recent developments ku 2016 - 646344_1
TRANSCRIPT
Intellectual Property Update for the General Practitioner
presented byCrissa A. Seymour Cook
Recent Developments in the Law 2016University of Kansas School of Law
Purpose of the U.S. IP System
Congress shall have the power:“To promote the Progress of Science and
useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
U.S. Constitution, Article I, Section 8, Clause 8
Types of Intellectual Property• Trademarks
- Source indicators
• Copyrights- Works of Authorship: *Writings *Music *Software
Types of Intellectual Property• Patents
- Inventions: *Processes/Methods *Machines/Devices
• Trade Secrets- Confidential information which has economic value: *Formulas *Customer lists *Manufacturing processes
TRADEMARKS
Trademarks
• Assets of a Business – Both as property and as goodwill- family of marks- slogans- designs/icons- product configuration
• Marked item must be used in commerce
Examples• Word: WALL STREET JOURNAL, PEPSI
• Logo:
• Letters: WSJ
• Symbols:
Examples• Sounds: MGM’s Lion Roar, NBC’s chimes
• Slogans/Taglines:
• McDonald’s: I’M LOVIN’ IT!
TrademarksYou should always use a TM symbol with all
trademarks whenever possible. TM may be used for any mark in commerce.
You should always use the registration symbol (®) for registered trademarks.- Removes defense of innocent infringement
Is the Mark Available for Registration or Use?SEARCHES help to determine whether the mark is
available for registration and use– Federal searches [www.uspto.gov]– State searches [secretaries of state] – not tasked
with searching or enforcement– Domain Name searches – “Common Law” – internet, phone books, business
names– Proprietary Databases – CT Corsearch, Thomson
Trademark Protection• Trademark Rights Acquired Through Use
of the Mark in Commerce– Common law rights – Can use the ™ symbol– Limited to geographic region in which
mark is used– Enforcement through state common law
usually via unfair competition statute
Trademark Protection• Federal protection/registration – Benefits
– others will find it in conducting a search– gives rights to use the mark throughout the
United States except as against prior users in their areas of use, regardless of owner-registrant’s actual area of use;
– after five years exclusive and continuous used mark and its registration are incontestable*; and
– constructive notice nationwide of the trademark owner's claim
Trademark Protection• Federal protection – Benefits (continued)
– Evidence of ownership of the trademark– Jurisdiction of federal courts may be invoked– Registration can be used as a basis for
obtaining registration in foreign countries– Registration may be filed with U.S.
Customs Service to prevent importation of infringing foreign goods
– Domain Name rights - Ability to receive special rights with regard to domain names
• Trademarks Must be Distinctive• Inherently Distinctive Marks
– Fanciful: no other meaning than its meaning as a trademark [STARBUCKS, LEGO, VERIZON]
– Arbitrary: words with separate meaning, but nothing to do with the associated product/service [APPLE, SPRINT]
– Suggestive: suggest a characteristic of a good or service without actually describing that characteristic. [COPPERTONE, CITIBANK, GREYHOUND]
Picking a “good” trademark
• Cannot be merely Descriptive: – Merely identifies a characteristic of the article or
service it marks [WORLD WATERPARK ASSOCIATION]• Must acquire distinctiveness (aka secondary
meaning) to receive federal registration.– Shown through long-term use, advertising
expenditures, sales revenue, testimonials, etc.• Cannot be Generic:
– Never entitled to trademark protection, i.e. “laptop computer”• Famous marks must ward against genericide
[GOOGLE, ASPIRIN, ESCALATOR, CELLOPHANE, YO-YO]
Picking a “good” trademark
• Must Not be Confusingly Similar to Other Marks• Factors to consider:
– Visually, audibly, or phonetically similar?• Starbucks Frappuccino coffee • Bar in Missouri received letter for selling a
stout beer dubbed a "Frappicino."– Are the goods/services related or
competing?– Trade channels overlap?– Sophistication of consumers
Picking a “good” trademark
Trademark not yet used?• What if you’ve picked out a great
trademark, but aren’t yet actually using it?
• An intent-to-use application may be filed with the USPTO to “reserve” the mark without first making use of the mark
• Proof of actual use is required before the registration will be issued
Federal Trademark ProtectionDuration – How long does a federally registered
TM last?Potentially forever if:(a) continuous use exists;(b) mark does not become a generic description of the product;(c) maintenance between 5th & 6th year of registration;(d) renewals are filed every 10 years;(e) all licensing of the mark is done with quality control; and(f) there is no acquiescence to infringement.
Trademark Hot Topic• Registration of “disparaging” marks (e.g.,
Redskins)
• USPTO denied registration to “The Slants” (Asian-American band)
• Federal Circuit (en banc) has struck down the Lanham Act section (2(a), 15 USC 1052) on disparaging marks as violating the 1st Amendment
• USPTO has appealed to the U.S. Supreme Court
Domain NamesClaim of Cybersquatting 15 U.S.C. § 1125(d): registering,
trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else
– “typosquatting” [i.e., www.kleeneks.com]Domain Name Disputes
– Arbitration proceeding and is relatively inexpensive– Usually involves 1 complaint and 1 response and
then decision by appointed arbitrator- can have oral argument before some tribunals- no discovery
** Scienter element - Respondent must have acted in bad faith
Domain NamesHot issue: Use of others trademarks as a keyword or adword
for a Google search.• 1-800 Contacts, Inc. v. Lens.com, Inc., 10th. Cir. July 16,
2013.– Court held that using a competitor’s trademark as a
keyword that activates sponsored lines in Google’s search engine does not constitute trademark infringement.
– Issue: sponsored link had a “clickthrough” rate of only 1.5% - not enough to evidence a likelihood of confusion.
– Sponsored links in general rarely have a clickthrough rate of greater than 10%, which is normally necessary for the court to find a likelihood of confusion.
• Damages in these cases are very low
COPYRIGHT
Copyrights
Copyrights exist upon creation; benefits of federal registration–Anything that contains creative expression, i.e. advertisement, software, website, movies, songs–May immediately use the copyright notice, i.e. © 2016 HOVEY WILLIAMS LLP
REQUIREMENTS FOR COPYRIGHT PROTECTION
• Work of original creative authorship• Fixed in a tangible form of expression
from which it can be perceived, reproduced, or otherwise communicated, directly or with aid of a device
Copyrights1. literary works - fiction and nonfiction books, manuscripts,
computer programs, manuals2. musical works (and accompanying words) -- songs,
operas, and musical plays 3. dramatic works -- including music - plays and dramatic
readings 4. pantomimed and choreographed works 5. pictorial, graphics, and sculptural works – photos, maps,
globes, charts, technical drawings, diagrams, and models 6. motion pictures and audiovisual works7. sound recordings and records – digital recordings, CDs,
MP3s, and tapes
EXCLUSIVE RIGHTS IN COPYRIGHTED WORKS• Right to Reproduce or copy• Right to Distribute• Right to Display• Right to Perform• Right to Make Derivative Works
Copyright Protection• Unregistered Copyright
– Author owns immediately
• Registered Copyright– Author or owner may register copyright to avail itself of
statutory rights- Ability to sue for infringement- Statutory Damages (Requires Timely Registration)• Up to $30,000/infringing work• Up to $150,000 for willful infringement of work• Attorneys’ fees/legal expenses
Why Register?• Proof of ownership
– If you don’t register within five years of creating the work, the court doesn’t have to recognize the registration you do file as self evident proof.
• Access to courts• Statutory damages
– Must register within 3 months of publication or before infringement
– Otherwise, only an award of actual damages and profits is available to the copyright owner.
Ownership• Author is the presumptive owner• Transfer of Work
– Work for hire• Employer owns copyrights of employees if work
was prepared “within the scope of employment”• Employer does not automatically own copyrights
for work created by independent contractors, even if employer paid for the work
• If not employer/employee relationship, must obtain a written “Work for Hire Agreement” and must fall within statutorily enumerated categories
• Commissioning Party is considered the author– Assignment (in writing)
• Subject to termination
WORKS MADE FOR HIRE (17 USC § 101)
• Works made by an employee within the course of employment;
OR
• Works specially ordered pursuant to a signed written work for hire agreement AND if the works are in eligible categories
WORKS FOR HIRE CATEGORIES• contribution to a collective work• part of a motion picture or other• audiovisual work• a translation• a supplementary work• a compilation• an instructional text• a test or answer material for a test• an atlas
WORKS MADE FOR HIRE (17 USC § 101)• In drafting contracts that include assignment clauses,
do not make the mistake of calling a creation a “work for hire.”
• Best practice: Provide for a present assignment of the
material to be created. (“…does hereby assign…” and NOT “promises to assign”)
• Exemplary pitfall: Assumption that hiring a software developer to develop your website is a work for hire…guess who owns the copyright on your website??
Duration of Copyright• For individual authors, a copyright persists for the author’s
life plus seventy years for works created on or after January 1, 1978.
• For works made for hire, anonymous and pseudonymous works, the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.
• For works created prior to January 1, 1978, the duration of copyright may vary depending upon when the work was created and/or published.
* Thank Mickey Mouse! (circa 1928)
Copyright• Must get permission to use copyrighted
material from the copyright owner or their licensing agent
• Music – compulsory licensing (BMI, Harry Fox Agency, ASCAP, Copyright Office)
• Movies – movie studios
• Photographs – stock photo companies (Getty Images); photographers
Copyright• Certain works are NOT protected by copyright law
– Works that are in the public domain unoriginal reprints of public domain works
– U.S. Government Works• 17 U.S.C.§ 105: Copyright protection under
this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.
Copyright• Certain works are NOT protected by copyright law
– Facts and ideas • Compare particular, distinctive words a writer uses to
present ideas or facts vs. the underlying concepts or truths (e.g., biography about a famous athlete qualifies for copyright, but the events and facts of his life do not).
– Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991).• Data is not protected by copyright.• Selection and arrangement of data can be protected by
copyright• However, must have “modicum of creativity”
Unprotectable Works (Examples)• Works which have not been fixed in a
tangible form of expression• Titles, names, short phrases, and slogans• Mere listings of ingredients or contents• Works consisting entirely of information that
is common property and which contains no original authorship (e.g. height & weight charts, tape measures, calendars, etc.)
Copyright hot topic• ABC v. Aero (573 U.S. _ 2014)
– Using tiny “personal” antennas to collect broadcast television without paying fees that apply to cable companies, the broadcast is stored and can be replayed – like a DVR, but stored someone other than your living room and accessed over the internet.
– Sets the stage for reinterpreting digital and video law, and the definition of “public” vs “private performances”
– Deemed to be an infringing "retransmission" within the meaning of the public performance right.
Patents.
America Invents Act (AIA)• Signed into law September 16, 2011• The United States (along with the rest of the
world) is now a “first-inventor-to file” system.• Still some major differences between U.S. and
other countries• Goes into effect for any patent applications
with effective filing dates on or after March 16, 2013.– Dual system of law until at least March 16, 2033
Patentable subject matter• Hot topics at the U.S. Supreme Court
– Software– Business methods– Biotechnology
• Tug of war between the pro-patent Federal Circuit and the somewhat anti-patent Supreme Court.
• Continues to be an evolving area of law
Caselaw• U.S. Supreme Court
– Alice Corp.: Alice Corp. Pty. Ltd. v. CLS Bank Int’l (2014)
– Myriad: Assoc. for Molecular Pathology v. Myriad Genetics, Inc. (2013)
– Mayo: Mayo Collaborative Services v. Prometheus Labs. Inc. (2012)
– Bilski: Bilski v. Kappos (2010) • U.S. Federal Circuit
– Ariosa Diagnostics v. Sequenom (2015), en banc rehearing request denied
Patentable subject matter• “Anything under the sun made by man” – key
language• Laws of nature, abstract ideas, natural
phenomenon, algorithms, etc. are not patentable (have “never” been patentable)– Are not made by man – handiwork of nature– Presence of a law of nature, algorithm, etc. does
not automatically render an otherwise patentable claim unpatentable
– Application or implementation may be patentable
Patentable subject matter• Processes pose special problems because
they can be interpreted as attempts to patent ineligible subject matter such as abstract ideas or phenomena. – Creates special problems for claiming
diagnostic methods and software• Biotechnology and nutraceuticals more
difficult to protect (“products of nature”)
Patentable subject matter• Ineligibility themes
– Claims not tied to specific structure or machine– Process can be performed mentally or on paper– Generic computer elements recited– “computer-implemented”– Mere automation– Merely provide “the routine or conventional
use” of the Internet or a generic computer
Patentable subject matter• Most software patents are being struck down
and patent applications are being denied. • What might be patentable in the software
space? – Technology that is “necessarily rooted in
computer technology” in order to overcome a problem specifically arising in the realm of computer networks.•E.g., Antivirus software
Patentable subject matter• What might be patentable in the field of natural
products? – Method claims implementing a natural product may
still be okay (for now)– Genetically engineered products– Natural products part of a broader-claimed article,
which is not naturally occurring.– Nature-based products need to be distinct from their
natural counterpart in some way, OR the claim must recite additional elements that amount to something significantly more than the natural product.
America Invents Act• Encourage early and often filing of patent
applications.• File patent applications before any
public disclosure, use, presentation, commercial activity, sale, etc. involving the invention– Limited “grace period” still available
• Use Non-Disclosure Agreements consistently, but do not rely on NDAs to fully protect invention
Patent Ownership Primer• In the U.S., patent rights initially vest in their human
inventors.• General practitioners who draft agreements relating to
employment, confidentiality, research, manufacturing, etc. need to be cognizant of IP provisions and the proper approach to establishing a clear chain of title.
• Essentially, any IP created by an organization is employee-created IP – because only human individuals can “invent” under the U.S. patent scheme. – The term “employee” is used very broadly herein to encompass
inventors that might not be traditional employees, but have some relationship to the company which may entitle the company to intellectual property created by that individual.
Patent Ownership Primer• In the U.S., mere employment is NOT sufficient
to vest title to an employee’s invention in the employer. Stanford v. Roche 563 U.S. 776 (2011)
• Employment agreements should include express provisions clearly addressing ownership of employee-created IP.
• The same approach should be taken for independent contractors, etc.
•
Patent Ownership Primer
If possible, employment agreements should always have a present assignment of inventions.
Employment Agreements
A formal assignment should still be executed and recorded once a patent application has actually been prepared to provide notice to third parties.
Record within 3 months, otherwise can run into a BFP situation.
Employment Agreements
Broadly define “inventions” in the employment agreement to include those things developed pursuant not only to the employee’s job description, but also inventions developed that relate in any way to the employer’s business or other interests.
Employment Agreements
Caveat - State-specific requirements: Several states, including Kansas (KSA 44-130) have labor laws addressing the assignment of inventions.
Employment AgreementsKSA 44-130 (paraphrased):(a) Assignment provisions do not apply to an invention for which no equipment, supplies, facilities or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless: (1) The invention relates to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or (2) the invention results from any work performed by the employee for the employer.
Employment AgreementsKSA 44-130 (paraphrased):(b) Provisions which purport to apply to an invention prohibited under subsection (a) is void and unenforceable. It is unlawful to require an employee to sign one of these provisions as a condition of employment or continuing employment.
Employment AgreementsKSA 44-130 (paraphrased):(c) If the employment agreement requires assignment of employee inventions, the employer must also provide written notice to the employee that the agreement does not apply to inventions developed entirely by employee (own time, resources, information, etc.), unless:(1) it relates directly to the existing or future business or R&D of the employer; or(2) it results from any work performed by the employee for the employer.
Employment Agreements KSA 44-130 (paraphrased): (d) The employee must disclose inventions it develops so that the employer can determine whether it has any rights in the invention.
Employment Agreements• If there is no present assignment language in the
employment agreement, management needs to have procedures in place to ensure inventions are in fact assigned to the company once they are conceived or created. Otherwise, the inventor/employee might be able to validly assign them to a third party.
• Recourse would be against the employee for breach of contract, but probably won’t be able to do anything about the third party patent owner.
Other Pitfalls“Work for hire” – This language is sometimes used erroneously in employment agreements with respect to inventions. It is specific to copyright and does not apply to patent law.
There is, however, a “hired to invent” type doctrine, as well as a “shop rights” doctrine that may help a company successfully argue ownership, even where no specific employment provisions are present.
Other Pitfalls• “Hired to invent” does not apply to general
employee job descriptions. It must be a specific task and the facts must make it unmistakably clear the person was hired to achieve a specific result.
• “Shop rights” does not give the company patent-type rights. It’s traditionally viewed as simply a license to practice the invention.
Practice Pointers•Assignments should also contain a transfer of the right to claim priority.•If practice in International realm, should be aware of assignment requirements of key jurisdictions.•Generally, want the assignor’s signature to be notarized. In addition, some places like Europe actually require both parties to sign. So need to also get the assignee’s signature (does not have to be notarized).
Practice PointersFinal point: Many of these issues are not encountered during prosecution of the patent application. They are only raised during litigation when you try to assert the patent against someone – this is the key time when ownership and priority rights matter most!
Confidentiality Agreements• HOT TOPIC – Defend Trade Secrets Act
(DTSA)• Signed into law May 11, 2016• Creates new federal civil cause of action for
misappropriation of trade secrets• Parallels the Uniform Trade Secrets Act• DTSA creates “whistleblower immunity” and a
requirement that employers notify their employees (and consultants or contractors) of the existence of this immunity.– Failure to comply impacts damages that may be available
Confidentiality Agreements• HOT TOPIC – Defend Trade Secrets Act (DTSA)• Notice Requirement(1) IMMUNITY.—An individual shall not be held criminally or civilly
liable under any Federal or State trade secret law for the disclosure of a trade secret that—(A) is made—(i) in confidence to a Federal, State, or local government official, either directly or indirectly, or to an attorney; and(ii) solely for the purpose of reporting or investigating a suspected violation of law; or(B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.
Confidentiality Agreements• HOT TOPIC – Defend Trade Secrets Act (DTSA)• Notice Requirement
– Employers are required to provide notice of this immunity “in any contract or agreement with an employee that governs the use of a trade secret or other confidential information”
• Nondisclosure agreements• Employment agreements• Independent contractor agreements
– Any contract entered into or updated after May 11, 2016.
Thank You!
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