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
trademark dilution
the lessening of the capacity of a famous mark to identify and distinguish goods and servies regardless of the presence or absence of actaul or likely confusion, competition, or actual economic injury
blurring
when the defendant’s use of the mark causes the public to no longer think of the plaintiff’s product upond seeing the famous mark, but rather to associate the plaintiff and defendant’s products (Lexus Piano Store)
tarnishment
using a mark in an unwholesome manner or for a low quality product which could create a negative association with the product (Mutant of Omaha)
factors when considering whether or not a mark is famous
- the duration, extent, and geographic reach of advertising and publicity of the mark
- the amount, volume, and geographic extent of sales of goods/services offered under the mark
- extent of actual recognition of the mark
- whether the mark was registered
primary grounds for refusing to register a mark
- likely to confuse or cause mistake or deceive as to the source of goods with respect to a mark already registered
- merely descriptive (and no secondary meaning)
- dilutes a famous mark
- functionality doctrine-cannot be used to control a useful product feature
- deceptive, immoral, or scandalous
- opposition by members of public
infringement of a trademark
-deceptive of the public/constitutes unfair competition
when does infringement of a trademark occur?
- similarity btw marks
- similarity of products
- area/manner of concurrent use
- degree of care likely to be exercised by consumers
- strength of the mark
- actual confusion
- intent of the def. to palm off his product as that of another
remedies available for infringement
- injunctive relief
- recovery of profits
- damages
- destruction of infringing articles
- attorney’s fees (in certain cases)
can tradenames be registered under the lanham act?
no but they can become a trademark and then be registered (McDonalds, Ben & Jerry’s)
copyrights
form of protection provided by the federal copyright act
-protection extends to an original expression (not protection of an idea)
rights of the owner of the copyright
- reproduce copies
- prepare derivative works
- distribute copies
- perform/display the work publicly
requirements for a copyright
- must be an original work: independently created and possesses some minimal degree of creativity
- must be tangible or capable of becoming tangible
- you must be the owner (creator, employer of creator-if done at job, contractor for creation of the work)
is registration of a copyright required?
no-protection exists regardless
perks of registration of a copyright
- extra remedies (statutory damages/attorney’s fees)
- pre-req to filing for infringement
- shows people it’s yours
cyberlaw regarding copyrights
- source/object codes may be copyrighted
- a program’s structure/organization
- a program’s look/feel may not be copyrighted
infringement of a copyright
occurs when any of the copyright owner’s exclusive rights are violated
when does copying count as copyright infringement?
- word for word copying
- substantial similarity (ideas, expression, etc)
copyright infringement remedies
- injunctive relief
- statutory damages
- actual damages
- attorney’s fees
- criminal charges
no electronic theft act
(crime not civil) to willfully infringe a copyright for commercial advantage/gain or reproduction/distribution
digital millennium copyright act
- it is illegal to delete copyright info or to distribute false copyright info
- it is illegal to circumvent encryption or scrambling devices that protect copyrighted digital works and access such works
- it is illegal to manufacture/distribute tech. products or services primarily designed for the purpose of circumventing wrappers or encryption protection
patents
protected property right to make, use, or sell an invention to the absolute exclusion of others for the period of the patent (20 years from file date)
-whoever files first is owner
what can be patented?
tangible expressions; not just ideas
statutory requirements to get a patent
invention must:
- have utility-be useful
- be novel (new)
- be non-obvious (extension of what’s already known)
what is considered novel?
must not have been:
- known/used by others in US
- patented or described in any printed publication anywhere in the world
- invented by another in the US who has not abandoned or concealed the invention
- already described in a US patent app. which results in the issuance of a patent
one year rule for patents
inventor is barred from obtaining a patent if more than one year before the app. is filed the invention was:
- patented or described in print anywhere
- in public use in US
- on sale in US
- subject to patenting by another inventor in another country which resulted in a patent being issued before the US app. was filed
provisional patent application
abbreviated app. process w/ few formalities (but full-blown app. must be filed within 12 months)
-helps with 1st to file has rights
remedies to patent infringement
- injunctive relief
- damages
- treble damages
- attorney’s fees
