Mindmap of Intellectual Property
Updated January 17, 2017
Associate Professor of Law, University of North Dakota
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Intellectual Property
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Tort-type
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Trademark
- Federal, state, and common-law nature
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Actions
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Infringement / passing off
- Reverse passing off
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Dilution
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What is trademarkable?
- subject matter
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distinctiveness
- arbitrary or fanciful
- suggestive
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merely descriptive
- must have acquired secondary meaning
- generic
- non-functionality
- trade dress
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Ownership
- The touchstone is use and source
- Priority
- Authorship irrelevant
- Only one owner per trademark
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Establishing rights
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Registration
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Categories
- trademark
- service mark
- certification mark
- collective mark
- Principal and secondary register
- Intent-to-use
- Incontestibility
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Infringement
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Defenses
- Fair use
- Laches
- License
- Improper licensing
- Abandonment
- Genericide
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Right of publicity
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Governing law
- Common law or idiosyncratic state statutes
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History
- Dates to the 1950s in its modern form
- Appeared as one of four branches of the right of privacy
- The right of privacy emerged as a tort around 1900
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Blackletter statement
A person is entitled to the exclusive commercial use of one's name, image, likeness, voice, and other indicia of identity
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Key limits on extent of doctrine
- First Amendment
- Copyright preemption
- Spinning, tweaking, selectively ignoring facts/doctrine
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Duration
- Default: dies with plaintiff
- By statute, many states allow post-mortem claims
- Moral rights
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Undeveloped ideas
- Breach of confidence
- Breach of fiduciary duty
- Fraud
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Trade secret
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Governing law
- Uniform Trade Secrets Act
- Common law in states without UTSA
- Federal criminal law
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Requirements
- Actually a secret
- Subject to reasonable efforts to keep secret
- Used in business
- Independent economic value
- Value derives from secrecy
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Examples
- Formula (including recipe)
- Method of manufacturing
- Device
- Technique
- Customer list
- Source code
- Computer algorithims
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Duration
- So long as kept secret; potentially forever
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Once the secret is out and the information is public knowledge, the trade secret ceases to exist
- It doesn't matter if the secret escaped becuase of wrongful action
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Ownership
- Can be owned seperately by multiple parties, as long as each is keeping the secret
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Action for misappropriation
- Secret used or disclosed to competitors or to the public
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Wrongfully
- Through illegal means or through legal means that are unethical, deceitful, etc.
- Reverse engineering is not wrongful
- Independent invention is not wrongful
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Comparison to patents
Patents necessarily involve public disclosure; trade secrets necessarily involve nondisclosure to public
Patentable inventions must meet threshold of nonobviousness; trade secrecy can protect obvious inventions, minor advances, mere information that is not an invention
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Why is trade secret law necessary for the protection of secrets?
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You can keep a secret without trade secret law
- Security
- Contract
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Torts
- Breach of confidence
- Breach of confidential relationship
- Breach of fiduciary duty
- Fraud
- Trespass to land
- Trespass to chattels
- Battery
- Family
- Trust
- Incentives, equity
- Don't tell anyone
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What trade secret law does that other law doesn't
- Allows injunctions against innocent third parties
- Criminal sanctions
- Trope function
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Economic/societal impact
- Silicon Valley, software/internet industry
- Manufacturing industry
- Employment relations
- Use in litigation to keep documents from public scrutiny
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Contract-type
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Undeveloped ideas
- Breach of express contract
- Breach of implied-in-fact contract
- Breach of implied-by-law contract
- Trade secret
- Click-wrap and shrink-wrap agreements
- Charter-type
- Copyright
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Federal, state, and common-law authority
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Exclusively federal for new works
- Title 17 of U.S. Code is "Copyright"
- State law for sound recordings pre-1972
- With few exceptions, there has never been a common law of copyright infringement
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History
- Trend of increasing scope of subject matter
- Trend of longer and longer duration
- Trend of decreasing formalities and requirements for protection
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What is copyrightable?
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Categories of works
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literary works
- includes software
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includes just about everything you might think could possibly be included
- includes mindmaps, for instance
- musical works
- dramatic works
- pantomimes and choreographic works
- pictorial, graphic, and sculptural works
- motions pictures and other audiovisual works
- sound recordings
- architectural works
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Fixation requirement
- must be fixed in a tangible form
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Originality
- must have some minimal degree of creativity
- mere compilations of data are not copyrightable
- "sweat of the brow" theory rejected
- Work of authorship
- Expression (not ideas)
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Not useful articles
- Not scenes-a-faire
- Not words or simple phrases
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Exclusive rights
- to reproduce
- to prepare derivative works
- to distribute copies
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to perform publicly
- only for literary, musical, dramatic, choreographic, and audiovisual works
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to display publicly
only for literary, musical, dramatic, choreographic, pictorial, graphic, sculptural, and frames of audiovisual works
- to perform by means of digital audio transmission
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Duration
- life of the author plus 70 years
- for corporate or unsigned works, 95 years
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Public domain
- works first published in the U.S. in 1922 or before
- works published before 1989 (or 1978) in the U.S. without proper notice
- U.S. federal government works
- note that derivatives of public domain works may not be in the public domain
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Notice and formalities
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copyright notice
- not necessary after 1989
- Copyright 2017 Eric E. Johnson
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registration
not necessary for copyright to apply
must register before filing suit
registration within three months of publication or before infringement allows recovery of attorneys fees and statutory damages
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Infringement
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Elements (for reproduction)
- It's a copyrighted work
- Copying
- Substantial appropriation
- "Appropriative similarity"
- courts often say "substantial similarity"
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Proving copying
- Direct evidence
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Indirect evidence
- Access
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Substantial similarity
- "Probative similarity"
- courts often say "substantial similarity" (confusing!)
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Defenses
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Fair use
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the four factors
- the purpose and character of the use
- the nature of the copyrighted work
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole
- the effect on the market for the copyrighted work
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License
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express
- implied in fact
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Statute of limitations
- three years
- application is somewhat complicated
- First sale
- Ownership and authorship
- The author is the original owner
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Joint works
- Owned by co-authors as tenants in common
- Any co-owner has the power to grant a valid nonexclusive license
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Duty to account
- A licensor co-owner must share licensing fees with other co-owners
- Collective works
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Works made for hire
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must qualify under one of two circumstances
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employment
- created by an employee in the regular course of employment
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commission, if both requirements met
- "work for hire" agreement in writing, signed by both parties
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one of 9 categories of works
- collective work
- motion picture or other audiovisual work
- translation
- supplementary work
- compilation
- instructional text
- test
- answers to a test
- atlas
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Assignment
- an assignment is a transfer
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either
- the whole copyright
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or exclusive license (part of the copyright)
- e.g., limited by geographical territory, timespan, or category of exploitation
- must be in a signed writing
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Civil remedies
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damages
- lost profits plus additional defendant's profits
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stautory damages
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neither willful nor innocent
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willful
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innocent
- fees and costs
- impoundment and destruction
- injunction
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Criminal sanctions
- for purposes of commercial advantage or private financial gain
- over-threshold reproduction or distribution (>$1,000 in retail value w/in 180 day period)
- leaking work intended for commercial distribution
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DMCA
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safe harbor
- e.g., YouTube receipt of and action on takedown notices
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anti-circumvention
- e.g., criminalization of jailbreaking cellphones
- Patent
- Utility
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Jurisdiction and governing law
- Exclusively federal law
- Title 35 of U.S. Code is "Patents"
- Exclusive federal court jurisdiction
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Patent Act of 1952
- main current structure of patent law
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America Invents Act of 2011
- most recent reform, changed from first-to-invent to "first to file"
- There are no patent rights without an issued patent
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USPTO
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U.S. Patent and Trademark Office
- exclusive recipient of patent applications
- patent examiners decide whether the allow or reject
- exclusive issuer of patents
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Federal Circuit
- Exclusive intermediate appellate jurisdiction from all district courts
- Rights
- to exclude others from making, using or importing the invention claimed
- NOTE: no right is granted to make or use
- Requirements
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subject matter
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35 USC §101
any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof
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includes any
- process
- machine
- article of manufacture
- composition of matter
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improvement of any of the above
- ISSUE: improvements and blocking patents
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does NOT include
- laws of nature
- natural phenomena
- naturally occurring species
- abstract ideas
- useless inventions
- inventions not reduced to practice
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may or may not include
- algorithims
- business methods
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useful
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35 USC §101
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required forms of utililty
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beneficial utility
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must not be frivolous or immoral
- this doctrine seems to be essentially dead
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general utility (operability)
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must operate to produce the results claimed
- very low threshold, must be completely incapable of achieving claimed result
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specific utility (practical utility)
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there must be a specific thing the invention does that is useful
- e.g., a new compound cannot be claimed to be useful as a paperweight
- tends mainly to be an issue in chemistry and biotechnology
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substantial utility
- can be considered a subset of specific utility
- must be a current, real-world benefit to the invention
- tends to be an issue in chemistry and biotech
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novelty
- the invention must be NEW
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AIA reforms
- huge overhaul of novelty law
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Pre-AIA law
- for applications filed on or before March 15, 2013
- applies going forward to all patents issued from such applications
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AIA law
- for applications filed on or after March 16, 2013
- applies going forward to all patents issued from such applications
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different senses of newness
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anticipation
- the invention is already found in the "prior art"
- i.e., the invention was known to the public before applicant's "invention"
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priority
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where there are two applicants for the same invention
- Pre-AIA: first to invent
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Post-AIA: "first to file"
- sort of - it's actually more complicated than that
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statutory bars
- inventors can lose their rights to patent by waiting too long after they publicly disclose
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derivation
- the applicant inventor must be the true inventor
- cannot have taken someone else's invention
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NOTE
- these categories of newness corresponded well to the pre-AIA §102
- the new §102 does not divide things up this way, although the concepts still in there
- nonobviousness
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35 USC 103(a)
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
- starting from the prior art, is the invention obvious to a phosita?
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Graham analysis
- Determine the scope and content of the prior art
- Ascertain the differences between the prior art and the invention as claimed
- Determine the level ordinary skill in the pertinent art
- Determine nonobviousness with reference to above
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Also may consider secondary factors ("Graham factors")
- Long-felt but unsolved need
- Others have tried and failed
- Commercial success
- Unexpected results
- Scepticism of others
- Acquiesence
- Copying
- Adoption by industry
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the "wow" test
- (not recognized by any court ...)
- enablement
- Some key concepts
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These requirements are important in two contexts
- whether the USPTO will allow an application
- whether a defendant can successfully prove the affirmative defense of invalidity
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The PHOSITA
- Person Having Ordinary Skill in the Art
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The importance of claims
- Everything is determined in reference to the claims
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Duration
- from date of issuance to 20 years from date of application
- for applications before June 8, 1995, 17 years from date of issue
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Infringement
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claims
- literal infringement
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doctrine of equivalents
- allows for infringement not meeting the literal lanugage of the claims
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file-wrapper estoppel
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Remedies
- reasonable royalties
- lost profits
- injunction
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Design
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jurisdiction and governing law
- generally the same as with utility patents
- for designs, including furniture, etc.
- much easier to get than a utility patent
- formerly thought to be not very valuable
- trend toward more applications and litigation
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requirements
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novelty
- same as for utility patents
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ornamental
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nonobviousness
- on a functional article
- enablement
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infringement
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duration
- 14 years from issuance for applications filed before May 13, 2015
- 15 years from issuance for applications filed after May 12, 2015
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Plant
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jurisdiction and governing law
- generally the same as with utility patents
- Plant Patent Act of 1930 is the main source of law
- asexually produced strain of plant
- from issuance to 20 years from date of application
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Plant variety protection
- sexually produced variety of plant
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Mask work
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U.S federal law
- Semiconductor Chip Protection Act of 1984
- for semiconductor chips
- 10-year duration
- registration required
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Vessel hull design
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U.S. federal law
- Vessel Hull Design Protection Act of 1998
- for hulls of boats and ships
- 10-year duration
- registration required
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Geographical designation of origin
- no general scheme in the U.S.
- important in Europe
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Database protection
- not in the U.S.
- available in Europe