Trade Secrets Trademarks and Copyrights Oh My 1

Trade Secrets, Trademarks, and Copyrights, Oh My! 1

What type of IP will we cover today? Trademark Copyright Trade Secret Patent 2

Trade Secret - The Basics • Subject matter: What can be a trade secret? • Information that has independent economic value by virtue of not being generally known • A formula, pattern, compilation of data or information, program, device, method, technique, process, business information & know-how • Three Main Requirements: • Secret • Economic value from secrecy • Reasonable precautions to maintain secrecy • How long does protection last? • For as long as the trade secret stays a trade secret 3

Trade Secret – Reasonable Precautions • Administrative Measures • • Employer-employee agreements Assignment agreements Licensing agreements Training and internal policies • Physical Measures • Restricted access • Securely-locked files • Technical Measures • Encryption of files • Multi-factor authentication • Limited access to folders 4

Trade Secret – Benefits • Can protect information that does not qualify for patent or copyright protection • Can protect information eligible for patent protection, but can be a much cheaper form of protection • Allows companies to keep information secret • Unlimited duration of protection 5

Trade Secret. Misappropriation • Committed by: • Acquiring through improper means • Disclosing a trade secret that was acquired wrongfully, in breach of a duty, or by mistake • Using a trade secret that was acquired wrongfully, in breach of a duty, or by mistake • Defenses: • Valid right to use the trade secret • Not secret information • Discovery through legitimate means • Independent invention, reverse engineering, observation in public use • Remedies: • Injunctions • Damages & punitive damages • Attorneys' fees • Criminal penalties 6

Trade Secret – Wrap Up (1) SECRECY, (2) DERIVES ECONOMIC VALUE FROM ITS SECRECY & (3) GUARDED BY REASOABLE MEANS REASONABLE PRECAUTIONS BENEFITS 7

• Subject matter: What is a trademark? • Any word, name, symbol, device (logo) or combination thereof used to identify and distinguish goods and indicate source thereof Trademark • Two Main Requirements: • Distinctiveness • Use in Commerce • How long does protection last? • So long as the owner uses the mark in commerce 8

Benefits of Trademark • Protection against consumer injury and confusion • Goodwill • Quality assurance, brand presence • Protect from competition • Advertisement • Reduces consumer search costs 9

Trademark - Distinctiveness X no protection X + secondary meaning Generic Descriptive Inherently distinctive Suggestive Arbitrary Fanciful 10

How to Register Your Trademark • Make sure your trademark is not taken • Decide how to describe the goods or services your trademark represents • Decide which class or classes your goods or services fit into • Pricing • $225 per class, if the goods/services description has been approved • $275 per class, if the goods/services description has not been previously approved • 1(a) or 1(b)? • Application and USPTO review • Approval or denial • Total time: it depends 11

Benefits of Registration vs • Validity • Notice • Priority • Incontestability 12

Trademark Infringement • Three main elements: • (1) The mark is protectable (distinctive, used in commerce) • (2) The infringer used the mark in commerce themselves • (3) The infringer's use is likely to cause confusion to the consumer Strength of plaintiff’s mark Similarity of the parties’ marks Relatedness of the parties’ goods or services Similarity of the parties’ trade and marketing channels Defendant's intent Sophistication and degree of care of the relevant consumer group • Existence of actual confusion • • • 13

Genericide Loss of Trademark Rights Non-use and Abandonment Assignment and Licensing 14

Trademark - Wrap up REQUIREMENTS: (1) DISTINCTIVENESS; (2) USE IN COMMERCE BENEFITS OF REGISTRATION LOSS OF TRADEMARK RIGHTS 15

Copyright • Two Main Requirements: • Originality • Fixation in a tangible form • Subject matter: What can be copyrighted? • literature, song, dance, sculpture, graphics, painting, photography, sound, movies, computer programming [Note: this list is NONEXCLUSIVE] • Not: ideas, known facts, functional items • How long does current protection last? • Life of the author + 70 years, or for works for hire 95 years from first publication of work, or 120 years from date of creation, whatever comes first 16

Why get a copyright? • Exclusive rights: • Reproduction • Derivative work • Distribution • Performance • Display 17

Process of Copyrighting Work • AUTOMATIC PROTECTION (once it's fixed!!) [registration is not necessary] • Registration Process • Application & payment of required fee • Deposit a copy with Copyright Office • Must deposit 2 copies of published works, but only one for unpublished works • Examination by Register of Copyrights • Registration (or denial) • Issuance of certificate of registration 18

Benefits of Copyright Registration Benefits of registration? (1) enforce your rights; (2) seek statutory damages and attorneys' fees 19

Works for Hire & Transferability • When will your employer own your work? 2 cases: • (1) A work prepared by an employee within the scope of employment; or • (2) a commissioned work • Must be on the list (202(b)) • Must have an express, written agreement that this is a commissioned work • Transferability? • You need express written agreements to transfer rights, but these can be cancelled by sending advance notice before the term is up • IF the work is a work for hire, the transfer cannot be cancelled!! [remember: the employer is the owner!] 20

Violating an exclusive right without permission Copyright Infringement Access and substantial similarity Examples in music! 21

DEFENSE to infringement ≠ categorical right Fair Use • Purpose & Character • News, commentary, parody, transformative use, etc. • Nature of Work • Factual v. creative • Amount & Substantiality • Quantitative – how much? • Qualitative – is it the heart of the work? • Market Effect • Does it destroy the market for the copyrighted material? • Was there a market at all? 22

Copyright – Wrap Up AUTOMATIC PROTECTION – BUT FORMAL REGISTRATION REQS FAIR USE DEFENSES WORK YOU DO DURING EMPLOYMENT MIGHT BE OWNED BY YOUR EMPLOYER! 23

Visit: www. sites. bu. edu/startuplaw 24