Course Review and Final Exam Prep

Course Expectations/Topics

• Week 1: Overview and Significance of IP

  • Introduction to intellectual property (IP) and its importance in various industries.

  • Discussion of different types of IP: patents, copyrights, trademarks, and trade secrets.

  • Economic and social impact of IP.

• Week 2 & 3: Patents/Copyright

  • In-depth study of patents and copyrights.

  • Patentability requirements: novelty, non-obviousness, and utility.

  • Copyright protection for literary, artistic, and musical works.

  • Application processes, legal frameworks, and landmark cases.

• Week 4: Copyright Infringement and Fair Use

  • Examination of copyright infringement issues.

  • Understanding fair use doctrine and its limitations.

  • Analysis of cases involving copyright infringement and fair use.

  • Legal defenses and remedies.

• Week 5: Trademark and Trademark Infringement

  • Exploration of trademarks and their role in branding.

  • Requirements for trademark registration and protection.

  • Analysis of trademark infringement cases and consumer confusion.

  • Trade dress and related issues.

• Week 6: Review and Midterm (Thursday, 5/1)

  • Comprehensive review of the topics covered in the first five weeks.

  • Midterm examination to assess understanding of key concepts.

• Week 7: Trade Secrets and Right of Publicity

  • Study of trade secrets and their protection.

  • Understanding the right of publicity and its implications.

  • Legal and ethical considerations.

• Week 8: Negotiating and Using IP

  • Strategies for negotiating IP agreements.

  • Licensing, assignments, and other IP transactions.

  • Practical considerations for using IP assets.

• Week 9: International Protections and Selected Topics

  • Overview of international IP protection mechanisms.

  • Discussion of treaties, conventions, and agreements.

  • Selected topics based on current developments in IP law.

• Week 10: Review and Final Prep

  • Final review of all course topics.

  • Preparation for the final examination.

• Grading:

  • 1/3 Midterm

  • 2/3 Final

  • Extra Credit

Patents / The Patent Act

• A patent is a grant by the government that gives an inventor exclusive rights to use, sell, and manufacture an invention for a specific period.

  • Patents are territorial rights.

  • Issued by the United States Patent and Trademark Office (USPTO).

  • Essential for protecting inventions and fostering innovation.

• The USPTO grants patents after a detailed application process called prosecution.

  • Examination of the invention's novelty, non-obviousness, and utility.

  • Interaction between the applicant and the patent examiner.

  • Understanding the claims and specifications of the patent application.

• Courts can invalidate patents improperly granted by the USPTO.

  • Legal challenges to the validity of a patent.

  • Grounds for invalidation: prior art, lack of novelty, obviousness, etc.

  • Importance of due diligence in patent prosecution.

• Three types of patents:

  • Design patents: Protects the ornamental design of an article of manufacture.

  • Plant patents: Protects new and distinct asexually reproduced plant varieties.

  • Utility patents: Protects new and useful processes, machines, manufactures, or compositions of matter.

Patentable Inventions

• Products: Physical items or tangible objects.

  • Examples: machines, devices, tools, and manufactured goods.

• Processes: Methods or ways of doing something.

  • Examples: industrial processes, chemical reactions, and software algorithms.

  • A new way of doing something old can be patentable.

  • Improvement patents: Enhancements or modifications to existing processes.

  • Addressing specific problems or inefficiencies.

  • More than just an idea; it involves a concrete application.

  • Must be reduced to practice or described in sufficient detail.

  • Theoretical concepts are not patentable without practical implementation.

Types of Patents

• Design Patents:

  • Protects the appearance of an article.

  • Focuses on the visual characteristics of the design.

  • Term: 15 years from the date of grant (changed on May 13, 2015) since the United States adopted the Hague Agreement, which harmonizes design patent practices among participating countries).

• Plant Patents:

  • Protects new plant varieties created through asexual reproduction.

  • Asexual reproduction: Propagation through means other than seeds (e.g., cuttings, grafting).

  • Term: 20 years from the date of application.

• Utility Patents:

  • Covers useful inventions or processes.

  • Includes machines, manufactures, compositions of matter, and processes.

  • Most common type of patent.

  • Term: 20 years from the date of application.

Review - Types of Patents

• Utility Patents:

  • Covers processes, machines, manufactures, compositions of matter, or improvements thereof.

  • Requirements: Novelty, utility, and non-obviousness.

  • Novelty: The invention must be new and not previously known or described.

  • Utility: The invention must have a practical purpose or use.

  • Non-obviousness: The invention must not be an obvious modification of existing technology to a person skilled in the art.

• Plant Patents:

  • Least issued patent type.

  • Requires asexual reproduction and distinctiveness.

• Design Patents:

  • Protects new and original designs for manufactured products.

  • Focuses on ornamental or aesthetic aspects.

What is Not Patentable?

• Ideas

  • Abstract concepts without concrete implementation.

• Laws of nature/natural occurrences

  • Scientific principles or phenomena.

• Math formulas

  • Mathematical equations or algorithms.

• Mental processes

  • Cognitive activities performed by the human mind.

• Discoveries of scientific principles

  • Discovering a new element but not using it is not patentable

• Non-utility inventions

  • Inventions lacking a practical purpose.

• Inventions based on public knowledge

  • If the invention is known by the public it can't be patented

Priority in the Case of Multiple Inventors

• Determining priority:

  • First to invent: The traditional system of granting priority to the first person to conceive and reduce the invention to practice.

  • First to file an application: The current system, where priority is granted to the first inventor to file a patent application.

Patent Holder Rights and Patent Infringement

• Patent holder rights:

  • Exclusive right to make, use, or sell the patented invention during the patent term.

  • Right to prohibit others from using substantially similar products.

  • Right to license the product for a fee.

  • Right to recover damages from unauthorized use.

Patent Infringement

• Definition: Unauthorized making, using, importing, or selling of a patented item, design, or process.

• Statute of Limitations: None explicitly mentioned, but damages are limited.

  • The length of time in which someone is legally allowed to file a claim

• Remedies:

  • Monetary damages, calculated from up to 6 years prior to the lawsuit filing.

  • Injunctive relief to stop infringement.

  • Costs and attorney fees.

Copyrights

• Copyright Definition:

  • Exclusive right to print, reproduce, sell, and display creative works.

  • Legal protection for authors of original works

  • Includes written material, music, art, photographs, movies, TV programs, data systems.

  • Applies to creations in a tangible medium.

Goals of Copyright

• Promote scientific, literary, and artistic creativity.

• Protect the property rights of creators, producers, and performers.

• Limit the scope and duration of rights to prevent monopolies.

What is Copyrightable?

• Requirements:

  • Original work of authorship: Originated with the author.

  • Fixed in a tangible form: Physically rendered expression.

• Examples:

  • Literature, music, drama, art, choreography, sculpture, photography, music composition, etc.

• Not Copyrightable:

  • Minimal creativity (e.g., bus schedules, phone book listings).

  • Facts or ideas alone.

What is Copyright Infringement?

• 17 U.S. Code § 106 outlines exclusive rights of copyright owners:

  • Reproduction

  • Derivative works

  • Distribution

  • Public performance (literary, musical, dramatic, choreographic works, pantomimes, motion pictures)

  • Public display (literary, musical, dramatic, choreographic works, pantomimes, pictorial, graphic, sculptural works)

  • Digital audio transmission (sound recordings)

Copyright Act of 1976

• Copyright owners have six exclusive rights:

  • Reproduction

  • Derivative works

  • Performance

  • Distribution

  • Display

  • Digital transmission performance

Term of Copyright

• Typically lasts for the life of the creator plus 70 years.

• Shop Rights Doctrine applies.

  • Work made for hire: Typically lasts between 95-120 years, depending on the publication date.

  • Example: Work belongs to the author’s employer.

Reference to Copyright Act of 1976 (Revised)

• Revisions clarify:

  • Copyright requires originality (§102(a)).

  • Facts are never original (§102(b)).

  • Copyright in a compilation doesn't extend to the facts (§103(b)).

  • A compilation is copyrightable only if it features original selection, coordination, or arrangement (§101).

Section III of Case – Copyright Infringement, Citing Harper v. Row

• Elements for copyright infringement:

  • Ownership of a valid copyright.

  • Copying of constituent elements of the work that are original.

Supreme Court’s Holding (Star Athletica v. Varsity Brands)

• Artistic feature of a useful article is eligible for copyright if:

  • It can be perceived as a 2D or 3D work of art separate from the useful article.

  • It would qualify as a protectable pictorial, graphic, or sculptural work on its own.

Rocky Anderson v. Stallone

• Court’s findings:

  • Defendants entitled to summary judgment.

  • Anderson’s treatment is an infringing work.

  • Rocky IV is not substantially similar to Anderson’s treatment.

What is Copyright Infringement?

• Exercising one of the six exclusive copyrights without permission.

• Infringement liability may exist regardless of intent.

• Copying a protected work may be infringement even for noncommercial purposes.

Copyright Infringement and the Copyright Act

• Elements:

  • Evidence that the work was original.

  • (a) Infringer actually copied the work or (b) had access and the works are substantially similar.

Common Legal Defenses

• Statute of limitations (too much time elapsed).

• Fair use.

• Innocent infringement (no reason to know the work was protected).

• Authorized use via license.

Fair Use: Defense to Copyright Infringement

• Permits limited use without permission for transformative purposes.

• Examples: Scholarship, research, criticism, or journalism.

• Four-factor test:

  • Purpose and character of the use.

  • Nature of the copyrighted work.

  • Amount and proportion of work used.

  • Effect upon the potential market.

Case Discussions

• Campbell v. Acuff Rose Music

• Andy Warhol Foundation v. Goldsmith

Case Discussion: Fair Use Factors

• Factors to consider in fair use cases:

  • (1) Purpose and character of the use (commercial vs. nonprofit educational).

  • (2) Nature of the copyrighted work.

  • (3) Amount and substantiality of the portion used.

  • (4) Effect of the use upon the potential market.

Trademarks

• Definition: Combination of words and/or symbols to identify and distinguish products/services.

  • Brand names, logos, and other identifiers

  • Protects brand identity and prevents consumer confusion

• Validity: 10 years, renewable for unlimited 10-year terms if the mark is in use.

• Lanham Act: Application filed with the PTO; accepted if the mark is in use in interstate commerce or promised for use within six months.

  • Governs trademark law in the United States

  • Requires use in commerce for federal registration

Factors to Consider for “Consumer Confusion”

• Strength of the mark

• Proximity of goods

• Similarity of the marks

• Evidence of actual confusion

• Marketing channels

• Type of goods and purchaser care

• Intent

• Likelihood of expansion

Trade Dress

• Lanham Act protection extended to protect trade dress.

• Definition: Overall visual image or appearance of a product/service that identifies its source.

  • Packaging, product design, and other elements that create a unique visual impression

Possible Defenses to Trademark Infringement

• Using a descriptive work/image in its descriptive sense, not as a trademark.

  • Fair use defense: Using the mark to describe the product or service, not as a brand identifier

• Using another’s mark to compare or describe aspects of your own goods/services.

  • Nominative fair use: Using the mark to refer to the trademark holder's products or services

• Parody or satirical use (low likelihood of confusion).

  • Satirical works are less likely to cause consumer confusion

Discussion: Jerry Falwell Case

• Critic registered "fallwell.com" (misspelled) to criticize the minister's views.

• Disclaimer indicating it was not affiliated with Reverend Falwell.

• The minister sued, alleging trademark law violation.

Remedies Available for Trademark Infringement

• Injunction

• Destruction of infringing material

• Up to three times actual damages

• Infringer's profits

• Attorney fees

Case Discussions

• Pim Brands, Inc. v. Haribo of America Inc.

• Jack Daniels v. VIP Products

Trade Secrets / Right of Publicity

• What is a Trade Secret?

  • Information with actual or potential commercial value.

  • Maintained in confidence.

  • Not known to competitors.

  • Public disclosure ends trade secret status.

Uniform Trade Secrets Act - Characteristics and Examples

• Not known outside the business entity.

• Known only by employees/others involved in the business (limited access, NDAs).

• Reasonable measures to guard secrecy.

• Valuable.

• Difficult for others to properly acquire or duplicate.

Federal Economic Espionage Act of 1996 (EEA)

• Applies to:

  • Physically taking records/articles reflecting trade secrets.

  • Copying/photographing such records/articles.

  • Assisting in these acts.

  • Disclosing trade secrets after receiving knowledge during employment.

• Case example: United States v. Roarke (2019)

• Note: Duty of confidentiality in the legal profession.

Right of Publicity

• Individuals have exclusive rights to their name, likeness, photograph, voice, and personal characteristics in marketing.

  • Right to privacy.

  • Economic exploitation.

Post-Mortem Rights

• Consider where the celebrity was legally domiciled at the time of death.

Transformative Use Test

• Balances right of publicity with First Amendment rights.

  • Celebrity’s right to control the commercial use of their identity.

  • Creator’s right to free speech and artistic expression.

Transformative Use Test Details

• Has the defendant added enough original expression to transform the likeness into something new, or is it just commercial exploitation?

  • Parody or satire.

  • Significant stylistic alteration.

  • Commentary or biography.

• Vs.

  • Direct replication of a celebrity’s photo or likeness.

  • Use where the fame of the individual is the main draw.

Cases

• Haelen Laboratories, Inc. v. Topps Chewing Gum (1953)

• White v. Samsung Electronics America Inc. (1992)

Working With and Negotiating IP

• Licensing Agreements

  • Licensor vs. Licensee: Contract where licensor allows licensee to use IP in exchange for a fee or royalty.

  • Exclusive arrangement: Grants sole rights to use IP.

  • Non-Exclusive arrangement: Allows the licensor to license to multiple licensees.

Considerations for Licensing Agreements

• Length of contract

• Terms of contract

• Exclusivity?

• Royalty details and payment details

• Minimum sales level?

• Dispute resolution

Assignments

• The seller (assignor) transfers ownership permanently to the buyer (assignee).

• Buyer gains the right to sue for infringement.

• Seller has no further claim/rights to the IP ownership.

Cease and Desist (“Stop” and “Not Continue”)

• Legal notice demanding the stop of a specific activity that is believed to be unlawful or infringing.

• Warns that legal action may be taken if the activity does not cease.

• Difference from demand letter.

Non-Disclosure Agreements (NDA)

• A contract that establishes a confidential relationship.

• One party holds sensitive information, and the other agrees not to disclose it.

• Feature Confidentiality Agreements (CDAs) vs. Non-Disclosure Agreements (NDAs).

• CDA: Mutual, across parties, broader scope, joint ventures, mutual exchange of information.

• NDA: Unilateral, one-to-one, very focused scope, businesses deals, specific data protection.

Non-Compete Agreements

• Agreements restricting an employee from working for a competitor or starting a competing business after employment ends.
  *Note: The profession requires curiosity and self-initiative.

Non-Compete Agreements vs. Section 5 of FTC Act (Unfair/Deceptive Practices)

• FTC in 2024: Banning non-competes

Sport Apparel Client call

• Client desires to expand their line to include athleisure and sports wear.

• Advise them on a brand name and trademark process.

Lunch Meeting- Copy Right Infringement and Resolution to Avoid Litigation

*Musician’s copyrighted song was us without permission in a viral video by Popular You Tube Influencer. Goal is to negotiate to avoid litigation. 10 minutes to plan a strategy.

International Protections

Examples:

• Berne Convention

• Paris Convention

• PCT

• Trademark Law Treaty

• TRIPS

Considerations and Challenges:

• International Treaties and Agreements

• Conflict of Laws

• Conflict of Jurisdiction

• Enforcement Issues

Berne Convention

• International copyright treaty.

• Ensures authors in one member country receive the same copyright protection in other member countries.

Key Features:

• Protection for Literary and Artistic Works

• National Treatment

• Minimum Standards

• No Formalities

• Protection in Member Countries

• Duration of Protection

• Moral Rights

• Exceptions and Limitations

Paris Convention

• National Treatment:-

  • Member countries must treat nationals of other Union countries the same as their own nationals in terms of industrial property protection.

• Treat Right of Priority:-

  • allows applicants to claim the date of their first application in one member country as the filing date in other member countries, within a certain grace period.

• Right Scope-

  • covers a broad range of industrial property rights, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications, and

  • the repression of unfair competition.

Patent Challenges and Solutions

• Right of priority established by the Paris Convention

  • Patent owners have a 12-month period in which to file a ParisConvention application (or a direct national filing application claiming priority) in countries party of Paris Convention.

• The Paris Convention solved some major international filing challenges.

Patent Cooperation Treaty (PCT)

• Allows inventors to seek patent protection in multiple countries simultaneously with a single application.

Key Features & Challenges:

• Single Application:

• International Search and Preliminary Examination

• Language and Formality Requirements

• Reduced Effort and Cost

• Strategic Decision Making

• Some Limitations-

  • Delayed National Filings, Lengthy Process and Not Ideal for All Patents

Trademark Law Treaty

• Easier to apply for and register trademarks internationally (established in 1994)

• Created a standard form for international trademark registration accepted by signatory countries.

TRIPS Agreement

• Agreement on Trade-Related Aspects of Intellectual Property Rights.

• Effective January 1, 1995.

• Most comprehensive multilateral agreement on intellectual property.

TRIPS Key Features

• Minimum Standards

• Scope of Protection

• Trade-Related

• Innovation and Technology Transfer

• Global Consistency

• Enforcement

Final Exam

• 10 MC Questions and Essays (100 points)

• Released Monday 6/9 at 11:30 am, due 10 pm

Thursday-Final Exam Review/ Practice Questions

How strong is it to file a lawsuit

• Send in your questions!

GreenGlow Organics (P) has been selling its "GlowGreen" facial serum nationwide since 2017

• The product is widely recognized due to influencer marketing campaigns, a strong social media presence, and appearances in national beauty magazines.

• In 2024, GlowLife Naturals (D) launches a competing line of skincare products.

• One of its bestsellers is the "GreenGlow Essence" serum, which is packaged in a similar green-and-white design and sold through many of the same online platforms (Amazon, Ulta, etc.).

• As part of its marketing efforts, D also runs commercials showing P’s product and its efficacy against D’s product.

• Shortly after D’s product launch, P begins receiving customer complaints and refund requests for defective products they did not manufacture.

• Their social media accounts also see confusion from users tagging the wrong brand.

• P would like to know the strength of filing a lawsuit against D.

• Discuss

Trademarks

• Definition: Combination of words and/or symbols to identify and distinguish products/services.

  • Brand names, logos, and other identifiers

  • Protects brand identity and prevents consumer confusion

• Validity: 10 years, renewable for unlimited 10-year terms if the mark is in use.

• Lanham Act: Application filed with the PTO; accepted if the mark is in use in interstate commerce or promised for use within six months.

  • Governs trademark law in the United States

  • Requires use in commerce for federal registration

Factors to Consider for “Consumer Confusion”

• Strength of the mark

• Proximity of goods

• Similarity of the marks

• Evidence of actual confusion

• Marketing channels

• Type of goods and purchaser care

• Intent

• Likelihood of expansion

Trade Dress

• Lanham Act protection extended to protect trade dress.

• Definition: Overall visual image or appearance of a product/service that identifies its source.

  • Packaging, product design, and other elements that create a unique visual impression

Possible Defenses to Trademark Infringement

• Using a descriptive work/image in its descriptive sense, not as a trademark.

  • Fair use defense: Using the mark to describe the product or service, not as a brand identifier

• Using another’s mark to compare or describe aspects of your own goods/services.

  • Nominative fair use: Using the mark to refer to the trademark holder's products or services

• Parody or satirical use (low likelihood of confusion).

  • Satirical works are less likely to cause consumer confusion

GreenGlow Organics (P) has been selling its "GlowGreen" facial serum nationwide since 2017

• The product is widely recognized due to influencer marketing campaigns, a strong social media presence, and appearances in national beauty magazines.

• In 2024, GlowLife Naturals (D) launches a competing line of skincare products.

• One of its bestsellers is the "GreenGlow Essence" serum, which is packaged in a similar green-and-white design and sold through many of the same online platforms (Amazon, Ulta, etc.).

• As part of its marketing efforts, D also runs commercials showing P’s product and its efficacy against D’s product.

• Shortly after D’s product launch, P begins receiving customer complaints and refund requests for defective products they did not manufacture.

• Their social media accounts also see confusion from users tagging the wrong brand.

• Before filing a lawsuit against D, P would like to write a letter to D to avoid costly litigation.

• Please draft this letter.

Exercise #3: Trademark (International)

• GreenGlow Organics (C) has grown exponentially in sales.

• C wants to enter the international marketplace and protect its mark.

• How to protect C’s mark internationally?
  *How to work with manufacturers around Asia and the Middle East to globally manufacture C's products.

Paris Convention

• National Treatment:-

  • Member countries must treat nationals of other Union countries the same as their own nationals in terms of industrial property protection.

• Treat Right of Priority:-

  • allows applicants to claim the date of their first application in one member country as the filing date in other member countries, within a certain grace period.

• Right Scope-

  • covers a broad range of industrial property rights, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications, and

  • the repression of unfair competition.

Trademark Law Treaty

• Easier to apply for and register trademarks internationally (established in 1994)

• Created a standard form for international trademark registration accepted by signatory countries.

TRIPS Agreement

• Agreement on Trade-Related Aspects of Intellectual Property Rights.

• Effective January 1, 1995.

• Most comprehensive multilateral agreement on intellectual property.

TRIPS Key Features

• Minimum Standards

• Scope of Protection

• Trade-Related

• Innovation and Technology Transfer

• Global Consistency

• Enforcement

Licensing Agreements

• Licensor vs. Licensee: Contract where licensor allows licensee to use IP in exchange for a fee or royalty.

• Exclusive arrangement: Grants sole rights to use IP.

• Non-Exclusive arrangement: Allows the licensor to license to multiple licensees.

Considerations for Licensing Agreements

• Length of contract

• Terms of contract

• Exclusivity?

• Royalty details and payment details

• Minimum sales level?

• Dispute resolution

Assignments

• The seller (assignor) transfers ownership permanently to the buyer (assignee).

• Buyer gains the right to sue for infringement.

• Seller has no further claim/rights to the IP ownership.