Jody Blanke, Professor
Computer Information Systems and Law
Mercer University, Atlanta
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Patent Law
 Article I, Section 8 of the Constitution
 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
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Protection
 Patents protect the underlying idea
 whereas copyrights protect only an expression (of an
idea)
 e.g., Thomas Edison v. Joe Schmoe
 Patents last for 20 years (from date of filing)
 Patents protect from independent creation
 copyrights do not
 U.S. protects first to invent, not first to file
 Changes to first to file on March 16, 2013
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§ 101 Subject Matter
 Invention must be new and useful
 process
 machine
 manufacture, or
 composition of matter
 Can include “anything under the
sun that is made by man.”
 Cannot include laws of nature,
scientific principles,
mathematical formulas
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§ 102 Novelty
 Cannot get a patent if
 the inventor did not himself invent the subject matter
 the invention was known or used by others in the U.S. or
patented or described in a printed publication
anywhere, or
 the invention was in public use or on sale in the U.S.
more than one year prior to filing
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§ 103 Nonobviousness
 The differences between the invention and the prior
art must not have been obvious at the time of
invention to a person having ordinary skill in the art
 Example - cable ties
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Sword or Shield
 Patents can be used offensively or
defensively
 may be held like a trump card
 e.g., Amazon v. Barnes & Noble
 Patent holders may get greedy
 e.g., Compton’s Media, British
Telecom
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Opening of the Floodgates
 Software patents
 Business method patents
 State Street Bank & Trust (1998)
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Trademark Law
 Combination of federal and state law
 Authority of federal law derives from regulation of
interstate commerce
 Authority of state law derives from regulation of
intrastate commerce
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Protects Dual Interests
 Protects trademark owner’s interest in brand name
value and good will
 Protects consumers from confusion
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Trademarks can be …
 Words
 Phrases
 Symbols
 Sounds
 Colors
 Smells
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 Intel learned that you cannot
trademark numbers themselves
 Pentium can be trademarked
 You can trademark
 7-Up
 Three-peat
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Generics
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Generics
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Dixie Cups
Frisbee
Hi-Liter
Kitty Litter
Kleenex
Magic Marker
Ping-Pong
Popsicle
Scotch Tape
Sheetrock
TV Dinners
Wiffle Ball
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Cellophane
Corn Flakes
Dry Ice
Lanolin
Mimeograph
Monopoly
Pogo Stick
Raisin Bran
Shredded Wheat
Thermos
Toll House
Trampoline
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Strength of Protection
1.
Fanciful
e.g., Kodak, Atari, Exxon
2.
Arbitrary
e.g., Apple, Amazon
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Suggestive
4.
e.g., Compaq, Dairy Queen
Descriptive (must acquire a secondary meaning) e.g.,
Computerland, Ben & Jerrys
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Generic
e.g., aspirin, elevator
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Trademark Infringement
 “Likelihood of confusion” standard
 Court looks at factors like
 similarity of goods
 sophistication of consumers
 length of time that mark has been used
 wrongful intent
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Lexus/Lexis
 Mead Data Corp. sued Toyota in 1989
 Toyota won
 court found little chance of confusion
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perspective luxury car buyer won’t come home with a legal
database instead
and vice versa
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Trademark Dilution
 Federal Trademark Dilution Act of 1996
 prior to 1996, 28 states had anti-dilution laws
 Under the Trademark Dilution Revision Act of 2006,
must show
 “famous” mark – as "widely recognized by the general
consuming public of the United States”
 “likelihood of dilution”
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Microsoft Sandwich Shoppe
 Makes a great sandwich
 Becomes very popular
 “Let’s go to Microsoft”
 dilution by blurring
 But after the very unfortunate e-coli incident
 dilution by tarnishment
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Lexus/Lexis Revisited
 Would there be infringement today?
 Would there be dilution today?
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Web Domain Names
 New frontier for trademark law
 Early “entrepreneurs” registered
 www.mtv.com
 www.abc.com
 www.sex.com
 Today we call them cybersquatters
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www.delta.com 1996
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www.delta.com April 2000
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www.delta.com August 2000
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www.delta.com October 2000
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www.nissan.com 1996
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www.nissan.com 1999
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www.nissan.com 2006
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www.google.com
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www.froogle.com 2004
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www.booble.com 2004
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www.booble.com 2005
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Contested Domain Names
 www.playboyxxx.com
 www.asianplayboy.com
 www.lucentsucks.com
 www.amazom.com
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Trade Secret Law
 Restatement (First) of Torts §757
 A trade secret may consist of any formula, pattern,
device or compilation of information which is used in
one's business, and which gives him an opportunity to
obtain an advantage over competitors who do not know
or use it. It may be a formula for a chemical compound, a
process of manufacturing, treating or preserving
material, a pattern for a machine or other device, or a list
of customers.
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The Coke Formula
“This Coca-Cola formula appears to be the original formula to
Coca-Cola. An author named Mark Pendergrast wrote a book
about Coca-Cola entitled For God, Country and Coca-Cola. In
writing this book he was able to interview just about anybody he
wanted within Coca-Cola, and was also granted access to the
vast archives of Coca-Cola.”
http://www.sodamuseum.bigstep.com/generic.jhtml?pid=10
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Factors Used to Determine Whether There
is a Trade Secret
 The extent to which the information is known outside of its
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owner's business
The extent to which it is known by employees and others
involved in its owner's business
The extent of measures taken by the owner to guard the
secrecy of the information
The value of the information to its owner and to its
competitors
The amount of effort or money expended by its owner in
developing the information
The ease or difficulty with which the information could be
properly acquired or duplicated by others.
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Uniform Trade Secrets Act
 "Trade secret" means information, including a
formula, pattern, compilation, program, device,
method, technique, or process, that:
(i) derives independent economic value, actual or
potential, from not being generally known to, and not
being readily ascertainable by proper means by, other
persons who can obtain economic value from its
disclosure or use, and
(ii) is the subject of efforts that are reasonable under the
circumstances to maintain its secrecy.
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Georgia UTSA
 "Trade secret" means information, without regard
to form, including, but not limited to, technical or
nontechnical data, a formula, a pattern, a
compilation, a program, a device, a method, a
technique, a drawing, a process, financial data,
financial plans, product plans, or a list of actual or
potential customers or suppliers which is not
commonly known by or available to the public and
which information:
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U.S. v. Joya Williams
 Two former Coca-Cola employees convicted of theft of
trade secrets and sentenced to 5 and 8 years in prison
 CNN article
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