An Overview of Intellectual Property Law
Transcript of An Overview of Intellectual Property Law
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NEW YORK STATE BAR ASSOCIATION
BRIDGING THE GAP
An Overview of Intellectual Property Law
July 15, 2014
Shanna K. Sanders, Esq.
Heslin Rothenberg Farley & Mesiti P.C.
Intellectual Property
• Copyrights
• Trademarks / Trade Dress
• Trade Secrets
• Patents
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Four Types of IP:
COPYRIGHTS
Copyright
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What are the Requirements?
• Original work of authorship, creative, non-
functional
• Fixed in a tangible medium of expression
(paper or electronic)
What is Protectable?
• Expression only is protected, not the ideas
• Websites, drawings, literature, plays, surgical
techniques, photos, sculpture, architecture,
songs, computer software, rugs, books,
journal articles
Who owns it and When?
• Exists the moment the work is created
• Immediately becomes property of the author
who created the work
• Works “Made for Hire” - employer is
considered author and owner
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Copyright
How Long is it Protected?
• Life of author + 70 years
• 95 years from publication (work for hire)
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What are the Owner’s Rights?
• Reproduce the work
• Prepare derivative works
• Distribute copies
• Perform, Display
Best Practice
• Add Copyright Notice to all works that are
created
• (Date of Creation) (Author’s Name)
©
Copyright
Federal Copyright Registration
Benefits:
•Prerequisite to lawsuit
•TIME IS OF THE ESSENCE! Statutory damages and attorneys fees if
registered within 3 months of publication
•Presumption of ownership
•Notice/Deterrent
Requirements:
•Identify author and owner
•Creation date and publication date
•Prior work
•Deposit material
•Filing fee
•3-12 months
www.copyright.gov
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Copyright: Pre-Litigation
Cease and Desist Letter
• Sending a cease and desist letter to accused infringer
Demands that infringer stop, compensation, offer license, etc.
Response may be to settle
• CAVEAT: accused infringer files a declaratory judgment
action against copyright owner in local jurisdiction
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• An action for copyright infringement must be brought within three (3) years after the claim has accrued. 17 U.S.C. § 507(b).
• Valid copyright registration is a precondition. 17 U.S.C. § 411
• The elements of a copyright infringement claim are:
1) Ownership of a valid copyright; and
2) Copying of constituent elements of the work that are original
• A certificate of registration obtained within five (5) years after first publication of the work is prima facie evidence of the valid ownership of a copyright.
Copyright: Litigation
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• Copying can be proven as either:
1) Direct proof, which is rare; or
2) Indirect or circumstantial proof, which is more likely.
This requires proving: (a) access; and (b) substantial
similarity.
Copyright: Standard for Infringement
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• Access
Proof of access requires an opportunity to view or to copy
plaintiff’s work.
To prove access, a plaintiff must show a reasonable possibility that
an alleged infringer had the chance to view the protected work
• Substantial Similarity
Application of the “ordinary observer test.”
Involves asking whether an average lay observer would recognize
the alleged copy as having been appropriated from the copyrighted
work
Copyright: Standard for Infringement
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• Copyright owner may seek:
Injunctive relief, impoundment and disposition of
infringing articles, damages and profits of the infringer,
and/or costs and attorneys’ fees. See, 17 U.S.C. §§ 502-505.
• Infringer is liable for either:
(1) actual damages and any additional profits, or
(2) statutory damages
Copyright: Infringement Remedies
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• Pursuant to Section 504 of the Copyright Act, award
of statutory damages ranges from $750 to $30,000
Willful infringement increases the amount up to $150,000
Innocent infringement may result in a reduction of statutory
damages to $200
Copyright: Statutory Damages
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• Defense against accusations of copyright infringement.
• In determining whether the use of a copyrighted work is a fair use, the factors to be considered shall include:
1) The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2) The nature of the copyrighted work;
3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole;
4) The effect of the use upon the potential market for or value of the copyrighted work
Copyright: Fair Use
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Thicke v. Gaye, Civ. No. 13-6004 (C.D. Cal)
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TRADEMARKS
What is a Trademark?
• A trademark is a word, symbol, or phrase, used to
identify a particular manufacturer or seller's products and
distinguish them from the products of another.
• Serve two primary purposes:
(1) Protects consumers from being misled
(2) Protect the reputation of the trademark owner
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Name the Source?
Trademarks vs. Service Marks
Word
Slogan
Logo
Sound
Color
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• A slogan or any other combination of words is
capable of trademark significance, if used in such a
way as to identify and distinguish the seller’s goods
and services from others. Allstate Ins. Co. v. Allstate
Inc., 307 F.Supp. 1161 (N.D.Tex. 1969).
Slogan Marks
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New York State
Division of the Lottery
U.S. Reg. 3,751,899
All you need is a
dollar and a dream
McDonald’s Corp.
U.S. Reg. 2,978,887
I’m
lovin’ it
So easy a
caveman can do it
Melts in your
mouth, not in
your hand
Just do it
Nike, Inc.
U.S. Reg. 1,875,307
GEICO
U.S. Reg. 3,193,689
Examples of Slogan Marks
Mars, Inc.
U. S. Reg. 1,596,711
Sound Marks
• A sound mark identifies and distinguishes a product or service through
audio rather than visual means. TMEP §1202.15
• Sounds are protectable when they are arbitrary, unique or distinctive and
create in the hearer’s mind an association of the sound with a good or
service. In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009); In
re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978)
• The fact that sounds and musical compositions are protected by the
copyright laws is not incompatible with their also qualifying for protection
as trademarks. Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 61 (2d Cir. 2001)
• As with any designation alleged to be a mark, a sound cannot qualify as a
mark if it is “functional”
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• U.S. Registration No. 916,522 (July 13, 1971)
• U.S. Registration No. 1,395,550 (June 3, 1986)
• U.S. Registration No. 2,692,077 (March 4, 2003)
• U.S. Registration No. 3,411,881 (April 15, 2008)
• U.S. Registration No. 2,821,863 (March 16, 2004)
• U.S. Registration No. 2,442,140 (April 10, 2001)
• U.S. Registration No. 2450525 (May 15, 2001)
• U.S. Registration No. 2519203 (December 18, 2001)
Examples of Sound Marks
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Color Marks
• In 1995, the Supreme Court held that a single color
of a product is capable of being registered and
protected as a trademark. Qualitex Co. v. Jacobson
Prods. Co., 513 U.S. 159 (1995)
• Single color requires proof of secondary meaning.
Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529
U.S. 205 (2000)
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Examples of Color Marks
Canary
Yellow Robin Egg
Blue
Brown
Evaluating
Strength of Trademarks
Strongest Weakest Not Protectable
Coined/Arbitrary Suggestive Descriptive Generic (Merely or Geographically)
•Kodak
•Exxon
•Prilosec
•Centrium
•Advair
•Igloo
•Coppertone
•Nautica
•Manhattan Bagel
•General Motors
•Sonoma Valley Wine
•International Business
Machines (IBM)
•Aspirin
•Advil
•Thermos
•Kleenex
(Requires secondary meaning)
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** The More Distinctive the Mark, The Stronger The Mark will Be**
Secondary Meaning
• a/k/a Acquired Distinctiveness
• Evidence that the mark has become distinctive as applied
to the owner’s goods or services in commerce.
• Long use of the mark
•Advertising expenditures
• Survey evidence
• Sales
• Unsolicited media
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Generic = Unprotectable
Convenient Food Mart, Supermarket
Once were TMs:
• Aspirin, Escalator, Thermos, Yo-Yo, and Bikini
Famous marks risk becoming generic
• Scotch Tape
• Kleenex
• Xerox
Grave Yard of Generic Marks Dictionary
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Best Practice
• Use TM or SM designation NOW
• Obtain Federal registration – use ®
• Must use trademark in commerce to qualify
for protection
Federal Trademark Registration
Benefits:
•Public Notice/Deterrent
•Presumption of Ownership
•Basis for Foreign Trademark Registration
•Record at Border and Prevent Importation of Infringing Goods
•Right to Use Federal Registration Symbol ®
Requirements:
•Owner
•Identification of Goods and Services
•Actual Use in Commerce or Intent to Use
•Specimen
•Declaration
•Filing Fee
•6-18 Months
www.uspto.gov
Christian Louboutin S.A. v. Yves Saint
Laurent Am. Holdings, Inc.
696 F.3d 206 (2d Cir. 2012)
•“Louboutin’s trademark, consisting of a red lacquered outsole on a high
fashion women’s shoe, has acquired limited ‘secondary meaning’ as a
distinctive symbol that identifies the Louboutin brand.”
•Louboutin’s trademark was limited to uses in which the red outsole
contrasts with the color of the remainder of the shoe.
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“Trade Dress” – What is it?
“… the total image and overall
appearance” of a product, package,
style of doing business etc. “as
defined by its overall composition
and design, including size, shape,
color texture, and graphics”
It is a WORDLESS
TRADEMARK....but certainly not
worthless!
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The Power of a Famous Look
This is Trade Dress in a package
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• Formula, device, compilation of
information
• Competitive advantage in business
• Has increased ECONOMIC
VALUE if kept confidential
• Must be kept secret (business
must take “reasonable” steps &
actions to maintain secrecy)
• Term is Indefinite
(e.g., Coca Cola & KFC)
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PATENTS
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PATENTS
•Protects new inventions or ideas
•Requirements for Patentability:
•Useful
•Novel/New
•Non-Obvious (To a “Person of Skill in the Art”)
•Marking:
•Patent Pending
•Protected by U.S. Patent No. 5,125,445
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What can be Patented?
• Processes
• Articles of Manufacture
• Machines
• Compositions of Matter
• And Improvements to all
PATENTS
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What can’t be Patented?
• Law of Nature
• Physical Phenomena
• Abstract Ideas (mathematical solutions)
• Scientific Principles
• Atomic Weapons
• Illegal Devices
• Natural Occurring Items
• A method that is purely mental
PATENTS
What are your Patent Rights?
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• The right to EXCLUDE others from making, using
or selling an invention
• Limited monopoly granted by the Federal
government
• In exchange for full disclosure of the invention to
the public
How Long Does a Patent Last?
• Utility Patent: 20 years from the Date of Filing
• Design Patent: 14 years from the Date of Issue
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Who is the Inventor?
• “Conceives” the claimed invention Who IS?
• Carries out experiments
• Assists inventor in reducing invention to practice
• Contributes obvious elements and improvements
• Suggests a desired result without corresponding
idea/solution
• Evaluates invention
• One who identifies the problem but gives no
solution.
Who is NOT?
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Two Types: Provisional vs. Non-Provisional Application
Non-Provisional Application - Expensive & Long (3-5 Years)
• Must disclose and describe the best mode contemplated by the inventor
of carrying out the invention
Provisional Application – Quick & Cheap
• Only a place holder (1 year) and establishes a priority date
• If you do NOTHING- Application Ceases to Exist
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Utility Patent vs. Design Patent
• Utility – Protects how the invention works or is made
• Multiple Claims
• Functionality
• Cost- $5,000-$15,000 to file
• 20 years from date of filing
• Design – Protects how it looks
• Single claim (for “ornamental design”) with many figures
• Cost = $1,500-$2,000
• Cannot be Functional
• 14 years from date of issue
Contents of a Patent Application
• Title
• List Of Inventors
• Abstract
• Specification (Technical & Disclosure)
• Background Of The Invention
• Field Of The Invention
• Description Of The State Of The Art
• Summary Of The Invention
• Brief Description Of The Drawings
• Detailed Description Of Invention
• Claims (Legal) ©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
U.S. Design Patent D590,868
2009
U.S. Patent 8,046,721:
1. A method of unlocking a hand-held electronic device, the device
including a touch-sensitive display, the method comprising:
detecting a contact with the touch-sensitive display at a first
predefined location corresponding to an unlock image;
continuously moving the unlock image on the touch-sensitive
display in accordance with movement of the contact while
continuous contact with the touch screen is maintained, wherein
the unlock image is a graphical, interactive user-interface object
with which a user interacts in order to unlock the device; and
unlocking the hand-held electronic device if the moving the unlock
image on the touch-sensitive display results in movement of the
unlock image from the first predefined location to a predefined
unlock region on the touch-sensitive display.
What to Do When You Invent
1) Keep all materials/concepts
CONFIDENTIAL (NDA).
2) Keep a contemporaneous notebook of
ideas/sketches.
3) Date & sign all notes/sketches.
4) If possible, have a witness countersign.
5) Under stand risk of public disclosure.
6) Evaluate novelty – prior art search.
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America Invents Act
“The New Patent Law”
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America Invents Act
• Changed from “first to invent” to “first to file” system
• Eliminated requirement for Inventor to execute application and provide a mechanism for substitute statement by assignee when inventor is unavailable or non-cooperative
• Removed failure to disclose Best Mode as basis for invalidation of a patent
• Created “micro-entity” status with 75 percent reduction in fees
Major Provisions
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First to File System
• Brings U.S. law into conformity with the rest of the world –
Race to the Patent Office
• Absolute novelty standard but still allows a one year grace
period for certain publications made by or derived from
inventors
• Eliminates interference procedures; introduces derivation
proceeding
Association for Molecular Pathology
v. Myriad Genetics, Inc. 133 S.Ct. 2107 (2013)
Claims to sequences of DNA “isolated” from cells are not
eligible for patent because they are “products of nature.”
However, claims to synthetic sequences of DNA that are
chemically distinct from sequences that exist naturally in
cells are patent eligible. Specifically, cDNA—synthetic
molecules of DNA whose sequence of nucleotides has
portions missing when compared to endogenous genes—
were held to be patent-eligible because no such molecules
naturally exist.
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Blackhorse v. Pro Football, Inc. Trademark Trial and Appeal Board, June 17, 2014
• TTAB canceled six trademark registrations for the Washington
Redskins' name, ruling that it is disparaging to American
Indians.
• The Lanham Act bars registrations that "may disparage" or
"bring into contempt or disrepute" persons, living or dead, as
well as institutions, beliefs or national symbols.
•The ruling affects only the benefits of federal registration, not
the team's ability to use the name.
•The team will appeal, and the registrations will remain active
until the appeal is resolved.
Blackhorse v. Pro Football, Inc. (cont’d)
Shanna K. Sanders, Esq.
Heslin Rothenberg Farley & Mesiti P.C.
Intellectual Property Law
5 Columbia Circle
Albany, New York 12203
518-452-5600
www.hrfmlaw.com