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Intellectual Property
University of Mississippi School of Law
Lantagne, Stacey M.

Intellectual Property
Professor Lantagne
Fall 2015
Introduction: Overview of IP – Doctrines and Theories
[08/24/2015] I.            Hypotheses Slides—
A.     Hypo #1
                                                  i.      One has the ability to sue for patent of the formula.
B.     Hypo #2
                                                  i.      One has the ability to sue the former employee for a trade secret violation.
                                                ii.      One has the ability to sue the nonprofit organization for trade mark infringement.
                                              iii.      One has the ability to sue the New England Journal of Medicine for knowingly obtaining a good or information of such which is a trade secret violation.
C.     Hypo #3
                                                  i.      One may advise that from a public relations perspective, it would not be smart to sue the tribespeople.
                                                ii.      If the tribespeople have a right to sing the song, then copyright may not exist; therefore, allowing for copies and performances of the song.
II.            Source of Law Chart—
Trade Secret
Copyright and Patent Clause, as embodied in the Copyright Act
Copyright and Patent Clause, as embodied in the Patent Act
State Law
Commerce Clause, as embodied in the Lanham Act
Life of the author plus seventy (70) years; or ninety-five (95) years after publication/ 120 years after creation if no “living” author
Twenty (20) years with some extensions of up to five (5) years available; fourteen (14) years for design patents
Perpetual, unless it becomes public knowledge
Perpetual, unless it is abandoned
III.            Elements of a Trade Secret—
A.     First and foremost, it must be a SECRET!!!
B.     May consist of anything from a formula, pattern, compilation, program, device, method, technique, process, etc.
C.     Cannot be generally known or available
D.     You must make reasonable efforts to maintain its secrecy
E.      It must have commercial value
                                                  i.      The public must want it. We will not push for the protection of something that no one wants to begin with.
F.      It’s okay to discover independently or to reverse engineer
                                                  i.      To reverse engineer is to take something such as a formula and reverse it to its beginning stages of development in order to understand its structure/make up
IV.            Elements of Trademarks—
A.     Trademarks cannot be functional features, descriptive terms, geographic names, misleading aspects, or generic names.
B.     Trademarks have to be distinctive/original to one’s brand (i.e. – Jordan’s Jump Man, Nike’s Swoosh.)
C.     You can have a trademark in a descriptive or geographic term if it’s developed secondary meaning.
                                                  i.      Secondary meaning refers to anything other than its original meaning.
D.     To have trademark protection, you must be using your trademark in commerce—comes from the commerce clause.
E.      We will let other people use your trademark if it’s a truthful reflection of the source of the product.
F.      We will also let other people use your trademark for “fair and collateral use.”
                                                  i.      Others can use it as long as they are not trying to portray themselves as being the company they are mentioning.
1.      Likelihood of confusion
V.            Elements of Patents—
A.     Process, machine, manufacture, composition of matter, plant, or design, except laws of nature, natural substances, forms, and mental steps.
B.     Your invention must be novel, nonobvious, and have some utility.
C.     The only way anyone can use your invention is to license it –they cannot reverse engineer or independently discover it.
D.     Patents grant a property right to an inventor by USPTO; include excluding others from using/selling the invention – government sanctioned monopoly.
E.      Take approximately two years to obtain.
VI.            Elements of Copyright—
A.     From a Constitutional Aspect
                                                  i.      “The Congress shall have Power… 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….” (U.S. Const. art. I, § 8.)
B.     Copyright protection laws cover literary musical, choreographic, dramatic, and artistic works, computer software, aesthetic elements of useful articles, etc.
C.     You cannot copyright an idea / system / method / procedure, only the expression.
D.     Your expression must be original, must be the author of that expression, in a tangible medium.
                                                  i.      Tangible medium refers to the existence of the idea in a manner that is obtainable and exists outside of one’s mind.
E.      Others can use your expression in certain circumstances known as “fair use.”
F.      Independent creation is permitted meaning if one comes up with the exact same idea, on their own, they can have rights to it.
                                                  i.      First come, first serve.
Unit I: Trade Secrets
[08.26.15]—Subject Matter and Misappropriation
I.            Elements of a Trade Secret Claim {State Law}—
A.     The subject matter must be a secret – not generally known to all.
B.     The holder of the trade secret must have taken reasonable precautions under the circumstances to prevent its disclosure.
                                                  i.      Evidence of the trade secret’s value
                                                ii.      Evidence that the defendant probably obtained it wrongfully
C.     The defendant acquired the trade secret acquired the trade secret wrongfully.
II.            Compl. & Jury Demand ¶¶ 51-55, Optos, Inc. v. Topcon Med. Sys., Inc., No. 110CV12016 (D. Mass. Nov. 22, 2010) à Sample Complaintß
A.     Count III— Theft or Misappropriation of Trade Secrets
51• Optos‘s confidential and proprietary information, including its customer lists and information about its customer contracts, constitutes trade secret information.
52• Optos took reasonable steps to preserve the secrecy of these trade secrets, including by limiting access to this information and requiring every employee to sign a nondisclosure and confidentiality agreement.
53• Schafer employed improper means, in breach of his c

f the trade secret was
a.       Derived from or through a person who had utilized improper means to acquire it;
b.      Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or
c.       Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or
3.      Before a material change of his position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake. . . .”
C.     “‘Improper means’ includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.”
Case #4— E.I. DuPont de Nemours & Co. v. Christopher, 431 F.2d 1012—pg. 66
§  Photographers flew over a factory being built to steal trade secrets.
§  “We should not require a person or corporation to take unreasonable precautions to prevent another from doing that which he ought not do in the first place . . . . ‘[T]hou shall not appropriate a trade secret through deviousness under circumstances in which countervailing defenses are not reasonably available.”
v   The court points out that reverse engineering is allowed, but this is too devious to be acceptable.
v   This is a short cut around reverse engineering.
VII.            How can you create a Confidential Relationship?—
A.     Express—make people sign contracts agreeing to keep certain information confidential
B.     Implied
C.     Restatement—
                                                  i.      The person made an express promise of confidentiality prior to the disclosure of the trade secret; or
                                                ii.      The trade secret was disclosed to the person under circumstances in which the relationship between the parties to the disclosure or the other facts surrounding the disclosure justify the conclusions that, at the time of the disclosure,
1.      The person knew or had reason to know that the disclosure was intended to be in confidence, and
2.      The other party to the disclosure was reasonable in inferring that the person consented to an obligation of confidentiality.
Case #5— Smith v. Dravo Corp., 203 F.2d 369 (7th Cir. 1953)—pg. 70
§  P created a shipping container trade secret that was going to be sold to D, but D never signed an agreement to keep this trade secret confidential.
v  P had to argue that the confidential relationship was implied.
§  The Court applies the commercial morality standard, because the negotiation implied a confidential relationship.
v  This case gives no discussion on whether there was actually a trade secret to begin with.