OVERVIEW OF INTELLECTUAL PROPERTY LAW PROF PAUL JANICKE

OVERVIEW OF INTELLECTUAL PROPERTY LAW PROF. PAUL JANICKE INSTITUTE FOR INTELLECTUAL PROPERTY & INFORMATION LAW UNIVERSITY OF HOUSTON LAW CENTER 2015

COPYRIGHT • STATUTE: 17 U. S. C. – PREEMPTS SIMILAR STATE LAWS • PROTECTS “WORKS OF AUTHORSHIP” (§ 102) – BOOKS, ARTICLES, POEMS, PLAYS – PHOTOS, DRAWINGS, PAINTINGS 2015 – FILMS – MUSIC – SOFTWARE IP Survey -- OVERVIEW – COMPILATIONS 2

REQUIREMENTS • FIX THE WORK IN A TANGIBLE MEDIUM (§ 102(a)) • PROTECTION IS AUTOMATIC – NO PAPERWORK NEEDED – NO NOTICE NEEDED – NO REGISTRATION NEEDED 2015 IP Survey -- OVERVIEW 3

NOT A VERB • ONCE THE WORK IS FIXED, COPYRIGHTS AUTOMATICALLY EXIST – CAUSES OF ACTION ACCRUE AGAINST ANY COPIERS 2015 IP Survey -- OVERVIEW 4

PROPER / IMPROPER TO SAY: • IMPROPER TO SAY “HE IS GOING TO COPYRIGHT HIS POEM”; OR “THE LAWYER WILL COPYRIGHT IT FOR HIM. ” • PROPER: THE WORK IS COPYRIGHTED 2015 IP Survey -- OVERVIEW 5

PROPER TO SAY: • THE WORK IS UNDER A REGISTERED COPYRIGHT (IF TRUE) • REGISTRATION IS OPTIONAL 2015 IP Survey -- OVERVIEW 6

PROTECTION IS AGAINST: • COPYING SUBSTANTIAL PORTIONS • MAKING DERIVATIVE WORK FROM THE ORIGINAL • NO PROTECTION AGAINST: – INDEPENDENT CREATION – FAIR USE OF SMALL PORTIONS 2015 IP Survey -- OVERVIEW 7

DURATION • LIFE OF AUTHOR PLUS 70 YEARS • IF JOINT AUTHORS, LAST SURVIVOR PLUS 70 YEARS 2015 IP Survey -- OVERVIEW 8

TRADEMARKS ARE BRANDS • LIKE CATTLE BRANDS • MUST BE USED ON GOODS OR CONTAINERS • THEY SIGNAL A COMMON SOURCE, OR AT LEAST COMMON SOURCE OF QUALITY CONTROL 2015 IP Survey -- OVERVIEW 9

AUTOMATIC RIGHTS • RIGHTS EXIST UPON USE IN COMMERCE • REGISTRATION IS OPTIONAL • NO VERB “TRADEMARK” 2015 IP Survey -- OVERVIEW 10

NO RIGHTS • FROM THINKING ABOUT A MARK, EVEN IF FIRST TO DO SO 2015 IP Survey -- OVERVIEW 11

TRADEMARK CAN BE: • A WORD: FORD • A GROUP OF WORDS: COMPAQ DESKPRO • A PHRASE: HAVE IT YOUR WAY • A LOGO: [WE’LL SEE SOME] 2015 IP Survey -- OVERVIEW 12

REQUIREMENTS FOR MARK OWNERSHIP AND ENFORCEMENT: 1. PLACE THE MARK ON GOODS, CONTAINERS; and 2. MOVE THE MARKED GOODS IN COMMERCE. • REGISTRATION IS NOT NEEDED! • 2015 DON’T SAY “TRADEMARK” AS A VERB! IP Survey -- OVERVIEW 13

TRADEMARK’S FIRST COUSIN: SERVICE MARK • USED “IN CONNECTION WITH” SERVICES, TO SIGNAL COMMON SOURCE • USE CAN BE IN ADVERTISING • SERVICES MUST ACTUALLY BE RENDERED IN COMMERCE 2015 IP Survey -- OVERVIEW 14

EXAMPLES OF SERVICE MARKS: • MERRILL LYNCH • Mc. DONALD’S [WORD] • [GOLDEN ARCHES] for Mc. DONALD’S • DALLAS COWBOYS • HOLIDAY INN 2015 IP Survey -- OVERVIEW 15

REQUIREMENTS FOR OWNING A SERVICE MARK: • USE THE MARK IN COMMERCE FOR ACTUAL COMMERCIAL SERVICES – EXCLUSIVE RIGHT ARISES FROM FIRST USE IN COMMERCE – REGISTRATION IS NOT NEEDED 2015 IP Survey -- OVERVIEW 16

WHAT KIND OF MARK IS THIS? 2015 IP Survey -- OVERVIEW 17

WHAT KIND OF MARK? 2015 IP Survey -- OVERVIEW 18

WHAT KIND OF MARK? 2015 IP Survey -- OVERVIEW 19

WHAT KIND OF MARK? 2015 IP Survey -- OVERVIEW 20

WHAT KIND OF MARK? 2015 IP Survey -- OVERVIEW 21

NATURE OF RIGHTS IN MARKS • PREVENT OTHERS FROM USING SAME OR SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY • NOT A RIGHT TO PREVENT ALL USES OF THE WORD! – “CADILLAC” FOR CARS AND DOG FOOD – “CHAMPION” FOR PAPER; AND BOXING GLOVES; AND SPARK PLUGS 2015 IP Survey -- OVERVIEW 22

DURATION OF THE EXCLUSIVE RIGHT • FOREVER, AS LONG AS YOU ARE USING IT IN COMMERCE, PROVIDED - – IT DOES NOT BECOME GENERIC – IT DOES NOT LOSE ITS CHARACTER AS A SINGLE-SOURCE INDICATOR [e. g. , BY ALLOWING OTHERS TO USE IT WITHOUT QUALITY CONTROLS] 2015 IP Survey -- OVERVIEW 23

TRADE SECRET • ANY TYPE OF COMPETITIVELY VALUABLE INFO [BUSINESS; TECHNICAL] • MUST NOT BE GENERALLY KNOWN IN THE INDUSTRY • MUST BE SUBJECT TO REASONABLE PRECAUTIONS TO PRESERVE SECRECY 2015 IP Survey -- OVERVIEW 24

STATE LAW • GOVERNS ALMOST ENTIRELY • THERE IS NO FEDERAL PRIVATE ACTION FOR TRADE SECRET MISAPPROPRIATION • CRIMINAL ACTIONS (STATE AND FEDERAL) ARE POSSIBLE, BUT FAIRLY RARE 2015 IP Survey -- OVERVIEW 25

EXAMPLES OF TRADE SECRETS: • COMPANY’S FUTURE PRICING OR DISCOUNT INTENTIONS • COMPANY’S MARKET-EXPANSION INTENTIONS • COMPANY’S PLANNED ACQUISITIONS OF OTHER BUSINESSES • TECHNICAL INFORMATION 2015 IP Survey -- OVERVIEW 26

TYPICAL STEPS TO PRESERVE SECRECY • EMPLOYEE CONTRACTS • MARKING DOCUMENTS “CONFIDENTIAL” • WRITTEN POLICY STATEMENTS • EXIT INTERVIEWS 2015 IP Survey -- OVERVIEW 27

FORMALITIES FOR PROTECTION AND BRINGING SUIT • NONE • NO TYPE OF CERTIFICATE IS AVAILABLE 2015 IP Survey -- OVERVIEW 28

WHAT IS MISAPPROPRIATION? • USING A PROPERLY LEARNED PROTECTED SECRET WITHOUT PERMISSION [90% OF CASES] • LEARNING THE PROTECTED SECRET BY BREACH OF CONFIDENCE OR OTHER ILLEGAL MEANS [10% OF CASES] 2015 IP Survey -- OVERVIEW 29

LEARNING INDEPENDENTLY IS OK • INCLUDES REVERSE ENGINEERING OF A PUBLICLY AVAILABLE PRODUCT 2015 IP Survey -- OVERVIEW 30

PATENT LAW • EXCLUSIVELY FEDERAL LAW – 35 U. S. C. GOVERNS IT • THE ONLY TYPE OF I. P. WHERE A GOVERNMENT GRANT, OR GOVERNMENT-ISSUED DOCUMENT, IS REQUIRED 2015 IP Survey -- OVERVIEW 31

COSTS • ARE EXPENSIVE • USUALLY AT LEAST $2, 000 JUST TO GET ON FILE [ATTY. FEES; GOVT. FEE] • FOREIGN COUNTERPARTS ARE EVEN MORE EXPENSIVE • ISSUE FEES AND MAINTENANCE FEES APPLY IN EACH COUNTRY 2015 IP Survey -- OVERVIEW 32

WHAT CAN BE PATENTED 35 USC 101 • MANUFACTURES • MACHINES • COMPOSITIONS OF MATTER • METHODS (OF MAKING OR USING SOMETHING) – SOFTWARE IS SOMETIMES ELIGIBLE, IF NOT TOO “ABSTRACT” 2015 IP Survey -- OVERVIEW 33

THINGS THAT ARE INELIGIBLE • IDEAS 2015 IP Survey -- OVERVIEW 34

A FEW MORE THINGS THAT ARE INELIGIBLE • ABSTRACT COMPUTER PROCEDURES, e. g. , MOVING BITS AROUND • WRITTEN MATERIAL WITHOUT A NOVEL PHYSICAL STRUCTURE • NATURALLY OCCURRING SUBSTANCES 2015 IP Survey -- OVERVIEW 35

WHO CAN FILE • WITH RARE EXCEPTIONS, ACTUAL INVENTORS (i. e. , CONCEIVERS) MUST SIGN • THE ASSIGNEES OF THEIR APPLICATIONS CAN THEN TAKE OVER, AND USUALLY DO 2015 IP Survey -- OVERVIEW 36

NOT ALLOWED: • LETTING SOMEONE OTHER THAN THE CONCEIVER “TAKE OUT” THE PATENT • THESE PEOPLE CANNOT MAKE THE REQUIRED OATH OF INVENTORSHIP 2015 IP Survey -- OVERVIEW 37

WHAT DO YOU GET FOR “PATENT PENDING”? • LEGALLY: NOTHING. TERM BEGINS ONLY AT THE GRANT DATE (SOME MINOR RIGHTS AT 18 -MO. PUBLICATION) • MERELY A WARNING TO OTHERS, BUT CAN BE VALUABLE IN THE PRACTICAL WORLD 2015 IP Survey -- OVERVIEW 38

NATURE OF THE RIGHTS • TO EXCLUDE OTHERS FROM COMMERCIALIZING ANY MEMBER OF THE FAMILY CLAIMED – WHETHER OR NOT CONCEIVED BY THE INVENTORS 2015 IP Survey -- OVERVIEW 39

• NO RIGHT TO MAKE OR SELL IS CONFERRED ON THE PATENT OWNER – USUALLY, MANY PATENTS OVERLAP – LICENSES NEEDED FROM THE OTHERS TO PRACTICE YOUR OWN PATENT! – EXAMPLE: COMPUTER SYSTEM 2015 IP Survey -- OVERVIEW 40

GEOGRAPHIC SCOPE • U. S. ACTIVITY ONLY • NO “WORLD PATENT” EXISTS • TREATIES THUS FAR ARE MERELY FOR PAPERWORK SIMPLIFICATION AND QUASI-COMMON EXAMINATION • MUST ISSUE PATENTS AND ENFORCE THEM COUNTRY-BY-COUNTRY 2015 IP Survey -- OVERVIEW 41