IP Transactions
IP Ownership
· Copyright – Section 201 Copyright Act
o Right exists as soon as the work is recorded. Even if it is deleted (as long as you can prove).
o Rights
Copy
§ Modify
§ Distribute
§ Display
§ Perform
o Joint ownership
§ Both authors intend the products to be merged. You own half of the other person’s work.
o Collective work
§ Legally Blond musical – not written with the intent that they be merged. You don’t own half of the other person’s work.
o Work for hire doctrine
§ CCNV case
· If an EE creates a copyrighted work in the scope of employment, the ER owns it
· Key point: If independent contractor creates the work, the IC owns it.
o No matter how much you paid the IC. You need an agreement in writing for copyright purposes.
o Three separate concepts
§ Copyrighted work
· The actual book
§ The copyright
· The right to reproduce, sell, etc.
§ For software – the medium on which the work exists
· Patent – Section 116 of Patent Act
o Rights
§ Make
§ Use
§ Sell
§ Import
o No work for hire doctrine
§ You need to contract around – make them assign their IP to the company. Assign their “patentable inventions.”
§ Even if they’re an EE within the scope of their employment, they can patent work they did of you.
§ Exception:
· Hired to invent: If you hire someone to invent something and they do – the ER gets it
o But hard to prove they were hired to do the invention.
· Shop Right Doctrine: ER should get something for his or her money. They should get a free, non-exclusive right to use the IP internally. But not to actually ship a product to someone else.
o CA and IL have special assignment provision
§ CA Labor Code Section 2870-72
· An EE can’t be made to assign an invention on EE’s own time without tools from ER unless, it relates to the ER’s business or results from work performed for ER.
· ER must tell EE about 2870 statute to take advantage of it. Put in a 2870 notice.
· Trade Secret
o Rights
§ Use
§ Disclose
· Trademark
o Rights
§ Use in commerce
· Moral rights
o The author of the work has a moral, natural right to protect that work.
§ EU likes
EARS confidential forever (or for 3 more years)
· Definition of confidential information
· Filter/exclusion
· Enforceability / injunctive relief
First Sale Doctrine / Exhaustion doctrine
· Lawyer’s job is to defeat the first sale doctrine to maximize right
o “Say it’s a license”
· Section 109 of copyright Act
o Owner of a particular copy is entitled without authority of C owner to sell or otherwise dispose of that copy
· Patent – Exhaustion doctrine
o Once there’s been an authorized sale of a patented item, the purchaser may use or sell the item.
o Intel / HP / ULSI Story
· Challenge
o Prevents price discrimination
§ Can’t sell to law firms for $100 and students for $10
· Auto-Desk
o If you have a K that says it’s a license
o And
o The contract has notable use and distribution restrictions
o THEN
o It is a contract and not a sale
