law school outline: introduction to intellectual property


Intro to Intellectual Property

  1. Trade Secret

  1. Definition: Information that has actual or potential economic value from not being generally known, and is subject to reasonable efforts to maintain secrecy.  Duration of protection: Indefinite, until information is made public (therefore this protection is weak).  Liability for misappropriation is based on wrongful use by someone who breaches a duty.

  1. Employee who jumps ship and works for competitor may be sued for misappropriation if employee has enough trade secret information. Public policy against undue restrictions on future employment.
  2. Employee who takes customer information to competitor, so long as information meets definition of trade secret.
  3. Applicable laws

  1. Common law: You can�t reap what you haven�t sewn.  Restatement of Torts: One who uses or discloses another�s trade secret is liable if discovered by improper means, breach of confidence, or TP received information knowing of improper means, even if mistake.  Uniform Trade Secrets Act (Cal. Civ. Code): Actual or threatened misappropriation may be enjoined, or require a royalty, or damages. Court must preserve secrecy of trade secret.  Economic Espionage Act of 1996 (18 USC 1831...): Theft of trade secret subject to fine up to $5M. Theft or misappropriation of trade secret to benefit foreign government or agent subject to fine up to $10M. Court shall preserve confidentiality of trade secret.
Defenses

  1. Inevitable disclosure
  2. Reverse engineering is permitted
Remedies

  1. Injunctions, if immediate danger of losing trade secret.
  2. Damages, reasonable royalty (if damages can�t be reasonably calculated), costs, attorney�s fees
Internet applications: Confidentiality of email.Patent

  1. Protects: Monopoly on patented technology for inventions and designs, for 20 years from filing date.  Application

  1. Original inventor must apply � but can assign rights to company.

  1. Cal. Labor Code: Employee doesn�t have to assign rights to employer for inventions made entirely on his/her own time without employer involvement.

  1. Patents are typically initially denied.
  2. Must apply for patent soon after inventor reduces invention to practice. Delay requires proof of reasonable diligence, i.e. hardship.
  3. Priority
  4. Affirmative obligation to disclose prior art
Requirements

  1. Patentable subject matter

  1. Process (ways of doing heart surgery, baseball pitches)
  2. Machine
  3. Design
  4. Manufacture
  5. Composition
  6. Improvements thereon
  7. Genetically engineered animal and plants
  8. Not: Laws of nature, physical phenomena, abstract ideas.

  1. Usefulness
  2. Novelty
  3. Originality
  4. Non-obviousness

  1. How different is it from prior art?
  2. Good point to raise during litigation.

  1. Statutory bars

  1. Abandonment (although no affirmative duty to use patent)
  2. Application filed in other country more than one year prior.
  3. Selling a product more than a year prior to application

  1. Specification (description in application), consisting of claims and drawings.

  1. Requires disclosure of details such that someone else could create the invention , therefore losing trade secret protection.
Infringement

  1. Make, use or sell during lifetime of patent.
  2. Literal infringement of all elements of one or more claims
  3. Doctrine of equivalents: Both products do substantially the same work in substantially the same way.
Defenses

  1. Time limits on damages: 6 yrs
  2. Challenging validity (presumed valid)
  3. Inequitable conduct (fraud during application)
  4. Patent misuse
  5. Experimental use, repair
  6. No notice of patent (i.e. not stamped on item, and D had no actual knowledge).
Remedies

  1. Injunctions
  2. Compulsory license (esp. antitrust situation)
  3. Monetary damages, trebling, costs, attorney fees
Trademark

  1. Protects
  2. Application
  3. Requirements

  1. Subject matter

  1. Words and symbols which denote source or origin of particular goods or services.

  1. Use in connection with good or service
  2. Use in interstate commerce (broad)
  3. Distinctiveness

  1. Coined/fanciful in relation to item being used with (Apple Computer; JAVA)
  2. Suggestive

  1. iMac colors (tradedress � which protects something that is inherently distinctive even without proof that people associate it with a certain product)

  1. Descriptive: Dress Barn
  2. Generic
  3. Arbitrary

  1. Non-functionality

  1. Duration
  2. Rights
  3. Infringement

  1. Likelihood of confusion

  1. Defenses

  1. Equitable: Latches, estoppel.

  1. Remedies

  1. Injunctions
  2. Destruction of infringing goods
  3. Damages, costs, attorney fees
Copyright

  1. Protects
  2. Application

  1. Once fixed in tangible medium, copyright attaches
  2. Advantages of registration with Copyright Office

  1. Requirements

  1. Fixation in a tangible medium of expression
  2. Copyrightable subject matter (creativity is the key element)

  1. Literary works
  2. Musical works
  3. Dramatic works
  4. Pantomimes and choreographic works
  5. Pictorial, graphic and sculptural works
  6. Motion pictures and other audiovisual works
  7. Sound recordings
  8. Architectural works
  9. Not facts (basket ball game scores, telephone book data) or ideas, even if derived from a copyrighted work. But expression of ideas is Copyrightable.

  1. Originality
  2. Authorship

  1. Not just scribed (i.e. the word of God)
  2. Facts not copyrightable because facts have no author.

  1. Duration: Life of author + 50 years. If work-for-hire, 75 years from publication or 100 years from creation, whichever expires first.
  2. Rights
  3. Infringement
  4. Defenses

  1. Fair use
  2. Latches
  3. Estoppel
  4. Parody

  1. Remedies

  1. Injunctions
  2. Impoundment, destruction of infringing articles
  3. Damages, statutory damages, costs, attorney fees

  1. Internet

  1. Unauthorized posting
  2. Unauthorized downloading
  3. Liability of access provider
  4. Fair Use

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