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 AUGUST 2008 F 2008

COPYRIGHT • STATUTE: 17 U. S. C. – PREEMPTS SIMILAR STATE LAWS • PROTECTS “WORKS OF AUTHORSHIP” (§ 102) – BOOKS, ARTICLES, POEMS, PLAYS – PHOTOS, DRAWINGS, PAINTINGS – FILMS – MUSIC – SOFTWARE F 2008 – COMPILATIONS 2

NO PROTECTION FOR THE IDEAS INVOLVED • IDEA/EXPRESSION DICHOTOMY • OTHERS CAN USE THE IDEA (§ 102(b)) – FISHING TRIP TO MONTANA • OTHERS CAN’T USE EXPRESSION: “The trout and sun created a symphony of sight!” F 2008 3

ANOTHER EXAMPLE OF NON-PROTECTION OF IDEA • BOOK ABOUT HOW TO MAKE A CABINET • SOMEONE MAKES A CABINET THAT WAY, BY READING AND FOLLOWING THE BOOK CAREFULLY • THIS IS NOT AN INFRINGEMENT • COPYING THE BOOK WOULD BE F 2008 4

REQUIREMENTS • FIX THE WORK IN A TANGIBLE MEDIUM (§ 102(a)) • NO PAPERWORK NEEDED • NO NOTICE NEEDED • NO REGISTRATION NEEDED F 2008 5

EXCLUSIVE RIGHTS (§ 106) • DISTRIBUTE COPIES – TAKING SUBSTANTIAL PORTION IS INFRINGEMENT • ** PREPARE DERIVATIVE WORKS – TRANSLATIONS – MOVIE OR PLAY FROM BOOK • FOR MUSIC COMPOSERS: – MAKE OR AUTHORIZE THE FIRST RECORDING – PERFORM THE WORK IN PUBLIC INCLUDES RADIO, RESTAURANTS PLAYING RECORDINGS F 2008 6

PERFORMER’S RIGHTS • COPYRIGHT IN SOUND RECORDING: FOR RECORDED PERFORMANCES ONLY • LIVE PERFORMANCES § 1101: – PERFORMERS HAVE RIGHT OF FIXATION – ALSO ILLEGAL TO TRANSMIT FROM A LIVE CONCERT WITHOUT PERMISSION F 2008 7

SOUND RECORDING RIGHTS (SEPARATE FROM COMPOSER’S COPYRIGHT) • RIGHT IS ONLY TO PROHIBIT MECHANICAL DUPLICATION OF THE RECORDING – NO RIGHT AGAINST IMITATION OF STYLE – NO RIGHT TO PREVENT PLAYING OF RECORD COMMERCIALLY F 2008 8

DURATION • LIFE OF AUTHOR PLUS 70 YEARS • IF “MADE FOR HIRE”: EMPLOYER IS OWNER OF COPYRIGHT; DURATION IS 95 YEARS FROM FIRST PUBLICATION (§ 302) F 2008 9

AT THE FRINGE • FAIR USE DEFENSE (§ 107) • DEPENDS ON: – AMOUNT TAKEN – PURPOSE OF TAKING – EFFECT ON MARKET FOR THE ORIGINAL WORK F 2008 10

AT THE FRINGE • FAIR USE IN POLITICAL OR PUBLICINTEREST WORKS: – NO SPECIAL TREATMENT – COPYING IS GENERALLY ILLEGAL – NO DOCTRINE AKIN TO “FAIR COMMENT” IN DEFAMATION LAW F 2008 11

AT THE FRINGE • FAIR USE IN PARODY: – GENERALLY ALLOWED, WITH RESTRICTIONS – CRITICISM OF A TARGET WORK IS ENCOURAGED – AMOUNT TAKEN CAN’T EXCEED WHAT IS NEEDED TO IDENTIFY THE TARGET WORK F 2008 12

AT THE FRINGE • HOME COPYING: MERE TIMESHIFTING OF TV PROGRAMS IS FAIR USE • SITUATION REGARDING TAPING MUSIC IS UNCLEAR F 2008 13

BENEFITS OF REGISTRATION • NEEDED BEFORE COMMENCING SUIT • A FEW EXTRA REMEDIES IN LITIGATION • QUICK AND CHEAP TO GET – $45 – MAIL [NOT ONLINE – COPIES NEEDED] F 2008 14

TRADEMARKS • USED ON GOODS OR IN CLOSE CONNECTION WITH THEM • LIKE CATTLE BRANDS • THEY SIGNAL A COMMON SOURCE, OR AT LEAST AFFILIATION FOR QUALITY CONTROL F 2008 15

TRADEMARK CAN BE: • A WORD: FORD • A PHRASE: COMPAQ DESKPRO • A LOGO: [WE’LL SEE SOME] F 2008 16

REGISTRATIONS AVAILABLE BY VIRTUE OF: • FOR INTERSTATE OR FOREIGN COMMERCE: LANHAM ACT, 15 U. S. C. § 1051 et seq. • FOR INTRASTATE COMMERCE: STATE TRADEMARK LAWS, e. g. , COLO. REV. STAT. §§ 7 -70 -101 to 113; TEX. BUS. & COMM. CODE § 16. 01 F 2008 17

REGISTRATIONS NOT NEEDED • MARK OWNERSHIP ARISES FROM USE, NOT FROM REGISTRATION • STATE COMMON-LAW UNFAIR COMPETITION ACTIONS STILL EXIST FOR UNREGISTERED MARKS • FEDERAL STATUTORY UNFAIR COMPETITION ACTION EXISTS FOR UNREGISTERED MARKS 15 USC 1025(a) F 2008 18

TRADE NAMES, CORPORATE NAMES, ASSUMED NAMES: NOT BROADLY PROTECTED • LAW OF MARKS IS BASED ON USE OF BRAND ON THE GOODS • MOST BUSINESS NAMES ARE NOT USED AS MARKS; e. g. , Ford Motor Company; International Business Machines Corp. • SOME ARE; e. g. , COCA COLA F 2008 19

REQUIREMENTS FOR MARK OWNERSHIP AS AGAINST ALL OTHER USERS: • PLACE THE MARK ON GOODS, CONTAINERS, OR, IF NECESSARY, ON DISPLAYS ASSOCIATED WITH THE GOODS • MOVE THE MARKED GOODS IN COMMERCE F 2008 20

• NO REGISTRATION IS NEEDED • EXCLUSIVITY DERIVES FROM USE IN COMMERCE – NOT FROM THINKING OF THE MARK – NOT FROM SAYING THE MARK OUT LOUD – ETC. • FIRST TO USE OWNS THE MARK F 2008 21

SERVICE MARKS • USED “IN CONNECTION WITH” SERVICES, TO SIGNAL COMMON SOURCE • MARK CAN BE ON ADVERTISING OR BUSINESS DOCUMENTS • SERVICES MUST BE RENDERED IN COMMERCE F 2008 22

EXAMPLES OF SERVICE MARKS: • MERRILL LYNCH • Mc. DONALD’S [WORD] • Mc. DONALD’S [GOLDEN ARCHES] • DALLAS COWBOYS • HOLIDAY INN • MR. GOODWRENCH F 2008 23

REQUIREMENTS FOR SERVICE MARK RIGHTS: • USE THE MARK IN COMMERCE FOR SERVICES • EXCLUSIVE RIGHT DERIVES FROM FIRST USE IN COMMERCE F 2008 24

OTHER TYPES OF MARKS • CERTIFICATION MARK: – “GOOD HOUSEKEEPING” – “UL” [UNDERWRITERS’ LAB. ] • COLLECTIVE – “ROQUEFORT” [COLLECTIVE TRADEMARK] – UAW [COLLECTIVE MEMBERSHIP MARK] F 2008 25

“RESERVING” A MARK • CAN NOW FILE APPL. TO REGISTER BASED ON INTENT TO USE • PROVIDES CONSTRUCTIVE USE AS OF FILING DATE • MUST ACTUALLY USE IN COMMERCE PRIOR TO REGISTRATION F 2008 26

WHAT IS NOT A MARK: • GENERIC NAME OF A THING – “BREAD” FOR BREAD • SOME CLOSE ISSUES: – ASPIRIN – SHREDDED WHEAT – Cf. : KLEENEX; PING-PONG; XEROX F 2008 27

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NATURE OF RIGHTS IN MARKS • PREVENT OTHERS FROM USING SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY • NOT A RIGHT TO PREVENT ALL USES: – “CADILLAC” FOR CARS AND DOG FOOD F 2008 – “CHAMPION” FOR PAPER; AND BOXING GLOVES; AND SPARK PLUGS 38

DURATION OF EXCLUSIVE RIGHT • 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 F 2008 39

TRADE SECRETS • PRIVATE CIVIL ACTIONS: STATE LAW ONLY • MOST STATES HAVE UNIFORM TRADE SECRETS ACT – COL. CIV. CODE 7 -74 -101 - 110 • FEDERAL CRIM. AND GOVT. CIVIL ACTION STATUTE EXISTS – “ECONOMIC ESPIONAGE ACT OF 1996, ” 18 USC §§ 1831 -1839 F 2008 40

SUBJECT MATTER • ANY TYPE OF COMPETITIVELY VALUABLE INFO • CAN’T BE GENERALLY KNOWN IN THE INDUSTRY • MUST TAKE REASONABLE PRECAUTIONS TO PRESERVE SECRECY F 2008 41

TYPICAL STEPS TO PRESERVE SECRECY • EMPLOYEE CONTRACTS • MARKING DOCUMENTS “CONFIDENTIAL” • WRITTEN POLICY STATEMENTS • EXIT INTERVIEWS F 2008 42

FORMALITIES FOR PROTECTION AND BRINGING SUIT • NONE • NO CERTIFICATE, ETC. , IS AVAILABLE F 2008 43

WHAT IS MISAPPROPRIATION? • GAINING THE PROTECTED SECRET BY BREACH OF CONFIDENCE OR OTHER ILLEGAL MEANS • USING A PROPERLY LEARNED PROTECTED SECRET WITHOUT PERMISSION • NO RIGHT IN REM F 2008 44

PATENT LAW • EXCLUSIVELY FEDERAL LAW – 35 USC • AND FEDERAL COURT JURISDICTION – 28 USC § 1338 • THE ONLY TYPE OF I. P. WHERE A GOVERNMENT GRANT IS REQUIRED F 2008 45

PATENT TERM • TERM IS VARIABLE – BEGINS ON THE ISSUANCE DATE – EXPIRES 20 YEARS FROM FILING DATE – TERM IS THEREFORE: 20 YEARS minus TIME SPENT BEFORE THE PATENT & TRADEMARK OFFICE (PTO) F 2008 46

COSTS • ARE EXPENSIVE • USUALLY AT LEAST $2, 000 TO GET ON FILE • FOREIGN COUNTERPARTS ARE EVEN MORE EXPENSIVE • ISSUE FEES AND MAINTENANCE FEES APPLY IN EVERY COUNTRY F 2008 47

COSTS • TYPICAL FOR FULL-TERM COVERAGE IN GROUP OF SEVEN INDUSTRIAL COUNTRIES, INCLUDING MAINTENANCE FEES, TRANSLATIONS, ETC. , WHERE NOTHING GOES WRONG: $140, 000 F 2008 48

WHAT CAN BE PATENTED • ARTICLES OF MANUFACTURE • MACHINES • COMPOSITIONS OF MATTER • METHODS (OF MAKING OR USING SOMETHING) – SOFTWARE IS USUALLY ELIGIBLE, IF NOT TOO ABSTRACT OR GENERIC F 2008 49

A FEW THINGS THAT CAN’T • PURE ABSTRACT PROCEDURES, e. g. , MOVING BITS AROUND • WRITTEN MATERIAL UNASSOCIATED WITH PHYSICAL STRUCTURE F 2008 50

METHODS OF DOING BUSINESS • ARE NOW ELIGIBLE FOR PATENTING – STATE STREET BANK v. SIGNATURE FIN. GROUP, 149 F. 3 d 1368 (FED. CIR. 1998), cert. denied, 1999 U. S. LEXIS 493 (1999) • A NEW FIELD DAY F 2008 51

WHO CAN FILE • IN U. S. , ACTUAL INVENTORS (i. e. , CONCEIVERS) MUST SIGN ONE FORM, IN PERSON OR BY REPRESENTATIVE • ASSIGNEE OF THE APPLICATION CAN THEN TAKE OVER, AND USUALLY DOES F 2008 52

WHAT A PATENT COVERS • A FAMILY OF SIMILAR THINGS, DEFINED BY A “CLAIM” • BROADEST POSSIBLE CLAIM IS THE NAME OF THE GAME • NO ONE WANTS A CLAIM LIMITED TO THE STRUCTURE THE CLIENT ACTUALLY DEVISED -- TOO EASILY AVOIDED F 2008 53

LEGAL CONSTRAINTS ON A CLAIM’S BREADTH • MUST NOT COVER ANY COMBINATION THAT’S OLD • MUST COVER AT LEAST ONE CONFIGURATION SHOWN IN THE DETAILED DESCRIPTION PART OF THE APPLICATION F 2008 54

SOME HELP IN MEETING THOSE REQUIREMENTS • YOU CAN HAVE AS MANY CLAIMS AS YOU LIKE • YOU NEED THE NARROWER ONES IN CASE THE BROAD ONES TURN OUT TO BE INVALID – NO ONE KNOWS ALL THE OLD STUFF F 2008 55

HOW TO FIND THE CLAIMS IN A PATENT • THEY ARE AT THE BACK • THE DRAWINGS AND DETAILED DESCRIPTION ARE AT THE FRONT, BUT ARE GENERALLY IRRELEVANT IN DETERMINING COVERAGE F 2008 56

WHAT DO YOU GET FOR “PATENT PENDING”? • NOTHING. TERM BEGINS ONLY AT THE GRANT DATE • MERELY A WARNING TO OTHERS, AND CAN BE VALUABLE IN THE PRACTICAL WORLD F 2008 57

NATURE OF THE RIGHTS • TO EXCLUDE OTHERS FROM COMMERCIALIZING WITHIN ANY CLAIM (MAKING, USING, SELLING, IMPORTING, ETC. ) -- 35 USC § 271 • NO RIGHT TO MAKE OR SELL IS CONFERRED F 2008 – USUALLY, MANY PATENTS OVERLAP – LICENSES NEEDED FROM THE OTHERS 58

GEOGRAPHIC SCOPE • GENERALLY TO U. S. ACTIVITY ONLY • NO “WORLD PATENT” EXISTS • U. S. TREATIES THUS FAR ARE LIMITED TO JOINT FILING PROCEDURES AND “NATIONAL TREATMENT” IN PATENT OFFICES F 2008 59

• NO COMMON ENFORCEMENT TRIBUNALS • U. S. TRIES TO COMPENSATE FOR THIS LACK BY – TRADE TREATIES CALLING FOR STRONG ENFORCEMENT OF I. P. F 2008 60

WHAT GOOD ARE SEARCHES? • NOT MUCH, UNLESS THEY FIND WHAT THEY’RE LOOKING FOR: ONE MEMBER OF THE PROPOSED CLAIMED FAMILY F 2008 61

• LOTS OF “OLD STUFF” IS HARD TO FIND - - OBSCURE PUBLICATIONS, PRIVATE OFFERS FOR SALE, PENDING APPLICATIONS OF OTHERS, ETC. F 2008 62

EACH CLAIM STANDS ALONE • EACH CLAIM IS A “MINI-PATENT” • IT IS EITHER VALID OR INVALID • IT IS EITHER INFRINGED OR NOT INFRINGED BY SOMETHING • IN LITIGATION, ONE VALID, INFRINGED CLAIM MEANS A WIN FOR THE PATENT-OWNER F 2008 63

SECRECY OF APPLICATIONS • MOST ARE PUBLISHED 18 MONTHS AFTER FILING • SOME ARE KEPT SECRET BY STATUTE UNTIL THE GRANT DATE • UPON GRANT DATE, PATENT IS PRINTED AND WIDELY PUBLISHED, AND APPLICATION FILE IS OPENED F 2008 64