1. Intellectual Property Law Overview
Mark Tidwell
Jackson Walker, L.L.P.
November 9, 2006

2. Focus Understanding Intellectual Property
Value of Intellectual Property
Q & A

3. Understanding Intellectual Property

4. Intellectual Property Law Involves. . .
Protecting ideas
This includes unique creations from the mind: words, branding schemes, slogans, designs, advertising copy, web pages, machines, chemical formulas, software, paintings, sculptures, books, plays, business methods …
These are protectable, just like tangible property such as real property and personal property
These areas are called “Intellectual Property” (IP)

5. Vehicles of Protection
Patents
Invention: an concept for a new
-Process - Machine/Apparatus
-Product - Formulation
-Ornamental Design
Trademarks/ Service Marks
Copyrights
Original work of author-ship fixed in tangible form:
-Pictorial -Graphic
-Compilation -Literary
-Musical -Sculptural
-Audio/Vis. -Software
-Derivative Works
Indicia of the origin of a product or service
-Word -Symbol
-Design -Sign
-Name -Color
-Logo -Packaging
-Internet Domain Name
20 yrs
Until lost or forfeited
75 yrs
Until disclosed or publicly known
Trade Secrets
Information that has economic value by not being disclosed, and is the subject of reasonable efforts to keep it confidential
-Know-How - Software Code
- Business Methods

6. Patent Definition
pat·ent (p²t“nt) n. Abbr. pat. 1.a. A grant by the government of an exclusive monopoly in an invention for a period of time in exchange for public disclosure of the invention
(Legal basis: 35 U.S.C.)

7. What’s Patentable? Any new and useful Process Machine
Method of manufacture
Composition of matter
Improvements on existing things
Significant recent case law in patent law now also allows:
Software
Methods of doing business

8. Copyright Definition
cop·y·right (k¼p“¶-rºt”) n. Abbr. c., C., cop. 1. The exclusive legal bundle of rights granted to the creator of a Work.
(Legal basis: 17 U.S.C.)

9. What’s Copyrightable? Literary works - books, articles, poems, etc.
Musical works - score and words
Dramatic works, pantomimes, and choreographic works
Pictorial, graphic and sculptural works - web pages,
advertisements, photographs, paintings, technical
drawings
Motion pictures and other audiovisual works
Sound recordings
Architectural works

10. Trademark Definition
trade·mark (tr³d“märk”) n. 1. Abbr. An identification placed on goods to indicate the source of goods and thereby distinguish the goods from those manufactured or sold by others.
(Legal basis: common law; 15 U.S.C.)

11. What’s Trademarkable?
Word, name, symbol or design, or a combination of these elements
Colors, sounds and smells
Service Marks - marks used with services
Trade Dress - combination of many elements that function together as a source identifier to create an overall “look”

12. Trade Secret Definition
trade secret n. Any secret information that gives one an advantage over competitors.
(Legal basis: common law; contract law)

13. What’s Protectable by Trade Secrets?
Technical information, financial information, customer lists, supplier lists, drawings, plans, designs, forecasts, software, source code, chemical formulas, methods of doing business, processes, etc.
Copyrightable material
Patentable material

14. HOW DO WE PROTECT INTELLECTUAL PROPERTY?

15. Patents

16. Who Can Obtain a Patent? Only the original creator/inventor
The inventor has one year to file
Described in a printed publication
Offered for sale in the U.S.
In public use in the U.S.
If the inventor does not file - no one else can
Can’t legally “steal” and idea and file a patent

17. Scope of Rights
Once a patent is obtained the scope of rights prevents others from making, using, or selling the invention
The period of protection lasts 20 years from the date of the patent application filing

18. How Do You Obtain a Patent?
Process starts by filing a patent application with the U.S. Patent Office:
Written description
Drawings
Claims
Patent protection attaches only after a patent issues--not before
Patent Office considers the application in light of the statutory conditions for patent protection

19. Statutory Conditions for Patent Protection
“Whoever invents or discovers something new…”
What’s “new”?
1. Novelty Requirement: no other single patent describes the invention
2. Nonobviousness Requirement: invention is not obvious from a combination of several prior patents

20. Copyrights

21. Who Can Obtain a Copyright?
The author or creator of the Work
Exception: Work for Hire Doctrine - a work prepared by an employee within the scope of his or her employment
WARNING!! Independent Contractors are not employees
Some potential problem areas include:
Advertising
Web page design
Software design
Photographers

22. Scope of Rights The owner of a copyright has exclusive rights to...
Reproduce the Work
Prepare new Works based on preexisting Works
Distribute copies of the Work
Publicly perform the Work
Publicly display the Work
The period of protection is generally the life of the Author plus 70 years
Works for Hire: 95 years from publication or 120 years from creation

23. How Do You Obtain A Copyright?
The Copyright automatically attaches at the time the Work is created
Additional rights are available through registration with the U.S. Copyright Office
Presumption of ownership
Ability to acquire statutory damage and/or attorneys’ fees
A © is no longer required for protection

24. Conditions for Copyright Protection
Standard: Original Works of Authorship... Fixed in a Tangible Medium of Expression
Original: conceived without copying
Fixed: recorded in a way that can be preserved and reproduced
KEY: Expressions of ideas, not the ideas themselves
Example: Individual description of the same event can be copyrighted by each author

25. Trademarks

26. Who Can Obtain a Trademark?
The first person to start using the mark in a particular industry
Example: Amazon Bookstore, a brick and mortar operation
Must be able to function as a source identifier
Must not be “confusingly similar” with other trademarks
BUT, others can generally use the same mark in other industries
“United” Van Lines
“United” Airlines

27. Likelihood of Confusion
A mark cannot be the same as or similar to another previously existing mark used on similar goods
Since a mark is used as a source identifier, this could create confusion as to source
Confusion erodes “goodwill”
Infringement: same standard

28. Source Identifier
STRENGTH - Four classifications in which a mark can be categorized as a source identifier:
generic
descriptive
suggestive
arbitrary/fanciful (coined or created)
Example: BRILLIANT
“descriptive” of diamonds
“suggestive of furniture polish
“arbitrary” on orange juice

29. Strength is Key
Strong—Fanciful—Arbitrary—Suggestive—Descriptive--Generic—Weak
ASICS Racing Flats
Saucony Nike Shoes

30. Scope of Rights
Prevent others from using the same or similar marks on similar goods
Geographical area
Fields of Use
Expansion into geographical area or fields of use
Use of ™ or ®

31. Period of Protection
Indefinite - For as long as you continue to properly use the mark with your goods
WARNING: The mark must continue to act as a source identifier---DON’T LOSE CONTROL
BANDAID
KLEENEX
XEROX
INTERNET

32. How Do You Obtain a Trademark?
Protectable rights attach at the moment the mark is placed on goods and the goods are offered for sale to the public
Goodwill is the recognition that arises through use of a trademark
Goodwill represents the value of the mark

33. Federal Registration
The Trademark Office reviews the Application to determine if the mark satisfies the conditions for trademark protection
Source Identifier
Likelihood of Confusion
Additional rights are available through registration with the U.S. Trademark Office
Covers entire United States
Blocks others from registering similar marks
Offers enhanced damages; attorneys’ fees
Allows one to sue in Federal Court
Permits use of the ®

34. Trade Secrets

35. How Do You Obtain a Trade Secret?
Simply by maintaining the secrecy of the information once it is created
Limit access to secrets
Use Confidentiality Agreements
The Scope of Rights:
Permits damages for theft or unauthorized disclosure
Enjoins others who have unlawfully obtained the secret information
The period of protection is indefinite - it exists for as long as the information remains a secret

36. Questions?