Intellectual Property Law for Legal Professionals

1. Intellectual Property Law for Legal Professionals Amy C. Kelly & Ben Tabor Of Counsel Associate Shook, Hardy & Bacon, L.L.P. 2555 Grand Blvd Kansas City, Missouri 64108

2. DISTINGUISHING BETWEEN TYPES OF INTELLECTUAL PROPERTY • TRADE SECRETS: concern confidential information with economic value • PATENTS: concern functional and design inventions • COPYRIGHTS: concern literary and artistic expressions • TRADEMARKS: concern commercial origin identifications

3. Trade Secret • TRADE SECRET: concern commercial secrets Elements: • Formula, process, practice, etc. • Not generally known • Gives the owner a competitive advantage • Reasonable efforts are taken to maintain its secrecy Examples: customer lists, survey methods, marketing strategies, computer algorithms, manufacturing techniques It is illegal: • to acquire another’s trade secret by improper means (bribery, misrepresentation, theft, etc.) or • to disclose or use another’s trade secret without consent by a person used improper means to acquire it

4. Pros: No government registration fees No government registration disclosure Effective immediately Indefinite in duration Used to protect software Both federally and state protected Cons: Protection lost upon disclosure Law does not punish “fair discovery” Law only punishes improper acquisition Trade Secret

5. Patents • PATENTS:concern functional and design inventions • 1787: U.S. Constitution Article 1, Section 8, Clause 8 “The Congress shall have power . . . 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. . .”

6. Patents United States Patent & Trademark Office • Exclusive jurisdiction over Patents (no State patent laws) • Charges fees for PTO services • Only registered patent attorneys and patent agents deal with PTO • Only inventor or representative may file • Over 400,000 patent applications each year • Less than two out of three applications are granted • Full disclosure at 18 months, at issuance, and throughout prosecution of the patent • Over two-year wait for examination after filing due to back log

7. Patents United States Patent & Trademark Office • Examination process -- Novelty & Nonobvious -- Prior art -- Claims • “Patent Pending” v. “U.S. Pat. No. ________” • Maintenance fees (approx. 4 yr intervals) • Assignments & Joint Ownership • Infringement & Damages • Validity • Best mode • Enabling disclosure

8. Patents What it does: Grants the inventor the right to exclude others from making, using, offering for sale, or selling the invention in the U.S., or importing the invention into the U.S. What it does not: Grant the inventor the right to make, use, offer for sale, or sell the invention in the U.S. or import the invention into the U.S.

9. Utility Patent New & useful process, machine, article of manufacture, etc., or improvement thereof. Novel Useful Fall within one or more statutory classes “Better mousetrap” Duration: 20 years Example: Software Patents

10. Design Patent New, original, and ornamental design for an article of manufacture Aesthetic aspects of an article only; no functional aspects Duration: 14 years Very specific in scope Patents

11. Plant Patent Granted to those who invents or discovers and asexually reproduces any distinct and new variety of plant. Duration: 20 years “Anything under the sun made by man” –Diamond v. Chakrabarty Patents

12. Pros: Keep others out of the market Revenue from licenses or sale Marketing entrapment Personal accomplishment Cons: Cost Published inventions are exposed to the public Limited duration (e.g., patents on drugs by pharmaceutical companies) Patents

13. Copyright • COPYRIGHTS:concern literary and artistic expressions • 1787: U.S. Constitution Article 1, Section 8, Clause 8 “The Congress shall have power . . . 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. . .”

14. Copyright • 17 U.S.C. 102 (a) -- An original work of authorship fixed in any tangible medium of expression. • Notice • © 2009 Boliver J. Shagnasty (symbol) + (first year of publication/creation) + (author) -- No longer a legal requirement for protection • Term • Life of the author + 70 years • “Work for hire” = the shorter of: • 95 years from date of first publication • 120 years from year of creation

15. What it protects: literary works musical works, including any accompanying words dramatic works, including any accompanying music pantomimes and choreographic works pictorial, graphic, and sculptural works motion pictures and other audiovisual works sound recordings architectural works What it does not protect: ideas processes, procedures, systems methods of operation concepts, principles discoveries titles, names short phrases, slogans listing of ingredients, contents works *not* fixed in a tangible medium of expression Copyright

16. Copyright Grants five exclusive bundle of rights: • To reproduce the work in copies or phonorecords • To distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending • To prepare derivative works or create adaptations based upon a protected work • To perform the work publicly • To display the work publicly

17. Copyright U.S. Copyright Office (Library of Congress) • Exclusive jurisdiction (no State copyright laws) • Registration is not necessary, but serves as indication of validity • Registration process is required for litigation • Original work that involved skill, labor, and judgment • Reduced to a tangible form (e.g., computer file) • Send application form, copy of work, and application fee

18. Copyright Infringement • Access & Substantial Similarity • Damages may be assessed percopy Defenses • Fair Use (lawful use without permission) • Purpose & character • Nature of the copyrighted work • Amount / portion to be used in relation to the whole • Effect upon potential market / value of the work • Types of fair use include parody, satire, news reporting, education, research, and commentary • First Amendment concerns

19. Pros: Ownership Infringement Damages Injunctive Relief U.S. Customs Public Domain Cost Cons: Government paperwork Minimal examination Copyright -- Registration

21. Trademark • TRADEMARKS: concern commercial origin identifications Federal (commercial use of mark in interstate commerce) The Lanham Act -- 15 USC 1051, et seq Term: 10 years with possibility of indefinite 10-year renewals States (commercial use of mark in intrastate commerce) State “Trademark Acts” and registries Term: varies by State

22. Trademark A trademark is any designation that identifies and distinguishes the source of goods or services.

23. Trademark • Other Types of Trademarks • Service Marks • Certification Marks • Collective Marks

24. Trademark Basic Tenants: Thou Shalt Not Confuse Thy Consuming Public First to Use Wins! CoNsistent Quality Contr@l

25. Trademark Trademark Searching • Step One: Knock-Out Search or Clearance Search USPTO online records; State trademark records; Google® search • Step Two: Comprehensive Search Business/trade name databases Domain name register searches Trade directory databases The Internet (yahoo.com, google.com, and amazon.com, etc.)

26. Trademark • U.S. Federal Registration -- www.uspto.gov • Application Procedure • 400,000 federal applications each year • Examining Attorney review • Publication in Official Gazette • Registration  Designate a Class (e.g., Delta® for air travel and Delta® for faucets) • Post-Registration Maintenance

27. Trademark –Distinctiveness Fanciful – coined or made-up words • highest protection • Kodak® for cameras • Verizon® for telecommunication services Arbitrary – common words used out of context • high protection • Apple® for computers • Grey Goose® for vodka Suggestive – suggests a quality of the product • strong protection • Chicken of The Sea® for tuna fish • Jaguar® for fast sports car

28. Descriptive – describes the actual goods or services least protection; difficult to secure trademark registration Park ‘N Fly® for airport parking services Vision Center® for optics store Generic – the term is the name of the goods or services themselves no protection; not eligible for trademark registration “scissors” for scissors “restaurant” for restaurants Trademark -- Distinctiveness

29. Trademark Genericide: nylon thermos zipper kerosene formica linoleum escalator aspirin cellophane

30. SAY THIS Use as an adjective: I drive an Acura® car. Never use as a plural: We own two Acura® cars. Never use as a possessive: I love my Acura® car’s handling. NOT THAT I drive an Acura. We own two Acuras. I love my Acura’s handling. Trademark – Proper Use

31. SAY THIS Never use as a verb: I’ll make Xerox® copy of it. Never add prefixes or suffixes to create a new word: I did a Google® search; I spent an hour using Clorox® cleanser in the kitchen. NOT THAT I’ll Xerox a copy for you. I Googled it; I spent an hour Cloroxing the kitchen. Trademark – Proper Use • ~ ~ ~ ~ ~ ~ ~ ~ ~ ~ • Always distinguish from surrounding text and • provide ownership attribution statement: • “Budweiser® is a trademark of Anheuser-Busch, Inc.”

32. Pros: U.S. ownership Intent-to-Use filing Presumptions May use “®” Access to federal courts Tangible asset Indefinite duration Cons: Government paperwork (cost & hassle of application, subsequent filings) Duty to police (proper use of the mark and potential infringement) Must rely on State or common law rights instead -- TM (trademark) or -- SM (service mark) Trademark

33. Library of Congress www.loc.gov U.S. Patent & Trademark Office www.uspto.gov World Intellectual Property Organization (WIPO) www.wipo.int Wordwide Legal Directories – Intellectual Property www.hg.org/intell.html Copyright Clearance Center www.copyright.com American Society of Composers, Authors and Publishers (ASCAP) www.ascap.com BMI www.bmi.com Harry Fox Agency www.harryfox.com Intellectual Property Links

34. Intellectual Property Law for Legal Professionals Questions and Answers Amy C. Kelly Ben Tabor Of Counsel (Trademarks) Associate (Patents) akelly@shb.combtabor@shb.com