COPYING: THE PRACTICAL AND LEGAL CONSIDERATIONS FOR

DESIGNERS AND DEVELOPERS PRESENTATION TO THE PHILADELPHIA AREA NEW MEDIA ASSOCIATION

SEPTEMBER 25, 2014

FRANCIS X. TANEY, JR.

(AUDACIOUS) PRESENTATION GOALS (ALL IN 60(ISH) MINUTES!!!!!!)

• Generally remove the mysteries surrounding IP

• Explain the boundaries of permissible copying

• Provide a framework for analyzing where your situation is relative to these boundaries

FIRST, THE IP BASICS

• Four varieties of intellectual property

• Patents

• Copyrights

• Trademarks

• Trade secrets

ON PATENTS

• Rights to exploit inventions consisting of articles of manufacture, machines, compositions of matter, methods, improvements on same, certain varieties of man-made plants (not kidding about that last one)

• Must be useful, novel, non-obvious

• Cannot be laws of nature, mathematical principles, or abstract ideas

ON PATENTS (CONT.)

• Useful means it must actually work (i.e., can’t be a “perpetual motion machine”)

• Novel means there can’t be any prior art that is the same as the invention

• Non-obvious means that the invention can’t be obvious to someone reasonably skilled in the applicable art from the existing prior art

ON PATENTS (CONT.)

• Patents come in two main categories: utility and design

• Utility patents protect the functionality or utility embodied in the invention; design patents protect the ornamental features of an article

• Term of a utility patent is either 20 years from filing or 17 years from issuance, whichever is longer; term of design patent is either 14 or 15 years from issuance, depending on date

ON PATENTS (CONT.)

• In the U.S., business methods or processes that involve software functionality in one or more steps are potentially patentable (the so-called “software patent”)

• The “machine or transformation” standard is an important, but not the only, relevant analysis for the patentability of methods involving software

• U.S. Supreme Court narrowing the scope of permissible software patents, albeit murkily, and they are difficult to obtain

ON PATENTS (CONT.)

• Patents grant the right to prevent, among other things, manufacture, importation, sale, advertising of the invention

• Absence of intention to infringe is not a defense, willful infringement is relevant to damages

• Potential remedies for patent infringement include treble damages, litigation costs and attorneys’ fees, impoundment of infringing articles, and injunctive relief

ON COPYRIGHTS

• Copyrights involve original works of authorship in tangible media

• Some (very minimal) degree of creativity is required

• Copyrights differ from patents in that they protect the expression of ideas rather than the ideas themselves

ON COPYRIGHTS (CONT.)

• Some examples of copyrightable subject matter include literary, pictorial, sculptural, architectural, audiovisual works, and sound recordings

• Both binary (I kid you not) and source code are protectable as literary works

• The graphical and other visible output of software is separately protectable as a pictorial and/or an audiovisual work

ON COPYRIGHTS (CONT.)

• There are a number of important limits on the scope of what is copyrightable

• We will now go through them in excrooootiating detail (kidding, kidding)

• They are as follows:

ON COPYRIGHTS (CONT.)

• Fair use doctrine, an intensely fact specific defense to infringement claim based on the nature of the copying, the relevant factors being:

• Nature and character of the copying or other use

• Nature of the copyrighted work

• Amount and substantiality of the portion of the work copied in relation to the work as a whole

• Effect of the use on the market for the copyrighted work

ON COPYRIGHTS (CONT.)

• Public domain – works for which the copyright has expired (for most works, life of the author plus 70 years)

• Unoriginal works - don’t try to copyright the “Our Father,” just don’t

• De Minimis doctrine – individual words and short phrases not copyrightable

ON COPYRIGHTS (CONT.)

• Scenes a faire – elements in stories or film mandated by the genre not protectable

• Literary archetypes and liet motifs – why J.R.R. Tolkien’s estate couldn’t sue J.K. Rowling for turning Gandalf into Dumbledore, Sauron into Voldemort, and Frodo into Harry Potter

• Purely utilitarian aspects – you can’t get copyright protection for the concept of a picture of a four legged chair

ON COPYRIGHTS (CONT.)

• Publicly viewable embodied architectural works – you can take a picture of the Empire State Building without getting sued

• Software – certain automatic displays of software for the purpose of using the software in conjunction with a machine do not constitute infringement

• First sale doctrine – if you buy a book, generally, you can resell it, but not copy it

ON COPYRIGHTS (CONT.)

• Educational instruction – certain copying, display and distribution of copyrighted works is allowed if done for educational purposes in connection with distance learning

ON COPYRIGHTS (CONT.)

• Copyright confers the exclusive right to copy, perform, display, distribute, and make derivative works

• Two ways to prove infringement: (1) direct admissions, and (2) proving that the infringer had access to the copyrighted work and that there is substantial similarity between the two works in question

ON COPYRIGHTS (CONT.)

• Lack of intent to infringe not a defense to infringe but relevant to damages

• Attribution to the author not a defense to infringement

• Potential remedies for copyright infringement include disgorgement of profits, costs and attorneys’ fees, “statutory” damages, impoundment of infringing articles, and injunctive relief

ON TRADEMARKS

• Trademarks are words, phrases, symbols, logos or combinations thereof that identify a company/person as the source of a good or service

• Protectable trademark rights arise only with actual use in commerce

• Most basic requirement is that the mark be “distinctive” and not merely “descriptive”

ON TRADEMARKS (CONT.)

• Color combinations and packaging can also be protectable as “trade dress”

• Trademark rights protect the use of the mark with respect to specified goods and services only

• Trademark rights will lapse if use of the mark in commerce ceases

ON TRADEMARKS (CONT.)

• Trademark rights can be infringed or violated in a number of ways:

• Use of a confusingly similar mark

• False designation of origin (i.e., “palming off”) and counterfeiting

• Dilution by blurring and dilution by tarnishment

• False advertising

• Cybersquatting

ON TRADEMARKS (CONT.)

• There is also a “fair use” concept applicable to trademarks:

• Referring to a mark for the purpose of truthful comparison

• Referring to a mark for the purpose of identifying the other product (i.e., “compatible with Microsoft Office suite”

• If the mark includes a logo, the logo may be independently protectable by copyright

• Surnames may be protectable

ON TRADEMARKS (CONT.)

• As with patents and copyrights, intent to infringe is not a defense to liability but is relevant for damages

• Remedies for trademark infringement can include disgorgement of profits, treble damages, “statutory” damages, costs and attorneys’ fees, impoundment of infringing articles, and injunctive relief

ON TRADE SECRETS

• Trade secrets are skills, methods, processes, techniques not generally known to the general public or others in an industry that give the owner an advantage in practicing his/her trade

• Trade secrets are protected by keeping them secret and limiting access and use

• Trade secret status is usually irreconcilable with patent and copyright protection, as they involve public applications

TRADE SECRETS (CONT.)

• Typically protected by contractual means

• Restrictive covenants in employment and independent contractor agreements

• Confidentiality provisions and non-disclosure agreements

• Also protected by physical, administrative and technical means

TRADE SECRETS (CONT.)

• Trade secrets are a creature of state law

• Remedies for misappropriation of trade secrets vary, but can include disgorgement of profits, punitive damages, specified contractual damages, and injunctive relief

RISK MITIGATION

• Obtain contractual assurances from customers and vendors supplying content that they have the right to provide the content

• Clearly treat IP ownership and licensure in your contracts with customers and other commercial partners

RISK MITIGATION (CONT.)

• Do your homework and research the “field” before proceeding

• Create and retain artifacts and evidence of your independent development of content

YOU’RE WELCOME

• (Drops the mic)

QUESTIONS

• Well?

• Come at me, bro.

BEER

• Because after you sat through that ordeal, its time, now isn’t it.

• I know you feel it too.

CONTACT INFORMATION

Francis (“Frank”) X. Taney, Jr.

Taney Legal LLC

Telephone: (215) 514-8736

Facsimile: (856) 494-1364

E-mail: frank.taney@taneylegal.com

Web: www.taneylegal.com