) Reproduction

2) Comment

3) News Reporting

4) Teaching

5) Scholarship

6) Research

How are factors for "fair use" considered?

They are considered on case-by-case basis

What happened in Google LLC v Oracle America Inc., 593 U.S. (2021) Decided April 5, 2021?

Google was using small parts of Oracles Java code for improvements to andriods.

Oracle sued for copyright infringement

SCOTUS ruled that Oracles Java SE code was copyrightable BUT they deemed that Google's use of the code was considered "Fair Use"