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 2018

COPYRIGHT • STATUTE: 17 U. S. C. – PREEMPTS SIMILAR STATE LAWS • PROTECTS “WORKS OF AUTHORSHIP” (§ 102) – BOOKS, ARTICLES, POEMS, PLAYS – PHOTOS, DRAWINGS, PAINTINGS 2018 – 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 2018 IP Survey -- OVERVIEW 3

NOT A VERB • ONCE THE WORK IS FIXED, COPYRIGHTS AUTOMATICALLY EXIST – CAUSES OF ACTION ACCRUE AGAINST ANY COPIERS 2018 IP Survey -- OVERVIEW 4

YOU CAN’T COPYRIGHT ANYTHING – IT’S ALREADY DONE! • THE WORK IS “COPYRIGHTED” FROM THE MOMENT OF FIXATION • NO PAPERWORK IS NEEDED 2018 IP Survey -- OVERVIEW 5

BUT IT’S OK TO SAY: • “THE WORK IS COPYRIGHTED” • “WE HAVE REGISTERED THE COPYRIGHT” (IF TRUE) • REGISTRATION IS OPTIONAL – BUT NEEDED BEFORE AN INFRINGEMENT SUIT CAN BE COMMENCED 2018 IP Survey -- OVERVIEW 6

PROTECTION IS TO PREVENT: • SOMEONE COPYING SUBSTANTIAL PORTIONS • SOMEONE MAKING A DERIVATIVE WORK FROM THE ORIGINAL • NO PROTECTION AGAINST: 2018 – INDEPENDENT CREATION – FAIR USE OF SMALL PORTIONS IP Survey -- OVERVIEW 7

DURATION: REALLY LONG • LIFE OF AUTHOR PLUS 70 YEARS • IF JOINT AUTHORS, LAST SURVIVOR PLUS 70 YEARS 2018 IP Survey -- OVERVIEW 8

TRADEMARKS: ARE SIMPLY BRANDS • LIKE CATTLE BRANDS • USED ON GOODS OR CONTAINERS, MOVING IN COMMERCE • THE MARK SIGNALS A COMMON SOURCE, OR AT LEAST A COMMON SOURCE OF QUALITY CONTROL 2018 IP Survey -- OVERVIEW 9

THESE TOO ARE AUTOMATIC RIGHTS • TRADEMARK OWNERSHIP EXISTS UPON USE IN COMMERCE • REGISTRATION IS OPTIONAL • NO VERB “TO TRADEMARK” – YOU USE IT, YOU’VE GOT IT 2018 IP Survey -- OVERVIEW 10

YOU HAVE NO RIGHTS • FROM BEING THE FIRST TO THINK OF A MARK, EVEN IF FIRST TO DO SO • FROM PUTTING THE MARK ON GOODS THAT YOU DO NOT SHIP IN COMMERCE 2018 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] 2018 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! • 2018 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 2018 IP Survey -- OVERVIEW 14

EXAMPLES OF SERVICE MARKS: • MERRILL LYNCH • Mc. DONALD’S [WORD] • [GOLDEN ARCHES] for Mc. DONALD’S • DALLAS COWBOYS • HOLIDAY INN 2018 IP Survey -- OVERVIEW 15

REQUIREMENTS FOR OWNING A SERVICE MARK: • USE THE MARK IN COMMERCE FOR ACTUAL COMMERCIAL SERVICES – PRINT IT ON THE PAPERWORK, OR THE STOREFRONT, ETC. – EXCLUSIVE OWNERSHIP ARISES FROM FIRST USE IN COMMERCE – REGISTRATION IS NOT NEEDED 2018 IP Survey -- OVERVIEW 16

NO ONE OWNS A MARK FOR ALL GOODS/SERVICES • YOU OWN A MARK FOR CERTAIN TYPES OF GOODS • OTHERS CAN (AND USUALLY DO) OWN THE MARK FOR OTHER GOODS – EXAMPLE: THERE ARE OVER 100 MARK OWNERS FOR “CHAMPION” 2018 IP Survey -- OVERVIEW 17

WHAT KIND OF MARK IS THIS? 2018 IP Survey -- OVERVIEW 18

WHAT KIND OF MARK? 2018 IP Survey -- OVERVIEW 19

WHAT KIND OF MARK? 2018 IP Survey -- OVERVIEW 20

WHAT KIND OF MARK? 2018 IP Survey -- OVERVIEW 21

WHAT KIND OF MARK? 2018 IP Survey -- OVERVIEW 22

NATURE OF RIGHTS IN MARKS • PREVENT OTHERS FROM USING SAME OR SIMILAR MARK IF CONFUSION WOULD BE LIKELY • NO RIGHT TO PREVENT ALL USES OF THE WORD! – “CADILLAC” FOR CARS AND DOG FOOD – “CHAMPION” FOR PAPER; AND BOXING GLOVES; AND SPARK PLUGS 2018 IP Survey -- OVERVIEW 23

DURATION OF THE EXCLUSIVE RIGHT • FOREVER, AS LONG AS YOU ARE STILL 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 YOUR QUALITY CONTROL] 2018 IP Survey -- OVERVIEW 24

TRADE SECRET • ANY TYPE OF COMPETITIVELY VALUABLE INFO [BUSINESS; TECHNICAL] • MUST NOT BE GENERALLY KNOWN IN THE INDUSTRY • MUST TAKE REASONABLE PRECAUTIONS TO PRESERVE SECRECY 2018 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 2018 IP Survey -- OVERVIEW 26

TYPICAL STEPS TO PRESERVE SECRECY • EMPLOYEE CONTRACTS SPECIFYING ONGOING SECRECY • “CONFIDENTIAL” MARKING ON DOCUMENTS • POSTED/DISTRIBUTED WRITTEN POLICY STATEMENTS • EXIT INTERVIEWS IP Survey -- OVERVIEW 2018 27

GOVERNMENT FORMALITIES • NONE • NO TYPE OF CERTIFICATE IS AVAILABLE 2018 IP Survey -- OVERVIEW 28

WHAT IS “MISAPPROPRIATION”? • USING A PROPERLY LEARNED SECRET WITHOUT PERMISSION [90% OF CASES] • LEARNING THE SECRET THROUGH A BREACH OF CONFIDENCE OR OTHER ILLEGAL MEANS [10% OF CASES] 2018 IP Survey -- OVERVIEW 29

LEARNING THE SECRET INDEPENDENTLY : OK TO USE • THINK OF IT YOURSELF • REVERSE ENGINEERING OF A PUBLICLY AVAILABLE PRODUCT 2018 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 2018 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 2018 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” 2018 IP Survey -- OVERVIEW 33

THINGS THAT ARE INELIGIBLE FOR PATENTING • IDEAS • NATURALLY OCCURRING SUBSTANCES 2018 IP Survey -- OVERVIEW 34

A FEW MORE THINGS THAT ARE INELIGIBLE • ABSTRACT COMPUTER PROCEDURES, e. g. , MOVING BITS AROUND • WRITTEN MATERIALS WITHOUT A NOVEL PHYSICAL STRUCTURE 2018 IP Survey -- OVERVIEW 35

METHODS OF DOING BUSINESS • THESE ARE WIDELY BELIEVED TO BE INELIGIBLE UNDER PRESENT LAW 2018 IP Survey -- OVERVIEW 36

WHO CAN FILE • ACTUAL “INVENTORS” (i. e. , CONCEIVERS) • ASSIGNEE OF AN INVENTION – STILL MUST NAME THE INVENTORS – STILL NEED AN INVENTORS’ STATEMENT FROM THEM 2018 IP Survey -- OVERVIEW 37

NOT ALLOWED: • LETTING SOMEONE OTHER THAN THE CONCEIVER “TAKE OUT” THE PATENT, NAMING HIMSELF AS “INVENTOR” • A FELONY 2018 IP Survey -- OVERVIEW 38

WHAT DO YOU GET FOR “PATENT PENDING”? • LEGALLY: NOTHING. TERM BEGINS ONLY AT THE GRANT DATE • A WARNING TO OTHERS, CAN BE VALUABLE IN THE PRACTICAL WORLD 2018 IP Survey -- OVERVIEW 39

NATURE OF THE RIGHTS • TO EXCLUDE OTHERS FROM COMMERCIALIZING ANY MEMBER OF THE CLAIMED GROUP – ALMOST ALL PATENTS CLAIM FAMILIES OF THINGS (COMPOUNDS, MACHINES), NOT INDIVIDUAL SPECIES 2018 IP Survey -- OVERVIEW 40

• NO RIGHT TO MAKE OR SELL IS CONFERRED ON THE PATENT OWNER – PATENTS OFTEN OVERLAP – LICENSES ARE NEEDED FROM THE OTHERS TO PRACTICE YOUR OWN PATENT! – EXAMPLE: COMPUTER SYSTEM; COMPONENTS MAY BE STILL PATENTED TO OTHERS 2018 IP Survey -- OVERVIEW 41

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 2018 IP Survey -- OVERVIEW 42