Trademark, Trade Secret and Patents Software issues Fall 2015 IP conclusion Trademark, Trade Secret and Patents Software issues Fall 2015

Trademark quickFACTS Something that identifies the goods of one manufacture  or seller from another Symbol, word, design, or something else Trade Dress: involves the look and feel of a product or its packaging Test looks for distinctiveness, attributes of arbitrary or fanciful are important. Similar IP: the Service mark, ids a service Trademarks are indicated by TM or (R) symbols illegal to use without the registration process Having a trademark can help you enforce against the importation of infringing goods Trademarks require renewal (10 year) Protection until mark becomes generic

Case study #1 for Trademark: EA Sports The Keller & O’Bannon cases Game elements at issue Environment, player likenesses at all depth of team rosters The Collegiate Licensing Company What do NCAA rules have to do with this? Settlement http://www.ncaa-ea-likeness- settlement.com/

NCAA gaming opinion I miss NCAA games I think that players are entitled to compensation despite their amateur status I think players aren’t entitled to compensation A and B A and C

Factors in a Dilution case If your trademark become generic, it can no longer be registered. “blurring” “tarnishment” 15 USC § 1127 defines dilution as “lessening of the capacity of a famous mark to identify or distinguish goods or services” The idea is to bring a cause of action to protect your distinctiveness

Factors a court examines in trademark infringement cases 15 U.S.C. § 1114 Ownership of valid, registered mark Alleged infringer used In commerce The mark or similar symbol In connection with offering for sale, distribution, advertising goods or services the use caused likelihood of confusion, mistake or deception.

Misc. Trademark cases Chewy Vuitton: http://www.marylandiplaw.com/2007/11/articles/ip-news-and-trends/louis- vuitton-malletier-sa-v-haute-diggity-dog-llc/ UA cases (on your own check these out): The Daniel Moore case v. UA: http://blog.al.com/spotnews/2013/09/judge_dismisses_trademark_laws.html http://www.tuscaloosanews.com/article/20140319/NEWS/140319553 UA v. Houndstooth Mafia: http://blog.al.com/spotnews/2014/05/post_1143.html UA marks: http://www.al.com/sports/index.ssf/2013/11/from_rammer_jammer_and.html#incart_story_pac kage

Case study #2 for trademark: King’s Candy Crush

Do you think King should be able to stop people from using their game images on leggings? Yes No

Case study for trademark: King’s Candy Crush In January 2014, King has filed for a trademark on the use of the words “Candy” and “Saga” in games (and on clothing). 01/27/14 letter from CEO: http://company.king.com/news- and-media/press- releases/content/press- releases/an-open-letter-on- intellectual-property/

The Banner Saga – A Stoic Studios game http://www.ign.com/articles/2014/01/23/candy-crush-saga-dev-king-trademarks-the-word-candy

King trademark cont’d In a January 2014 Forbes magazine article, Anthony W. Kosner asks if this is going to bring about a “land grab for words” http://www.forbes.com/sites/anthonykosner/2014/01/20/candy-crush-saga- has-trademarked-candy-and-apples-app-store-is-helping-enforce-it/ King has now abandoned trademark attempt. http://www.worldtrademarkreview.com/daily/Detail.aspx?g=7e81db21- 08d1-469f-a79a-e26113a893d5 http://www.insidecounsel.com/2014/02/26/candy-crush-company-cedes- copyright-claims

A kind of Trademark infringement: Cybersquatting 1999 Anti-cyber-squatting Consumer Protection Act Creates a cause of action for mark owners against those who in bad faith “register, traffics in, or uses a domain name” that is the same as or confusingly similar to a trademark. Cyber-squatting Typo-squatter 1st Amendment protection for Gripe Sites, not a form of squatting.

Which of the following is likely cybersquatting? johnnymanziel-is-a-punk.com walmartsucks.com juliaroberts.com myverizonwireless.com All of the above C and D

So when can you use someone else’s trademark on your web page? Key is to avoid confusion of brand or affiliation. Can use when There is a former relationship Playboy v. Wells (1999) To identify goods offered for sale Ty, Inc. v. Perryman (2001) To criticize or critique Bally Total Fitness v. Faber (1998) To compare products, comparative advertising

Trade Secret Protection Info that gives a competitive advantage Applies to formulas, recipes, designs, processes For trade secret protection there are requirements that you have taken measures to protect information. Once information is out (in public domain) it is no longer eligible for trade secret protection. The purpose of many non-disclosure agreements is aimed at maintaining trade secrets. Resource: http://www.garage.com/resources/reference- library/patents-trade-secrets/trade-secret-basics-faq/

What trade secrets can protect: Related to software: “graphics, source code, object code, algorithms, programs or other technical descriptions, data flow charts, logic flow charts, user manuals, data structures, and database contents." examples from David Himelstein Trade secret status offers indefinite protection as long as secret is kept What if your trade secret has been “reverse engineered”? Understanding the difference between reverse engineering & misappropriation

Suppose you figure out how to make chicken that tastes just like KFCs Suppose you figure out how to make chicken that tastes just like KFCs. Can you legally sell your chicken? Yes No

Patents Exclusive grant of property rights to the holder from the US government prohibits others from making, using or selling the invention in the US Right to exclude others; holder has exclusive rights to make, sell, use invention In exchange for patent, enough information must be given so that at end of the patent term others may be able to use/create the invention Quid pro quo: something for something

Patent test United States Patent and Trademark Office (USPTO): verify inventions are patentable and meet two criteria: Novelty (new): An invention is novel only if it has not previously been invented by someone else Non-obviousness: A solution to a problem that is obvious to another specialist in the appropriate area cannot be patented Ethics in a Computing Culture

Some of the Patent Types & Timeframes Design - ornamental - grant is for 14 years from date of patent grant Plant – 20 years since filing request Utility - for processes -  20 years since filing Defensive Publication – to prevent others from filing Eligibility of software, change to allow patent of software, Diamond v. Diehr (1981) original process involving computer calculations includable in patent.

Business method patent Coupling a process with software Examples Amazon 1 click business method patent, p. 132 Priceline reverse auctions

Software patent example Looking at a tech patent http://www.mobileburn.com/17 264/news/apple-awarded- unlock-screen-gesture-patent Other physical gestures that have been patented: http://io9.com/5808604/10-physical- gestures-that-have-been-patented

Tech patents in the news Samsung control with eyes: http://venturebeat.com/2015/04/03/samsung-patents-tech-that-lets- you-control-your-phone-with-your-eyes/ Apple didn’t infringe: http://www.cnet.com/news/apple-not-violating-wireless-technology-patents- jury-says/

Which IP looks for distinctiveness? Copyright Trademark Patent Trade Secret All of the above

Quid pro quo happens with Trade secrets Copyright Patent Trademark A and C

Which IP can have the longest or shortest length of protection? Trade secrets Copyright Patent Trademark

Intellectual Property- Software Issues Chapter 4, pp. 129-136

Early days of computing… Hardware manufacturers made their own software. Emergence of standalone/independent software firms. The Copyright Act of 1976 explicitly recognizes ability to copyright software Creative expression is what is protected Concept of licensing: use not ownership

Case comparison: Lotus v. Borland, (US Supreme Court, 1996)

Case comparison: Atari v. N. American Philips, 7th Circuit (1982)

Opinion: I agree with the outcome in The Lotus v. Borland case Atari v. Philips case A and B Neither case

Fair Use in software copyrights Sega v. Accolade, 9th Circuit (1992) http://digital-law- online.info/cases/24PQ2D1561.htm

Open Source Software No restrictions on others selling, giving away or modifying open source software. Some say this approach goes back to the early days of software development Could this approach “promote progress”? Page 202 Fixing of bugs Enhancements Adaption Gets rid of “copyright tension” Criticisms: Poor quality software Incompatible updates from individual enhancers Weak GUIs Not innovative, merely replicate existing work

Creative Commons: http://creativecommons.org/ Instead of an “All Rights Reserved” system what about a “Some Rights Reserved” system? Ease of sharing, collaboration Choosing a license: http://creativecommons.org/ Book pages 134-136

Favorite topic this semester Ethics Cultural Implications of Tech Free Speech Privacy IP