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Fundamentals of
Intellectual Property Law
(NBI)
David M. Lilenfeld
December 20, 2007
Contact Information
David M. Lilenfeld
David@ManningLilenfeld.com
(404) 835-3333
Agenda
IP OVERVIEW: 9:00 a.m. – 10:00 a.m.
15 minute break
TRADEMARKS: 10:15 a.m. - 11:15 a.m.
IP Overview
IP Overview: Key Take Away
You will be able to distinguish between:
copyrights
patents
trademarks
trade secrets
IP Overview
IP Symbols
Pat. Pen.
©
© 2007 David M. Lilenfeld
Pat. 6,546,778
TM
SM ®
IP Overview
Misconceptions
“My company needs to patent the source code
our developers wrote.”
“I’ve got a new kind of fishing pole I want to
copyright.”
“I’ve got an idea for a movie I want to
trademark.”
“I want to patent a trademark.”
IP Overview
Types of Intellectual Property
Copyrights
Patents
Trademarks
Trade Secrets
IP Overview
Copyrights Defined
Protects original works of authorship.
The creative or artistic expression of an
idea.
IP Overview
Types of Copyrights
Literary works
Performing arts
Visual arts
Audiovisual works
Sound recordings
IP Overview
Literary Works: Fiction
IP Overview
Literary Works: Non-fiction
IP Overview
Literary Works: Poems
IP Overview
Literary Works: Directories
IP Overview
Literary Works: Advertising Copy
IP Overview
Literary Works: Source Code
IP Overview
Literary Work: Object Code
Performing Arts: Musicals
IP Overview
Performing Arts: Dramatic Works
IP Overview
Performing Arts: Choreography
IP Overview
Performing Arts: Movies
IP Overview
Visual Arts: Sculptures
IP Overview
Visual Arts: Globes and Maps
IP Overview
Visual Arts: User Interfaces
IP Overview
Visual Arts: Architectural Works
IP Overview
Sound Recordings
The actual recording of music and other sounds.
IP Overview
Types of Intellectual Property
Copyrights
Patents
Trademarks
Trade Secrets
IP Overview
Types of Patents
Utility
Design
Plant
IP Overview
Utility Patent
For useful processes, machines, articles of
manufacture and compositions of matter.
Most common type of patents.
IP Overview
Design Patent
For new, original and
ornamental designs for
articles of manufacture.
Examples:
the design of sunglasses
a bicycle helmet
the Power Ranger figures
IP Overview
Plant Patent
Used for the invention and asexual
reproduction of any distinct and new
variety of plant.
IP Overview
Types of Intellectual Property
Copyrights
Patents
Trademarks
Trade Secrets
IP Overview
Trademarks Defined
A distinctive sign or indicator to uniquely
identify and distinguish the source of its
products to consumers.
IP Overview
Service Mark Defined
A distinctive sign or indicator to uniquely
identity and distinguish the source of its
services to consumers
IP Overview
Types of Intellectual Property
Copyrights
Patents
Trademarks
Trade Secrets
IP Overview
Trade Secrets
Information which is purposefully kept from
the public domain.
IP Overview
Trade Secrets
What is Merchandise 7X?
The "secret ingredient" in Coca Cola. Kept
secret since 1886.
IP Overview
Trade Secrets
Reverse Engineering
Industrial Espionage
Legal
Illegal
IP Overview
Trade Secrets Statutes
1. Uniform Trade Secrets Act
40 states (including Georgia)
2. Economic Espionage Act of 1996
IP Overview
What Have We
Learned So Far?
IP Overview
IP Overview: Key Take Away
You will be able to distinguish between:
copyrights
patents
trademarks
trade secrets
IP Overview
Client: Inventor
Example Type of Protection
New type of light for a
fishing rod
The name for a the new
light for fishing rod
The instructional manual
for the new light
IP Overview
Patents
Trademark
Copyright
Client: Software Company
“My company has spent $8M developing a new software product. We think our largest competitor is about a year behind us. David, what do we need to do to protect ourselves?”
Example Type of Protection
Project
Source/Object Code
User Interface
Functionality
Name
Domain Name
Trade Secret
Copyright (literary work)
Copyright (audiovisual work)
Utility patent
Trademark (intent to use)
Trademark
IP Overview
Example: Diet Program “My company has developed a new diet program. We have a
diet book, a box of recipes and a cooking DVD. All of these have our name and new logo. David, what should we do?”
Example Type of Protection
Diet Program Itself
Diet Book
Recipes
Recipes
Cooking DVD
Name & Logo
Patent (doubtful)
Copyright (literary work)
Copyright (literary work (doubtful))
Patent (very doubtful)
Copyright (audiovisual work)
Trademarks
IP Overview
Questions
15 minute break
Agenda
IP OVERVIEW: 9:00 a.m. – 10:00 a.m.
TRADEMARKS: 10:15 a.m. - 11:15 a.m.
Trademarks
Trademarks: Key Takeaways
After this hour you will know:
1. How trademark rights are acquired.
2. The importance of trademark registrations.
Trademarks
This Morning’s MOST Important Slide
USE - the act or practice of employing a name.
“Trademark ownership accrues with use.” (Bauer Lamp
Co. v. Shaffer, 941 F.2d 1165, 1171 (11th Cir.1991)).”
How are trademark rights are acquired?
Trademarks
Example: Opposing Counsel’s Letter (Part 1 of 2)
“Last May, my client retained me to
incorporate a new business, which he named
‘South Georgia Software Solutions, LLC.’
We filed the Articles of Organization . .
. without issue. If the name was not
available, the Secretary of State would
not have allowed my client to incorporate
under that name. Also, if your client has
been using ‘South Georgia Software
Solutions, Inc.” for three years, it
should have been registered.”
Trademarks
“We hope this resolves your
clients concerns. Please let
me know if you have any
questions.”
Example: Opposing Counsel’s Letter (Part 2 of 2)
Trademarks
My Response - (Part 1 of 3)
“Georgia law ‘protects trade names by
statute and by common law.’ (See
Diedrich v. Miller & Meier Assoc.,
Architects and Planners, Inc., 254 Ga.
734, 736, 334 S.E.2d 308, 310-11 (1985)).
Ms. Doe’s exclusive right to the name
‘South Georgia Software Solutions’ for
software development services is based
on common law.”
Trademarks
My Response – (Part 2 of 3)
“In addition to claims under Georgia law,
Ms. Doe can bring claims under federal
law. The Lanham Act protects
unregistered, common-law trademarks
from infringement by unauthorized users
where unauthorized use would likely
confuse consuming public as to source or
sponsorship of goods or services. (15
U.S.C.A. § 1125(a)).”
Trademarks
My Response – (Part 3 of 3)
“My client was using the name ‘South
Georgia Software Solutions’ in connection
with software development services in
southern Georgia long before your client.
This gives my client the exclusive right to
the name in connection with software
development services.”
Trademarks
Trademark Registrations
Federal registration
1(a) – in use
1(b) – intent to use
State registration
Georgia Secretary of State
Trademarks
Reason #1 to File Federal Registration
National constructive notice of the owner’s
rights.
Trademarks
Reason #2 to File Federal Registration
Evidence of ownership of the trademark.
Trademarks
Reason #3 to File Federal Registration
Jurisdiction of federal courts may be
invoked.
Trademarks
Reason #4 to File Federal Registration
Registration in the United States can be
used as a basis for obtaining registration
in foreign countries.
Trademarks
Reason #5 to File Federal Registration
After six years the registration may be
eligible for “incontestable” status.
Trademarks
Reason #6 to File Federal Registration
Allows the owner to use the “®” symbol
which deters infringement.
Trademarks
THAT’S HOT
Trademarks
Trademarks
J & J v. Red Cross
Trademarks
Trademarks
Evil Knievel
Trademarks
Evil Kanyevil
Trademarks
Trademarks
Questions
Appendix
USPTO – Fiscal Year 2007
Reviewed 362,227 patent applications*
Reviewed 323,527 trademark applications*
Employs 5,477 patent examiners*
Employs 3,032 trademark examiners*
*Source USPTO Performance and Accountability Report Fiscal Year 2007, Released
November 28, 2007
USPTO - Patents
Avg. Before First Office Action: 25 months
Avg. Total Pendency: 31.9 months
USPTO – Trademarks
Avg. Before First Office Action: 2.9 months
Avg. Total Pendency: 15.1 months
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