INTELLECTUAL PROPERTY PRIMER FOR GENERAL PRACTICE ATTORNEYS by

INTELLECTUAL PROPERTY PRIMER FOR GENERAL PRACTICE ATTORNEYS by: CHRISTOPHER A. PROSKEY, JD, MBA The Zarley Law Firm, P. L. C. Capital Square, 400 Locust Street Suite 200 cproskey@zarleylaw. com 515 -558 -0200

IP - Defined “Cows come this week!” “I hated this rock! Soon to be in the creek!”

IP - Defined What isn’t Intellectual Property n Anything you can touch, eat, walk on…. What is Intellectual Property: n Ideational creation of the mind for which an exclusive set of rights are recognized. Rights reserved for the owner or inventor Inherently must be protected by the law(s)

Claim 1 – Patent Infringement

Claim 1 – Patent Infringement What is a Patent n A grant by the government that gives the creator of an invention the sole right to MAKE, USE or SELL that invention in that country for a set period of time. US = 20 -years from the date of filing of the Patent Application You must file for a patent in EACH country you want protection in

Claim 1 – Patent Infringement • How do you get a Patent? Patent Attorney = Patent Agent = Applied Sciences Degree + + Law School Pass Patent Bar + Pass Any State’s Bar + Pass Patent Bar

Claim 1 – Patent Infringement Standard for Patentability: n Anything that is: New – 35 U. S. C. § 101; § 102 Useful – 35 U. S. C. § 101; § 102 Nonobvious – 35 U. S. C. § 103 Terms of Art – Be Careful!!! Gilbert Lowell & Lewis Skolnick

Claim 1 - Patent Infringement But what can you get a Patent on? 35 U. S. C. § 101 You can get a patent on any New, Useful & Nonobvious: n n n Process Machine Manufacture Composition of Matter Any New & Useful Improvement Thereof This now includes: n n n Plants Animals Business Methods

Claim 1 – Patent Infringement What is Required in a Patent ? 35 U. S. C. § 112 – DISCLOSURE!!!!!! n You get a guaranteed monopoly for 20 years but you must give up the family jewels Written description. Manner and process of making and using it. Clear, concise and exact terms. Must enable any person skilled in the art to practice the invention. Shall set forth best mode. Conclude with claim[s] particularly pointing out and distinctly claiming the subject matter. Does not need to be an instruction manual.

Claim 1 – Patent Infringement Anatomy of a Patent n n n n Cover Page Drawings Background of the Invention Summary of the Invention Description of the Drawings Detailed Description of the Invention Claims

Claim 1 – Patent Infringement The Name of the Game is the Claim!!! n The claims define the “metes and bounds” of the patent. Like describing the border around your property.

Claim 1 – Patent Infringement When do you get a Patent? One Year Bar! - 35 U. S. C. § 102 n You have one year from any public use, public sale, offer for sale. n The clock does not start to tick if you are legitimately experimenting – but you have to prove it. n The clock starts to tick when your invention is “ready for patenting” n Case law allows for experimentation The earlier you start the process the better. Should you choose not to patent your invention – you are forced to elect TRADE SECRET protection!

Claim 1 – Patent Infringement How much does a Patent cost? Depending on the complexity - Drafting & Filing a Patent Application can cost anywhere from $3, 500 to $10, 000, or more. How long does it take to get a Patent? The patenting process can take anywhere from 2 -10 years.

Claim 1 – Patent Infringement occurs when you: n n n Make Use Sell, Offer For Sale, or Import something that meets Each-and-Every Limitation of 1 claim of a patent

Claim 2 – Copyright Infringement

Claim 2 – Copyright Infringement What is a Copyright? n The legal right granted to an author, composer, playwright, publisher, or distributor to exclusive: publication, production, sale, or distribution of a literary, musical, dramatic, or artistic work. Standard for Copyrightability: n n any "original work of authorship" that is "fixed in a tangible medium of expression. " It does not extend to ideas or concepts.

Claim 2 – Copyright Infringement 37 C. F. R. § 202. 1(a) prohibits copyright of a single word, title or small group of words or phrases, regardless of originality n Planesi v. Peters, 2005 WL 1939885 (9 th Cir. 2005) No. 05 -781. Individual words and short phrases are generally reserved for Trademarks

Claim 2 – Copyright Infringement When do you get a Copy. RIGHT. n n n Automatic and instantaneous the moment the "original work of authorship“ is "fixed in a tangible medium of expression. " This is a Common Law Copyright To get a Federally Registered Copyright – must file a copyright registration with the United States Copyright Office

Claim 2 – Copyright Infringement Advantages of Federal Copyright Registration : Establishes a public record of your copyright. Your copyright must be registered in order sue for infringement. If registered within 5 -years of publication, your registration certificate is prima facie evidence of the validity of your copyright. If registered within 3 -months of publication or before an infringement occurs, once proven, statutory damages of up to $150, 000 plus attorney's fees could be awarded to you as copyright owner, even if your actual damages are minimal. Registration deters potential infringement. If you don't register your copyright and someone else claims your work as their own, you will have to prove that it is actually yours.

Claim 2 – Copyright Infringement Copyright Notice: n © Zarley Law Firm 2011 Now

Claim 2 – Copyright Infringement Term of a Copyright: n n 70 years after the death of the author For a Work Made For Hire - 120 years after creation or 95 years after publication, whichever is shorter.

Claim 2 – Copyright Infringement Fair Use Doctrine - 17 U. S. C. § 107: n Permits some copying and distribution without permission of or payment to the copyright holder. Does not clearly define fair use, gives four non-exclusive factors to consider in a fair use analysis. 1. 2. 3. 4. the purpose and character of the use; the nature of the copyrighted work; the amount and substantialness of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work.

Claim 2 – Copyright Infringement Fair Use – Continued Excerpts in a review or criticism for illustration or comment; Quotation in scholarly or technical work; Use in a parody; Use in a news report; Reproduction of a portion to replace part of a damaged copy; Use by a teacher or student to illustrate an educational lesson; Reproduction for legislative or judicial proceedings; Incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported. n (1961 Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law)

Claim 2 – Copyright Infringement Standard For Copyright Infringement Whether Defendant copied protected expression in Plaintiff’s copyrighted work n n Look to Fair Use as a defense. Independent Creation: Defendant’s independent creation of the work without reliance on Plaintiff’s copyrighted work is a strong defense

Claim 2 – Copyright Infringement Derivative Work 17 U. S. C. § 101 A “derivative work” is a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of art.

Claim 3 – Trademark Infringement

Claim 3 – Trademark Infringement What is a Trademark? The Lanham Act 15 U. S. C. § 1051 et seq. Any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others. A Trademark is an indication of source!

Claim 3 – Trademark Infringement What can you get a Trademark on? • Any unique indication of source that will not confuse consumers about affiliations or deceive consumers regarding qualities, including: • • • Colors Names Sounds Smells Symbols

Claim 3 – Trademark Infringement How do you get a Trademark? • Common Law Trademark Rights: • Acquired simply by using the mark in commerce! • Federally Registered Trademark? • Must file a trademark application with the USPTO • Cost = ~$1, 000 to $1, 500 to file a trademark application.

Claim 3 – Trademark Infringement Registered Trademark v. Common Law Trademark: • Unregistered Mark: use “TM” or “SM” • Registered Mark: use ® • Owner of unregistered marks can still sue to prevent unauthorized use of trademark under the Lanham Act – enforcement is geographically limited • Registration freezes all other common law users

Claim 3 – Trademark Infringement Standard for Trademark Infringement • Likelihood of consumer confusion - Factors 1. 2. 3. 4. 5. 6. Strength of the mark Proximity of the goods Similarity of the marks Evidence of actual confusion Marketing channels used Type of goods and the degree of care likely to be exercised by the purchaser 7. Defendant's intent in selecting the mark 8. Likelihood of expansion of the product lines • AMF, Inc v Sleekcraft Boats, 599 F. 2 d 341 (C. A. 9) 1979.

Claim 4 – Trade Secret Misappropriation

Claim 4 – Trade Secret Misappropriation What is a Trade Secret? – Iowa Code Chapter 550. 2 formula, pattern, compilation, program, device, method, technique, or process – That: (1) Derives economic value from not being generally known to the public, and (2) Is the subject of reasonable efforts to maintain its secrecy.

Claim 4 – Trade Secret Misappropriation Examples of a Trade Secret? Anything where you can sell your product but keep the family jewels! n n KFC’s 12 spices Formula for Coke-a-Cola Dr. Pepper’s 23 flavors Many product’s manufacturing processes

Claim 4 – Trade Secret Misappropriation What is Trade Secret Misappropriation? – Iowa Code Chapter 550. 2 Doing any of the following: Acquisition by a person who knows that the trade secret is acquired by improper means. Disclosure or use by a person who uses improper means to acquire the trade secret. Disclosure or use by a person who at the time of disclosure or use, knows that the trade secret is derived from or through a person who had utilized improper means to acquire the trade secret. Disclosure or use by a person who at the time of disclosure or use knows that the trade secret is acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use. Disclosure or use by a person who at the time of disclosure or use knows that the trade secret is derived from or through a person who owes a duty to maintain the trade secret's secrecy or limit its use. Disclosure or use by a person who, before a material change in the person's position, knows that the information is a trade secret and that the trade secret has been acquired by accident or mistake.

Claim 4 – Trade Secret Misappropriation How do you protect a Trade Secret? Put reasonable procedures and processes in place: n n n Use Non-Disclosure Agreements Use Non-Competition Agreements Mark documents confidential Develop employee training and handbooks regarding the proper handling of trade secret information Limit access to trade secret information to those that need-to-know Be proactive in protecting your trade secrets n Once you let it out of the box – it can’t be put back in

Claim 5 – Unfair Competition

Claim 5 – Unfair Competition What is Unfair Competition? 15 U. S. C. § 1125(a) Lanham Act Somewhat the catchall or smell-test provision of IP law: n "false or misleading description of fact, or false or misleading representation of fact" in commerce, which "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. Includes: n n Passing Off False Advertising

Claim 5 – Unfair Competition Passing Off 15 U. S. C. § 1125(a) Lanham Act "(1) an association of origin by the consumer between the mark and the first user, and (2) a likelihood of consumer confusion when the mark is applied to the second user's good(s).

Claim 5 – Unfair Competition False Advertising 15 U. S. C. § 1125(a) Lanham Act Plaintiff must show n (1) the challenged statement is literally false or, even though the statement is not literally false, that it is likely to deceive or confuse customers, and n (2) the defendant's false or misleading representation was material in the sense that it would have some effect on the consumers who are making the purchasing decision.

Claim 6 – Trade Dress

Claim 6 – Trade Dress What is Trade Dress? - 15 U. S. C. § 1125(a) Lanham Act Characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers n n n Protected under § 43(a) of the Lanham Act Features do not need to be registered to be enforced Features must NOT be functional!!! Protecting functionality is reserved for patents.

Claim 6 – Trade Dress What is Trade Dress? - 15 U. S. C. § 1125(a) Lanham Act Two Pesos, 112 S. Ct. 2753 - protected unique look, feel, decoration & design of a Mexican restaurant. Ciba-Geigy Corp. , 547 F. Supp. 1095 (D. N. J. 1982) - Protected blue/white, pink/whit colors of a pill Ex parte Haig & Haig Ltd. , 118 U. S. P. Q. 229 (Comr. Pats 1958) protected distinctive pinched shape of a Scotch bottle Ferrari Sp. A v. Mc. Burnie, 11 U. S. P. Q. 2 d 1843 (S. D. Cal. 1989) protected shape of Ferrari car from becoming a toy

Unsolicited Advice Before your client goes into any new area or line of business consider Claims 1 -6. Who will they upset, who will they take business from, and what alleged IP rights will your client potentially be stepping on?

The End! Questions? by: CHRISTOPHER A. PROSKEY, JD, MBA The Zarley Law Firm, P. L. C. Capital Square, 400 Locust Street Suite 200 cproskey@zarleylaw. com 515 -558 -0200