IP for Business Lawyers
Grad – 234-6065
Course Structure:
- 2 or 3 cr. – difference is more involved paper
- 15p. or 25. Respectively
- Roughly 11 meetings throughout the semester
- 3 classes in which we give presentations on the topics of interest to us
o I.e. software – very interested in that
o Encryption algorithms might be interesting
- PowerPoint presentation
- Paper will be due the Friday before graduation
- Ask Cora – do we get credits for pass/fail?
- Interested in ethical issues
- Interested in open source issues
Paper delivery
- Issues in mamba
o Indigenous people knew about the mamba
o Who has discovered it first?
o Patent rights in the country it was first discovered
o Preventing locals from using their own chemicals
o Huge incentives to conduct clinical trials in areas where local law is
more lax
 New Zealand has easier clinical trials
 Ireland
o Dosages, buffers, dosage combinations are all ways to protect the
product
o Identification and isolation of an activated and purified component
o Outside the US can’t get protection for peptides for methods of
treating human body
o If you can get composition of matter that’s best
Trade Secret Law – much less costly
- Failed secrets can be valuable trade secret information
- That can be put into the licensing agreement
Low Cost IP Practices
- Provisional patent applications
- Liberally use copyright notice on all of your docs intended for external use
o Indicates you’re concerned about your copyrights
The Grid
- He hates the word monopoly used in the patent and copyright sense
- Trademark is not perpetual – it’s only as long as you use it
- Patent law doesn’t give you the right to use anything – it prevents others
from using it
Midler v. Ford Motor - does right of publicity protect your voice? Is there common law remedy?
- Ad firm hired an imitator to perform a Midler song b/c she wouldn’t do it.
- Court held that impersonating Midler’s voice was a tort and pirated her identity
- Most jurisdictions have amended statute to cover voice.
- Neither the name nor the picture of Midler was used –
- They said it’s a violation of her privacy, a tort in CA
Nadel v. Play-by-Play Toys & Novelties, Inc. – Sotomayor, J. Ct. App 2nd. Cir
- P, Nadel brought suit against Play-By-Play for breach of contract, quasi contract and unfair
competition, that they took his idea for an upright sound-emitting spinning plush toy and
that, contrary tocustom, they used the idea in their “Tornado Taz” toy
- Nadel’s an inventor. He shows ideas and they’re assumed to be confidential, as by custom
- He showed D’s a toy, they expressed interest in using it in their Taz toy, and P made note of
the confidentiality agreement
- They don’t dispute Tornado Taz has the same chracteristics. But Nadel says he awaited the
prototype, never got it, and they held his sample captive until after a toy fair
- D’s claim they developed it independently
- Posture:
o Lower court dismissed the case b/c P’s toy was not novel
- I: MSJ correct?
- H: no. There are issues of material fact as to the novelty, unfair competition , K claims
vacated
- Reasoning:
o The NDA showed that the toy was sufficiently novel to the defendant Apfel
o It’s all about whether the buyer had used the idea before and whether it had relative
novelty to him
o Misappropriation claims require that the novel be unique in absolute terms
White v. Samsung Electronics
- Ran an ad campaign with robot version of Vanna White – she sued
- Dissent argues they should be allowed to do this
- The dissent argues people shouldn’t be allowed to protect things beyond their likeness
- They also argue it’s the Wheel of Fotune Game
- They argue parody is possible
- A weak argument for the fact that she makes money by “having fun”
- Is there really another way to parody Vanna White? For commercial gain? Is that the test?
- Strong first amendment argument – no copyright involved here, so what’s the conflicting
harm? Freedom liberty?
Lueddecke v. Chevrolet Motor - 1934
- Plaintiff wrote Chevy a letter saying they had errors in in the design of their cars
- Chevy says they’ll forward it to their device committee, but also said he should apply for a
patent
o Well, shouldn’t he just get them to sign an NDA?
- He writes back and tells them the issue – seems like a pretty obvious issue – any car driver >
300 miles has an imbalance – left side is lower than the right side
- He doesn’t know exactly what’s causing the problem, either, so what real knowledge is he
providing Chevy?
- He suggests it’s the placement of the components that does this, that with the driver
- The devices committee rejects the guy’s ideas
- They agree with the sustaining of the demurrers
o Because the defect was well known to others as well as the plaintiff
o
o
He also didn’t lay out any experiments to test out his theory, the court says
The court says they warned him to protect his invention, and he didn’t
 Should the sophistication matter?
Tate v. Scanlan Intl.
- Tate comes up w/ the idea for suture boots, doesn’t get the idea patented, doesn’t try to keep
it secret, so it’s not a trade secret, and doesn’t get an NDA
- She presents it to defendant company, who uses it
- They steal the idea, and she gets $$
-
Problem 1-3
- Janet Peterson – she’s a computer programmer, wants to setup a computer
program
- What would you do with her situation?
o Setup a business plan
o What is it she thinks she’s got that she can convince other people to
put $$ into?
o Ideas of a structure – she may have to hire someone to help her with
this
o Tells you when she expects to make cash on the transaction
o Will there be an IPO? Will there be stock?
o Dictate corporate form,
- Provisional patent applications
- Intent-to-use trademark applications
o Make sure there aren’t competing marks
o Etc.
- Non-disclosure agreements
- Non-compete or employment agreements
- IP board
- What if the FDA says it falls within their jurisdiction?
- Ask “what will people pay?”
Non-disclosure agreements passed out:
- Xerox Agreement
o It’s a unilateral non-disclosure agreement
o That’s the first question you want to ask yourself: what happens to my
information when I send something back?
o You typically want exclusions for things that aren’t confidential
Stem Cell Research in Wisconsin
- Hatch / Waxman – the method by which generics reach markets earlier than
the did in 1982
Notes 2/17/10
- You probably can’t license away reverse engineering
- Software in trade secret:
o Can you use trade secret law to protect your software?
 Well, you could obfuscate your code
 You can’t prevent people from decompiling code o What happens if your competitor comes and buys the software from
your licensee?
Warner Lambert
- If you disclose a formula and license it, even if the formula becomes public,
the licensee is still on the hook even though the thing has been reverse
engineered as long as it’s used
- Useful if you represent licensors – if you don’t qualify the user, the licensee
has to pay forever
Take a look at Aronson
Prometheus Pharmaceuticals
- Prometheus claims involved titrating the human being
- They monitor the metabolites of the drug to determine whether or not
there’s an effective amount of the drug
- And it was for relief of AIDS systems
- Mayo argued that this is just a natural phenomenon
o Because the metabolic pathways of the human being have been
around for centuries
- Problems?
o This would preclude monitoring devices
o If this is a natural process, then isn’t every drug a natural process?
Fedex Hypothetical
- Method:
o A method of shipping freight comprising the steps of:
o Providing a series of ship hubs
o Providing transportation t & from hubs
o Providing Transportation between hubs
o Collecting Freight in areas < 500 miles away from the hub
o Shipping freight using the air transport
o Wherein the freight is sorted, shipped, etc. w/in 24 hrs.
- System:
o One or more hubs
o One or more collection Means
o One or more sorting facilities
o One or more time-based shipment centers
o