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OVERVIEW OF INTELLECTUAL PROPERTY LAW PROF. PAUL JANICKE INSTITUTE FOR INTELLECTUAL PROPERTY & INFORMATION LAW UNIVERSITY OF HOUSTON LAW CENTER 2014.

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Presentation on theme: "OVERVIEW OF INTELLECTUAL PROPERTY LAW PROF. PAUL JANICKE INSTITUTE FOR INTELLECTUAL PROPERTY & INFORMATION LAW UNIVERSITY OF HOUSTON LAW CENTER 2014."— Presentation transcript:

1 OVERVIEW OF INTELLECTUAL PROPERTY LAW PROF. PAUL JANICKE INSTITUTE FOR INTELLECTUAL PROPERTY & INFORMATION LAW UNIVERSITY OF HOUSTON LAW CENTER 2014

2 IP Survey -- OVERVIEW 2 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 –COMPILATIONS

3 2014IP Survey -- OVERVIEW 3 REQUIREMENTS FIX THE WORK IN A TANGIBLE MEDIUM (§102(a)) PROTECTION IS AUTOMATIC –NO PAPERWORK NEEDED –NO NOTICE NEEDED –NO REGISTRATION NEEDED

4 20144IP Survey -- OVERVIEW NOT A VERB ONCE THE WORK IS FIXED, COPYRIGHT RIGHTS AUTOMATICALLY EXIST –CAUSES OF ACTION ACCRUE AGAINST ANY COPIERS

5 PROPER / IMPROPER TO SAY: IMPROPER TO SAY “HE IS GOING TO COPYRIGHT HIS POEM”; OR “THE LAWYER WILL COPYRIGHT IT FOR HIM.” PROPER: THE WORK IS COPYRIGHTED 20145IP Survey -- OVERVIEW

6 PROPER TO SAY: THE WORK IS UNDER A REGISTERED COPYRIGHT (IF TRUE) REGISTRATION IS OPTIONAL 20146IP Survey -- OVERVIEW

7 20147IP Survey -- OVERVIEW PROTECTION IS AGAINST: COPYING SUBSTANTIAL PORTIONS MAKING DERIVATIVE WORK FROM THE ORIGINAL NO PROTECTION AGAINST: –INDEPENDENT CREATION –FAIR USE OF SMALL PORTIONS

8 20148IP Survey -- OVERVIEW DURATION LIFE OF AUTHOR PLUS 70 YEARS IF JOINT AUTHORS, LAST SURVIVOR PLUS 70 YEARS

9 2014IP Survey -- OVERVIEW 9 TRADEMARKS ARE BRANDS LIKE CATTLE BRANDS MUST BE USED ON GOODS OR CONTAINERS THEY SIGNAL A COMMON SOURCE, OR AT LEAST COMMON SOURCE OF QUALITY CONTROL

10 AUTOMATIC RIGHTS RIGHTS EXIST UPON USE IN COMMERCE REGISTRATION IS OPTIONAL NO VERB “TRADEMARK” IP Survey -- OVERVIEW

11 NO RIGHTS FROM THINKING ABOUT A MARK, EVEN IF FIRST TO DO SO IP Survey -- OVERVIEW

12 2014IP Survey -- OVERVIEW 12 TRADEMARK CAN BE: A WORD: FORD A GROUP OF WORDS: COMPAQ DESKPRO A PHRASE: HAVE IT YOUR WAY A LOGO: [WE’LL SEE SOME]

13 2014IP Survey -- OVERVIEW 13 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! DON’T SAY “TRADEMARK” AS A VERB!

14 2014IP Survey -- OVERVIEW 14 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

15 2014IP Survey -- OVERVIEW 15 EXAMPLES OF SERVICE MARKS: MERRILL LYNCH McDONALD’S [WORD] [GOLDEN ARCHES] for McDONALD’S DALLAS COWBOYS HOLIDAY INN

16 2014IP Survey -- OVERVIEW 16 REQUIREMENTS FOR OWNING A SERVICE MARK: USE THE MARK IN COMMERCE FOR ACTUAL COMMERCIAL SERVICES –EXCLUSIVE RIGHT ARISES FROM FIRST USE IN COMMERCE –REGISTRATION IS NOT NEEDED

17 2014IP Survey -- OVERVIEW 17 WHAT KIND OF MARK IS THIS?

18 2014IP Survey -- OVERVIEW 18 WHAT KIND OF MARK?

19 2014IP Survey -- OVERVIEW 19 WHAT KIND OF MARK?

20 2014IP Survey -- OVERVIEW 20 WHAT KIND OF MARK?

21 2014IP Survey -- OVERVIEW 21 WHAT KIND OF MARK?

22 2014IP Survey -- OVERVIEW 22 NATURE OF RIGHTS IN MARKS PREVENT OTHERS FROM USING SAME OR SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY NOT A RIGHT TO PREVENT ALL USES OF THE WORD! –“CADILLAC” FOR CARS AND DOG FOOD –“CHAMPION” FOR PAPER; AND BOXING GLOVES; AND SPARK PLUGS

23 2014IP Survey -- OVERVIEW 23 DURATION OF THE EXCLUSIVE RIGHT FOREVER, 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 [e.g., BY ALLOWING OTHERS TO USE IT WITHOUT QUALITY CONTROLS]

24 2014IP Survey -- OVERVIEW 24 TRADE SECRET ANY TYPE OF COMPETITIVELY VALUABLE INFO [BUSINESS; TECHNICAL] MUST NOT BE GENERALLY KNOWN IN THE INDUSTRY MUST BE SUBJECT TO REASONABLE PRECAUTIONS TO PRESERVE SECRECY

25 2014IP Survey -- OVERVIEW STATE LAW GOVERNS ALMOST ENTIRELY THERE IS NO FEDERAL PRIVATE ACTION FOR TRADE SECRET MISAPPROPRIATION CRIMINAL ACTIONS (STATE AND FEDERAL) ARE POSSIBLE, BUT FAIRLY RARE 25

26 2014IP Survey -- OVERVIEW 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 26

27 2014IP Survey -- OVERVIEW 27 TYPICAL STEPS TO PRESERVE SECRECY EMPLOYEE CONTRACTS MARKING DOCUMENTS “CONFIDENTIAL” WRITTEN POLICY STATEMENTS EXIT INTERVIEWS

28 2014IP Survey -- OVERVIEW 28 FORMALITIES FOR PROTECTION AND BRINGING SUIT NONE NO TYPE OF CERTIFICATE IS AVAILABLE

29 2014IP Survey -- OVERVIEW 29 WHAT IS MISAPPROPRIATION? USING A PROPERLY LEARNED PROTECTED SECRET WITHOUT PERMISSION [90% OF CASES] LEARNING THE PROTECTED SECRET BY BREACH OF CONFIDENCE OR OTHER ILLEGAL MEANS [10% OF CASES]

30 2014IP Survey -- OVERVIEW LEARNING INDEPENDENTLY IS OK INCLUDES REVERSE ENGINEERING OF A PUBLICLY AVAILABLE PRODUCT 30

31 2014IP Survey -- OVERVIEW 31 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

32 2014IP Survey -- OVERVIEW 32 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

33 2014IP Survey -- OVERVIEW 33 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”

34 THINGS THAT ARE INELIGIBLE IDEAS IP Survey -- OVERVIEW

35 2014IP Survey -- OVERVIEW 35 A FEW MORE THINGS THAT ARE INELIGIBLE ABSTRACT COMPUTER PROCEDURES, e.g., MOVING BITS AROUND WRITTEN MATERIAL WITHOUT A NOVEL PHYSICAL STRUCTURE NATURALLY OCCURRING SUBSTANCES

36 2014IP Survey -- OVERVIEW 36 WHO CAN FILE WITH RARE EXCEPTIONS, ACTUAL INVENTORS (i.e., CONCEIVERS) MUST SIGN THE ASSIGNEES OF THEIR APPLICATIONS CAN THEN TAKE OVER, AND USUALLY DO

37 NOT ALLOWED: LETTING SOMEONE OTHER THAN THE CONCEIVER “TAKE OUT” THE PATENT THESE PEOPLE CANNOT MAKE THE REQUIRED OATH OF INVENTORSHIP IP Survey -- OVERVIEW

38 2014IP Survey -- OVERVIEW 38 WHAT DO YOU GET FOR “PATENT PENDING”? LEGALLY: NOTHING. TERM BEGINS ONLY AT THE GRANT DATE (SOME MINOR RIGHTS AT 18-MO. PUBLICATION) MERELY A WARNING TO OTHERS, BUT CAN BE VALUABLE IN THE PRACTICAL WORLD

39 2014IP Survey -- OVERVIEW 39 NATURE OF THE RIGHTS TO EXCLUDE OTHERS FROM COMMERCIALIZING ANY MEMBER OF THE FAMILY CLAIMED –WHETHER OR NOT CONCEIVED BY THE INVENTORS

40 2014IP Survey -- OVERVIEW NO RIGHT TO MAKE OR SELL IS CONFERRED ON THE PATENT OWNER –USUALLY, MANY PATENTS OVERLAP –LICENSES NEEDED FROM THE OTHERS TO PRACTICE YOUR OWN PATENT! –EXAMPLE: COMPUTER SYSTEM 40

41 2014IP 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


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