how to protect (and profit from) your intellectual property

Nath Law Group 1

How To Protect (and Profit) from Your Intellectual Property

October 20, 2009

Joshua B. Goldberg

H. David Starr

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Forms of Intellectual Property Trademarks Copyrights Patents Designs Trade Secrets

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TRADEMARKS

Protects the use of a mark on goods or services used in commerce

Scope of rights determined by nature of use

Lasts as long as it is used

The connection in the mind of the The connection in the mind of the consumer between mark and productconsumer between mark and product

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Source of Trademark Rights

Common Law – Use Geographic rights Federal registration State registration

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Trademark Examples:

Any word, symbol, 3-D figure, color, Any word, symbol, 3-D figure, color, sound, smell, or packagingsound, smell, or packaging

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Trademark Examples Shapes:

Gibson Les Paul single cutaway

Patterns

Product Packaging

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Distinctiveness ContinuumA word or logo can only be considered a mark if

it is distinctive, i.e. capable of distinguishing goods or services. Marks are classified on the following continuum of distinctiveness:

Fanciful & Arbitrary Suggestive Descriptive Generic

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Fanciful & ArbitraryFanciful

Kodak, Xerox, ExxonArbitrary

Arm & Hammer, APPLE, SHELL

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Suggestive v. Descriptive Suggestive marks require “imagination,

thought or perception” Coppertone, Chicken of the Sea, Sweetarts

Descriptive marks are protectable upon showing of “secondary meaning” “Merely Descriptive” (“Raisin Bran”) Geographically Descriptive (“California Pizza Kitchen”) Surname (“McDonalds” “Hilton”) Laudatory (“The Best Beer in America”) Non-traditional Marks

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Generic “Marks”

Terms that name the product or service

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Generic “Marks”

Generic when Adopted (“Hotels.com”)

PROVIDING INFORMATION FOR OTHERS ABOUT TEMPORARY LODGING; TRAVEL AGENCY SERVICES, NAMELY, MAKING RESERVATIONS AND BOOKINGS FOR TEMPORARY LODGING FOR OTHERS BY MEANS OF TELEPHONE AND THE GLOBAL COMPUTER NETWORK

Generic by public expropriation(“Zipper” “Elevator” “Aspirin”)Compare – “Xerox” versus “Photocopy”

Band-Aid? Kleenex?

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Trademark Infringement

Causes a “likelihood of confusion” in the mind of the customer

Similarity of Marks Relatedness of Goods/Services Channels of Trade Degree of Care Strength of the Mark Bad Faith / Intent Actual Confusion

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Confusion Factors

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Trademark DilutionFor “famous” marks, use by another

causes dilution of distinctive quality of mark

“Blurring” -- Buick aspirin, Kodak pianos, Bulova gowns, Victor’s Little Secret

“Tarnishment” – Candyland.comParody? – “Chewy Vuitton”

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Trademark Dilution

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Clearance of a Mark Avoid infringement and gauge strength “Knockout” Search

Patent and Trademark Office Website Internet Searches

Comprehensive Searches International Searches?

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Federal RegistrationCosts and TimingAbout $1,000 to fileFiling to Registration takes 12-18

monthsAdditional costs for Office Actions and

OppositionsAdditional costs for “ITU” applications

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Domain Name v. TrademarkDomain Name confers no substantive

trademark rightsFirst-come first-served basisUDRP / Cybersquatting

Registration of domain name in “bad faith” required

Existence of trademark registration

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Trademarks on the Internet Courts are conflicted as to whether

keywords/metatags constitute “use in commerce”

GOOGLE case holds sale of trademark as a keyword is a “use in commerce”

Other cases hold no “use in commerce” for a mark to trigger pop-up ads

Contributory Liability? Ebay holds specific knowledge of infringement required

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Copyrights

Work of authorship fixed in tangible form Term:

Life of ‘ Author’ + 70 years for persons “For Hire”, “Anonymous”, “Pseudonym”, lesser of

95/120 years from date of publication/creation

Registration and notice not mandatory, but highly advisable

Protects original expression, not ideas

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Copyright OwnershipAuthor “Work made for hire”

Prepared by an employee within the scope of his or her employment

Reid v. CCNV factors Specially ordered or commissioned for use

in certain works if parties expressly agree in writing that the work shall be considered to be a work made for hire

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Copyright Examples Music Visual Art Video and Film Textual works Semiconductors

Databases Dance Architecture Boat Hull Designs Software code

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Copyright Exclusive RightsTo reproduce the copyrighted workTo prepare derivative worksTo distribute copies to the public by

sale, lease, or lendingTo perform the work publiclyTo display the work publicly

17 U.S.C. 106

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Copyright Infringement Any person who without

authority on a work entitled to copyright protection: Copies, distributes,

displays, performs, makes derivatives works

Pre-Suit: Proof of access and

copying

Actual damages, e.g. lost profits, or

Statutory damages $750-$30,000/work $150,000 if willful

Injunction, impound, attorney fees, criminal penalties

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Defenses to Copyright Infringement Fair Use Parody/First Amendment Reverse engineering to gain functional

aspects License First Sale doctrine Public Domain

Term expired Gov’t works

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Copyright Fair Use Limitation on exclusive rights The use of a copyrighted work for the

following purposes is not a copyright infringement: Criticism Comment News reporting Teaching Scholarship Research

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Fair Use Four-Factor Test The purpose and character of the use

Commercial vs. non-profit The nature of the copyrighted work

Fact vs. imaginative Published vs. unpublished

The amount and substantiality of the portion used Small amount vs. substantial amount

The effect of the use upon the potential market for or value of the work

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Digital Millennium Copyright ActCircumvention of anti-piracyLimited liability for ISPs and non-profits

acting as passive conduits

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PatentsDuration: 20 years from filingExclude others from making, using,

selling, importingAny mechanical, electrical, or chemical

invention, process, improvement.Must be kept secret.Must be novel, useful, unobvious.Priority claim: 1 year

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What is a Patent?A technology asset recognized by the

financial community and useful for raising capital

A tool for defining marketsA tool to force cross-licensingTwo-Five Years and $10,000-$40,000

per case per countryA negative right, i.e., excludes others

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Patent Rights Exclude Others

Claims define the property Picture claims vs. generic scope Independent claim vs. dependent claim

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Patent ExamplesCompoundsMethodsApparatusMachinesNew and Useful Improvements Thereof

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Mechanical Claims A helmet shell liner for a human head comprising:

a plurality of longitudinal arched shaped segments for encircling the frontal temporal and occipital basilar skull of a human head; each of said arched shaped segments having a hollow passage extending longitudinally therein and being of cushioning material capable of yielding to absorb impact forces;a relatively stiff reinforcement element in said passage of each said arched segment; anda fastener connecting said longitudinal arched shaped segments to a helmet shell.

US 6,381,759

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Standards of Patentability

NOVEL means NEW (35 U.S.C. 102) Each and every limitation, in the proper order, not

in prior art USEFUL (35 U.S.C. 101)

Specific and credible NON-OBVIOUS (35 U.S.C. 103)

No combination of art INVENTIVE STEP

Problem-Solution approach

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Patent Prosecution First to Invent Groups, Art Units, SPE’s, Primary Examiners, Counts,

Interviews Time Periods, Events, Costs:

Invent, Search, File Application USSN Restriction/Search Office Action (101,102,103,112) Interview, Response Notice of Allowance, Pay Issue Fee Grant

Public search room

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Patent Renewal FeesAnnuity or maintenance fees must be

paid to avoid patent abandonment: U.S. maintenance fees due 4, 8, and 12

years after patent grant Europe annuity fees due every year

starting 3 years after filing Canada annuity fees due every year

starting 2 years after filing

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Business Strategy – Using a Patent Estate as a Functional Tool to Accomplish the Goals of the Business Group

Cross-Licensing/ Litigation Mgmt.

Entry & Development of Export Markets

Licensing Royalties Tax Advantages Foreign Manufacture

Protection of Process Advantages

Defensive, i.e. ability to operate

Exchange for Equity Customer Protection

Customer Premium Obtain Exclusivity of

Using ‘Old’ Products

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Patent Searches and Competitive Activity

Identify foundation technology. Interview Inventors.Survey the terrain/competitors. Identify business goalsDevelop an IP strategy for the portfolio

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Types of Patent SearchesState of the Art SearchFreedom to Operate SearchPatentability Search Invalidity SearchCompetitive Activity Search

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Competitive SurveillancesPatent Publications

18 month window, patent familiesConferences and Trade ShowsCompany Websites

Project Development AdvertisingSEC Filings and Annual Reports

License and Agreement Terms

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Patent InfringementAny person who:

Makes Uses Sells Offers to sell Imports

the claimed invention

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Patent Remedies Federal Court for

patent infringement Lost profits Seizure of items Injunction Attorney fees & triple

damages for willful infringement

Pre-Suit Issues: Defendant needs

opinion of patent lawyer to avoid triple damages & fees

Patent holder must conduct thorough investigation or face anti-trust countersuit for triple damages and attorney fees

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Designs Duration: 14 years from grant Any new, original and ornamental design for

an article of manufacture. A design patent protects only the appearance of the article and not structural or utilitarian features.

Visual ornamental characteristics embodied in, or applied to, an article of manufacture

Exclude others from making, using, selling, importing

Priority claim: 6 months

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Examples of DesignsTea PotSpoonFan for Milk FrotherClockMetal Dish

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Trade Secrets Duration: until

publicly known No registration

system State by State; no

civil Federal Enforcement

Federal Criminal Enforcement

Definition: Any information giving a business an

advantage where reasonable

measures are taken to keep it secret

and it is not generally known to the public

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SecrecyConfidentiality Agreement vs. PatentDisclosure to public:

General Rule: Disclosure Kills U.S. Exception: 1 year grace period EP Exception: 6 mo., research, not

published, small groups (never relied upon)Cost: locks, TS program, training,

badges

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Trade Secret Examples Supplier lists Customer lists Business processes Pricing Information

Secret Recipes Listerine KFC Coca-Cola Chanel No. 5 Benedictine

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International Protection Paris Convention for the Protection of

Industrial Property Patent Cooperation Treaty (PCT), WIPO Madrid Trademark Protocol Berne Convention ITC Sec. 337

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Thank You

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