Patent Trademark Trade Secret Law Jody Blanke Professor
Patent, Trademark & Trade Secret Law Jody Blanke, Professor Computer Information Systems and Law Mercer University, Atlanta 1
Patent Law Article I, Section 8 of the Constitution To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries 2
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Protection Patents protect the underlying idea whereas copyrights protect only an expression (of an idea) e. g. , Thomas Edison v. Joe Schmoe Patents last for 20 years (from date of filing) Patents protect from independent creation copyrights do not U. S. now protects first to file, not first to invent as of March 16, 2013 (America Invents Act (2011)) 7
§ 101 Subject Matter Invention must be new and useful process machine manufacture, or composition of matter Can include “anything under the sun that is made by man. ” Cannot include laws of nature, scientific principles, mathematical formulas 8
§ 102 Novelty Cannot get a patent if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” “Absolute novelty” 9
§ 103 Nonobviousness Cannot get a patent if “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains” 10
Molecular Pathology v. Myriad Genetics (2013) A patent was claimed on the test to determine if a woman carried the BRCA 2 gene The test cost $4, 000 The Supreme Court held that "A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but c. DNA [a strand of syntheticallyproduced complementary DNA] is patent eligible because it is not naturally occurring. " 11
Patent Trolls 12
Trademark Law Combination of federal and state law Authority of federal law derives from regulation of interstate commerce Authority of state law derives from regulation of intrastate commerce 13
Protects Dual Interests Protects trademark owner’s interest in brand name value and good will Protects consumers from confusion Renewable every 10 years 14
Trademarks can be … Words Phrases Symbols Sounds Colors Smells 15
Generics 16
Generics Dixie Cups Frisbee Hi-Liter Kitty Litter Kleenex Magic Marker Ping-Pong Popsicle Scotch Tape Sheetrock TV Dinners Wiffle Ball Cellophane Corn Flakes Dry Ice Lanolin Mimeograph Monopoly Pogo Stick Raisin Bran Shredded Wheat Thermos Toll House Trampoline 17
Strength of Protection 1. Fancful e. g. , Kodak, Atari, Exxon 2. Arbitrary e. g. , Apple, Amazon 3. Suggestive e. g. , Chicken of the Sea, Dairy Queen 4. Descriptive 5. Generic (must acquire a secondary meaning) e. g. , Computerland, Ben & Jerrys e. g. , zipper, elevator 18
Trademark Infringement “Likelihood of confusion” standard Court looks at factors like similarity of goods sophistication of consumers length of time that mark has been used wrongful intent 19
Lexus/Lexis Mead Data Corp. sued Toyota in 1989 Toyota won court found little chance of confusion perspective luxury car buyer won’t come home with a legal database instead and vice versa 20
Trademark Dilution Federal Trademark Dilution Act of 1996 prior to 1996, 28 states had anti-dilution laws Under the Trademark Dilution Revision Act of 2006, must show “famous” mark – as "widely recognized by the general consuming public of the United States” “likelihood of dilution” (rather than “actual dilution”) 21
Microsoft Sandwich Shoppe Makes a great sandwich Becomes very popular “Let’s go to Microsoft” dilution by blurring But after a very unfortunate e-coli incident dilution by tarnishment 22
Lexus/Lexis Revisited Would there be infringement today? Would there be dilution today? 23
Web Domain Names New frontier for trademark law Early “entrepreneurs” registered www. mtv. com www. abc. com www. sex. com Today we call them cybersquatters 24
www. delta. com 1996 25
www. delta. com April 2000 26
www. delta. com August 2000 27
www. delta. com October 2000 28
www. nissan. com 1996 29
www. nissan. com 1999 30
www. nissan. com 2016 31
www. google. com 32
www. froogle. com 2004 33
www. booble. com 2004 34
www. booble. com 2005 35
Contested Domain Names www. playboyxxx. com www. asianplayboy. com www. lucentsucks. com www. amazom. com 36
Trade Secret Law The Coke Formula “This Coca-Cola formula appears to be the original formula to Coca-Cola. An author named Mark Pendergrast wrote a book about Coca-Cola entitled For God, Country and Coca-Cola. In writing this book he was able to interview just about anybody he wanted within Coca-Cola, and was also granted access to the vast archives of Coca-Cola. ” http: //www. sodamuseum. bigstep. com/generic. jhtml? pid=10 37
Trade Secret Law Restatement (First) of Torts § 757 A trade secret may consist of any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it. It may be a formula for a chemical compound, a process of manufacturing, treating or preserving material, a pattern for a machine or other device, or a list of customers. 38
Coke’s Secret Vault 39
Factors Used to Determine Whether There is a Trade Secret The extent to which the information is known outside of its owner's business The extent to which it is known by employees and others involved in its owner's business The extent of measures taken by the owner to guard the secrecy of the information The value of the information to its owner and to its competitors The amount of effort or money expended by its owner in developing the information The ease or difficulty with which the information could be properly acquired or duplicated by others. 40
Uniform Trade Secrets Act "Trade secret" means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. 41
Georgia UTSA "Trade secret" means information, without regard to form, including, but not limited to, technical or nontechnical data, a formula, a pattern, a compilation, a program, a device, a method, a technique, a drawing, a process, financial data, financial plans, product plans, or a list of actual or potential customers or suppliers which is not commonly known by or available to the public and which information: 42
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