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

2. 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

3. 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
settlement.com/

4. 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

5. 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

6. 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.

7. Misc. Trademark cases
Chewy Vuitton: vuitton-malletier-sa-v-haute-diggity-dog-llc/
UA cases (on your own check these out):
The Daniel Moore case v. UA:
UA v. Houndstooth Mafia:
UA marks: kage

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

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

10. 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:
and-media/press- releases/content/press- releases/an-open-letter-on- intellectual-property/

11. The Banner Saga – A Stoic Studios game

12. 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”
has-trademarked-candy-and-apples-app-store-is-helping-enforce-it/
King has now abandoned trademark attempt.
08d1-469f-a79a-e26113a893d5
copyright-claims

13. 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.

14. 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

15. 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

16. 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: library/patents-trade-secrets/trade-secret-basics-faq/

17. 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

18. 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

19. 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

20. 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

21. 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.

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

23. Software patent example
Looking at a tech patent
264/news/apple-awarded- unlock-screen-gesture-patent
Other physical gestures that have been patented:
gestures-that-have-been-patented

24. Tech patents in the news
Samsung control with eyes: you-control-your-phone-with-your-eyes/
Apple didn’t infringe:
jury-says/

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

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

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

28. Intellectual Property- Software Issues
Chapter 4, pp

29. 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

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

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

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

33. Fair Use in software copyrights
Sega v. Accolade, 9th Circuit (1992)
online.info/cases/24PQ2D1561.htm

34. 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

35. 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:
Book pages

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