1. Stephanie L. Chandler Jackson Walker L.L.P. Bexar County Women’s Bar Association March 15, 2002 Austin  Dallas  Fort Worth  Houston Richardson  San Angelo  San Antonio Member of GLOBALAW™ Technology and Intellectual Property Law for the General Practitioner

2. Stephanie L. Chandler Business Transactions and Intellectual Property Specialty Area: Technology Transfer and Commercialization University of Nebraska B.S.B.A. in Finance University of Virginia Juris Doctorate Community Involvement: San Antonio Technology Accelerator Initiative Entrepreneurship Alliance Committee Member, North San Antonio Chamber Technology Summit Content Committee Chair, Texas State Bar Association Business Law Section Committee on eCommerce

3. Issue Recognition is Imperative TRADEMARKS COPYRIGHTS PATENTS TRADE SECRETS LICENSES ECOMMERCE “[T]he most fundamental skill consists of determining what kinds of legal problems a situation may involve, a skill that necessarily transcends any particular specialized knowledge.” -Tex. Disciplinary Rules of Prof. Conduct, Rule 1.01, comment

4. TRADEMARKS

5. RULE 1 NEED TRADEMARK PRIORITY Neither incorporation nor an assumed name filing create trademark priority. Priority is acquired only by being (1) the first to use the term as a trademark in commerce or (2) by filing a federal trademark application (can be an “intent- to-use” application).

6. RULE 2 NEED A PROTECTABLE TRADEMARK Generic - Unprotectable Descriptive - May be protectable (Jury question: Does it primarily describe or identify?) Suggestive - Protectable Arbitratory or Fanciful - Very protectable

7. RULE 3 NEED LIKELIHOOD OF CONFUSION Do you find … that potential customers are likely to be confused between plaintiff’s mark ABC and defendant’s mark XYZ? Answer: Yes or No: _____

8. LESSON 1 FILE A FEDERAL APPLICATION FOR MARKS YOUR CLIENT CARES ABOUT Gives priority from coast to coast. Helps make the a mark protectable. State registrations are trumped by federal registrations.

9. LESSON 2 - INVESTIGATE JUNIOR USER’S RIGHTS BEFORE SENDING A CEASE AND DESIST LETTER A territorially remote junior user who adopted the mark in good faith may have trademark priority and, thus, exclusive rights in its trade area. If so, your cease and desist letter admits the junior user’s infringement case against your client.

10. TRADEMARK LAWSUITS A good litigator can try a trademark case. But - Talk to an IP attorney before filing suit to clear out or set up technical “gotchas”.

11. TRANSACTIONS Clear new marks Register federally

12. COPYRIGHTS

13. RULE 1 IDENTIFYING THE OWNER OF THE COPYRIGHT RIGHT IS CRITICAL Author Co-authors Collective work Work for hire

14. Ownership of Work Work for Hire Doctrine –Employee works – owned by employer –Independent Contractor work – more difficult

15. Ownership of Work Ownership of Work Is the individual an Independent Contractor or Employee? Degree of skill required Who’s tools are used? Location of work Duration of relationship Ultimate control of project Degree of discretion left to each party Method of payment Customary business or parties Benefits provided Tax treatment

16. RULE 2 REGISTERED WORK Jury compares the accused work with the registered work; which is not necessarily the work the infringer copied. No attorneys fees or statutory damages unless the infringed registration predates the infringement (*exceptions).

17. RULE 3 COPYRIGHT SUITS CAN PRODUCE LARGE JUDGEMENTS “Actual damages suffered” and “profits of the infringer,” or, Statutory damages of up to $150,000 per timely registered infringed work for each infringement; Attorney’s fees if timely registered.

18. HOW MUCH COPYING IS TOO MUCH? Abstraction: What is the copyrighted work? Filtration: What in the copyrighted work is protectable? Comparison: Is the accused work substantially similar to the protectable part of the copyrighted work?

19. REGISTERED WORK Deposit Copy

20. ABSTRACTION -Word choices and order -Sentence choices and order -Paragraph choices and order -Chapter choices and order -Theme Inventory what is there

21. FILTRATION Scene-a-faire Not Original Quotes from others Filter out what is unprotectable

22. COMPARISON Registered Work Accused Work

23. INFRINGEMENT JURY QUESTION Do you find from a preponderance of the evidence that the [accused work] is substantially similar to the [registered work]? Answer “Yes” or “No”: _______.

24. FAIR USE FACTORS §107 “In determining whether the use made of a work … is a fair use, … –Purpose and character of the use. –Nature of the copyrighted work. –Amount and substantiality of the portion … [copied]. –Effect … upon the potential market for or value of the copyrighted work.”

25. PRACTICE POINTS Assignments must be in writing. Get broad written assignments from everyone – including employees. Register important copyright rights.

26. PATENTS

27. RULE 1 THERE ARE LOTS OF PATENTABILITY DROP DEAD DEADLINES One Year Bar Rule (USA) Foreign Absolute Novelty Rule First to Invent (USA) vs. First to File (Foreign)

28. RULE 2 A Patent May Have Huge or Little Commercial Value

29. LESSON 1 If asked whether something is patentable, a patent attorney is typically needed to assist the client. Ask the patent attorney about filing a relatively inexpensive provisional patent application.

30. PATENTABILITY ANALYSIS Patentability Operation Invention ABCD Your Description Novelty subtraction Leaves Obviousness subtraction Leaves --A --AB ABC ABCD --ABC ABCD Combinations obvious “to a person having ordinary skill in the art” are not patentable (§ 103) Prior art combinations are not patentable (§ 102) Combinations novel to your invention Combination that might be patentable

31. INFRINGEMENT ANALYSIS Patent Claim Claim’s Elements Accused Devices Patent Infringement A A AB ABC Yes 1 2 3 AB ABC A AB ABC A AB ABC No Yes No Yes Claim Value High value Moderate value Low value

32. SCOPE OF CLAIM 1 WITH ELEMENT A A High Value A Boundary Infringements

33. SCOPE OF CLAIM 2 WITH ELEMENTS A AND B Moderate Value Infringements A+B Boundary A B

34. SCOPE OF CLAIM 3 WITH ELEMENTS A, B AND C A+B+C Low Value Boundary A B C Infringements

35. SCOPE OF A CLAIM WITH ELEMENTS A, B, C... Z SCOPE OF A CLAIM WITH ELEMENTS A, B, C... Z. Z Easy to get / but tiny infringement value. No competitors’ accused devices or methods have all elements A,B,C... Z Boundary A+B+C+Z A B C.Z

36. TRADE SECRETS

37. YOUR TRADE SECRETS ARE ONLY PROTECTABLE IF THE JURY FINDS THAT: The items were relatively secret; and The defendant knew the items were secret.

38. YOUR CLIENT CREATES THE “PROTECTABILITY” FACTS BEFORE THE BREACH, SO: Create good facts now; or Lose at trial.

39. SOLUTION: INEXPENSIVE SECURITY PROGRAM Put Everyone on Notice New Employee Hiring Procedures – Signed Confidentiality Agreements Restrict Access Confidentiality Legends Termination Procedures Periodic Audits

40. TECHNOLOGY CONTRACTS

41. Technology Contracts Software development agreements Website development agreements Outsourcing agreements ASP agreements The number one source of litigation is a misunderstanding about what was to be delivered when

42. Technology Contracts Customer: You said it would be done _______ You said it would do _________ You said it would cost $__________ Developer: You added _____ You changed _______ You didn’t give me ________

43. Scope Creep Agreements to provide technology- based services need to be specific Define deliverables through a detailed statement of work When new features are requested be certain to document the changes and results of the changes

44. Other Issues Ascertain whether license grant matches clients needs Warranty disclaimers are very common Termination provisions Indemnification - infringement

45. Issues Related to Going Online

46. Avoiding Copyright Infringement Myth: Pictures and text on the Internet are available for use since they have been made available on the Web Example: Use of Source Code from Websites Special Case: The content of a database is not protected by copyright

47. Privacy Policies Why should you have a privacy policy? Because the FTC thinks it is a good idea! Only when tracking users or collecting information …..

48. Privacy Policies What is the most important aspect of a privacy policy? That you follow it scrupulously Why? Because the FTC says so.

49. Privacy Policies Be aware of legislation regarding privacy issues –COPPA (Children’s On-line Privacy Protection Act) –HIPAA (Health Insurance Portability and Accountability Act of 1996) –Gramm-Leach-Bliley Act of 1999

50. Electronic Contracts “Clickwrap and Clickthrough Agreements” and “Shrinkwrap Agreements” E-Sign and UETA Take efforts to guaranty enforceability

51. CONCLUSION “The most fundamental skill consists of determining what kind of legal problems a situation may involve.” “Duty to inquire.”

52. TRADEMARKS–Federal registrations COPYRIGHTS–Copyright registrations PATENTS–Know how to create value – rely on the experts TRADE SECRETS–Create good facts LICENSES – Clarify expectations ECOMMERCE – Avoid liability

53. Technology and IP Law for the General Practitioner Questions? Stephanie Chandlerschandler@jw.comschandler@jw.com Jackson Walker L.L.P. www.jw.com www.jw.com Austin  Dallas  Fort Worth  Houston  Richardson  San Angelo  San Antonio