Lecture 3 Flashcards
what is intellectual property?
- intangible personal property generally stated, your ideas
- property interests that are deserving of protection against infringement or unauthorized use by a person other than the owner
- a significant portion of the value of a business amy reside in its tangible assets such as its intellectual property (microsoft)
trade secrets
a commercially valuable business secret that is not common knowledge (includes a formula, pattern, compilation, program, device, method, technique, or process to which conditions apply)
improper means
includes espionage, theft, bribery, misrepresentation, and breach or inducement of a breach of duty to maintain secrecy
readily ascertainable
info does not include info accessible through a license agreement or by an employee under a confidentiality agreement with their employer
conditions for a trade secret
- derives independent economic value from not being generally known
- is not readily ascertainable by proper means
- is subjected to reasonable efforts to maintain secrecy
(must be all three!)
can a trade secret be composed of different readily ascertainable pieces of info?
yes! but the data must be compiled and taken together to constitute a unique compilation creating a distinctive competitive advantage
if an employee makes something for an employer during his assigned duties is that a trade secret? whose is it?
yes it is a trade secret of the employer-even if generated by the employee’s personal knowledge
examples of reasonable efforts to maintain secrecy
- physical security
- developing a doc. handling policy
- executive education
- nondisclosure/confidentiality agreements
- implement appropriate hiring/firing procedures (background checks)
- restrictions on computer stored info
misappropriation
improper acquisition, disclosure, or use
improper acquisition
(acquiring a trade secret by improper means)
- industrial espionage
- theft
- bribery
improper disclosure/use
- using something that was acquired improperly
- breaking confidentiality agreement
- disclose/use a trade secret you acquired by mistake or accident of the trade secret’s owner
examples of PROPER means
- published literature
- reverse engineering (break apart and construct yourself)
- public use/disclosure by the trade secret owner
- independent invention/discovery by another
acquired info and rights
- utilization of personal knowledge is appropriate unless there is a contract provision
- TS which obviously cannot be used by the former employer
- confidential info of the employer (but not a TS): a former employee is obligated to not disclose or use the info acquired during his employment
- general business info (types not protected unless there is a confidentiality agreement)
remedies for stealing a trade secret
- injunctive relief (stopping the use)
- recovery of damages
- theft of a trade secret is a crime (in WI)
- and at the federal level (Economic Espionage Act)
trade symbols
a form of id used to identify/distinguish goods or services (trademark,service mark, etc)
-must be capable of distinguishing the good from the goods of others
to have legal protection immediately a trademark must….
be inherently distinctive
-a TM that is merely descriptive cannot be protected as a TM until it acquires a “secondary meaning”: overtime consumers a particular mark (color, packaging, etc) as signifying a brand
how to acquire secondary meanings
- long/exclusive use (5 yrs and not used by another co.)
- extensive sales/promotion
- consumer survey evidence
- other convincing evidence
how to avoid genericizing your TM
- never use as a noun or verb
- distinguish the mark, TM or R
- monitor 3rd party usage
a mark that answers-who are you? where do you come from?
is valid because a buyer understands it refers only to a particular source of goods
a mark that answers what are you?
not valid because it’s generic and stands for the product itself
Lanham Act
Federal TM Act
-law intended to protect the investment in and goodwill associated with a mark and to prevent confusion as to the origin of the goods/services
is registration required for protection of a TM?
no! the use of the TM gives protection under the common law, but registration creates additional protection from and remedies for infringement
general concepts regarding the Lanham Act
- the mark must be affixed to the goods or used in connection with the goods
- you can lose the TM if you abandon use (3 yrs of no use in commerce)
- registering a mark is no guarantee that the mark does not infringe on another’s mark (unregistered)
benefits of having a registered TM
- constructive notice deemed given (people are assumed to know it’s yours)
- use of R, if it says TM its unregistered
- customs bureau protection against importation of knock offs
- prima faice -presumed evidence of right ot use mark
- right to use fed. courts to protect mark
- mark cannot be challenged after 5 years
