LEGL 2700 Exam 3

Trade Secrets

Protect information

Trademarks

Protect names, symbols, and designs

Patent

Protects an invention or process

Copyright

Protects creative expression in a fixed form of tangible media

What intellectual property protections have time expirations? Which do not?

Copyrights and patents have time expirations, trademarks and trade secrets do not

What is the justification of intellectual property?

It’s there to protect people who create stuff. Gives you exclusive rights to the property for a period of time set by congress. After that time, it goes into public domain.

What is the importance of intellectual property?

Business owners aren’t aware of their intellectual property assets. It’s one of the largest assets you can have. IP is more than 75% of the fortune 500 companies

What is the significance of competition in intellectual property?

The protections from competition that intellectual property gives ensures that people feel incentivized to research something, knowing they will be the people to benefit from it.

What is the significance of capturing in intellectual property?

Steps must be taken in order to protect the time, effort, money, invested into creation of these assets. Once an asset is in PD (public domain), you can’t place a patent on it after the fact.

Uniform trade secrets act

Trade secrets don’t have to be unique to be protected

To violate, one must improperly misappropriate

Establishing the Existence of a Trade Secret

Conduct a trade secret audit to identify confidential knowledge based resources. (customer lists)

Al Minor & Associates, Inc. V. Martin

Al kept customer lists as trade secrets. Hired Martin. Martin wanted to go out on his own and make his own money, to start his own business. He doesn’t take any documents from Al Minor with him. He memorized the customer list. He got 15 AMA customers. AMA sued for monetary damages and watned to order him to stop.

Many states have declared that memorized information is grounds for a trade secret violation. They distinguish between skills (not trade secrets), and knowing and utilizing trade secrets that are protected.

Misappropriation

When one improperly acquires or discloses secret information

Independent creation and reverse engineering are exempted

Patent law is associated with what?

An inventive act

Patent

An exclusive right created by statute created by the PTO for a limited time

Types of Patents

Utility patent, design patent, plant patent

Utility patent

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

Design Patent

A patent on the design of something

Plant Patent

Only applies to new varieties of asexually reproduced plants

Steps to obtaining a patent

File application

Filing fee

Explain invention

Show difference from prior art

Describe patentable aspects

Evaluation by the patent examiner

Who can you hire to help you file a patent application

A patent lawyer or a patent agent to help you through this process

America Invents act

Obama signed a big revision saying the first to file wins over first to invent

Characteristics of Patents

Novelty, non-obviousness, utility

Novelty

The claimed invention must not be identical to anything else when the applicant started invention. (something new and different from the prior art, can’t be in media before, one year exception but risky)

Nonobviousness

A claim is non obvious if a person skilled in that technology says the invention provides a new utility that is unexpected.

Ability of an invention to produce surprising or unexpected results

Can’t patent naturally occurring things. You can name a new flower you discover but not patent it

Can’t patent matehmatic information that reveals something about the universe.

Can’t patent abstract ideas.

Utility

It has to do something. Has to be useful. Doesn’t have to do what you thought it was going to do, it just has to do

Must do something useful

Association for Molecular pathology v. Myriad genetics

Myriad genetics found a gene that causes breast and ovarian cancer, then they patented it. Association for Molecular Pathology challenged their patent. The court found Myriad didn’t do anything to the genes, they just discovered them. They can’t patent a naturally occurring gene in the body.

Alice Corporation Pty. Ltd. v. CLS Bank Int’l

Alice owns several patents. Computer program to mitigate risks in financial transactions. Software was put in place to replace the people who were doing this risk mitigation. CLS is using a similar software as Alice. CLS says patents are invalid, Alice countersues for infringement. An idea itself is not patentable. He says you can’t have a computer just execute an abstract idea and patent it. The idea itself isn’t patentable just because you told a computer to do it.

Patent enforcement

Patent owner can sue against infringement for injunction and damages

Invention can cover methods and articles that can overlap

Overlapping rights provide an opportunity to purchase patents rights and sue companies (patent trolls)

Trademarks

Marks on what is produced to represent the origin of goods & services

Recognizability or distinctiveness

Protection against confusion

Marks Protected by the Lanham Act of 1946

Trademark

Service mark

Certification mark

Collective mark

Trade Dress

Service mark

Associated with a service

Certification Mark

Used by someone other than the owner to certify the quality of the good or service. it meets certain product standards

Collective mark

Represent membership in a collective organization (like the SEC)

Trade dress

The protection that extends to the look or design of a product or service. The visual presentation

The design of a bottle, the interior design of a restaurant

Color Mark

You can get one but it’s really hard to. Gives you the rights to a color.

Sound Mark

If a consumer can correlate a sound with a specific company’s good or service

How can PTO deny registration?

If it is…

Same or similar to another mark

Prohibited or reserved names or designs

Names or likeness without permission

Descriptive

Generic

NO LONGER CAN DENY

Disparaging

Immoral, scandalous names or symbols

Matal v. Tam

There was a band of people of asian descent. They wanted to be named teh slants. PTO denies it, saying it’s a disparaging remark. Because it allows the government to violate the first amendment. Says the “slants” is hurtful to a marginalized community. Allows the name. Says the PTO can’t deny people their name because it’s disparaging because it’s viewpoint discrimination.

Iancu v. Brunetti

Tried to name their band “FUCT”. A skateboarding brand. PTO said it’s immoral and scandalous. The supreme court said this is viewpoint discrimination, so they should be allowed to be named what they want even if it’s immoral or scandalous.

Trademark registration process

PTO places the mark in the Official Gazette

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.

Infringement

Civil violation of a trademark

Jack Daniel’s Properties, Inc. v. VIP Products LLC

Bad Spaniels and Jack Daniels. VIP Products said it was a parody. They didn’t win

What happens if your mark is determined to be generic

You lose your mark.

Kraft Foods Groups Brands LLC v. Cracker Barrel Old Country Store Inc.

Old Country Store wanted to bring their products into the grocery store. Kraft sued because tehy have cracker barrel cheeses. Kraft said consumers were gonna get confused and not like Old Country Store’s products, thinking that it’s Kraft. The court ruled the likelihood of confusion would be detrimental to Kraft. The court said Old Country Store has cheap food and people are dumb and it would hurt Kraft’s brand image.

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.

Types of Trademark Dilution

Blurring and tarnishment

Blurring

When usage of a mark blurs distinctiveness of a famous mark

Tarnishment

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

Criteria for copyright protection

Work must be original

Must be fixed in a tangible medium of expression

Must show creative expression

Individuals: Author’s life plus 70 years

Company: 95 years from publication OR 120 years

What do you have to establish was violated in order to prove copyright infringement

Violation of…

Reproduction, creation of derivative works, distribution, performance, display

Google LLC v. Oracle America Inc.

Court used API’s (code") for samsung phones by Oracle. Court sided with google, can’t copyright code.

Closely Held

Organizations owned by a few people

Family owned

Owned by five or less people

Publicly held

Organizations owned by hundreds or even thousands of people

Forms of business organizations

Basic: Sole proprietorship, general partnerships, corporations

Hybrid: Limited partnership, S corporations, limited liability companies, limited liability partnerships

Factors to consider when selecting a business’s organizational form

Cost of creation, continuity of the organization, managerial control of decision

Owner liability, taxation

Cost of creation

How much, how long, how difficult

Continuity of the organization

Concerned with the sustainability

Dissolution

Change in the ownership of an organization which changes its legal structure

Terminated

Ending the business’s legal status. The business is liquidated. The name of the organization is going to be removed from the official registry.

Managerial control of decision

Who’smanaging the business organization? How will they resolve the conflict?

Owner Liability

To what degree is the owner of the business personally liable for the debts of the organization. How much is the owner liable for the conduct of the business? Often owners want to limit this.

Taxation

Some organizations are single-taxed, other organizations are double taxed

Sole proprietorship

Least expensive business organization to create

Proprietorship’s continuity is tied directly to the will of the owner

Sole proprietorship is in total control of the business’s goals and operations

Owner has unlimited liability for the obligations of the business organization

Not taxed as an organization

Ownership of the sole proprietorship cannot be transferred.

Partnerships

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

Advantage of partnerships

Easy and inexpensive to form

Shared financial commitment

Disadvantage

Joint unlimited liability

Disagreements

Shared profits - it’s hard to figure out who worked the most adn who deserves the most

Even if you don’t intend to have a partnership, it can automatically be one if everything points to that.

Corporations

Artificial and intangible entity created under the authority of a state’s law

Types of corporations

Domestic, foreign, alien

Domestic corporation

Known as a domestic corporation in the state you were created

Foreign corporation

In any other state than you set up and register you are known as a this

Alien Corporation

How you are known to a corporation from another country.