Intellectual Property Law Overview Mark Tidwell Jackson Walker, L.L.P. 713-752-4578 mtidwell@jw.com November 9, 2006

Focus Understanding Intellectual Property Value of Intellectual Property Q & A

Understanding Intellectual Property

Intellectual Property Law Involves. . . Protecting ideas This includes unique creations from the mind: words, branding schemes, slogans, designs, advertising copy, web pages, machines, chemical formulas, software, paintings, sculptures, books, plays, business methods … These are protectable, just like tangible property such as real property and personal property These areas are called “Intellectual Property” (IP)

Vehicles of Protection Patents Invention: an concept for a new -Process - Machine/Apparatus -Product - Formulation -Ornamental Design Trademarks/ Service Marks Copyrights Original work of author-ship fixed in tangible form: -Pictorial -Graphic -Compilation -Literary -Musical -Sculptural -Audio/Vis. -Software -Derivative Works Indicia of the origin of a product or service -Word -Symbol -Design -Sign -Name -Color -Logo -Packaging -Internet Domain Name 20 yrs Until lost or forfeited 75 yrs Until disclosed or publicly known Trade Secrets Information that has economic value by not being disclosed, and is the subject of reasonable efforts to keep it confidential -Know-How - Software Code - Business Methods

Patent Definition pat·ent (p²t“nt) n. Abbr. pat. 1.a. A grant by the government of an exclusive monopoly in an invention for a period of time in exchange for public disclosure of the invention (Legal basis: 35 U.S.C.)

What’s Patentable? Any new and useful Process Machine Method of manufacture Composition of matter Improvements on existing things Significant recent case law in patent law now also allows: Software Methods of doing business

Copyright Definition cop·y·right (k¼p“¶-rºt”) n. Abbr. c., C., cop. 1. The exclusive legal bundle of rights granted to the creator of a Work. (Legal basis: 17 U.S.C.)

What’s Copyrightable? Literary works - books, articles, poems, etc. Musical works - score and words Dramatic works, pantomimes, and choreographic works Pictorial, graphic and sculptural works - web pages, advertisements, photographs, paintings, technical drawings Motion pictures and other audiovisual works Sound recordings Architectural works

Trademark Definition trade·mark (tr³d“märk”) n. 1. Abbr. An identification placed on goods to indicate the source of goods and thereby distinguish the goods from those manufactured or sold by others. (Legal basis: common law; 15 U.S.C.)

What’s Trademarkable? Word, name, symbol or design, or a combination of these elements Colors, sounds and smells Service Marks - marks used with services Trade Dress - combination of many elements that function together as a source identifier to create an overall “look”

Trade Secret Definition trade secret n. Any secret information that gives one an advantage over competitors. (Legal basis: common law; contract law)

What’s Protectable by Trade Secrets? Technical information, financial information, customer lists, supplier lists, drawings, plans, designs, forecasts, software, source code, chemical formulas, methods of doing business, processes, etc. Copyrightable material Patentable material

HOW DO WE PROTECT INTELLECTUAL PROPERTY?

Patents

Who Can Obtain a Patent? Only the original creator/inventor The inventor has one year to file Described in a printed publication Offered for sale in the U.S. In public use in the U.S. If the inventor does not file - no one else can Can’t legally “steal” and idea and file a patent

Scope of Rights Once a patent is obtained the scope of rights prevents others from making, using, or selling the invention The period of protection lasts 20 years from the date of the patent application filing

How Do You Obtain a Patent? Process starts by filing a patent application with the U.S. Patent Office: Written description Drawings Claims Patent protection attaches only after a patent issues--not before Patent Office considers the application in light of the statutory conditions for patent protection

Statutory Conditions for Patent Protection “Whoever invents or discovers something new…” What’s “new”? 1. Novelty Requirement: no other single patent describes the invention 2. Nonobviousness Requirement: invention is not obvious from a combination of several prior patents

Copyrights

Who Can Obtain a Copyright? The author or creator of the Work Exception: Work for Hire Doctrine - a work prepared by an employee within the scope of his or her employment WARNING!! Independent Contractors are not employees Some potential problem areas include: Advertising Web page design Software design Photographers

Scope of Rights The owner of a copyright has exclusive rights to... Reproduce the Work Prepare new Works based on preexisting Works Distribute copies of the Work Publicly perform the Work Publicly display the Work The period of protection is generally the life of the Author plus 70 years Works for Hire: 95 years from publication or 120 years from creation

How Do You Obtain A Copyright? The Copyright automatically attaches at the time the Work is created Additional rights are available through registration with the U.S. Copyright Office Presumption of ownership Ability to acquire statutory damage and/or attorneys’ fees A © is no longer required for protection

Conditions for Copyright Protection Standard: Original Works of Authorship... Fixed in a Tangible Medium of Expression Original: conceived without copying Fixed: recorded in a way that can be preserved and reproduced KEY: Expressions of ideas, not the ideas themselves Example: Individual description of the same event can be copyrighted by each author

Trademarks

Who Can Obtain a Trademark? The first person to start using the mark in a particular industry Example: Amazon Bookstore, a brick and mortar operation Must be able to function as a source identifier Must not be “confusingly similar” with other trademarks BUT, others can generally use the same mark in other industries “United” Van Lines “United” Airlines

Likelihood of Confusion A mark cannot be the same as or similar to another previously existing mark used on similar goods Since a mark is used as a source identifier, this could create confusion as to source Confusion erodes “goodwill” Infringement: same standard

Source Identifier STRENGTH - Four classifications in which a mark can be categorized as a source identifier: generic descriptive suggestive arbitrary/fanciful (coined or created) Example: BRILLIANT “descriptive” of diamonds “suggestive of furniture polish “arbitrary” on orange juice

Strength is Key Strong—Fanciful—Arbitrary—Suggestive—Descriptive--Generic—Weak ASICS Racing Flats Saucony Nike Shoes

Scope of Rights Prevent others from using the same or similar marks on similar goods Geographical area Fields of Use Expansion into geographical area or fields of use Use of ™ or ®

Period of Protection Indefinite - For as long as you continue to properly use the mark with your goods WARNING: The mark must continue to act as a source identifier---DON’T LOSE CONTROL BANDAID KLEENEX XEROX INTERNET

How Do You Obtain a Trademark? Protectable rights attach at the moment the mark is placed on goods and the goods are offered for sale to the public Goodwill is the recognition that arises through use of a trademark Goodwill represents the value of the mark

Federal Registration The Trademark Office reviews the Application to determine if the mark satisfies the conditions for trademark protection Source Identifier Likelihood of Confusion Additional rights are available through registration with the U.S. Trademark Office Covers entire United States Blocks others from registering similar marks Offers enhanced damages; attorneys’ fees Allows one to sue in Federal Court Permits use of the ®

Trade Secrets

How Do You Obtain a Trade Secret? Simply by maintaining the secrecy of the information once it is created Limit access to secrets Use Confidentiality Agreements The Scope of Rights: Permits damages for theft or unauthorized disclosure Enjoins others who have unlawfully obtained the secret information The period of protection is indefinite - it exists for as long as the information remains a secret

Questions?