Intellectual Property Law for the Intellectual Property Law for the Non-IP LawyerNon-IP Lawyer

Eugene J. Han, Senior Legal Counsel Eugene J. Han, Senior Legal Counsel O’Reilly Auto PartsO’Reilly Auto Parts

TRADEMARKS

WHAT IS A TRADEMARK?• A trademark is a word, symbol, device, logo or slogan

that distinguishes the source of one product from another. (Example: O’Reilly Auto Parts®, Bass Pro Shops®, Nike®, Coca-Cola®, etc.)

WHY DO WE HAVE TRADEMARK PROTECTION?

• To encourage improved products and services through branding.

• For this reason, the USPTO will not register “confusingly similar” marks.

HOW DO YOU GET TRADEMARK PROTECTION?

• Trademark rights are based on use, not on registration.

• Protection is automatically granted to the first person to actually use the mark.

• However, in order to get a federal trademark registration, you must use the mark in commerce (i.e., in more than one state).

DOES YOUR CLIENT NEED TRADEMARK PROTECTION?

• Business name• Products• Services provided• Slogans• Certifications• Branding

WHEN SHOULD YOU “REGISTER” A CLIENT’S TRADEMARK?

• Registering a mark gives the client certain rights in the event the mark is infringed.

• A client does not have to prove that it has rights to the trademark in court if the mark is registered.

• Also, it puts others on notice that the client is using the mark commercially.

TIPS TO AVOID PROBLEMS IN THE REGISTRATION PROCESS

• Advise your client to pick legally strong versus weak trademarks.

• Trademarks that are “fanciful” words (e.g., Xerox ®) or “arbitrary” designations (e.g., Apple® for computers) are considered strong trademarks.

• Trademarks that are “descriptive” of some feature of the good or service are considered "weak," and are harder to protect under trademark law (e.g., fast car for a porsche).

• Trademarks that are “generic” are never allowed protection under trademark law (e.g., dry cleaning for a dry cleaners).

YOUR CLIENT HAS A TRADEMARK – NOW WHAT?

• Look for unauthorized use of client’s trademark:– By others (counterfeiting)– To suggest affiliation or sponsorship– On social media sites– By cybersquatters and typosquatters– That is confusingly similar

Copyrights

WHAT IS A COPYRIGHT?

• It is the exclusive right to make copies, license, and otherwise exploit a literary, musical, or artistic work, whether printed, audio, video, etc.

• Includes selling, performing, displaying or making “derivative” works

• A copyright protects expression not underlying ideas or functionality

• Copyrighted material must be in tangible, written form, i.e., something that may be copied

WHY DO WE HAVE COPYRIGHT PROTECTION?

• To make sure creators/authors are allowed to profit from their work.

HOW DOES YOUR CLIENT GET COPYRIGHT PROTECTION?

• Copyright is free and automatic. It attaches to your client’s work upon creation and your client can and should use the © symbol.

WHEN SHOULD YOUR CLIENT “REGISTER” HIS OR HER COPYRIGHT? • Important to register client’s copyright before

an infringement so that client can get attorneys' fees and statutory damages from an infringer.

• However, you may expedite registration with the Copyright Office prior to filing suit.

IMPORTANCE OF COPYRIGHT REGISTRATION

• For registered copyrights registered, a court may award statutory damages up to $150,000 per infringement.

• Subject to court order, your client may also obtain: – (i) a temporary restraining order that prohibits the

infringer from infringing the copyrighted work, and – (ii) a court order authorizing the U.S. marshal to seize

the allegedly infringing material.

IMPORTANCE OF COPYRIGHT REGISTRATION

CONTINUED• Advantage of statutory damages is that there

is no need to prove client’s lost profits or the infringer's profits since a court has the discretion to award statutory damages to your client of up to $30,000 for each copyrighted work infringed.

• If infringement was willful, a court may award statutory damages up to $150,000.

IDENTIFYING COPYRIGHT FOR YOUR CLIENT

• Is it something that was created by your client?– Drawings– Photos– Software Code– Art (sculptures, paintings, etc.)– Music (lyrics, compositions, sheet music, sound recordings)– Article, books, manuals– Look and feel of a website– Videos, movies, multi-media files, etc.

• Good idea to have copyright assignments in employment agreements for employees and a must for contractors!!

POTENTIAL COPYRIGHT ISSUES FOR YOUR CLIENT

• Unauthorized use of music in office or events• Copying and distributing a publication for others in

company• Hiring software programmers who steal code from

former employer• Using photos without a copyright license for

advertising and marketing materials• Copying software programs and using them for

multiple computers• Copying the look and feel of another website

Patents

WHAT IS A PATENT?• A patent is a right to exclude others from making,

using or selling your invention for a twenty-year period. – It is sometimes analogized to a “mini-monopoly.” – Right to exclude extends to all inventions which

accomplish what your client’s invention does in the same way.

– This so-called “doctrine of equivalents” is why many experts view patents as the most comprehensive form of legal protection

WHAT TYPES OF PATENTS ARE THERE?

• Utility • Design • Plant • You can protect apparatus, systems and

methods with utility patents. • Design patents protect ornamental designs. • Plant patents protect new varieties of plants.

WHY DO WE HAVE PATENT PROTECTION?

• To encourage innovation, and make sure that the true inventors profit

AT WHAT POINT SHOULD YOUR CLIENT FILE FOR A PATENT?

• When your client has a novel idea that satisfies the following three elements:– New (i.e., someone else did not invent it first - the

invention is not found in the “prior art.”) – Useful (easy to overcome)– Non-obvious (this is the most common hurdle

inventors must overcome)

IDENTIFYING POTENTIAL PATENTS FOR YOUR CLIENT

• Different composition or ingredients• New or better machine, device• A new or more efficient method of

accomplishing something• New design that looks different than anything

previously made

POTENTIAL PATENT PITFALLS FOR YOUR CLIENT

• Patent trolls• Indemnity provisions in technology licenses• Supplier providing goods and services sold by

your client• Using technology without an agreement or

license• Use of your client’s name for reference

purposes

ANY QUESTIONS?

THANK YOU