Intellectual Property Outline - DOC by kmaghakhani


									                                                  INTELLECTUAL PROPERTY LAW

           a. Requirement
                    1. Copyright requires that the work be original with the author and fixed in some tangible medium of
                                  a. independently created by author w/ some minimal degree of originality
                                  b. mere translation of a work not original expression of the author
                                  c. some degree of originality is required
                                  d. Form of medium doesn’t matter

            b. Copyrightable material
                     1. Literary works
                     2. Musical works + accompanying words
                     3. Dramatic works + accompanying music
                     4. Choreography
                     5. Fictional & Pictorial characters
                     6. motion picture & audio works
                     7. Sound recordings and Architectural works

            c.   Copyright protection doesn’t extend to
                       1. ideas, procedure, process, system, method of operation, concept, principle, or discovery regardless of
                             i.  Merger Doctrine: when there is only a limited number of ways to express an idea, the expression
                                 merges into the idea & becomes un-protectable
                            ii.  So idea & expression are inseparable no protection & can copy the expression
                       2. Ideas are not protected by copyright only expression is
                             i.  Usually both exist
                       3. Facts are not copyrightable because of the idea expression dichotomy
                             i.  But compilation of fact c/b copyrighted if originality comes from the selection of facts, or
                                 coordination, or arrangement of fact in relation with one another
                       4. Hard work –is not originality
                       5. Utilitarian objects are not copyrightable
                             i.  Caveat: Conceptual Separability: refers to a situation where the pictoral, graphic or sculptural
                                 feature c/b identified separately from & is capable of existing independently from the utilitarian
                                 aspect , then that conceptually artistic aspect may be protectable
                                      a. Note: merger doctrine may apply
            d.   Rights of the Copyright Owner
                       1. The right to reproduce the copyrighted work in copies
                       2. Exclusive right to prepare derivative works
                       3. Exclusive right to distribute copes or the copyrighted work to public sale/ lease or transfer or
                             i.  First Sale doctrine – limits the copyright owners distribution right of any authorized copy or
                                 phonorecord . The owner of a lawfully made copy or phonorecord may sell or otherwise dispose of
                                 that copy
                       4. The right to public performance or display

            e.   Sound recordings
                      1. Music composition is protectable if she is the writer of the composition
                      2. There is copyright in the authorship and in the recording this is separate copyright in each
                      3. Public performance
                            i.   right to reproduce and copy by copyright owner and right to publicly perform the recording
                                     a. ie playing on the radio
                           ii.   recording author doesn’t have the right to public performance on the musical composition,

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           f.   Derivative work
                      1. Derivative work is based on a preexisting work that has been recast, transformed or adapted from the
                          original work. To get derivative protection there must be substantial originality.
                      2. In order for a derivative work to be copyrightable –it must be substantially different from the
                          underlying work
                            i.   ex movie from a book
                           ii.   Wizard of Oz play- party created their own separate copyrightable work so they owed their own
                                 right to that thing – so it was a derivative work but there was copyright separate and apart for
                                 the original work

           g. Copyright formalities
                    1. There are none ,Copyright exists from the moments it created in the fixed tangible form of expression
                        regardless of whether it is published
                    2. It lasts 70 years after your are dead whether published or unpublished
                    3. If it’s a corporate work , for hire or anonymous work or assumed name
                         i.    if its work for hire done by employee
                                    a. then its 70 years plus life of employee, its measured as 95 years from date to
                                         publication or 120 years from the date of creation which ever is longer
                        ii.    Work for hire
                                    a. Must be w/I scope of your employment
                                    b. Is employer directing your conduct
                                    c. Just calling it work for hire doesn’t mean it is
           h. In order for file suit on a copyright
                    1. Copyright registration is not needed for protection; however it is needed as a prerequisite to filing suit
                        & enforcing the copyright
                    2. In order get statutory damages there are 5 requirements
                         i.    must register copyright before infringement to be entitled to statutory damages and attorney
                        ii.    if its infringed before you register but before 3 months of its publication then you can file suit
                               after this

           i.   If you assign your right to copyright to a third party
                      1. When one assigns or grants some or all of copyright to a 3 rd party then within a 5 year period after 35
                           years the author or the heirs can terminate that transfer
                            i.   and its not waivable you can’t contract it away
                      2. However a work for hire can’t get it back ie can’t terminate that transfer

           j.   Copyright Infringement
                      1. TO have Infringement must prove 2 things
                           i.   That the person had access to the original work &
                          ii.   The Copy is substantially similar : whether the audience for whom the work is intended would
                                find the work to be substantially similar in the copyrightable expression
                                    a. usually by circumstantial evidence

                      2.  Contributory liability
                           i.   If you actively caused infringement you are contributory liable
                          ii.   Vicarious ,liability = where employer or the flea market owner c/h done something about it but
                                didn’t & received direct compensation from that act
           k.   Fair Use Defense to Infringement
                      1. Where D used the copyrightable material for fair use he may be considered not to have infringed
                      2. Fair use 4 factors courts will look to
                           i.   Purpose & character of the use- including whether such use is of commercial nature or is for
                                non-profit educational purpose

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                             ii.   The nature of the copyrighted work – here the focus is on the nature of what was copied as
                                   opposed to the nature of the D’s use
                            iii.   The amount & substantiality of the portion used in relation to the copyrighted work as a
                         iv.   The effect of the use on the potential market or value of the copyrighted work.
           a. Trademark - Anything under the sun can be a trade mark so long as its capable of distinguishing the goods and
              services of one entity from that of another because it is Distinctive.
                    1. An identifying mark is distinctive & capable of being protected if its either
                           i.  Inherently distinctive or
                          ii.  Has acquired distinctiveness through secondary meaning
                                    a. Must show that public has come to ID the term w/ the particular product

                       2.   Trademarks begin the moment they are applied to the product – registration isn’t required
                       3.   Unregistered marks are given protection against competition in the territory they are used or known
                       4.   Registered marks provide nationwide constructive notice
                       5.   Trademark protection continues until abandoned by the use of the mark in commerce.
                       6.   Test:
                             i.    If the mark says what am I – Not TM
                            ii.    If the mark says who I am – it’s a TM
            b.   Distinctive Requirement met?
                       1. Fanciful – is invented for its use as a mark & is automatically protected [not real words: Kodak, Xerox]
                       2. Arbitrary –applies a common word in an unfamiliar way & is automatically protected [ex. Camel
                       3. Suggestive – Merely suggests the feature of the product, requiring the purchaser to use imagination to
                            reach conclusion about the nature of the goods -& is automatically protected [ex. Tide Laundry
                       4. Descriptive – describes the products features, qualities or ingredients in ordinary language or
                            describes the use to which the product is put & thus requires secondary meaning to protect/
                            distinctiveness (same thing) [ex surname: Lane Capital Mgt ]
                       5. Generic –a term or phrase is generic when it is commonly used to depict a type of product rather than
                            the particular product – receives no protection even with secondary meaning
            c.   Jurisdiction
                       1. Although trademark infringement may be a federal question arising out of the Lanham Act, there is no
                            exclusive federal jurx
                       2. TM infringement actions can be brought in state or federal court

   C. Trade dress
         a. Features or combo of features of a product such as its distinctive shape or color may be protected if likely to
             impact on consumers is to Id & distinguish products source
         b. 2 Categories of Protectable Trade Dress
                   1. Product Packaging If the packaging is inherently distinctive you don’t have to have secondary meaning
                          i.  to be inherently distinctive – product must be arbitrary, non-functional capable of
                              distinguishing the goods/svc from others
                                   a. So if it immediately conveys brand image ie 2nd meaning then its protectable
                                   b. If not inherently distinctive, it an obtain secondary meaning
                   2. Product Configuration -The way a product looks is NEVER inherently distinctive you must establish
                        secondary meaning – evidence that persons recognize the configuration as signifying a particular source
                          i.  Products configuration may not be protected as TD if its functional
                         ii.  Feature is Functional- if competitors need to copy the feature in order to compete effectively
                       iii.   So round kettle grill , its round for a reason so it can’t be a trade mark because it’s a functional
                              thing can’t be prevent competitors from using it
                        iv.   However if its novel functional thing then have protection for limited period of time
         c. Infringement – The test for infringement is whether the mark is likely to cause an appreciable number of
             consumers to be confused about the source, or affiliation of the goods

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                      1.   Factors: (1) Strength of mark, (2) degree of distinctiveness, (3) proximity of the goods, (3) similarity
                           of marks, (4) evidence of actual confusion,(5) similarity of mkt channels, (6) type of goods &
                           sophistication of consumers, (7) D’s intent in selecting the mark &(8) likelihood of expansion of product
                      2.   Intent or proof of copying is not required but it may result in greater damages

            d. Fair use of trademark
                     1. A mis-discriptive mark if it gains secondary meaning it can become protectable
                     2. Using the mark either in descriptive manner - using someone else’s trade mark its ok to describe your
                         product not as TM
                     3. Nominative fair use - tide cleans better than ALL, you aren’t using their mark

   D.   2 ways to register application Based on Use in Commerce &Based on Intent to use
           a. First person to use wins-1st to use the mark in commerce wins
                      1. Territoriality – you may still prevail where it h/n/b used
                      2. Registered trademark have nationwide constructive use of the trademark, So you will have priority as
                          to that territory provided that you have used it there
           b. Intent to use -Allows you to gain constructive use
                      1. If you file the application & commenced use then you will have constructive use date based on the
                          application so it could make you the senior user
           c. Abandonment of TM
                      1. If discontinued use & intent not to use TM is abandoned but can’t be assigned
                      2. non use for 2 yrs = presumptive intent to abandon
           d. Note: Can’t assign TM unless assigning w/good will

   E.   Trade Secrets & Patents compare and contrast
           a. Contrasting Trade secret protection from patents – b/c they protect the same kind of information – technology
               and know how
           b. Term – how long can someone protect info as TS or P
                     1. TS allows you to protect info indefinitely , as long as the requirements of TS exist – if one of those
                         requirements lapses then the TS is no longer protectible
                     2. P- havea spefic term
                           i.  P appls are good for 20 years from the date of the application filing
           c. How to Obtain TS OR P
                     1. TS are obtained in real time
                           i.  by satisfying the requirement for TS
                          ii.  You establish right of TS when you try to enforce it
                         iii.  so common law activity that you are using it in business
                     2. P are obtained by filing app at the PTO office
           d. What is covered
                     1. TS - it includes recipes , know how’s, pricing info, customer lists
                     2. P - only covers statutory subject matter
                           i.  ex machine, process, composition of matter
           e. Disclosure
                     1. TS - you don’t want to have any disclosure
                           i.  b/c publicly disclosing your TS right you lose your TS status
                     2. P - in order to get it you must disclose as required by 35 USC 112 in order to satisfy you obligation to
                         the patent office
                           i.  3 different things need to be disclosed
                                    a. need to meet written description requirement so that someone reading it would
                                        understand that you invented it
                                    b. you must enable someone to make and use the invention claimed w/o undue
                                    c. it need to comply with the best mode requirement

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                                                i.   you must disclose the preferred way or the best mode to practice the invention
                                                     known by the inventor at the time of filing the application
            f.   Novelty
                       1.   TS - it doesn’t have to be novel in the patent context but it must not be generally known or readily
                             i.   if its been used / disclosed or reported its ok so long as its not generally known you canprotect it
                       2.   P - 102(a)(b)(e)(g)
                             i.   whether something is novel enough

            g.Rights given to the person who is claiming the TS or P as their property
                    1. TS - COA can exist only where there’s been a misappropriation
                          i.   to be misappropriation – the D must have either acquired the info or used and disclosed it in
                               improper means ex in violation of some duty : statutory, loyalty ….
                    2. P - whether there is infringement or not is defined by section 271
                          i.   a patent give the owner of the patent the rgith to exclude others from practicing that invention
                               in the US during the term of the patent
                                     a. you don’t have right prior to the time patent issue or after expiration of patent
                         ii.   271(a) direct infringement -made, used or imported the invention
                        iii.   271(b)( c ) indirect -D can be liable if the yare indirectly liable for someone else’s infringement
                                     a. Either aiding and abetting
                                     b. Actively inducing someone to infringe
                                     c. Contributory infringement – supplying some part of the invention
           h. Remedy
                    1. Both - you can get damage for both
                    2. TS - most important remedy is an injunction
                          i.   can get final injunction – which is limited to the time that it would take the D to independently
                               develop the technology or reverse engineer
                    3. P - may be able to get injunction fro the unexpired term of the patent
                          i.   E-bay v Merchexchange
                                     a. In patent cases the patentee isn’t entitled to automatic injunction HE must show
                                         several factors
                                               i. Irreparable harm……
           a. Trade Secret exists when 4 legal requirements are met:
                    1. It must be information that is eligible to be protected as a TS – the right kind of subject matter
                          i.   Any formula, pattern, program device, method, technique, process or compilation
                    2. It must be something that isn’t commonly known or readily ascertainable
                          i.   Test: if competitor or the mbr of public could determine the technology by examining the
                               product then it can’t be protected b/c its self disclosing tech
                         ii.   if it can only be ascertained thru extraordinary measure then its still protected as a TS
                    3. IT must be used or planning to use it – and that use must lead to some kind of economic advantage to
                         the person protecting it . Makes product easy to sell/cheap
                    4. It must use reasonable means to safeguard secrecy
                          i.   B/F misappropriation must have in place some procedure given your industry & the techno to
                               prevent it from being publicly known
                                     a. disclosure agreements for employees
                                     b. education for employee
                                     c. password protection for computers

            b.   Trade misappropriation COA must be based on assertion that:
                      1. D acquired TS through “improper means” or
                            i.  Improper means – theft, bribery, misrep, breach of duty, espionage
                           ii.  Misappropriation - TS was acquired by person who knew he was acquiring by improper means,
                                Person used improper means to get knowledge of TS or at the time of disclosure/use knew it
                                came from someone who had gotten it thru improper means

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                      2.   D acquired TS by breach of duty of confidentiality based on an express or implied K

           c.   Remedies   for TS misappropriation
                     1.    Protective order
                     2.    Preliminary injunction – show irreparable harm & success on merits
                     3.    Permanent injunction – c/n last indefin if willful misapp.

         d. Can lose protection of TS
                   1. if info becomes publicly available
                   2. lapse in security efforts
                   3. Use of info is discontinued
                   4. Info no longer confers economic adv.
         a. Authority of rights
                   1. Exist only by virtue of Const art 1 sec 8: Cong is authorized to promote the process of science & useful
                        arts by securing for a limited time to authors & inventors the exclusive right to their respective
                        writings & discoveries.
         b. Patent Types
                   1. Utility Patent – new technology
                         i.    Mechanical – manufactured item
                        ii.    Chemical – compound or process for making or using Chem compound
                       iii.    Electrical – comp tech, electric tech/ comp softwa
                   2. Design Patent –can’t be functional m/b ornamentation
                   3. Plant Patents – species or variant of plant not naturally occurring
   H. What you need to do to determine whether something is patentable
         a. It must be statutory subject matter 101:
                   1. Patentable
                          i.   Manufacture – result of process or use of mach
                         ii.   Machine – apparatus w/ min 1 moving part
                        iii.   Process/method – series of steps to get result
                        iv.    Composition of matter – chem. Patents
                         v.    Or an improvement on one of the above
                   2. Not Patentable
                          i.   Living things
                                    a. Ok if no naturally occurring may qualify as manufacture
                         ii.   Pure algorithms
                                    a. Ok if used to transform/reduce thing to different state
                        iii.   Scientific principles/ math discoveries – Pi
                        iv.    Law of nature – gravity
                                    a. But ok process using law of N or sch
                         v.    Atomic weapons – by statute
                        vi.    Devise only t/b used for illegal purpose
                       vii.    Things occurring naturally
                                    a. Ex Compounds from new plants/animals
                                    b. Ok- purified sub not appearing in nature
         b. Utility - It must be useful technology – when you file app there m/b some assertion that invention is useful
             either by explicitly stating or implied by way u describe invention
                   1. 3 things to show utility
                          i.   It m/b credible : certain proportion of people who are knowledgeable in that field would accept
                               you assertions as true
                         ii.   It m/h specific utility: benefit related to technical features
                        iii.   It m/h Substantial utility: real world use

           c.   Novelty 102 to protect something as patentable it must be the case that patentability isn’t barred by one of the
                sections of 102

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                     1.   each section describes a situation where the invention is anticipated by some prior disclosure of the
                          same invention and thus bared from protection
                     2.   must figure out when the critical date is
                            i.  (a) (e) it’s the earliest date that the inventor is credited w/ the invention
                           ii.  (b) critical date is one year prior to the filing date
                          iii.  you are only concerned with prior art, reference that came before those dates listed above
                                     a. these reference can prevent invention if its describe in one of ht section of 102and
                                     b. if its publicly accessible and
                                     c. it must be something that in one single reference or document or use discloses every
                                           requirement of the invention
                                                i. ex invention has 4 requirement a single prior art reference must disclose all 4

                     3.   (b) A person will be entitled to a patent unless the invention was published in a printed publication in
                          the US or foreign country 1 year prior to publication in the US – the reference must disclose the same
                          subject matter
                            i.   Test: go bk 1 yr from publication if any references come bf that filing date they can prevent
                                 patentee from getting a patent
                           ii.   Reference date is – when publicly avail – post office distributed it
                          iii.   What constitutes reference under (b)
                                     a. If you sell your invention & wait 1 yr to file it becomes a reference which can block
                                     b. Offer to sell : reduced it to practice or it ready for patenting (wkd out all details)
                          iv.    Public use won’t become reference if it was used for actual reduction to practice ie experimental
                                 – m/b directed to see if there is mkt for it
                                     a. Note: incidental comp ok
                     4.   (a) A person is entitled to a patent unless an invention was publicly known or used by others in this
                          country or patented or described in a printed publication in this or foreign country – before the
                          invention date
                           i.    Reference that can prevent patentability is if its show that SM was publicly known or used by
                                 others prior to the invention date
                          ii.    If use is experimental & abandons it – its not public use – but if abandoned for other reason ex
                                 busi reason its public use
                          iii.   User has abandoned, suppressed or concealed invention – it prevents it from being public use

                     5.   (e) once US patent app is published it retroactively has affect of having been available back when it was

           d.   Obviousness
                     1.   GR: can’t get a patent even if its novel , if the diff between it and what is know would be obvious to
                          someone in the school of art
                     2.   Before being prior art must be a reference under 102(a)(b)(e) or (g)
                     3.   Determine whether the invention as a whole was obvious at the time of invention to a person having
                          ordinary skill in the art
                     4.   Take into account actual facts indicating whether or not invention was obvious :
                            i.  Commercial success
                           ii.  Initial skepticism
                          iii.  Other people long have tried but failed to come w/ it

           e. Disclosure 112
                     1.   Enablement
                           i.    Patent app is enabling if at the time it was filed iit contains enough info that a person skilled in
                                the art could make & use the invention based on the patent app w/o undue experimentation

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                             ii.   Undue Experimentation – if in a course of a few days person skilled in the field could experiment
                                   and practice the invention – however if it took months then it would be undue or if they had to
                                   make other inventions to make it work
                            iii.   Factors of Undue Experimentation
                                       a. How much experimentation is needed
                                       b. Amt of direction presented
                                       c. Presence or absences of working examples
                                       d. Nature of the invention
                                       e. State of the prior art
                                       f. Relative skill of those in the art
                                       g. Predictability of the art
                                       h. Breadth of the claims

                        2. Written description
                             i.  Inventor can only get a patent covering a claim if his application ( as a whole) would convey to
                                 someone skilled in that art that at the time he filed his application he actually had possession of
                                 the invention in that claim
                            ii.  Can’t have a claim that is broader than what you have invented, scope of claim m/gel w/
                           iii.  You can only obtain a patent over what you have actually invented so you can’t have protection
                                 over things you didn’t conceive of because of the broad description
                        3. Best mode
                            i.   Rule: in addition to making enabling disclosure inventor must also disclose in an enabling way the
                                 way to practice the invention that you consider to be the best at the time you submit the

                             ii.   Two part test: If the inventor had a preferred way of practicing the invention, they have to
                                   provide an enabling disclosure of that mode in enough detail so that someone in the ordinary art
                                   could practice the technology
                                       a. If there is no best mode then just file one mode & this will suffice
                                                  i. There is not duty to update the best mode after app h/b filed or if you later
                                                      find a best mode to disclose it
                                       b. Even if claim is approved but you don’t disclose the preferred method, the claim won’t be
                                            valid, so inventor won’t be able to enforce it against someone else

    I.   What rights does patent give patentee & how he enforces it
            a. Patent doesn’t confirm affirmative fright to do anything, but it gives him right to prevent others from practicing
                that patent – right to exclude others from practicing what is claimed in the patent for the term of the patent in
                the US - from issuance to the term when it expires
            b. Scope of right to exclude is defined by the patent
            c. If patentee is interested in protecting of enforcing rights , they can bring an infringement action

   I.    Paten Infringement Can infringe patent in 6 ways
             a. Any infringement can be either
                       1. Literal infringement – what the infringer is doing is literally falls w/I at least one claim of the patent [
                           note patents may have many claims] , each individual claim represents a different patent right , so you
                           infringe a patent even if what you are doing is infringing one of the claims of the patent
                       2. Doctrine of Equivalents- as a matter of equity you are liable for infringement even though what you are
                           doing is literally different
             b. 3 types of activity that can cause someone to be liable for infringement under 271 (a) &(b) & (c )
                       1. Direct infringement- D itself is doing the acts constituting infringement

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                    2.   Contributory infringement - D hasn’t physically done infringement acts but you have caused them to
                         happen , either induced someone else to do it or given them the means to directly infringe the patent
                    3.   Active inducement - D hasn’t physically done infringement acts but you have caused them to happen ,
                         either induced someone else to do it or given them the means to directly infringe the patent claim

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