an overview of intellectual property law

©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved

NEW YORK STATE BAR ASSOCIATION

BRIDGING THE GAP

An Overview of Intellectual Property Law

July 15, 2014

Shanna K. Sanders, Esq.

Heslin Rothenberg Farley & Mesiti P.C.

Intellectual Property

• Copyrights

• Trademarks / Trade Dress

• Trade Secrets

• Patents


Four Types of IP:

COPYRIGHTS

Copyright


What are the Requirements?

• Original work of authorship, creative, non-

functional

• Fixed in a tangible medium of expression

(paper or electronic)

What is Protectable?

• Expression only is protected, not the ideas

• Websites, drawings, literature, plays, surgical

techniques, photos, sculpture, architecture,

songs, computer software, rugs, books,

journal articles

Who owns it and When?

• Exists the moment the work is created

• Immediately becomes property of the author

who created the work

• Works “Made for Hire” - employer is

considered author and owner


Copyright

How Long is it Protected?

• Life of author + 70 years

• 95 years from publication (work for hire)


What are the Owner’s Rights?

• Reproduce the work

• Prepare derivative works

• Distribute copies

• Perform, Display

Best Practice

• Add Copyright Notice to all works that are

created

• (Date of Creation) (Author’s Name)

©

Copyright

Federal Copyright Registration

Benefits:

•Prerequisite to lawsuit

•TIME IS OF THE ESSENCE! Statutory damages and attorneys fees if

registered within 3 months of publication

•Presumption of ownership

•Notice/Deterrent

Requirements:

•Identify author and owner

•Creation date and publication date

•Prior work

•Deposit material

•Filing fee

•3-12 months

www.copyright.gov


Copyright: Pre-Litigation

Cease and Desist Letter

• Sending a cease and desist letter to accused infringer

Demands that infringer stop, compensation, offer license, etc.

Response may be to settle

• CAVEAT: accused infringer files a declaratory judgment

action against copyright owner in local jurisdiction


• An action for copyright infringement must be brought within three (3) years after the claim has accrued. 17 U.S.C. § 507(b).

• Valid copyright registration is a precondition. 17 U.S.C. § 411

• The elements of a copyright infringement claim are:

1) Ownership of a valid copyright; and

2) Copying of constituent elements of the work that are original

• A certificate of registration obtained within five (5) years after first publication of the work is prima facie evidence of the valid ownership of a copyright.

Copyright: Litigation


• Copying can be proven as either:

1) Direct proof, which is rare; or

2) Indirect or circumstantial proof, which is more likely.

This requires proving: (a) access; and (b) substantial

similarity.

Copyright: Standard for Infringement


• Access

Proof of access requires an opportunity to view or to copy

plaintiff’s work.

To prove access, a plaintiff must show a reasonable possibility that

an alleged infringer had the chance to view the protected work

• Substantial Similarity

Application of the “ordinary observer test.”

Involves asking whether an average lay observer would recognize

the alleged copy as having been appropriated from the copyrighted

work

Copyright: Standard for Infringement


• Copyright owner may seek:

Injunctive relief, impoundment and disposition of

infringing articles, damages and profits of the infringer,

and/or costs and attorneys’ fees. See, 17 U.S.C. §§ 502-505.

• Infringer is liable for either:

(1) actual damages and any additional profits, or

(2) statutory damages

Copyright: Infringement Remedies


• Pursuant to Section 504 of the Copyright Act, award

of statutory damages ranges from $750 to $30,000

Willful infringement increases the amount up to $150,000

Innocent infringement may result in a reduction of statutory

damages to $200

Copyright: Statutory Damages


• Defense against accusations of copyright infringement.

• In determining whether the use of a copyrighted work is a fair use, the factors to be considered shall include:

1) The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2) The nature of the copyrighted work;

3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole;

4) The effect of the use upon the potential market for or value of the copyrighted work

Copyright: Fair Use


Thicke v. Gaye, Civ. No. 13-6004 (C.D. Cal)


TRADEMARKS

What is a Trademark?

• A trademark is a word, symbol, or phrase, used to

identify a particular manufacturer or seller's products and

distinguish them from the products of another.

• Serve two primary purposes:

(1) Protects consumers from being misled

(2) Protect the reputation of the trademark owner


Name the Source?

Trademarks vs. Service Marks

Word

Slogan

Logo

Sound

Color


• A slogan or any other combination of words is

capable of trademark significance, if used in such a

way as to identify and distinguish the seller’s goods

and services from others. Allstate Ins. Co. v. Allstate

Inc., 307 F.Supp. 1161 (N.D.Tex. 1969).

Slogan Marks


New York State

Division of the Lottery

U.S. Reg. 3,751,899

All you need is a

dollar and a dream

McDonald’s Corp.

U.S. Reg. 2,978,887

I’m

lovin’ it

So easy a

caveman can do it

Melts in your

mouth, not in

your hand

Just do it

Nike, Inc.

U.S. Reg. 1,875,307

GEICO

U.S. Reg. 3,193,689

Examples of Slogan Marks

Mars, Inc.

U. S. Reg. 1,596,711

Sound Marks

• A sound mark identifies and distinguishes a product or service through

audio rather than visual means. TMEP §1202.15

• Sounds are protectable when they are arbitrary, unique or distinctive and

create in the hearer’s mind an association of the sound with a good or

service. In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009); In

re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978)

• The fact that sounds and musical compositions are protected by the

copyright laws is not incompatible with their also qualifying for protection

as trademarks. Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 61 (2d Cir. 2001)

• As with any designation alleged to be a mark, a sound cannot qualify as a

mark if it is “functional”


• U.S. Registration No. 916,522 (July 13, 1971)

• U.S. Registration No. 1,395,550 (June 3, 1986)

• U.S. Registration No. 2,692,077 (March 4, 2003)

• U.S. Registration No. 3,411,881 (April 15, 2008)

• U.S. Registration No. 2,821,863 (March 16, 2004)

• U.S. Registration No. 2,442,140 (April 10, 2001)

• U.S. Registration No. 2450525 (May 15, 2001)

• U.S. Registration No. 2519203 (December 18, 2001)

Examples of Sound Marks


Color Marks

• In 1995, the Supreme Court held that a single color

of a product is capable of being registered and

protected as a trademark. Qualitex Co. v. Jacobson

Prods. Co., 513 U.S. 159 (1995)

• Single color requires proof of secondary meaning.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529

U.S. 205 (2000)


Examples of Color Marks

Canary

Yellow Robin Egg

Blue

Brown

Evaluating

Strength of Trademarks

Strongest Weakest Not Protectable

Coined/Arbitrary Suggestive Descriptive Generic (Merely or Geographically)

•Kodak

•Exxon

•Prilosec

•Centrium

•Advair

•Igloo

•Coppertone

•Nautica

•Manhattan Bagel

•General Motors

•Sonoma Valley Wine

•International Business

Machines (IBM)

•Aspirin

•Advil

•Thermos

•Kleenex

(Requires secondary meaning)


** The More Distinctive the Mark, The Stronger The Mark will Be**

Secondary Meaning

• a/k/a Acquired Distinctiveness

• Evidence that the mark has become distinctive as applied

to the owner’s goods or services in commerce.

• Long use of the mark

•Advertising expenditures

• Survey evidence

• Sales

• Unsolicited media


Generic = Unprotectable

Convenient Food Mart, Supermarket

Once were TMs:

• Aspirin, Escalator, Thermos, Yo-Yo, and Bikini

Famous marks risk becoming generic

• Scotch Tape

• Kleenex

• Xerox

Grave Yard of Generic Marks Dictionary



Best Practice

• Use TM or SM designation NOW

• Obtain Federal registration – use ®

• Must use trademark in commerce to qualify

for protection

Federal Trademark Registration

Benefits:

•Public Notice/Deterrent

•Presumption of Ownership

•Basis for Foreign Trademark Registration

•Record at Border and Prevent Importation of Infringing Goods

•Right to Use Federal Registration Symbol ®

Requirements:

•Owner

•Identification of Goods and Services

•Actual Use in Commerce or Intent to Use

•Specimen

•Declaration

•Filing Fee

•6-18 Months

www.uspto.gov

Christian Louboutin S.A. v. Yves Saint

Laurent Am. Holdings, Inc.

696 F.3d 206 (2d Cir. 2012)

•“Louboutin’s trademark, consisting of a red lacquered outsole on a high

fashion women’s shoe, has acquired limited ‘secondary meaning’ as a

distinctive symbol that identifies the Louboutin brand.”

•Louboutin’s trademark was limited to uses in which the red outsole

contrasts with the color of the remainder of the shoe.


“Trade Dress” – What is it?

“… the total image and overall

appearance” of a product, package,

style of doing business etc. “as

defined by its overall composition

and design, including size, shape,

color texture, and graphics”

It is a WORDLESS

TRADEMARK....but certainly not

worthless!


The Power of a Famous Look

This is Trade Dress in a package



• Formula, device, compilation of

information

• Competitive advantage in business

• Has increased ECONOMIC

VALUE if kept confidential

• Must be kept secret (business

must take “reasonable” steps &

actions to maintain secrecy)

• Term is Indefinite

(e.g., Coca Cola & KFC)


PATENTS


PATENTS

•Protects new inventions or ideas

•Requirements for Patentability:

•Useful

•Novel/New

•Non-Obvious (To a “Person of Skill in the Art”)

•Marking:

•Patent Pending

•Protected by U.S. Patent No. 5,125,445


What can be Patented?

• Processes

• Articles of Manufacture

• Machines

• Compositions of Matter

• And Improvements to all

PATENTS


What can’t be Patented?

• Law of Nature

• Physical Phenomena

• Abstract Ideas (mathematical solutions)

• Scientific Principles

• Atomic Weapons

• Illegal Devices

• Natural Occurring Items

• A method that is purely mental

PATENTS

What are your Patent Rights?


• The right to EXCLUDE others from making, using

or selling an invention

• Limited monopoly granted by the Federal

government

• In exchange for full disclosure of the invention to

the public

How Long Does a Patent Last?

• Utility Patent: 20 years from the Date of Filing

• Design Patent: 14 years from the Date of Issue


Who is the Inventor?

• “Conceives” the claimed invention Who IS?

• Carries out experiments

• Assists inventor in reducing invention to practice

• Contributes obvious elements and improvements

• Suggests a desired result without corresponding

idea/solution

• Evaluates invention

• One who identifies the problem but gives no

solution.

Who is NOT?


Two Types: Provisional vs. Non-Provisional Application

Non-Provisional Application - Expensive & Long (3-5 Years)

• Must disclose and describe the best mode contemplated by the inventor

of carrying out the invention

Provisional Application – Quick & Cheap

• Only a place holder (1 year) and establishes a priority date

• If you do NOTHING- Application Ceases to Exist


Utility Patent vs. Design Patent

• Utility – Protects how the invention works or is made

• Multiple Claims

• Functionality

• Cost- $5,000-$15,000 to file

• 20 years from date of filing

• Design – Protects how it looks

• Single claim (for “ornamental design”) with many figures

• Cost = $1,500-$2,000

• Cannot be Functional

• 14 years from date of issue

Contents of a Patent Application

• Title

• List Of Inventors

• Abstract

• Specification (Technical & Disclosure)

• Background Of The Invention

• Field Of The Invention

• Description Of The State Of The Art

• Summary Of The Invention

• Brief Description Of The Drawings

• Detailed Description Of Invention

• Claims (Legal) ©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved

U.S. Design Patent D590,868

2009

U.S. Patent 8,046,721:

1. A method of unlocking a hand-held electronic device, the device

including a touch-sensitive display, the method comprising:

detecting a contact with the touch-sensitive display at a first

predefined location corresponding to an unlock image;

continuously moving the unlock image on the touch-sensitive

display in accordance with movement of the contact while

continuous contact with the touch screen is maintained, wherein

the unlock image is a graphical, interactive user-interface object

with which a user interacts in order to unlock the device; and

unlocking the hand-held electronic device if the moving the unlock

image on the touch-sensitive display results in movement of the

unlock image from the first predefined location to a predefined

unlock region on the touch-sensitive display.

What to Do When You Invent

1) Keep all materials/concepts

CONFIDENTIAL (NDA).

2) Keep a contemporaneous notebook of

ideas/sketches.

3) Date & sign all notes/sketches.

4) If possible, have a witness countersign.

5) Under stand risk of public disclosure.

6) Evaluate novelty – prior art search.


America Invents Act

“The New Patent Law”


America Invents Act

• Changed from “first to invent” to “first to file” system

• Eliminated requirement for Inventor to execute application and provide a mechanism for substitute statement by assignee when inventor is unavailable or non-cooperative

• Removed failure to disclose Best Mode as basis for invalidation of a patent

• Created “micro-entity” status with 75 percent reduction in fees

Major Provisions



First to File System

• Brings U.S. law into conformity with the rest of the world –

Race to the Patent Office

• Absolute novelty standard but still allows a one year grace

period for certain publications made by or derived from

inventors

• Eliminates interference procedures; introduces derivation

proceeding

Association for Molecular Pathology

v. Myriad Genetics, Inc. 133 S.Ct. 2107 (2013)

Claims to sequences of DNA “isolated” from cells are not

eligible for patent because they are “products of nature.”

However, claims to synthetic sequences of DNA that are

chemically distinct from sequences that exist naturally in

cells are patent eligible. Specifically, cDNA—synthetic

molecules of DNA whose sequence of nucleotides has

portions missing when compared to endogenous genes—

were held to be patent-eligible because no such molecules

naturally exist.


Blackhorse v. Pro Football, Inc. Trademark Trial and Appeal Board, June 17, 2014

• TTAB canceled six trademark registrations for the Washington

Redskins' name, ruling that it is disparaging to American

Indians.

• The Lanham Act bars registrations that "may disparage" or

"bring into contempt or disrepute" persons, living or dead, as

well as institutions, beliefs or national symbols.

•The ruling affects only the benefits of federal registration, not

the team's ability to use the name.

•The team will appeal, and the registrations will remain active

until the appeal is resolved.

Blackhorse v. Pro Football, Inc. (cont’d)

Shanna K. Sanders, Esq.

Heslin Rothenberg Farley & Mesiti P.C.

Intellectual Property Law

5 Columbia Circle

Albany, New York 12203

518-452-5600

[email protected]

www.hrfmlaw.com

an overview of intellectual property law

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