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

Intellectual Property Survey


Fall 2014

Trade Secret is the only IP issue that cares about how much you put into a product.

Natural Rights v. Financial incentive

Prof. says America does not really care about the moral rights of a creator; we follow the financial route

Copyrights and Patents DO NOT care how much work you put into a product- Judges will say that in cases (that people worked really hard on a thing) but it doesn’t matter! Policy reason is that we don’t want to have to get into the nitty gritty of defining a spectrum of who worked hard and who did not.


I. Source of Law

a. Copyright

i. Copyright and Patent Clause, as embodied in the Copyright Act

ii. Life of author+ 70 years; or 95 years after publication/ 120 years after creation if no “living” author

b. Patent

i. Copyright and Patent Clause, as embodied in the Patent Act

ii. 20 years with some extensions of up to 5 years available; 14 years for design patents

iii. Copyright and Patent should be grouped together- they have a restriction that they are for science and the useful arts- stems from the Constitution.

c. Trade Secret

i. State Law

ii. Perpetual, unless it becomes public knowledge

d. Trademark

i. Commerce Clause, as embodied in the Lanham Act

ii. Perpetual, unless it is abandoned

1. Abandoned= 5 years w/o use or “intent to abandon”- also can argue “failure to police” i.e. failure to make sure that other people aren’t using it.

II. Trade Secrets (page 25)

a. What is a Trade Secret?

i. Any formula, pattern, compilation, program, device, method, technique, process

ii. Cannot be generally known or available

iii. You must make reasonable efforts to maintain its secrecy

iv. It must have commercial value

v. It is okay to discover independently or to reverse engineer it

1. Independent discover under a patent would protect against reverse engineering but it only lasts 20 years

III. Trademark (page 30)

a. What is a trademark?

i. Anything can be a trademarked—except

1. Functional features, descriptive terms (w/o 2nd meaning), geographic names (w/o 2nd meaning), misleading aspects, or generic names

ii. Must be distinctive

1. Once it becomes generic e.g. thermos & zipper you can lose the trademark!

2. Also another reason corporations police the market

iii. You can have a trademark in a descriptive or geographic term if it’s developed secondary meaning

iv. To have trademark protection, you must be using your trademark in commerce

1. We don’t let you protect something you aren’t actually using

2. You can protect a trademark that is “intent to be used” while you get your financials in order before you enter the market

v. Federal trademark registration is not necessary to obtain TM protection

vi. We will let other people use your trademark if it’s a truthful reflection of the source of the product

1. Best Buy advertising they sell Dell computers

vii. We will also let other people use your trademark for “fair and collateral use”

1. I can talk online through product reviews of Dell computers

viii. Likelihood of confusion

1. The higher the likelihood of confusion the higher chance of infringement

2. If high level of confusion, TM owner is entitled to an injunction against the confusing use, damages for past infringement, in some cases seizure and destruction of infringing goods

IV. Patents (page 29)

a. What is a patent?

i. Process, machine, manufacture, composition of matter, plant, or design

1. Except laws of nature, natural substances, forms and mental steps

a. No patent in DNA – recent SCOTUS case

ii. Invention must be novel

iii. Must be nonobvious

iv. Must have some utility

v. Only way someone can use your invention is to license it

1. Cannot reverse engineer or independently discover

2. Patents are only 20 years- pharmaceutical companies are constantly filing patents, however Coca-Cola finds that it makes more sense to have a trade secret filed

V. Copyrights (page 29)

a. What is copyright?

i. Literary musical, choreographic, dramatic, artistic works, computer software, aesthetic elements of useful articles

1. All about artistic expression

ii. You cannot copyright an idea/ system/ method/ procedure, only the expression

1. You cannot have copyright on “civil war fiction” but you can copyright Gone with the Wind

2. You cannot have copyright on facts but can if the facts are compiled and organized in a specific way

iii. Your expression must be original

iv. You must be the author of that expression

v. It must be fixed in a tangible medium

vi. Others can use your expression in certain circumstances known as “fair use”

vii. Independent creation is permitted

viii. Much easier to pass than patent or trademark. You literally just sign an affidavit form and send it in to somebody, and also, a copyright exists the moment it is created. Your rights vest as soon as you create the expression.

b. Test for whether it was copied:

i. Access: Courts infer copying from proof that the D has had access to the P’s work

ii. Similarity: Evidence that the two works are similar. Even if copying is established, it must be further shown that the D’s work is substantially similar to protected elements of the P’s work.


TRADE SECRETS (Pages 33-122)

· Why do we need trade secret protection?

· If the law doesn’t back it up people will go to great lengths to protect their secrets

· To encourage innovation/creating information rather than stealing from others

· Opposition:

· Discourages employee mobility – if you know too much you can’t leave the company

· Cant it be protected through other laws

· Elements of a Trade Secret Claim (page 37)

· (1) The subject matter must be secret – not generally known to all

· (2) The

· The precautions they took:

· Information was in a vault only accessible by authorized employees,

· To use the plans/patters you had to sign them out,

· Employees and customers signed non-disclosure agreements,

· Copies were given to vendors/customers but were stamped and subject to non-disclosure,

· This is why they lost below, because these drawings were everywhere

· On appeal:

· Reversed in favor of R; finds misappropriation; it was reasonable for R to share the information b/c it was only in situations where there was economic value, it would be unproductive or against progress to say R had to not at all share the information – says question for the jury – (think: if reasonableness always has to go to the jury litigation costs skyrocket)

· Posner is focused on the Utilitarian Theory:

· “If trade secrets are protected only if their owners take extravagant, productivity- impairing measures to maintain their secrecy, the incentive to invest resources in discovering more efficient methods of production will be reduced, and with it the amount of invention…”

· 3. Disclosure of Trade Secrets (page 58)

· Data General Corp. v. Digital Computer Controls, Inc. (page 58)

· DG gave customers design drawings with purchased computers so customers could repair. Non-disclosure agreements were signed by all DG customers; a customer of DG sold the computer and drawings to a third party who then started producing the computers

· DG seeking prelim-injunction, D seeking summary judgment

· Court: no prelim-inj. b/c it wasn’t clear enough to say that the P would win at the end of the day (preliminary injunction is end game.)

· Now the most they can hope for is an injunction to last long enough for the D to reverse engineer so the court says well what are you looking for? They can reverse engineer so there really is no remedy. (Why didn’t they have a patent? it takes a long time and would be disclosed to all if patent is denied)

· Subject Matter TAKEAWAY:

· “Information” is very broad – can be formulas, customer lists, designs, programs, etc.

· Cannot be “generally known” to those who could obtain economic value from it

· Cannot be “readily ascertainable” (Data Gen.)

· Once the trade secret is disclosed, you lose trade secret protect (sometimes sale of the product is disclosure; and think in litigation of having protective order b/c if you have to produce in discovery you loose your trade secret)