Intellectual Property Law for the Non-IP Lawyer Eugene J. Han, Senior Legal Counsel O’Reilly Auto Parts

TRADEMARKS

W HAT IS A TRADEMARK ? A trademark is a word, symbol, device, logo or slogan that distinguishes the source of one product from another. (Example: O’Reilly Auto Parts®, Bass Pro Shops®, Nike®, Coca-Cola®, etc.)

W HY DO WE HAVE TRADEMARK PROTECTION ? To encourage improved products and services through branding. For this reason, the USPTO will not register “confusingly similar” marks.

H OW DO YOU GET TRADEMARK PROTECTION ? Trademark rights are based on use, not on registration. Protection is automatically granted to the first person to actually use the mark. However, in order to get a federal trademark registration, you must use the mark in commerce (i.e., in more than one state).

D OES YOUR CLIENT NEED TRADEMARK PROTECTION ? Business name Products Services provided Slogans Certifications Branding

W HEN SHOULD YOU “ REGISTER ” A CLIENT ’ S TRADEMARK ? Registering a mark gives the client certain rights in the event the mark is infringed. A client does not have to prove that it has rights to the trademark in court if the mark is registered. Also, it puts others on notice that the client is using the mark commercially.

T IPS TO AVOID PROBLEMS IN THE REGISTRATION PROCESS Advise your client to pick legally strong versus weak trademarks. Trademarks that are “fanciful” words (e.g., Xerox ®) or “arbitrary” designations (e.g., Apple® for computers) are considered strong trademarks. Trademarks that are “descriptive” of some feature of the good or service are considered "weak," and are harder to protect under trademark law (e.g., fast car for a porsche). Trademarks that are “generic” are never allowed protection under trademark law (e.g., dry cleaning for a dry cleaners).

Y OUR CLIENT HAS A TRADEMARK – NOW WHAT ? Look for unauthorized use of client’s trademark: – By others (counterfeiting) – To suggest affiliation or sponsorship – On social media sites – By cybersquatters and typosquatters – That is confusingly similar

Copyrights

W HAT IS A COPYRIGHT ? It is the exclusive right to make copies, license, and otherwise exploit a literary, musical, or artistic work, whether printed, audio, video, etc. Includes selling, performing, displaying or making “derivative” works A copyright protects expression not underlying ideas or functionality Copyrighted material must be in tangible, written form, i.e., something that may be copied

W HY DO WE HAVE COPYRIGHT PROTECTION ? To make sure creators/authors are allowed to profit from their work.

H OW DOES YOUR CLIENT GET COPYRIGHT PROTECTION ? Copyright is free and automatic. It attaches to your client’s work upon creation and your client can and should use the © symbol.

W HEN SHOULD YOUR CLIENT “ REGISTER ” HIS OR HER COPYRIGHT ? Important to register client’s copyright before an infringement so that client can get attorneys' fees and statutory damages from an infringer. However, you may expedite registration with the Copyright Office prior to filing suit.

I MPORTANCE OF COPYRIGHT REGISTRATION For registered copyrights registered, a court may award statutory damages up to $150,000 per infringement. Subject to court order, your client may also obtain: – (i) a temporary restraining order that prohibits the infringer from infringing the copyrighted work, and – (ii) a court order authorizing the U.S. marshal to seize the allegedly infringing material.

I MPORTANCE OF COPYRIGHT REGISTRATION CONTINUED Advantage of statutory damages is that there is no need to prove client’s lost profits or the infringer's profits since a court has the discretion to award statutory damages to your client of up to $30,000 for each copyrighted work infringed. If infringement was willful, a court may award statutory damages up to $150,000.

I DENTIFYING COPYRIGHT FOR YOUR CLIENT Is it something that was created by your client? – Drawings – Photos – Software Code – Art (sculptures, paintings, etc.) – Music (lyrics, compositions, sheet music, sound recordings) – Article, books, manuals – Look and feel of a website – Videos, movies, multi-media files, etc. Good idea to have copyright assignments in employment agreements for employees and a must for contractors!!

P OTENTIAL COPYRIGHT ISSUES FOR YOUR CLIENT Unauthorized use of music in office or events Copying and distributing a publication for others in company Hiring software programmers who steal code from former employer Using photos without a copyright license for advertising and marketing materials Copying software programs and using them for multiple computers Copying the look and feel of another website

Patents

W HAT IS A PATENT ? A patent is a right to exclude others from making, using or selling your invention for a twenty-year period. – It is sometimes analogized to a “mini-monopoly.” – Right to exclude extends to all inventions which accomplish what your client’s invention does in the same way. – This so-called “doctrine of equivalents” is why many experts view patents as the most comprehensive form of legal protection

W HAT TYPES OF PATENTS ARE THERE ? Utility Design Plant You can protect apparatus, systems and methods with utility patents. Design patents protect ornamental designs. Plant patents protect new varieties of plants.

W HY DO WE HAVE PATENT PROTECTION ? To encourage innovation, and make sure that the true inventors profit

A T WHAT POINT SHOULD YOUR CLIENT FILE FOR A PATENT ? When your client has a novel idea that satisfies the following three elements: – New (i.e., someone else did not invent it first - the invention is not found in the “prior art.”) – Useful (easy to overcome) – Non-obvious (this is the most common hurdle inventors must overcome)

I DENTIFYING POTENTIAL PATENTS FOR YOUR CLIENT Different composition or ingredients New or better machine, device A new or more efficient method of accomplishing something New design that looks different than anything previously made

P OTENTIAL PATENT PITFALLS FOR YOUR CLIENT Patent trolls Indemnity provisions in technology licenses Supplier providing goods and services sold by your client Using technology without an agreement or license Use of your client’s name for reference purposes

A NY QUESTIONS ? T HANK YOU