intellectual property basics presentation (practical law)
TRANSCRIPT
Intellectual Property Basics
John H. ReesCallister Nebeker & McCullough
2
IntroductionIntellectual property (IP) drives a large segment of today’s global economy. Valuable IP rights may exist in products and services we see, hear and use everyday.
This presentation will:
•Provide an overview of the main types of intellectual property and discuss how they are protected by your company.
•Share best practices for protecting your company’s IP rights and avoiding infringement of other companies’ IP rights.
3
Types of PropertyMost companies own three different types of property:
•Real property. (Things like the headquarters building and parking lot).
•Personal property. (Things like office equipment, computers and furniture).
•Intellectual property. (Things like information, technologies, formulas, brands, logos, designs, photos and music).
4
What is Intellectual Property?Intellectual property is a general term for categories of rights in intangible creations of the mind.
There are four main types of IP:
•Patents. (Protects rights in useful inventions and discoveries, like machines and processes).
•Copyrights. (Protects expressive works, like art, music, dance and literature, and also software).
•Trademarks. (Protects product, service and company identifiers, like brands, logos and package designs).
•Trade Secrets. (Protects commercially valuable confidential information, like business and financial plans, formulas, recipes and customer information).
5
Why Does IP Matter?IP matters because it is one of your company’s most valuable business assets. Intellectual property:
•Builds brand awareness and loyalty among consumers.
•Establishes protectable legal interests in the goods and services sold by your company and the technology and know-how used to produce them.
•Has intrinsic value that may be sold, licensed or leveraged for profit.
•Gives your company a competitive edge.
•Drives innovation.
•Enables your company to enter new markets and grow market share.
•Creates jobs.
6
What is a Patent?A patent is a right granted by the US government to an inventor
for a limited time to exclude others from:
• Making, using, offering for sale, or selling the invention in the US.
• Importing the invention into the US.
Utility patents (including business method patents) are the most common types of patents.
7
Patent RegistrationYour company protects its patents by filing an application for patent protection in the US Patent and Trademark Office (USPTO) (see sample patent application drawing of a sewing machine below).
8
What is a Trademark?A trademark identifies which person or company is the source or origin of goods and services and distinguishes the trademarked goods and services from those made or sold by others.
Trademarks may take the form of:
•Names (e.g., CALVIN KLEIN® apparel and GEORGE FOREMAN® grills).
•Brands (e.g., COKE® soft drinks and APPLE® computers).
•Designs and symbols (e.g., Nike’s "Swoosh" design on footwear).
•Slogans (e.g., Wendy’s slogan WHERE’S THE BEEF® and De Beers’ slogan A DIAMOND IS FOREVER®).
9
Example of Design and Word Marks
10
What is a Trademark? (cont’d)Trademarks may also take the form of:
•Color (e.g., the color of Owens-Corning’s pink fiberglass insulation).
•Sound (e.g., NBC Universal Media’s chimes and Yahoo! Inc.’s yodel).
•Scents.
•Package, product or store design (e.g., the shape of a fragrance bottle or the interior design of a restaurant).
Trademarks consisting of colors or package, product or store designs, or combinations of these features are commonly referred to as "trade dress."
11
Trademark RegistrationIn the US, trademark rights arise from use, not registration. However, your company protects its trademarks by filing for federal trademark registration in the USPTO because federal registration gives the trademark owner many benefits, including:
•The exclusive right to use the mark nationwide in connection with the goods or services covered by the registration.
•The right to use the registered trademark symbol ® to discourage infringement.
12
What is a Copyright?Copyright protects works of authorship that are:
•Fixed in any tangible form or medium of expression.
•Original in the sense that they are:
• Independently created by the author (or authors).
• At least minimally creative.
13
Who is the "Author" of a Copyrighted Work?The "author" may be one person, or two or more persons (in which case the work is jointly owned by its authors).
For a "work made for hire," the employer or party that commissions the work is the initial owner of the copyright in that work, unless either of these parties and the creator of the work agree differently in a signed writing.
14
Works Protected by CopyrightCopyright protects both published and unpublished original works of authorship, including:
•Literary works (e.g., books, periodicals, manuscripts, film, tapes and computer programs).
•Musical works, including accompanying words.
•Dramatic works, including accompanying music (e.g., scripts and screenplays).
•Pantomimes and choreographic works.
•Pictorial, graphic and sculptural works (e.g., fine, graphic and applied art and art reproductions, photographs, prints, maps, models and technical drawings).
•Motion pictures, video games and other audiovisual works.
•Sound recordings.
•Architectural works.
15
Example of Copyrightable Subject MatterLiterary and pictorial works: drawing from a book
16
Works Not Protected by CopyrightCopyright does not protect:
•Ideas, systems, methods or processes.
•US government works.
•Typefaces (although copyright protection is available for computer programs that generate fonts and typefaces).
17
Copyright RegistrationRegistration is not required to establish federal copyright ownership. However, your company protects its copyrights by filing for registration in the US Copyright Office because registration provides substantial benefits, including:
•The ability to bring an action for copyright infringement.
•Recovery of attorneys’ fees and special categories of damages not otherwise available in an infringement action.
18
What is a Trade Secret?A trade secret is:
•Business, financial and technical information.
•Kept confidential by its owner through reasonable efforts.
•Economically valuable because the information is not generally known.
For example, Coca-Cola’s soda formula, KFC’s fried chicken recipe and the source code of Adobe’s PHOTOSHOP® software are trade secrets.
19
Trade Secret ProtectionTrade secrets are not registered like patents, trademarks and copyrights. Instead, the your company expects you to protect its trade secrets by making reasonable efforts to keep this information confidential, for example, by:
•Never giving your passwords to anyone.
•Keeping hard copies of trade secret information in locked files or cabinets.
•Never giving confidential information to customers or other individuals outside of the company unless:
• Authorized by management.
• The recipient has signed a written Non-disclosure Agreement.
20
How Does Your Company Protect its IP?Your company protects its IP by:
•Registering its copyrights and trademarks.
•Applying for patents on its inventions and discoveries.
•Keeping its trade secrets confidential and limiting their disclosure, including information concerning any invention or discovery for which it may decide to seek a patent.
•Obtaining signed non-disclosure agreements from vendors and other business partners, and from employees under the terms of their employment agreements.
•Engaging watch notice services to monitor new IP application filings by other companies.
21
How Does Your Company Protect its IP? (cont’d)Your company protects its IP by:
•Marking its packaging, advertising, marketing materials and websites with appropriate IP notices. For example:
Copyright notice for electronic and printed publications:
© 2015 ABC Company, Inc.
Trademark notice for products, packaging and other materials:
[BRAND]® is a registered trademark of your company.
OR, if the mark is not registered:
[BRAND]™ is a trademark of your company.
22
How Does Your Company Protect its IP? (cont’d)Your company protects its IP by:
•Keeping an eye on the market and its competitors’ activities.
•Reviewing industry-specific trade papers, magazines and websites.
•Developing best practices for IP protection and training employees on the subject.
•Enforcing its rights against infringers by sending cease and desist letters, and when appropriate, commencing litigation.
•Publicizing enforcement victories through targeted press releases.
23
How Does Your Company Minimize the Risk of Infringing Other Companies’ IP Rights?Your company reduces its risk of infringing other companies’ IP rights by:
•Conducting a thorough investigation to obtain legal clearance of all IP prior to use.
•Implementing policies and guidelines to reduce infringement risk.
•Educating employees about your company’s policies and guidelines.
•Training employees about the types of IP that are most relevant to their jobs and industry.
24
Hypothetical 1Jane, the Vice President of Sales and Marketing for her company, needs to prepare a presentation to the company’s salesforce at its annual sales meeting. To visually liven up her presentation, she downloads numerous images from the internet and copies them into her presentation slides.
------
Can Jane do this?
25
Answer to Hypothetical 1• Probably not. Although many internet sites contain photographs that
are in the public domain, the photos Jane selected may well be protected by copyright.
• If the photographers, companies or stock photo houses that own rights in these photographs learned of Jane’s use of protected photos in her sales presentation, Jane’s company may be liable for copyright infringement.
Lesson:
Always check with legal counsel before you download images or other materials from the internet for company use.
26
Hypothetical 2Frank, a designer, is developing product packaging for a new line of soft drinks to be sold by his company. He thinks packaging similar to Coca-Cola’s red and white soda cans would be perfect for this new product. Because Frank’s product will feature a different brand name, he doesn’t see any reason why he can’t duplicate the color scheme and design of Coca-Cola’s packaging.
------
Is Frank right?
27
Answer to Hypothetical 2• No. Even if the packaging for Frank’s product features a different
brand name, Coca-Cola owns trade dress rights in its iconic red and white can design.
• If Frank’s company markets its soft drink line with cans featuring colors and designs that are confusingly similar to those contained in Coca-Cola’s trade dress, it may be liable in an action for trade dress infringement.
Lesson:
Always check with legal counsel if you are uncertain about these issues.
28
Hypothetical 3Lucy, a scientist for a pharmaceutical company, is developing a new medication for people with high cholesterol. There are several branded medications on the market that help reduce cholesterol.
------
If Lucy can figure out the formula for one of these other medications, can she use it to develop a new medication sold by her company?
29
Answer to Hypothetical 3• Probably not. Branded medications are generally patented (although
there are some branded generic drugs that have gone off patent).
• Lucy would likely expose her company to a very damaging claim of patent infringement if she pursued product development in this manner.
Lesson:
Copying another’s product or service is never a good idea. Before engaging in conduct that may expose the company to liability, always contact legal counsel for advice.
30
Conclusion• Never assume that what you see in the marketplace, in the media or
on the internet is in the public domain and free to copy, download or use.
• If you are unsure whether something contains the protected IP of another party, always check with legal counsel before downloading or using it.
• Always bring suspected infringement of your company’s IP to the attention of legal counsel.
Questions
32
John H. Rees
Callister Nebeker & McCullough
801.530.7388
For Further Information or Questions Contact: