INTELLECTUAL PROPERTY BASICS EVERY LAWYER SHOULD KNOW

North Phoenix Bar Association

April 14, 2010

Connie J. Mableson

602-277-8100 connie@mablesonlaw.com

OVERVIEW

North Phoenix Bar AssociationApril 14, 2010Connie J. Mableson602-277-8100 connie@mablesonlaw.com

TYPES OF IP

Patent (federal)Trademark (federal)Copyright (federal)Trade Secrets (state by state law)

Intangibles & Virtua

Mableson

Law

Grou

p © 2010

3

Con

nie J. M

ableson, P

LL

C

IP IN PRACTICE

Corporations & LLC’sLicensingEstate Planning & Probate

AdministrationEmploymentBusiness ContractsInfringement Disputes

Mableson

Law

Grou

p © 2010

4

Con

nie J. M

ableson, P

LL

C

TRADEMARKS

North Phoenix Bar AssociationApril 14, 2010Connie J. Mableson602-277-8100 connie@mablesonlaw.com

GOODS & SERVICES

Goods = Hard goods. Tangible.

Services = Performed by Humans

Cannot be stored or transported,

Mableson

Law

Grou

p © 2010

6

Con

nie J. M

ableson, P

LL

C

TRADEMARK IS AN INDICATOR OF SOURCE

WHAT CAN BE USED AS TRADEMARK

words, names, symbols, sounds, or colors

distinguish goods and services from those manufactured or sold by others and

to indicate the source of the goods.

Mableson

Law

Grou

p © 2010

8

Con

nie J. M

ableson, P

LL

C

IN USE

ON Goods (packaging, containers label, tag)

In connection with Services (advertising, web sites, flyers, etc)

Mableson

Law

Grou

p © 2010

9

Con

nie J. M

ableson, P

LL

C

CONTINUUM OF DISTINCTIVENESS

Mableson

Law

Grou

p © 2010

10

Con

nie J. M

ableson, P

LL

C

CONTINUUM OF DISTINCTIVENESS M

ableson L

aw G

roup ©

2010

11

Con

nie J. M

ableson, P

LL

C

Generic Marks - Marks which are the common name of goods and/or services or a category of goods and/or services Generic marks may never be protected.

Descriptive Marks - Marks which describe in plain and ordinary use of the language the features, qualities, ingredients, or uses of products and/or services. Descriptive marks may not be protected unless they have acquired secondary meaning.

Suggestive Marks - Suggestive marks evoke features of products and/or services in a way that requires the use of the consumer's imagination, thought or perception and that does not merely describe them. Suggestive marks are considered inherently distinctive and, thus, are protectible without any further showing.

CONTINUUM OF DISTINCTIVENESS

Mableson

Law

Grou

p © 2010

12

Con

nie J. M

ableson, P

LL

C

Arbitrary Marks - Marks which use commonly known words or terms in an unusual or unfamiliar way which is not typically considered related to the goods and/or services. Arbitrary marks are considered inherently distinctive and, thus, are protectible without any further showing.

Fanciful Marks - Marks which are words or terms created solely for use as trademarks. Fanciful marks are considered inherently distinctive and, thus, are protectible without any further showing.

Fanciful marks can, however, become generic if they become the common name for the goods and/or services in relation to which they are used.

GOVERNING LAWS

Common Law TM & SM designationState Law TM & SM designationFederal Law ® designation

Mableson

Law

Grou

p © 2010

13

Con

nie J. M

ableson, P

LL

C

COMMON LAW

Use in commerce in a geographic area

First use in a geographic area=superior use(r)

Proof of use in a geographic territory may be difficult

Mableson

Law

Grou

p © 2010

14

Con

nie J. M

ableson, P

LL

C

STATE LAWSStates have a state based register of

trademarks.http://www.azsos.gov/business_services/tnt/vGives notice of the right claimed in the

mark for use in the StateSpecific goods and services-

classifications

Mableson

Law

Grou

p © 2010

15

Con

nie J. M

ableson, P

LL

C

FEDERAL LAWS-USPTOMust be used in interstate commerce-between

2 statesGives priority as to all USAShifts burden of proof to the person claiming

infringement Filing of application with USPTOwww.uspto.govSpecific classes of goods and services

Mableson

Law

Grou

p © 2010

16

Con

nie J. M

ableson, P

LL

C

ENFORCEMENT

Trademark Owner must police infringing uses otherwise may lose the exclusive rights by way of abandonment

Generic usage = no trademark protection (Kleenex, Xerox) Taser?

Mableson

Law

Grou

p © 2010

17

Con

nie J. M

ableson, P

LL

C

INFRINGEMENT

The test is

“Likelihood of Confusion”

Mableson

Law

Grou

p © 2010

18

Con

nie J. M

ableson, P

LL

C

SLEEKCRAFT

AMF v Sleekcraft Boats factors-Strength of Mark-distinctive (arbitrary,

fanciful, suggestive, descriptive)-Proximity of Goods (same class of

consumers)-Similarity of Marks-Evidence of Actual Confusion-Marketing Channels Used

Mableson

Law

Grou

p © 2010

19

Con

nie J. M

ableson, P

LL

C

DEFENSES

9th & 3rd Circuit Fair Use (nominative fair use-New Kids)-uses the mark owner‘s product to legitimately sell its own product

-general fair use-1st Amendment Free Speech (commercial

speech)-comparative advertising-parody, criticism, commentary-news reporting-non-commercial use-abandonment/generic

Mableson

Law

Grou

p © 2010

20

Con

nie J. M

ableson, P

LL

C

DILUTION AND TARNISHMENT

Difficult causes of action to maintain – proof problems (actual harm)

For famous marks (highly distinctive)Dilution by blurring (impairs the

distinctiveness)Dilution by tarnishment – by association

that harms the reputation of the famous mark

Mableson

Law

Grou

p © 2010

21

Con

nie J. M

ableson, P

LL

C

COPYRIGHT

North Phoenix Bar AssociationApril 14, 2010Connie J. Mableson602-277-8100 connie@mablesonlaw.com

COPYRIGHT ORIGINS

Constitutional Protection- Article I, Section 8, Clause 8 of the U.S. Constitution empowers Congress "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." ...

Federal Law 17 U.S.C. 101 et seq.

Mableson

Law

Grou

p © 2010

23

Con

nie J. M

ableson, P

LL

C

COPYRIGHT PROTECTIONS

Protects “original works of authorship”Protect ORIGINAL EXPRESSION of an

author in a “work”Copyright protects “original works of

authorship” that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device.

Mableson

Law

Grou

p © 2010

24

Con

nie J. M

ableson, P

LL

C

WORKS PROTECTED

Copyrightable works include the following categories:

1. literary works

2. musical works, including any accompanying words

3. dramatic works, including any accompanying music

4. pantomimes and choreographic works

5. pictorial, graphic, and sculptural works

6. motion pictures and other audiovisual works

7. sound recordings

8. architectural works

Mableson

Law

Grou

p © 2010

25

Con

nie J. M

ableson, P

LL

C

COPYRIGHT EXCEPTIONS

What is NOT original expression

-Works that have not been fixed in a tangible form of expression

-Titles, names, short phrases, and slogans; familiar symbols or designs; mere listings of ingredients or contents

-Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration

-Works consisting entirely of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers)

Mableson

Law

Grou

p © 2010

26

Con

nie J. M

ableson, P

LL

C

COPYRIGHT EXCLUSIVE RIGHTS

Section 106 of the 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

- To reproduce the work in copies or phonorecords;

- To prepare derivative works based upon the work;

- To distribute copies;

- To perform the work publicly;

- To display the work publicly; and

- In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.

Mableson

Law

Grou

p © 2010

27

Con

nie J. M

ableson, P

LL

C

COPYRIGHT OWNERSHIP

The copyright in the work of authorship immediately becomes the property of the author who created

the work. Only the author or those deriving their rights through the author can rightfully claim copyright.

The authors of a joint work are co-owners of the copyright in the work, unless there is an agreement to the contrary.

Mableson

Law

Grou

p © 2010

28

Con

nie J. M

ableson, P

LL

C

WORKS FOR HIRE

Section 101 of the copyright law defines a “work made for hire” as:

1. A work prepared by an employee within the scope of his or her employment;

or 2. A work specially ordered or commissioned for use as a

contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

Mableson

Law

Grou

p © 2010

29

Con

nie J. M

ableson, P

LL

C

TERM

A work that was created on or after January 1, 1978, is given a term enduring for the author’s life plus an additional 70 years after the author’s death.

In the case of “a joint work prepared by two or more authors who did not work for hire,” the term lasts for 70 years after the last surviving author’s death.

For works made for hire, and for anonymous and pseudonymous works (unless the author’s identity is revealed in Copyright Office records), the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.

Mableson

Law

Grou

p © 2010

30

Con

nie J. M

ableson, P

LL

C

INFRINGEMENT

Direct InfringementContributory (knowledge of another’s

infringement and either material contribution to the infringement or induce infringement)

Vicarious (the right and ability to supervise the infringing content and a direct financial interest in the infringing activity)

Mableson

Law

Grou

p © 2010

31

Con

nie J. M

ableson, P

LL

C

FIRST SALE DOCTRINE

Mere ownership of a book, manuscript, painting, or any other copy or phonorecord does not give the possessor the copyright. The law provides that transfer of ownership of any material object that embodies a protected work does not of itself convey any rights in the copyright.

Mableson

Law

Grou

p © 2010

32

Con

nie J. M

ableson, P

LL

C

PATENT

North Phoenix Bar AssociationApril 14, 2010Connie J. Mableson602-277-8100 connie@mablesonlaw.com

OVERVIEW

A patent is an intellectual property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

This right was established over 200 years ago in Article 1, Section 8 of the United States Constitution: “to promote the science and useful arts by securing for a limited time to the inventors the exclusive right to their respective rights and discoveries.”

Mableson

Law

Grou

p © 2010

34

Con

nie J. M

ableson, P

LL

C

UTILITY PATENT

Utility Patent A utility patent is the kind of patent a business or individual

would apply for to cover a new invention. This may include an upgraded form of something that has already been invented. The utility patent protects the invention from other individuals and business and keeps them from making and selling the invention for up to 20 years. This is one of the most popular types of patents and is the one most often applied for.

An example of someone who would need this type of patent is if someone created a clothes dryer that was able to automatically fold the clothing it had just dried. This would be an improvement of an existing invention.

Mableson

Law

Grou

p © 2010

35

Con

nie J. M

ableson, P

LL

C

DESIGN PATENT

Design Patent A design patent is typically the kind of patent a

business or individual applies for when they have created an original design of a product that will be manufactured.  This type of patent keeps other businesses and individuals from creating or making a profit from the design for at least 14 years from the patent date. 

One example would be if an individual created a design for a machine that could teleport humans – this would be a completely original design and therefore, would require a design patent. 

Mableson

Law

Grou

p © 2010

36

Con

nie J. M

ableson, P

LL

C

PLANT PATENT

Plant Patent A plant patent is the kind of patent an

individual or business would apply for if they had invented or discovered a new or unheard of plant.  This may include cultivating different types of plants to create mutants or hybrids and also newly found seedlings.  This patent protects the owner by keeping other individuals or businesses from creating the type of plant or profiting from the plant for at least 20 years from patent date.

Mableson

Law

Grou

p © 2010

37

Con

nie J. M

ableson, P

LL

C

BUSINESS METHOD PATENT

Business Method Patents

Business Method Patents are legal means of providing protection and exclusive ownership rights to individuals or companies for their business processes, product or service that are mostly implemented by computers.

In the US, (which understandably is the pioneer in recognizing such patents, and has evolved laws and other legal framework for granting patent rights and their subsequent protection) these patents are classified under Class 705 - Modern Business Data Processing.

Mableson

Law

Grou

p © 2010

38

Con

nie J. M

ableson, P

LL

C

TERM

For patents filed on or after June 8, 1995, the term of the patent is 20 years from the earliest claimed filing date.

In order to keep a utility patent enforceable during its term, maintenance fees must be paid to the U.S. Patent and Trademark Office 3 ½ years, 7 ½ years, and 11 ½ years after the patent issues. Design and plant patents do not require maintenance fees.

Design patents (based on a decorative, non-functional design) have a 14-year term.

Mableson

Law

Grou

p © 2010

39

Con

nie J. M

ableson, P

LL

C

TYPES OF APPLICATIONS

You select the type of patent application you will file based on the type of invention you are seeking protection.Regular, nonprovisional, and provisional. The provisional application will provide you with patent pending protection. However, it is only an interim application. A regular, nonprovisional application must be filed within 12 months of filing the provisional application.

Mableson

Law

Grou

p © 2010

40

Con

nie J. M

ableson, P

LL

C

BAR TO PROTECTION

By federal law, patent protection will be barred if the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the date on which a patent application is filed.

Mableson

Law

Grou

p © 2010

41

Con

nie J. M

ableson, P

LL

C

TRADE SECRETS

North Phoenix Bar AssociationApril 14, 2010Connie J. Mableson602-277-8100 connie@mablesonlaw.com

ARIZONA (UNIFORM) TRADE SECRETS ACT-44-401

1. "Improper means" includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy or espionage through electronic or other means.

2. "Misappropriation" means either: (a) Acquisition of a trade secret of another by a person who knows or has reason

to know that the trade secret was acquired by improper means. (b) Disclosure or use of a trade secret of another without express or implied

consent by a person who either: (i) Used improper means to acquire knowledge of the trade secret. (ii) At the time of disclosure or use, knew or had reason to know that his

knowledge of the trade secret was derived from or through a person who had utilized improper means to acquire it, was acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use or was derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use.

(iii) Before a material change of his position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake.

Mableson

Law

Grou

p © 2010

43

Con

nie J. M

ableson, P

LL

C

ARIZONA (UNIFORM) TRADE SECRETS ACT-44-401

4. "Trade secret" means information, including a formula, pattern, compilation, program, device, method, technique or process, that both:

(a) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use.

(b) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

Mableson

Law

Grou

p © 2010

44

Con

nie J. M

ableson, P

LL

C

INJUNCTION & DAMAGES

44-402. Injunctive relief A. Actual or threatened misappropriation may be enjoined. On

application to the court, the court shall terminate an injunction if the trade secret has ceased to exist, but the court may continue the injunction for an additional reasonable period of time in order to eliminate commercial advantage that otherwise would be derived from the misappropriation.

B. In exceptional circumstances an injunction may condition future use on payment of a reasonable royalty for no longer than the period of time for which the use could have been prohibited. Exceptional circumstances include, but are not limited to, a material and prejudicial change of position before acquiring knowledge or reason to know of misappropriation that renders a prohibitive injunction inequitable.

C. In appropriate circumstances, affirmative acts to protect a trade secret may be compelled by court order.

Mableson

Law

Grou

p © 2010

45

Con

nie J. M

ableson, P

LL

C

DAMAGES

44-403. Damages A. Except to the extent that a material and prejudicial change of position before

acquiring knowledge or reason to know of misappropriation renders a monetary recovery inequitable, a complainant is entitled to recover damages for misappropriation. Damages may include both the actual loss caused by misappropriation and the unjust enrichment caused by misappropriation that is not taken into account in computing actual loss. In lieu of damages measured by any other methods, the damages caused by misappropriation may be measured by imposition of liability for a reasonable royalty for a misappropriator's unauthorized disclosure or use of a trade secret.

B. If willful and malicious misappropriation exists, the court may award exemplary damages in an amount not exceeding twice any award made under subsection A.

44-404. Attorney fees The court may award reasonable attorney fees to the prevailing party for any of

the following: 1. A claim of misappropriation made in bad faith. 2. A motion to terminate an injunction made or resisted in bad faith. 3. Willful and malicious misappropriation.

Mableson

Law

Grou

p © 2010

46

Con

nie J. M

ableson, P

LL

C

NON-DISCLOSURE AGREEMENTS

Employment Agreements or as a part of the Employment Offer

Business ventures and activitiesIdea submission

Mableson

Law

Grou

p © 2010

47

Con

nie J. M

ableson, P

LL

C

INTANGIBLES

North Phoenix Bar AssociationApril 14, 2010Connie J. Mableson602-277-8100 connie@mablesonlaw.com

INTANGIBLES & VIRTUA

General Intangibles Frequent Flyer Miles Card Perks (credit cards money back at year end) Social Media accounts Facebook, Linked In PayPal and OnLine Accounts Store Accounts (amazon.com) Virtual Worlds Avatars Virtual World goods Virtual World currencies

Mableson

Law

Grou

p © 2010

49

Con

nie J. M

ableson, P

LL

C

THANK YOU