Jody Blanke, Professor Computer Information Systems and Law Mercer University, Atlanta 1

Patent Law Article I, Section 8 of the Constitution 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 2

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Protection Patents protect the underlying idea whereas copyrights protect only an expression (of an idea) e.g., Thomas Edison v. Joe Schmoe Patents last for 20 years (from date of filing) Patents protect from independent creation copyrights do not U.S. protects first to invent, not first to file Changes to first to file on March 16,

§ 101 Subject Matter Invention must be new and useful process machine manufacture, or composition of matter Can include “anything under the sun that is made by man.” Cannot include laws of nature, scientific principles, mathematical formulas 8

§ 102 Novelty Cannot get a patent if the inventor did not himself invent the subject matter the invention was known or used by others in the U.S. or patented or described in a printed publication anywhere, or the invention was in public use or on sale in the U.S. more than one year prior to filing 9

§ 103 Nonobviousness The differences between the invention and the prior art must not have been obvious at the time of invention to a person having ordinary skill in the art Example - cable ties 10

Sword or Shield Patents can be used offensively or defensively may be held like a trump card e.g., Amazon v. Barnes & Noble Patent holders may get greedy e.g., Compton’s Media, British Telecom 11

Opening of the Floodgates Software patents Business method patents State Street Bank & Trust (1998) 12

Trademark Law Combination of federal and state law Authority of federal law derives from regulation of interstate commerce Authority of state law derives from regulation of intrastate commerce 13

Protects Dual Interests Protects trademark owner’s interest in brand name value and good will Protects consumers from confusion 14

Trademarks can be … Words Phrases Symbols Sounds Colors Smells 15

586 Intel learned that you cannot trademark numbers themselves Pentium can be trademarked You can trademark 7-Up Three-peat 16

Generics 17

Generics Dixie Cups Frisbee Hi-Liter Kitty Litter Kleenex Magic Marker Ping-Pong Popsicle Scotch Tape Sheetrock TV Dinners Wiffle Ball Cellophane Corn Flakes Dry Ice Lanolin Mimeograph Monopoly Pogo Stick Raisin Bran Shredded Wheat Thermos Toll House Trampoline 18

Strength of Protection 1. Fanciful e.g., Kodak, Atari, Exxon 2. Arbitrary e.g., Apple, Amazon 3. Suggestive e.g., Compaq, Dairy Queen 4. Descriptive (must acquire a secondary meaning)e.g., Computerland, Ben & Jerrys 5. Generic e.g., aspirin, elevator 19

Trademark Infringement “Likelihood of confusion” standard Court looks at factors like similarity of goods sophistication of consumers length of time that mark has been used wrongful intent 20

Lexus/Lexis Mead Data Corp. sued Toyota in 1989 Toyota won court found little chance of confusion perspective luxury car buyer won’t come home with a legal database instead and vice versa 21

Trademark Dilution Federal Trademark Dilution Act of 1996 prior to 1996, 28 states had anti-dilution laws Under the Trademark Dilution Revision Act of 2006, must show “famous” mark – as "widely recognized by the general consuming public of the United States” “likelihood of dilution” 22

Microsoft Sandwich Shoppe Makes a great sandwich Becomes very popular “Let’s go to Microsoft” dilution by blurring But after the very unfortunate e-coli incident dilution by tarnishment 23

Lexus/Lexis Revisited Would there be infringement today? Would there be dilution today? 24

Web Domain Names New frontier for trademark law Early “entrepreneurs” registered Today we call them cybersquatters 25

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Contested Domain Names

Trade Secret Law Restatement (First) of Torts §757 A trade secret may consist of any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it. It may be a formula for a chemical compound, a process of manufacturing, treating or preserving material, a pattern for a machine or other device, or a list of customers. 38

The Coke Formula “This Coca-Cola formula appears to be the original formula to Coca-Cola. An author named Mark Pendergrast wrote a book about Coca-Cola entitled For God, Country and Coca-Cola. In writing this book he was able to interview just about anybody he wanted within Coca-Cola, and was also granted access to the vast archives of Coca-Cola.”

Factors Used to Determine Whether There is a Trade Secret The extent to which the information is known outside of its owner's business The extent to which it is known by employees and others involved in its owner's business The extent of measures taken by the owner to guard the secrecy of the information The value of the information to its owner and to its competitors The amount of effort or money expended by its owner in developing the information The ease or difficulty with which the information could be properly acquired or duplicated by others. 40

Uniform Trade Secrets Act "Trade secret" means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. 41

Georgia UTSA "Trade secret" means information, without regard to form, including, but not limited to, technical or nontechnical data, a formula, a pattern, a compilation, a program, a device, a method, a technique, a drawing, a process, financial data, financial plans, product plans, or a list of actual or potential customers or suppliers which is not commonly known by or available to the public and which information: 42

U.S. v. Joya Williams Two former Coca-Cola employees convicted of theft of trade secrets and sentenced to 5 and 8 years in prison CNN article 43