Unit 3 LEGL 2700

Intellectual property includes the topics of:

justification, importance, competition, capturing

Kept secret:

Commercially valuable because it is secret and subject to reasonable steps to keep it secret

Economic value

Something has economic value because it is secret and subject to reasonable steps to keep it secret

Trade Secret

A common way of asserting property or knowledge based on tangible resources.

Uniform Trade Secrets Act-

defines a trade secret as information, technique, or process. It can also include marketing sales, etc. and need not be unique.

A trade secret audit is used to identify

confidential knowledge-based resources

In order to preserve secrecy:

lock written material, secure computer-stored knowledge, impose confidentiality restrictions, etc

reverse engineering

putting something out, and someone reverse creates it; patents can help to dissuade this from happening and is exempted from misappropriation

Al Minor & Associates, Inc. v. Martin, 881 N.E. 2d 850 (Ohio 2008):

Martin is an employee at-will at Al Minor & Associates (he doesn't have a contract or non-complete). Martin decides after a few years at AMA to start his own business and a year later, he leaves AMA. When he leaves he doesn't take any documents or save any papers from his work, but memorizes information for 15 of AMA clients for his own company. AMA sues for monetary and injunctive relief (order him to stop). The court rules that there is no provision that suggests for trade secrets between information from a tangible form and what has been memorized. He knew it was a secret and confidential, and still memorized it and approached those people, and Martin lost the lawsuit.

Court Case: Al Minor & Associates, Inc. v. Martin, 881 N.E. 2d 850 (Ohio 2008):

Memorized information can in fact be a trade violation

Misappropriation

when one improperly acquires or discloses secret information

Independent creation is exempted from

Misappropriation

Trade secrets can be protected

forever

Confidentiality contracts:

Forbid employees from disclosing knowledge obtained in the workplace. Employers can enforce agreements not to compete only when there is a valid business purpose for the contract

Trade owner may seek money damages

If an employee under a confidentiality contract misappropriates

EAA act

Covers criminal prosecution for confidentiality contracts

Many companies do not allow what in meetings?

carrying/using cell phones, usb/flash drive, notes derived during meetings

Document markings

Documents generated should possess appropriate "markings" to imply what is considered a trade secret or protected data

Patent law includes:

new invention and legal monopoly

A first step in protecting trade secrets is to:

Identify confidential knowledge based resources

What does a trade secret audit identify?

All the valuable forms of information possessed by businesses and they do not need to be unique

Patents last for how long?

A limited period of time, 20 years from the date the application is filed in the Patent and Trademark Office

To obtain a patent, an investor must:

Pay a filing fee and file an application with the PTO

Under patent law a new invention is a

legal monopoly

Utility Patent

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

Design Patent

New, original and ornamental design for an article of manufacture

Plant Patent

New, variety of plant that can be produced asexually

Obtaining a patent includes what steps?

File application, filing fee, explain invention, show difference from prior art, describe patentable aspects, and evaluation by the patent examiner

Novelty

Something new and different from the prior art

Nonobviousness

Ability of an invention to produce surprising or unexpected results

Utility

Must do something useful

Patent Enforcement:

If someone sees a patent owner doing something seemingly unallowed by their patent

Overalapping rights provide an opportunity for

firms to purchase patent rights and sue companies-Patent Trolls (term applied to a business that obtains the rights of one or more patents to profit, and buys many patents and sues people for infringement of their patents)

Grace period for patents:

one year

Patent owner can sue against

infringement for injunction and damages

Owning a patent does not give the right to

own and import a whole product, businesses have to pay the licensing fee for parts of the product

UGARF

gets many patents every year and own the patents for inventions made at UGA (manuals are copyrighted by the UGA, things produced by labs on campus are owned by UGARF, etc)

Patents can be invalid if:

the paperwork does not meet requirements or if the subject matter of the patent was not right at all

If someone has discovered and not invented this

doesn't count as eligible for a patent (ex. If you take a flower, extract a new element, and create a salve, that is patentable, but just discovering the flower is not)

Patents can not

lockdown an entire field of discovery

Association for Molecular Pathology v. Myriad Genetics, Inc. 133 S.Ct.2107 (2013).

Myriad created a way to treat breast cancer through using the genes BRCA-1 and 2 to reduce breast cancer. The Association for Molecular Pathology sued and stated that you cannot patent DNA. It was founded that abstract ideas, naturally occurring things, etc are not patentable

Alice Corporation Pty. Ltd. v. CLS Bank Int'l 134 S.Ct. 2347 (2014)

The Alice Corporation had several patents to mitigate risks like security trades. The patent that they had allowed computers to act as a third party to allow both parties to proceed in transactions and were sued by CLS on whether they had subject matter that was patentable. CLS claimed that they are mere abstract ideas a computer is exercising, not an invention. The Supreme Court ruled that this was just an abstract idea and there was no layer of incentive act, and therefore Alice Corporation was not eligible for a patent

Trademarks

Marks on what is produced to represent the origin of goods and services → Recognizability or distinctiveness → Protection against confusion

Service marks (SM)

Marks associated with a service rather than a product. Used for advertising a service

Certification marks:

Used by groups to show that products meet certain standards or characteristics (like mark for gluten free, fair trade certified, etc.)

Collective mark:

Used by an organization, should only be used by the members of that particular association

Trade Dress:

The look or design of a product or service. Applies to the total image like the layout, color scheme, furniture, and distinctiveness

Sound Trademarks "Sound Marks":

Certain shows/channels/movies play sound marks before showing something on their channel (for example the sound mark for NBC news)

Trademark Registration

Usage of mark in interstate commerce is required for registration with PTO

What are reasons PTO can deny registration?

- Same or similar to another mark

- Prohibited or reserved names or designs

- Names or likeness without permission (to use a president's name, there has to be permission from the wife/family)

- Descriptive (like salty crackers)

- Generic

What were previous reasons PTO could deny registration that were taken down?

If it was disparaging, or immoral and scandalous

Matal v. Tam, 582 U.S. ___, 137 S.Ct.1744 (2017):

This case involved a band made up of people of Asian descent, and they wanted to call themselves "The Slants," claiming they were reclaiming a marginalized term, but the Court stated that they could not use this name because it demeans on the basis of race, gender, sex, etc. The justice at the Supreme Court decided that the disparagement clause in the Lanham Act was discriminating on the Court's part because people should have the right to express their thoughts in regards to disparaging statements.

Iancu v. Brunetti, 588 U.S. ___, 139 S.Ct.2294 (2019).

A brand tried to use an abbreviation on t-shirts, FUCT and were sued because it seemed like immoral speech. The question of this case was whether Section 2(a) of the Lanham Act, which prohibits the federal registration of "immoral" or "scandalous acts"

How is a trademark registered?

PTO places the mark in the Official Gazaette

Registered on the Principal Register if the mark is acceptable

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

Law protects the owner of a trademark from

unauthorized use of the mark

Remedies for infringement of trademarks:

damages and injunctions and orders to destroy infringing products

Generic trademarks cannot and why

be protected; a trademark becomes generic if the brand becomes synonymous in the consumer's mind with a good or service

Jack Daniel's Properties Inc. v. VIP Products LLC, 599 U.S. ___ (2023).

A brand made a chewable whiskey dogtoy (with dog poop on the bottle) that was designed to look exactly like the Jack Daniels whiskey bottle (stating that it was a parody). Jack Daniels didn't want their alcohol to be associated with dog poop and that people might be confused or think that Jack Daniel had something to do with this.

Kraft Foods Group Brands LLC v. Cracker Barrel Old Country Store:

Kraft foods sells cheese under the name Cracker Barrel (cheddar cheese), and Cracker Barrel Old Country Store, the restaurant chain, wanted to come into the grcoery store with their own products, including ham, meet, cheese, etc. Kraft Foods stated that if they do this, people may think Cracker Barrel Old Country Store's food is theirs and have bad thoughts against the food, and think that it was Kraft's, resulting in people stopping buying their products. Justice Posner stated that the issue is that these products will be in the same stores and since most people buying these are poor and its harder for them to understand things, they put an injunction on Old Country Store. Cracker Barrel Old Country store was eventually allowed to be put in grocery stores, but only after they changed the branding on their products in stores saying "Old Country Store,".

Costco v. Tiffany:

: Costco was using the Tiffany word to describe diamonds pronged/setted a certain way. Tiffany sued because their name was mentioned, thinking people may think that Costco's diamonds are theirs. However, it was founded that people these are sophisticated consumers, who will be able to understand that Tiffany is a diamond setting.

Marks can not be used in an:

unauthorized way

Manufacturing and trafficking counterfeit trademarked products is a:

criminal violation

Federal Trademark Dilution Act, 1995

Prohibits the usage of a mark same as or similar to another's trademark to dilute its significance, reputation, and goodwill

Blurring

When usage of a mark blurs distinctiveness of a famous mark

Tarnishment

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

Copyright Ownership

Copyright law grants property in certain creative expressions and prohibits others from reproducing it w/o permission

Criteria for copyright protection:

- Work must be original

- Must be fixed in a tangible medium of expression

- Must show creative expression

Individual copyright protection:

Author's life plus 70 years

Company copyright protection:

95 years from publication of 120 years from creation of the work, whichever expires first

Public Domain Day

January 1st of each year

As of Jan 1, 2024, works published in or before what year are public domain?

1928

Copyright Infringement protects:

The owner has to establish that defendant violates his or her exclusive rights of:

- Reproduction

- Creation of derivative works

- Distribution

- Performance

- Display

Copyright fair use includes copying for:

criticism, comment, news reporting, teaching, scholarship, and research

Andy Worhol Foundation for the Visual Arts, Inc. v. Goldsmith:

Copyright issue, Andy Warhol foundation lost because when they look at the elements, they cut right into the newspaper writer's profits

Google LLC v. Oracle America Inc., 593 U.S. ___ (2021).

rying to determine whether java apis counted under fair use in copyright law. The Supreme Court ruled, by a 6-2 decision, that Google had not violated Oracle's copyright by using components of Oracle's Java programming language in Google's Android operating system employed in most of its smartphones. SCOTUS sidestepped the issue of copyrights on Application Programming Interfaces and assumed fair use. Google loses

Factors for fair use are considered on:

A case-by-case basis

Closely Held Businesses:

Businesses owned and operated by a small amount of people (usually five or less) and there is a restriction on who can own shares. Typically family businesses

Publicly Held Business:

Stock is sold and owned by the public instead of investors

Basic Forms of Business Organizations:

sole proprietorships, partnerships, corporations

Sole proprietorships:

Least expensive business organization to create

- Proprietorship's continuity is tied directly to the will of the owner

- Sole proprietor is in total control of the business's goals and operations

- Only one owner and no formal documentation is required besides a business license

- Owner has unlimited liability for the obligations of the business organization

- Not taxed as an organization, the individual is taxed

Partnerships:

- Agreement between two or more persons to share a common interest in a commercial endeavour sharing profits and losses

- Easily formed compared to other business forms