1. OVERVIEW OF INTELLECTUAL PROPERTY LAW
PROF. PAUL JANICKE
INSTITUTE FOR INTELLECTUAL PROPERTY & INFORMATION LAW
UNIVERSITY OF HOUSTON
LAW CENTER
2017

2. COPYRIGHT STATUTE: 17 U.S.C. PROTECTS “WORKS OF AUTHORSHIP” (§102)
PREEMPTS SIMILAR STATE LAWS
PROTECTS “WORKS OF AUTHORSHIP” (§102)
BOOKS, ARTICLES, POEMS, PLAYS
PHOTOS, DRAWINGS, PAINTINGS
FILMS
MUSIC
SOFTWARE
COMPILATIONS
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3. REQUIREMENTS FIX THE WORK IN A TANGIBLE MEDIUM (§102(a))
PROTECTION IS AUTOMATIC
NO PAPERWORK NEEDED
NO NOTICE NEEDED
NO REGISTRATION NEEDED
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4. NOT A VERB
ONCE THE WORK IS FIXED, COPYRIGHT RIGHTS AUTOMATICALLY EXIST
CAUSES OF ACTION ACCRUE AGAINST ANY COPIERS
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5. YOU CAN’T COPYRIGHT ANYTHING – IT’S ALREADY DONE!
THE WORK IS “COPYRIGHTED” FROM THE MOMENT OF FIXATION
NO PAPERWORK IS NEEDED
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6. BUT IT’S OK TO SAY: “THE WORK IS COPYRIGHTED”
“WE HAVE REGISTERED THE COPYRIGHT” (IF TRUE)
REGISTRATION IS OPTIONAL
BUT NEEDED BEFORE AN INFRINGEMENT SUIT CAN BE COMMENCED
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7. PROTECTION IS TO PREVENT:
SOMEONE COPYING SUBSTANTIAL PORTIONS
SOMEONE MAKING A DERIVATIVE WORK FROM THE ORIGINAL
NO PROTECTION AGAINST:
INDEPENDENT CREATION
FAIR USE OF SMALL PORTIONS
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8. DURATION: REALLY LONG LIFE OF AUTHOR PLUS 70 YEARS
IF JOINT AUTHORS, LAST SURVIVOR PLUS 70 YEARS
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9. TRADEMARKS: ARE SIMPLY BRANDS
LIKE CATTLE BRANDS
USED ON GOODS OR CONTAINERS, MOVING IN COMMERCE
THE MARK SIGNALS A COMMON SOURCE, OR AT LEAST A COMMON SOURCE OF QUALITY CONTROL
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10. THESE TOO ARE AUTOMATIC RIGHTS
TRADEMARK OWNERSHIP EXISTS UPON USE IN COMMERCE
REGISTRATION IS OPTIONAL
NO VERB “TO TRADEMARK”
YOU USE IT, YOU’VE GOT IT
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11. YOU HAVE NO RIGHTS
FROM BEING THE FIRST TO THINK OF A MARK, EVEN IF FIRST TO DO SO
FROM PUTTING THE MARK ON GOODS THAT YOU DO NOT SHIP IN COMMERCE
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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]
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13. REQUIREMENTS FOR MARK OWNERSHIP AND ENFORCEMENT:
PLACE THE MARK ON GOODS, CONTAINERS; and
MOVE THE MARKED GOODS IN COMMERCE.
REGISTRATION IS NOT NEEDED!
DON’T SAY “TRADEMARK” AS A VERB!
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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
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15. EXAMPLES OF SERVICE MARKS:
MERRILL LYNCH
McDONALD’S [WORD]
[GOLDEN ARCHES] for McDONALD’S
DALLAS COWBOYS
HOLIDAY INN
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16. REQUIREMENTS FOR OWNING A SERVICE MARK:
USE THE MARK IN COMMERCE FOR ACTUAL COMMERCIAL SERVICES
PRINT IT ON THE PAPERWORK, OR THE STOREFRONT, ETC.
EXCLUSIVE OWNERSHIP ARISES FROM FIRST USE IN COMMERCE
REGISTRATION IS NOT NEEDED
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17. NO ONE OWNS A MARK FOR ALL GOODS/SERVICES
YOU OWN A MARK FOR CERTAIN TYPES OF GOODS
OTHERS CAN (AND USUALLY DO) OWN THE MARK FOR OTHER GOODS
EXAMPLE: THERE ARE OVER 100 MARK OWNERS FOR “CHAMPION”
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18. WHAT KIND OF MARK IS THIS?
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19. WHAT KIND OF MARK?
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20. WHAT KIND OF MARK?
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21. WHAT KIND OF MARK?
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22. WHAT KIND OF MARK?
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23. NATURE OF RIGHTS IN MARKS
PREVENT OTHERS FROM USING SAME OR SIMILAR MARK IF CONFUSION WOULD BE LIKELY
NO RIGHT TO PREVENT ALL USES OF THE WORD!
“CADILLAC” FOR CARS AND DOG FOOD
“CHAMPION” FOR PAPER; AND BOXING GLOVES; AND SPARK PLUGS
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24. DURATION OF THE EXCLUSIVE RIGHT
FOREVER, AS LONG AS YOU ARE STILL 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 YOUR QUALITY CONTROL]
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25. TRADE SECRET
ANY TYPE OF COMPETITIVELY VALUABLE INFO [BUSINESS; TECHNICAL]
MUST NOT BE GENERALLY KNOWN IN THE INDUSTRY
MUST TAKE REASONABLE PRECAUTIONS TO PRESERVE SECRECY
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26. 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
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27. TYPICAL STEPS TO PRESERVE SECRECY
EMPLOYEE CONTRACTS SPECIFYING ONGOING SECRECY
“CONFIDENTIAL” MARKING ON DOCUMENTS
POSTED/DISTRIBUTED WRITTEN POLICY STATEMENTS
EXIT INTERVIEWS
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28. GOVERNMENT FORMALITIES
NONE
NO TYPE OF CERTIFICATE IS AVAILABLE
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29. WHAT IS “MISAPPROPRIATION”?
USING A PROPERLY LEARNED SECRET WITHOUT PERMISSION [90% OF CASES]
LEARNING THE SECRET THROUGH A BREACH OF CONFIDENCE OR OTHER ILLEGAL MEANS [10% OF CASES]
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30. LEARNING THE SECRET INDEPENDENTLY : OK TO USE
THINK OF IT YOURSELF
REVERSE ENGINEERING OF A PUBLICLY AVAILABLE PRODUCT
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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
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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
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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”
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34. THINGS THAT ARE INELIGIBLE FOR PATENTING
IDEAS
NATURALLY OCCURRING SUBSTANCES
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35. A FEW MORE THINGS THAT ARE INELIGIBLE
ABSTRACT COMPUTER PROCEDURES, e.g., MOVING BITS AROUND
WRITTEN MATERIALS WITHOUT A NOVEL PHYSICAL STRUCTURE
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36. METHODS OF DOING BUSINESS
THESE ARE WIDELY BELIEVED TO BE INELIGIBLE UNDER PRESENT LAW
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37. WHO CAN FILE ACTUAL “INVENTORS” (i.e., CONCEIVERS)
ASSIGNEE OF AN INVENTION
STILL MUST NAME THE INVENTORS
STILL NEED AN INVENTORS’ STATEMENT FROM THEM
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38. NOT ALLOWED:
LETTING SOMEONE OTHER THAN THE CONCEIVER “TAKE OUT” THE PATENT, NAMING HIMSELF AS “INVENTOR”
A FELONY
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39. WHAT DO YOU GET FOR “PATENT PENDING”?
LEGALLY: NOTHING. TERM BEGINS ONLY AT THE GRANT DATE
A WARNING TO OTHERS, CAN BE VALUABLE IN THE PRACTICAL WORLD
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40. NATURE OF THE RIGHTS
TO EXCLUDE OTHERS FROM COMMERCIALIZING ANY MEMBER OF THE CLAIMED GROUP
ALMOST ALL PATENTS CLAIM FAMILIES OF THINGS (COMPOUNDS, MACHINES), NOT INDIVIDUAL SPECIES
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41. NO RIGHT TO MAKE OR SELL IS CONFERRED ON THE PATENT OWNER
PATENTS OFTEN OVERLAP
LICENSES ARE NEEDED FROM THE OTHERS TO PRACTICE YOUR OWN PATENT!
EXAMPLE: COMPUTER SYSTEM; COMPONENTS MAY BE STILL PATENTED TO OTHERS
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42. 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
2017
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