Business Law 2024 PDF

WEEK Intellectual Property Law Intellectual Property Law Class contents 1. Trademarks 2. Copyrights 3. Trade secrets 4. Patents 5. Industrial design & Geographic Indicators 6. Licensing Intellectual Property Law Real vs Intellectual Propert...

WEEK Intellectual Property Law Intellectual Property Law Class contents 1. Trademarks 2. Copyrights 3. Trade secrets 4. Patents 5. Industrial design & Geographic Indicators 6. Licensing Intellectual Property Law Real vs Intellectual Property  Intellectual Property Law Real Assets vs. Intellectual Assets 7.7 Bn USD (2019)  57 Bn USD (2021) Intellectual Property Law Role of IP in knowledge based economy Role of IP in industrialization Historically IP ”invention of glass” The printing press Protecting the artisans Intellectual Property Law What is IP? IP: Fruit of human intellectual endeavor subject to legal protection if certain conditions are met Typically: Patents, Copyrights, Trademarks, Industrial designs and trade secrets IP Management IP is typically the output of specific innovation policy, R&D activities and corporate strategies. It boils down to portfolio management: Individually managing single patent application, to sum of all applications is the portfolio Intellectual Property Law What is IP? Intellectual Property Law What is IP? 1. Trademarks 2. Copyrights 3. Trade secrets 4. Patents But also: 1. Industrial designs 2. Geographic Indicators 3. Indeginous Knowledge NOTE: IP Rights tend to be national and subject to national law. In short, there is no global / international protection. You must protect your IP in every jurisdicition where you have commercial or strategic interest. TRADEMARKS Intellectual Property Law Trademarks A trademark is a distinctive sign, symbol, logo, word, or phrase that identifies and distinguishes the goods or services of one party from those of others. It serves as a form of intellectual property protection, granting exclusive rights to the trademark owner to use the mark in commerce in connection with specific goods or services. Intellectual Property Law Trademarks TRADEMARKS TRADEMARKS Trademarks: goods manufactured by x from goods manufactured by y Service Marks: service must be sufficiently separate from the sale of goods: Service received at Zara, Hilton Hotel or MCD’s? Certification Marks: objective standard that certifies that goods or services have certain standards: ISO; CEE Collective Marks: Co-ops (distinguish good of services of members from non-members) Indication of origin TRADEMARKS The Lanham Act, officially known as the Trademark Act of 1946, is a U.S. federal law that governs trademarks, service marks, and unfair competition. Its primary purpose is to protect the rights of trademark owners and consumers by providing a system for the registration and enforcement of trademarks. The act prohibits trademark infringement, false advertising, and trademark dilution. It also establishes procedures for registering trademarks with the United States Patent and Trademark Office (USPTO) and outlines the legal remedies available to trademark owners whose rights have been violated.  TRADEMARKS State Law v. Federal Law Burger King of Florida, Inc., and Burger King Restaurants, Inc., Plaintiffs-appellees, v. Gene Hoots and Betty Hoots, D/b/a Burger King, Defendants- appellants, 403 F.2d 904 (7th Cir. 1968) The court ruled that, because of the federal trademark registration, and because the federal law indicated priority over state law, Florida's Burger King had rights to the name almost everywhere in the United States, including in Illinois, except in the Mattoon area, where the Hoots family had prior actual use. As a result of the case, the Hootses cannot use the name "Burger King" outside of the Mattoon area, and the Florida chain (which operates both nationally in the U.S. and internationally) cannot use the name in the Mattoon area (Wikipedia) TRADEMARKS Unfair competition What is it? How does it relate to TM? Use without registration? Trademark protection 10 Years, renewable Registration requirement Use requirement Nice classification (under Madrid Agreement: International trademarks): The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks. The 2015 version of the tenth edition of the NCL came into force on January 1, 2015 45 classes (classes 1-34 include goods and classes 35-45 for services) Distinctiveness A mark must be distinctive: so as to convey that one good is distinct from another Attention: distinctive-suggestive-descriptive Hierarchy: Inherently distinctiveness: Arbitrary or fanciful marks Suggestive marks: indirectly describe a product or service they identify. There must be a mental process by consumer to associate the mark with the description of the good (is suggestive descriptive? Imagination and knowledge required to make the link: Ex: Coppertone Will a competitor need to use it to describe their product Acquired distinctiveness (2nd meaning) Descriptive: Describes the product: “Fastauto”; “Automag”, “After tan” Describe a geo location where the good is coming from A person’s name: How is “Smith’s cafe” different from Hilton, Hyatt or McDonald’s? A mark commonly used in connection with the good Generic: describes a class of goods or its genus (class) www, email, sedan, but also aspirin, escalator, thermos, yo- yo, zipper(loss of distinctiveness) Secondary meaning When the mark is seen by consumer not in its primary common, descriptive or name sense but there is an association of indication of source Maintaining distinctiveness (generic): use as an adjective not a verb or a noun: Do you have a Kleenex? Fed ex me the contract Google the information Limitations Scandalous-immoral marks Disparage another: elvisisanidiot, bmwiscrap False suggestion of connection with persons or institutions Deceptive Misdescribe a characteristic or statement of a character: “genuine Italian champagne” , Kobe beef steakhouse, Deceptively similar: SONY-SUNY? Bose-Boz? Prior use Infringement Is the defendant using the mark as a trademark and will this cause a confusion in the marketplace? Point of sale Post sale Initial interest Counterfeiting Gray market: foreign manufacture of a good with lawful registered tm (destined for sale outside territory) lawfully imported and in competition with owner of mark (ok if not materially different) Contributory infringement First sale doctrine: as long as subsequent use does not create confusion about the immediate source of goods Infringement Dilution Dilution cause of action is available for highly distinctive famous marks. The purpose of the dilution doctrine is not to protect the consumer, but to protect the property right and goodwill that a company has developed in a mark  Dilution Blurring: No likelihood of confusion necessary. D uses P’s mark (or similar to it) reducing the strong association of Ps mark with its goods McD’s golden arches Tarnishment: Use by D of Ps mark in an unwholesome manner thus reducing the “luster” Godiva vs Dogiva Dilution Show damages? Actual damages: US: Moseley vs. V Secret Cat Inc (2003): Victor’s little secret vs Victoria’s secret Trademark Dilution Revision Act of 2006:No actual loss of profits necessary to prove dilution  Cybersquatting Anti-cybersquatting act amendments of Lanham act Registration, trafficking, use of a domain name Identical, confusingly similar or dilutive Bad faith www.peta.org: People for the Ethical Treatment of Animals v. Doughney (2001) Panavision.com: Panavision International, L.P. v. Toeppen (1998) ICANN: Internet corporation for assigned names and numbers. WIPO and UDRP DEFENCES Abandonment: Discontinued use By acts or omissions Assignment in gross (without a good) Failure to monitor license Fair Use Good faith use of descriptive or geo descriptive mark to describe Ds product Nominative fair use: D’s use of Ps mark to refer to Ps marks Parody: Good parody does not cause confusion PETA case COPYRIGHTS Intellectual Property Law Copyrights Copyrights are a form of intellectual property protection granted to the creators of original works of authorship fixed in a tangible medium of expression. Copyright protection gives the creator or owner exclusive rights to reproduce, distribute, perform, display, or license their work, as well as the right to create derivative works based on the original. literary works (such as books, articles, and computer software), musical compositions, dramatic works (including plays and screenplays), choreographic works, pictorial, graphic, and sculptural works motion pictures and other audio-visual works, sound recordings, and architectural works. COPYRIGHTS GENERAL Work of original authorship fixed on a tangible medium ….from which they can be perceived, communicated, reproduced Right associated with the particular way an idea is expressed not the idea itself Tangible rights on the personal property vs. intangible rights associated with the expression fixed on the tangible medium Expounding the definition Work of original authorship fixed on a tangible medium Not copied Creative….what is creative? Facts are discovered…not created…way of communicating (ie expressing) facts are creative Expounding the definition Work of original authorship fixed on a tangible medium The Author is the creator of the work But: YO U DO KNOW THIS K EY? MON Expounding the definition Work of original authorship fixed on a tangible medium: Sufficiently permanent and stable to be perceived communicated or copied The ten commandments? Love poem on a sandy beach? Permanent? How long? More than transitory duration Length of Protection Works Created on or after January 1, 1978: For works created on or after January 1, 1978, copyright protection lasts for the life of the author plus 70 years., Works published between 1923 and 1977, copyright protection lasts for 95 years from the date of publication Works for hire or anonymous works: Copyright protection lasts for 95 years from the date of publication or 120 years from the date of creation, whichever is shorter. Collective works & Compilations Jointly created works: copyright protection lasts for 70 years after the death of the last surviving author. Scope of Rights Economic Rights: Exclusive rights to do or authorize to do Reproduce Prepare derivative works Distribute Publicly perform (except pictures and sculptures) Public displays (except architecture and sound recordings) Audio transmission of sound recordings Moral rights: On the integrity of the work After Bern convention a limited moral right in the US as well Moral rights Claim authorship Prevent use of name for independent work: ie Wilbur Smith Prevent use of name for mutilated work Prevent intentional distortion mutilation What is excluded? Ideas, procedures, processes, systems, methods of operation, concepts, discoveries E=mc2 ? The Monopoly game? (patents as it is a process?) but is there no © at all? Merger doctrine: idea & expression. Ideas are not protected, expression thereof are When limited ways to express and idea, there cannot be a copyright protection as it would give a monopoly over the idea Functionality doctrine Artwork: Copyright Utility: Patent Artistic features must be separated from functional features Fictional characters A copyright protection separate from the story both for visual and personality traits described in the story Derivative Rights Based on preexisting work Translations Fictionalization Movie of a book Only to the original work contributed by derivative author Copying Access to orignal work Strikingly similar Or by direct evidence Substantial similarity: Literal: how much of it is copied Nonliteral: similarity in the underlying arrangment structure How do you distinguish © form idea? Focus on details? Copying a computer program from cd to machine First sale doctrine Does © follow an initial lawful transfer of title to the 3rd party? Rentals? Cinema? Infringment Direct infringement Contributory infringement Knowingly causes, induces or materially contributes to Safe harbor from contributory or vicarious (could have stopped but did not) liability for internet service providers Fair use doctrine Criticism – comment News reporting Teaching Scholarship research Parody Reverse engineering (decompile). Ok if for access to the unprotected ideas Nonprofit educational purpose /nature of orignal work / the amount / the effect on potential value TRADESECRETS Intellectual Property Law Trade Secret Generally, a trade secret may be any formula, pattern, physical device, idea, process or compilation of information that both: (a) provides the owner of the information with a competitive advantage in the marketplace, and (b) is kept and safeguarded in a way that is expected to prevent the public or competitors from learning about it. Intellectual Property Law US Trade Secret Act 2016 A federal law that provides a civil cause of action in federal court for the misappropriation of trade secrets. It allows companies to protect their valuable trade secrets through legal remedies, including injunctions and damages, in cases of theft or misuse. Intellectual Property Law The Economic Espionage Act 1996 Criminal actions for theft to include all types of conversion of trade secrets including: 1. stealing, obtaining by fraud, or concealing such information; 2. without authorization copying, duplicating, sketching, drawing, photographing, downloading, uploading, photocopying, or mailing such information; 3. purchasing or possessing a trade secret with knowledge that it has been stolen. Theft of trade secrets, as well as attempts and conspiracies to steal secrets, with fines of up to $500,000, imprisonment for up to 10 years, or both. Organizations that violate the act are subject to fines of up to the greater of $5 million or three times the value of the stolen secret to the organization. Intellectual Property Law State Law State trade secrets law State commercial law / Misappropriation PATENTS Intellectual Property Law Patents Patents protect inventions. Inventions are a technical solution to a technical problem A technical problem may have more than one solution, thus several patents We never protect the idea of the solution. Patents protect the specific solution embodied in the patent A writing instrument http://www.ipwatchdog.com/ 2014/12/10/the-evolution-of- modern-ballpoint-pen-a-patent- history/id=52550/ Patents Utility Patent: …a new and useful process, machine, manifacture or any composition of matter General patent for products and processes Product claims: machines (apparatus or mechanical device), manufactures or composition of matter (chemical compounds, mechanical or physical mixtures and alloys) Process-Methods: series of steps to produce a given result (ie method of making a cappuccino) Method of making (method of making acetylsalicylique acid) Method of using (using compound to reduce inflammations) US has a design patent. Europe does not. Scope What can be patented? A product The apparatus for producing the product The process for producing the product The use of the product Example Product: A tire with a certain rubber composition or a certain tire pattern An apparatus for producing a tire: A machine vulcanizing a tire A process for producing a tire: The steps of producing the tire by bonding several layers to form a tire The use of the tire: For a car, a motorbike, a bicycle Example: Courtesy of Ms. Anıl Cetin What is excluded? Not an invention: Computer programmes Medical and surgical treatments Mathematical methods Business methods* Discoveries Aesthetic creations New species of plant or animal* The human body and any non-separate part/s thereof Inventions which are contrary to moral standards and public order PATENTS Patents provide a set of exclusive rights for a period of 20 years in countries where patent is granted (from date of application) Patents provide a “negative right”: Ie: Right to exclude One discloses his/her invention to public in exchange for this right There is no such thing as a worldwide patent! But ways to secure protection internationally PATENT REQUIREMENTS-General Novelty: Absolute novelty, previous written or oral disclosures will defeat this requirement Inventive Step: (non-obviousness). Applicability to industry Novelty Novelty: An invention is not novel if the claimed subject matter was disclosed or otherwise available to public prior to application or priority date. Prior art search is conducted Will a cook be able to make the soup? One of ordinary skill in the art Novelty The claimed invention is “new”  not found in a reference Identify the state of art—the universe of the prior art Identify whether one reference anticipates the patent (each and every element of the…) Enabling disclosure: Patent must be disclosed in a way to enable duplicating the invention, vs Prior enabling disclosures: Ex: Public use: Secret? Trade secrets? Inventive step Inventive step (non obviousness) New ok, but is it inventive? Given the state of art, is it obvious to someone skilled in the art? What is prior art? What problem does the invention purports to solve Based on what we know—is it obvious? Does what is previously known suggest—points towards the solution (attention: danger of hindsight) Inventive step Industrial application It can be “made & used”. Following are excluded: Inventions against to laws of nature, Ex: A perpetual motion machine Methods of treatment Artisanal type of works that leverage knowhow Others Who can file for a patent? Applicant vs. Inventor Employee inventions Who is an employee? Inventions made within the scope of one's duties Who holds the propriety interests on the patent? INTERNATIONAL APPLICATIONS Patent Cooperation Treaty (PCT) 1996: Legal protection from the date of application in country of origin (among the chosen countries member of PCT). This is the international priority date Application file goes onto International Office of WIPO PCT Open to all nations of Paris convention One application to seek protection in one or more member countries. Home application with a priority date OR Directly “international application” International publication w/i 18 months of priority date International report on patentability: prelim citations on prior art and a non-binding examination report….go/no go National stage: local prosecution (national laws)  Industrial design & Geographic indicators Intellectual Property Law Industrial Design Industrial design refers to the process of creating and developing designs for products that are to be manufactured through mass production processes. It involves the aesthetic and functional aspects of a product's design, focusing on improving its usability, ergonomics, and visual appeal to enhance its marketability and user experience Intellectual Property Law Geographic Indicator A geographic origin certificate, also known as a certificate of origin, is an official document issued by a competent authority or organization certifying the origin of goods. A certificate of origin may be used to protect geographical indications or appellations of origin for products with unique qualities or characteristics associated with a specific geographic location Licensing Licensing Agreement What is a License? A promise not to sue for infringement IP can be licensed Patents TM Copyrights License Trade secret? Know How? Geographic indicators? Purpose of license agreements Access to technology Leverage existing technology (carrot licensing) Further RD Royalty FTO, Not to be sued (stick licensing) Most research institutions will pursue carrot licensing unless a litigation prone ecosystem where universities will assert their rights and challenge industry (Stanford vs. Roche) Other: M&A, Divestiture, etc Technology diffusion And, more….much more  Intellectual Property Law Licensing for business strategy Blast from the Past  Movie recommendations Flash of Genius People v. Larry Flynt (+18) Enrico Piaggio: Un Sogno Italiano