Intellectual Property Law
What you need to know about
copyright, patents and trademarks.
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What Is Intellectual Property
• Creations of the mind
 Inventions (Patent Law)
 Literary and artistic works (Copyright Law)
 Symbols, names, images and designs used in
commerce (Trademark Law)
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Patents
• Patent law protects unique and new inventions
• Right to exclude others from using, making or
offering for sale
• Limited life
 Monopoly lasts 20 years
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Copyright
•
Protects original works of authorship fixed in
any tangible medium of expression
• Does not protect ideas

Ideas can be protected, if at all, by nondisclosure agreements and as trade secrets
• Limited Life

Life of author plus 70 years

95 years from publication
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Trademarks
• Word, symbol, name or device used in trade to
identify and distinguish the source of goods or
services.
• Not limited in time
 So long as continuously used in connection
with the goods or services
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Trademarks
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Trademarks
• A word, phrase, symbol, or design, or a combination of
these, that identifies and distinguishes the source of the
goods of one party from those of others.
• Includes:
 Service marks
 Trade dress
 Certification marks
• Primary function: identifying for consumers the source of
the goods or services to which they are applied
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Creation of Trademark Rights
• Principally arise from use of the mark
• “Common Law” protection
 Use “TM” or “SM” to alert public to claim
• Registration schemes
 Federal
 State
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Trademark Selection
• Strong mark is preferred
• Care required in selection
• Have to understand how protected to appreciate
selection
• Four categories




Fanciful or arbitrary
Suggestive
Descriptive
Generic
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Fanciful/Arbitrary
• Strongest and most easily protectable because inherently
distinctive
• Fanciful
 Invented words with no dictionary or other known meaning
► BELMICO for “insurance services”
• Arbitrary
 Actual words with a known meaning that have no association
with the goods/services
► APPLE for “computers”
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Suggestive
• Also strong
• Suggest, but do not describe, qualities or a
connection to the goods/services
 QUICK ‘N NEAT for “pie crust”
 GLANCE-A-DAY for “calendars”
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Descriptive
• Weaker
• Words/designs that describe the goods/services
 CREAMY for “yogurt”
 WORLD’S BEST BAGELS for “bagels”
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Generic
• Weakest “marks”
• Can never be enforced
• Common, every day name for goods/services
 BICYCLE for “retail bicycle store”
 MILK for “dairy-based beverage”
• Strongest marks can become generic because of long-term,
non-trademark use
 ESCALATOR for “moving staircases”
 ASPIRIN for “pain relief medication”
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Registration
• Trademark rights obtained by use
 Registration is not required in the U.S.
• “Common law” rights can be limited to a
geographic region
• State registrations are limited to confines of the
state.
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Federal Registration
• Federal registration confers important benefits
 Protection extends to entire United States
 Presumption of validity and ownership
 Right to use the federal registration symbol ®
 Listing in the USPTO’s databases (notice)
 Ability to record registration with U.S. Customs
 Ability to sue in federal court using federal trademark laws
► Enhanced remedies for infringement
► Attorneys’ fees
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Federal Registration- Process
• Trademark search
 Identifies potential problems
• Mechanics of search
 USPTO offers a free search system
► Limited to USPTO’s database of federal registrations and
applications
► Does not include marks of parties who may have trademark
rights but no federal registration
 Attorneys and search services
► Conduct comprehensive trademark searches
► Others may have stronger protected legal rights in marks
similar to yours
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Federal Registration – Process
• File application with USPTO
• Identify class(es) of use
 Grouped into separate “Classes” which separate
different types of goods and services
 Marks can be protected under more than one class
• Provide “specimen”
 Must show the mark as used on or in connection with
the goods in commerce
• Provide statement of (1) use or (2) intent to use
• Can be done electronically
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Federal Registration – Process
• Filing does not guaranty registration
 USPTO has significant review process
 Determines whether the applied-for mark meets the
requirements of federal registration
 Conducts a search
 If examiner finds another registered mark or an
earlier-filed application that is confusingly similar to
yours for related goods/services, it will refuse
registration
• Seek professional assistance
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Reasons for Rejection
• Likelihood of confusion
 Marks are similar
 Goods/services are related, such that consumers would
mistakenly believe they came from the same source
► T.MARKEY for “shoes” and TEE MARQUE for “shirts”
 Marks are similar because they sound the same
 Goods are different, but considered related for the
purposes of the likelihood of confusion analysis
 Importance of pre-application search
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Reasons for Rejection
• Generic or merely descriptive
• Immoral, scandalous or deceptive
• Disparages or falsely suggests a connection with
persons, institutions, beliefs, national symbols
• Depicts the flag of the United States, or any
state, municipality for foreign country
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Reasons for Rejection
• Office action
• Can respond within 6 months
 Technical objections can be addressed
 Substantive issues
► Mark rejected for being merely descriptive
may still be allowed with demonstration of
secondary meaning
• Review within USPTO
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Federal Registration – Process
• Publication
 Once all issues are resolved, published in the
Official Gazette
• Opposition – 30 days
• Opposition proceedings
 Negotiated resolution
 TTAB ruling
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Federal Registration – Process
• Use based applications
 Absent opposition, registration certificate issues
approximately 11 weeks after publication
• Intent to Use applications
 Absent opposition, notice of allowance issues
approximately 8 weeks after publication
► 6 months to being using the mark
► Can be extended
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Protection of Trademark Rights
• Renew registration
• Six months after 6th anniversary of date of
publication
• Then every 10 years
• Can be renewed indefinitely
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Protection of Trademark Rights
• Use it or lose it
 Failure to renew will invalidate registration
 Non-use for 2 years give rise to a
presumption of abandonment
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Protection of Trademark Rights
• Keep mark strong
 Use ® (or “TM” / “SM” if unregistered)
 Defend strength of mark
► Consistency in goods/services
► Control use by others
 Unauthorized users
 Permitted users (licensees)
» Naked licenses will invalidate mark
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Protection of Trademark Rights
• GENERICIDE – loss of secondary meaning
 Aspirin, Escalator
 Always use mark with common product or
service name
 Always capitalize mark
 Never abbreviate
 Never use mark as a verb
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Enforcement
• Cease and desist letters
• Litigation
 State or federal court
 Registered or unregistered marks
 Cases turn on priority and likelihood of confusion
► Strength of mark
► Similarity of goods/services
► Channels of trade
► Actual confusion
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Enforcement
• Insurance coverage?
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Domain Names
• Part of a web address that links to the internet protocol
address of a particular website.
• Not a trademark
 Other prominent use apart form the web address may
qualify as a trademark use
 Registration of a domain name does not give rise to
any trademark rights
► May have to surrender it if it infringes someone
else’s rights
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Domain Names
• Cybersquatting
• Two avenues for relief
 Litigation under Federal Trademark Dilution laws
 Uniform Domain Name Dispute Resolution Policy
(“UDRP”)
► Non-binding arbitration
► Does not prevent either party from filing suit
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Questions?
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Copyright
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HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE
Copyright: What It Is
• Federal law protection for “Original Works of Authorship”
that are “fixed in a tangible medium of expression”
 Must be fixed and tangible
► E.g., a song is copyrightable but not until the lyrics
are written down or the performance is recorded
 Some degree of creativity is necessary to qualify for
copyright protection
 Level of creativity necessary is very low
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Copyright: What Kinds of Works Are Protected?
• Literary Works
 Textual works with or without illustrations
 Any nondramatic literary work, e.g.,
► Fiction and nonfiction
► Poetry
► Speeches
► Theses, dissertations or reports
► Directories, catalogs, pamphlets,or brochures
► Manuscripts
► Computer programs
► Instructions or directions, test questions
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Copyright: What Kinds of Works Are Protected?
• Dramatic Works, including any accompanying music
 Plays and scripts for cinema, radio, and television.
 May be with or without music.
 Generally, dramatic works are intended to be
performed.
 Dramatic works usually include spoken text, plot, and
directions for action.
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Copyright: What Kinds of Works Are Protected?
• Pantomimes and Choreographic Works
 Choreography is the composition and arrangement of
dance movements and patterns usually intended to be
accompanied by music.
 Pantomime is the art of imitating or acting out situations,
characters, or other events.
 Need not tell a story or be presented before an
audience, but must be fixed in a tangible medium of
expression from which the work can be performed (e.g.,
videotaped or embodied in a written description).
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Copyright: What Kinds of Works Are Protected?
• Motion Pictures and Other Audiovisual Works
 Motion pictures are audiovisual works consisting of a series of
related images that, when shown in succession, impart an
impression of motion, together with any accompanying sounds.
► So, the copyright in a motion picture is distinct from the
copyright in the underlying script (which is a dramatic work)
► Motion pictures are typically embodied in film, videotape, or
videodisk.
 Other audiovisual works include things such as filmstrips, slides,
videotapes, or videodisks
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Copyright: What Kinds of Works Are Protected?
• Musical Works
 Includes any accompanying words
 So, includes vocal music and instrumental music
 Author(s) are the composer (for instrumental music)
or lyricist (for the lyrics) or both
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Copyright: What Kinds of Works Are Protected?
• Sound Recordings
 the fixation of a series of musical, spoken, or other
sounds
► Songs, speeches, any original sound recording
 Author(s) are the performer(s) whose performance is
fixed, or the record producer who processes the
sounds and fixes them in the final recording, or both
 Copyright in a sound recording is not the same as, or
a substitute for, copyright in the underlying musical
composition
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Copyright: What Kinds of Works Are Protected?
•
Pictorial, Graphic and Sculptural Works

Photographs, paintings, drawings, murals, cartoons, comic strips, collages,
lithographs

Ads and labels

Bumper stickers, decals, stickers, greeting cards, postcards, stationery, stencils

Posters, record jacket artwork or photography

Engravings, etchings, silk screen prints, woodblock prints

Maps, globes, architectural plans, blueprints, diagrams

Artificial flowers and plants

Dolls, toys, games, puzzles

Fabric, floor, and wall-covering designs, artwork applied to clothing

Holograms, computer and laser artwork

Jewelry designs

Sculpture, such as carvings, ceramics, figurines, molds, models

Stained glass designs, mosaics

Designs or patterns for weaving, tapestries, sewing, knitting, crochet, needlework
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Copyright: What Kinds of Works Are Protected?
• Architectural Works
 Protects design of a building
 Previously could only register and protect architectural plans as
a pictorial, graphic or sculptural work, but the constructed
building was not protectible.
 Law was amended in 1990 to protect the design of a building
created in any tangible medium of expression, including a
constructed building or architectural plans, models, or drawings
 Architectural Works include any structure that is habitable by
humans and intended to be both permanent and stationary, such
as a house, office building, church, museum, gazebo
 Architectural Works do not include bridges, dams, walkways,
tents, recreational vehicles, mobile homes, boats
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Copyright: What Kinds of Works Are Protected?
• Some works span more than one category
 Song
► Can be both a musical composition and a sound
recording and can be both at the same time
 Comic strip
► contains elements of a pictoral, graphic and sculptural
work (illustration) and elements of a literary work (text)
 Design of a building
► Can be both a pictorial, graphic and sculptural work
(blueprints) and an architectural work (constructed
building)
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Copyright: What Works Are Not Protected?
• Ideas, concepts, discoveries, principles
• Formulas, processes, systems, methods, procedures
• Words or short phrases, such as names, titles, and
slogans
• Familiar symbols or designs
• Mere variations of typographic ornamentation, lettering,
or coloring
• Information that is in the public domain and contains no
original authorship. For example, a standard calendar, a
ruler, a height and weight chart.
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Copyright: What Works Are Not Protected?
• “Useful Articles”



Something with an intrinsic utilitarian function
that is not merely to portray the appearance of
the article or to convey information.
E.g., clothing, furniture, machinery,
dinnerware, and lighting fixtures.
Some designs of useful articles may qualify
for protection under the federal patent law.
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Copyright: What Works Are Not Protected?
• A work can be made up of both copyrightable and
uncopyrightable elements.
 Work that incorporates material that is in the public
domain, e.g., an anthology of Shakespeare's plays
 Useful article may incorporate copyrightable subject
matter, e.g., design of appliqué on a sweater or the
carving on the back of a chair
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Copyright: Who Can Claim It?
• Copyright Act gives the owner of a copyright certain rights.
• Who Is an “Owner?”
 “Author” who created the work
► The person who fixed the work in a tangible medium
► Only the author or those deriving rights through the
author can claim copyright
• Mere ownership of a copy of a work does not give the
possessor the copyright.
 Ownership of any material object that embodies a
copyrighted work (e.g., a book or cd) does not of itself
convey any rights in the copyright.
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Copyright: Who Can Claim It?
• “Works made for hire”
 Two situations where the original “author” of the work is
not the copyright owner.
 where the work is prepared by an employee within
the scope of his or her employment; or
 where the work is specially ordered or
commissioned, but only if the work is one of a
specifically enumerated kind (e.g., an atlas or a
translation) and the parties expressly agree in a
written instrument signed by them that the work
shall be considered a “work made for hire”
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Copyright: Who Can Claim It?
• A copyright owner can transfer any of all of his or her
rights in the copyright or any subdivision of those rights
 the transfer of exclusive rights is not valid unless it is
in writing and signed by the owner or the owner’s duly
authorized agent.
 Transfer of a right on a nonexclusive basis does not
require a written agreement.
• A copyright may also be conveyed by operation of law
and may be bequeathed by will or pass as personal
property by the applicable laws of intestate succession.
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Copyright: Who Can Claim It?
• Joint works
 works created by two or more people
 the authors of a joint work are co-owners of the
copyright in the work, unless there is an agreement to
the contrary.
• Collective Works
 E.g., periodical, anthology, etc.
 Copyright in each separate contribution to a collective
work is distinct from copyright in the collective work
as a whole
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Copyright: What Does It Do?
• Law Gives the Owner Certain Exclusive Rights With Regard
to the Copyrighted Work:
 Make copies of the work
 Make derivative works based on the work
 Distribute copies of the work to the public
 Perform the work
 Display the work
• Copyright Act makes it illegal for anyone to infringe these
rights and affords the owner of the copyright a cause of action
against the infringer
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Copyright: Limitations on Owner’s
Exclusive Rights
• Term of Copyright
 Author’s life plus 70 years
 Joint Work – 70 years after the last surviving author’s
death
 Works made for hire and anonymous works - 95
years from publication or 120 years from creation,
whichever is shorter
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Copyright: Limitations on Owner’s
Exclusive Rights
•
Statutory Limitations on Rights, e.g.,
 Fair use
► Permits copying of a copyrighted work for purposes such as
criticism, comment, news reporting, teaching, scholarship or
research
 Copying by libraries and archives
 Performance or display of a work in the classroom for teaching activities
 “Compulsory license” scheme
► certain limited uses of copyrighted works are permitted upon
payment of specified royalties and compliance with statutory
conditions.
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Copyright: How to Protect It
• Register the copyright with U.S. Copyright Office
• Copyright comes into existence when the work is created
 When it is fixed in a tangible medium of expression
 Work does not need to be published and it does not
need to be registered
• BUT, the law affords the owner of a copyright a cause of
action against an infringer ONLY if the copyright is
registered
• If the work is not registered, no claim can be brought.
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Copyright: How to Protect It
• Owner can register the copyright after becoming aware
of infringement
• The owner of a registered copyright may sue an infringer
in federal court
 Can recover actual damages and any profits of the
infringer attributable to the infringement not taken
into account in computing actual damages
 Can get an injunction to stop the infringement
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Copyright: How to Protect It
• If the copyright was registered at the time the
infringement took place
 Can recover “statutory damages”
► Alleviates the need to prove actual damages
and/or profits
► Statutory damages can range from $750 to
$30,000 per infringement
► Where the infringement is “willful” statutory
damages can be increased to $150,000.
 Can recover attorneys’ fees if prevails in the lawsuit
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Copyright: How to Protect It
• Copyright Notice
 No longer required by the Copyright Act
 Use of a copyright notice can be beneficial
► Informs the public that the work is
protected by copyright
► Identifies the copyright owner
► Shows the year of first publication.
 If the work is infringed can help to rebut a defense by
the infringer that the infringement was “innocent”
 Unlike TM – can use © whether registered or not
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Copyright and the Internet
• Enormous Uptick in “User Generated Content” on the Web
 Social Media (FaceBook, Twitter)
 Blogs
 YouTube
 Photo sharing websites (Flickr, Instagram)
• Two issues that arise:
 Many more people creating copyrightable works that are
accessible to a large audience
 Many unsophisticated or unethical people using the
Internet to disseminate illegal copies of copyrighted
material `
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Copyright and the Internet
• Copyright Act addresses online infringement in the Digital
Millennium Copyright Act (“DMCA”)
• DMCA provides a mechanism for a copyright owner to notify an
internet service provide of infringement and have that service
provider remove the infringing material
• Provides the service provider with a safe harbor from liability for
infringement by its users taking place on its network
• Purpose is to foster cooperation between service providers and
copyright owners to detect and deter infringement and provide
greater certainty to service providers for potential liability for the
actions of its users
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Copyright and the Internet
• “Service Provider” is, generally, any entity that provides
online services or network access
 Basically, any business that has a website is a
“service provider”
 DMCA helps to alleviate threat of liability to the
service provider for information posted by users of the
website
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Copyright and the Internet
• If a Service Provider complies with the DMCA, provides a “safe
harbor” for liability.
• Most commonly:
 Must have a policy for the termination of repeat infringers and
inform users of the policy
 Must accommodate “standard technical measures” (e.g., digital
watermarks)
 Must designate an agent to receive notification of repeat
infringement and that information must be publically available on
the website and filed with the Copyright Office
 Must act expeditiously to remove infringing material upon
receiving a DMCA compliant notice of infringement
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Copyright and the Internet
• DMCA also insulates the service provider from liability from its
users for removing allegedly infringing material
 Service provider must provide the user with the notice of
infringement and give the user an opportunity to respond
 If the user does not respond, the service provider cannot
be held liable for removing the allegedly infringing material
 If the user does respond, the service provider must put the
material back up and forward that response to the
copyright owner
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Questions?
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Patent Basics
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Patent: What It Is
• Form of Intellectual Property
• Government Grant of Limited Monopoly
 Exclusive right to exclude others from making,
using and selling patented invention (the
“bundle of rights”)
 Not the exclusive right to practice invention if
your invention uses someone else’s protected
technology
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Example:
• You invent a bicycle that can
fly over buildings using rockets,
BUT the only bicycle that works
• with your invention is one covered by patents owned by
Schwinn.
• You don’t have the right to make your invention unless
you have Schwinn’s permission.
• All you have is the right to keep others from making
your flying bicycle.
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• In order to get this limited monopoly, the inventor
must publicly disclose the invention at the time
the patent is granted.
• The disclosure is in the patent itself and must be
detailed enough to allow a person “skilled in the
art” to make the invention.
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• Balancing act between disclosure and the
limited monopoly received from the patent.
►
A 20 year right to exclude others from
making your invention.
• Policy decision that rewards inventors, but
allows innovation to continue by not keeping
scientific progress hidden.
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What Kinds of Things Can Be Patented?
• Plant Patents
 “any distinct and new variety of
plant, including cultivated sports,
mutants, hybrids, and newly found
seedlings” that are asexually
reproduced
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E.g., The “Georgie Tangerine”
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Design Patents
• “any new, original and
ornamental design for an
article of manufacture”
• Patent term is for 14 years
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Design Patents,
e.g., Stationary
Bicycle Design
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Design Patents,
e.g., Toothbrush
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Utility Patents
• Granted to one who invents or discovers any new, useful
and nonobvious:
 Process - a act or method, of doing or making
something, and primarily includes industrial or
technical processes.
 Machine – e.g., a clock, tractor or computer
 Articles of Manufacture – e.g., a brush, shirt, box
 Composition of Matter - a chemical composition and
may include mixtures of ingredients as well as new
chemical compounds
 Any improvement of the above
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Process Patent Example
• Systems and Methods to Process
Transactions Based on Social
Networking – see next slide for
example
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Machine Patent,
e.g., Tractor Mounted
Cotton Harvester
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Article of Manufacture,
e.g.,Electric Toothbrush
Head
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Composition of Matter
e.g. Cleaner
Composition
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What Cannot Be Patented?
• Laws of Nature
• Physical Phenomena
• Abstract Ideas
 Examples: law of gravity; human organisms;
minerals found on earth; E=mc2
 Morse received patent on telegraph NOT on
electromagnetism
• Inventions which are “not useful” – PTO example
of “perpetual motion machines”
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Obtaining Patent Protection
• Process by which a patent is obtained from the PTO is
called “prosecution.”
• Only attorneys and patent agents registered to practice
before the PTO can prosecute an application.
• Application can only be filed in name of inventor (a person).
• Application must disclose the invention, as well as sufficient
detail to allow one to make and use the invention.
• Process takes approximately 3 years from filing to
issuance.
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Common Bars To Obtaining A Patent
• Invention has already been disclosed by
someone else in any country (other patents,
articles, presentations, etc.).
• Inventor failed to file for a patent within one year
of a disclosure of the invention.
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The AIA – What Every Patent Attorney Is Talking About!
• AIA – The America Invents Act – passed in September
2011
• Most significant changes to the American patent system
in decades
• Fundamental Change happening today –
st
 Starting tomorrow becoming a 1 to File patent office
(the race to the PTO – whoever files the application
first receives the patent)
st
 Applications filed today are still based on the 1 to
Invent, no matter who filed for the patent first
 Attempt at more global harmonization/Simplicity
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Patent: How To Protect?
• Mark your invention with “patent pending” or patent
number
• Enforce patent against infringers
 Federal court litigation
 An infringer is someone who is making, using or
selling your invention without your permission (e.g.
license)
 Two primary defenses
► Patent is not valid
► I don’t infringe
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Recent Developments
• Patent Trolls (also known as “non-practicing entities”)
 Buy patents usually for the sole purpose of litigating
and “buying” a stream of income from accused
licensees
 Do not typically practice the invention
 House has introduced a bill that seeks to indirectly
curb litigation brought by patent trolls by awarding
attorneys fees to defendants who successfully defend
an action
 AIA attempted to make “mass” litigation difficult by
patent trolls by prohibiting one plaintiff from suing
multiple unrelated defendants in the same case
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Recent Developments
•
Bowman vs. Monsanto – argued before Supreme Court in February

Do Monsanto’s patent rights in its genetically modified soybean seeds
(“Roundup Ready® seeds) extend to seeds from the resulting crop?

Farmer purchased patented seed for primary crop, but purchased additional
Roundup Ready® seeds from local grain elevator as a commodity for lateseason crop.

In later years saved seeds from late-season crop for planting the next year’s
second crop.

Undisputed that second crops were covered by claims of Monsanto’s patent.

Issue was whether doctrine of “exhaustion” – authorized sale of patented
product extinguishes additional patent rights – precluded infringement claim
because original sale was authorized.

Problem here is that the invention is a self-replicating technology – how does
that square with the doctrine of exhaustion.

Most observers believed that the Supreme Court would rule in favor of
Monsanto who were primarily focused on the third generation of seeds not the
purchase of the commodity.
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Recent Developments
• Apple/Samsung Smartphone Patent Wars
 Two largest smartphone makers
 More than 50 lawsuits in 10 countries
 Patents cover virtually everything associated with
smartphones
► Rectangular shape with curved edges
► Swipe to unlock
► Flat, clear surface on front of product
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Apple/Samsung Dispute
• Recently Apple has had success in the US
 $1 billion infringement award
• BUT
 Lost injunction to prohibit sales of Galaxy in US
 Damage award reduced by $450 million as a result of
“incorrect legal theory”

Remanded for new trial on damages
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Apple/Samsung Dispute
• Samsung has had some success abroad
 Winning infringement actions against Apple in South
Korea
 A ruling that it did not infringe certain of Apple’s
patents (technology to synchronize music and video
between devices and servers)
 Britain – winning a declaration that its Galaxy tablet
was not too similar to Apple’s products (Judge said
Galaxy tablet was not “cool” enough to be confused
with the iPad!)
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Questions Raised (And Not Answered!)
By Smartphone Wars
• Is everything patentable?
• Is this good for consumers?
• Is this good for society?
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Questions?
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IP Ownership Issues
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HARTFORD | STAMFORD | WASHINGTON, DC | GREENWICH | LAKEVILLE
Trademarks
• Owned by the entity actually using the marks
• Can be assigned
• Trademark-like issues
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Copyrights
• Ownership vests in the author
 Person who fixes work in tangible medium of
express
 Work for hire
 Written agreements with
non-employees/independent contractors
• Can be assigned
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Patents
• The inventor of a patent (an individual) is the owner of a
patent
• Ownership is transferred through a written assignment
• In employment context, best practice is to have written
agreement with employee agreeing to assign any
intellectual property (including patents) to the employer
• In the context of joint inventors, each inventor is a coowner with full rights to make, use, sell the invention that
are associated with the patent without regard to the other
co-owner
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