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Spotting Intellectual Property Issues in Business Litigation
 

Spotting Intellectual Property Issues in Business Litigation

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    Spotting Intellectual Property Issues in Business Litigation Spotting Intellectual Property Issues in Business Litigation Presentation Transcript

    • Spotting Intellectual Property Issues in Business Litigation Idaho State Bar Intellectual Property Law Section May 10, 2007 John N. Zarian Stoel Rives LLP
    • Objectives • To introduce litigators to IP issues that can arise in business cases • To provide the civil litigator with basic tools for spotting IP issues • To provide a framework for spotting IP issues in business litigation 2
    • One Lawyer’s Epiphany • Started with case involving securities, contractual issues, corporate control • Ended with case involving patents, trade secrets and related IP claims 3
    • Importance of Intellectual Property • Today, intellectual property represents more than 85% of wealth in the largest U.S. companies. • In 1978, roughly 80% of U.S. corporate assets lay with tangible goods, with the remaining 20% resting in intangible goods such as intellectual property. By 1997, this ratio had shifted dramatically: tangible assets represented only 27% and intangible assets accounted for 73%. • In the modern economy, intellectual property is very often the key to success (or survival) of a business. • April 26, 2007- World Intellectual Property Day! (World Intellectual Property Organization, WIPO) 4
    • Importance of IP in Idaho • • • • • • 5 Science and technology is the largest industry in Idaho, representing 25% of the economy, 69% of exports, and more revenue than agriculture, forestry and mining combined. In 2006, Idaho ranked as one of the top 5 states for business startups, based on business data from 1999-2005. In 2005, Idaho ranked third in the nation in high tech exports as a percentage of total exports. In 2005, Idaho maintained its position as the state with the most patents awarded per capita. In 2005, Boise had 1,213 patents awarded to companies and individual inventors – more than Portland (784), Seattle (756) or San Francisco (1,022). In 2006, Boise had the 8th highest total patents in the U.S. – one of two non-California cities on the list. In 2006, The Wall Street Journal named Boise one of the 10 most “inventive” towns in the U.S.
    • What is Intellectual Property? • “Intellectual property” refers to creations of the mind. • Intellectual property (IP) is an umbrella term for various legal rights which attach to certain types of information, ideas, or other intangibles in their expressed form. • Two basic categories of intellectual property: – Copyright, including literary and artistic works such as novels, poems and plays, films, musical works, drawings, paintings, photographs, sculptures, and architectural designs. – “Industrial property,” which includes inventions (patents), trademarks, industrial designs, and trade secrets. 6
    • Distinguishing Other “Rights” • “Right of publicity” is the right to control and profit from the commercial use of one’s name, image and likeness • “Privacy rights” include the right to privacy of one’s person, behavior, communications, and personal data 7
    • Distinguishing Other “Property” • Confidential information is created or acquired, held in confidence, the improper disclosure of which would be harmful. • Best Practices • Potential Agreements: – Non-disclosure? – Non-competition? 8
    • What is a Copyright? • Protects the rights of a creator of an original work that has been fixed in a tangible form of expression • Gives owner exclusive rights (reproduce, prepare derivative works, distribute copies, perform/display) 9
    • Subject Matter of Copyright • • • • • • • • • Literary works, including novels and poetry Computer programs Musical works Dramatic works Pictorial, graphic and sculptural works Motion pictures Audiovisual works Sound recordings Architectural works 17 U.S.C. § 101, et seq. 10
    • Some Key Issues • • • • • • • 11 No Titles, Slogans, Ideas or Facts Automatically vesting Ownership of the Copyright Preemption Registration Fair use doctrine Works for hire
    • Copyright - Remedies • • • • • • • • • • • • • 12 InjunctionLost ProfitsReasonable RoyaltyDisgorge ProfitsHarm to ReputationCorrective MeasuresPunitive DamagesStatutory DamagesDestroy GoodsInterestCostsAttorney FeesCriminal Penalties- 502 504(b) 504(b) 504(c) 503(b) maybe 505 505 506(a), 2318
    • What is a Trade Secret? • Information not generally known or readily ascertainable, conferring economic benefit on holder, and secrecy protected by reasonable efforts. See Idaho Trade Secrets Act ("ITSA"), Idaho Code § 48-801, et seq. 13
    • Subject Matter of Trade Secrets • 14 Trade secrets can include such things as customer lists, food recipes, proprietary formulas, strategic business plans, genetic information, marketing strategies, R&D information, software codes, manufacturing processes, plans for drilling equipment, numeric equations, statistical analyses, price lists, customer information, and product design information.
    • Some Key Issues • • • • • • 15 A lot of things CAN be trade secrets Former and key employees Removal of records or property Preliminary injunctive relief Focus on economic value Focus on secrecy
    • Trade Secrets - Remedies • • • • • • • • • • • • • 16 InjunctionLost ProfitsReasonable RoyaltyDisgorge ProfitsHarm to ReputationCorrective MeasuresPunitive DamagesStatutory DamagesDestroy GoodsInterestCostsAttorney FeesCriminal Penalties- 48-802 48-803 48-803 48-803 maybe 48-803 48-806(3)
    • What is a Trademark? • Any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish his or her goods [or services] from those of others 17
    • Subject Matter of Trademark • • • • • • • 18 Ford “Thunderbird” “Delta” airlines and “Delta” toilets Chrysler “diamond star” emblem “Pink” fiberglass (Owens-Corning) Not become generic (“Aspirin”) Not merely descriptive Trade dress (Coca Cola bottle design)
    • Some Key Issues • • • • • • 19 Adoption and use in U.S. commerce Common law trademarks Registration (presumed valid) Interplay with USPTO proceedings Likelihood of confusion (famous marks) Willfulness and exceptional cases
    • Trademark - Remedies • • • • • • • • • • • • • 20 InjunctionLost ProfitsReasonable RoyaltyDisgorge ProfitsHarm to ReputationCorrective Measures“Punitive” DamagesStatutory DamagesDestroy GoodsInterestCostsAttorney FeesCriminal Penalties- 1116(a) 1117(a) 1117(a) 1117(a) 1117(a) 1117(a) 1117(a), 1116(d) 1117(c) 1116(d), 1118 maybe 1117(a)
    • What is a Patent? • Only the inventor may apply. • Invention must be new, useful, non-obvious. • A patent gives a person the right to exclude others from making, using, selling, offering to sell, or importing the claimed invention. 21
    • Subject Matter of Patents • Patentable subject matter – Process – Machine – Article of manufacture – Composition of matter • Improvements to any of these 22
    • Some Key Issues • • • • • • 23 Time to apply (1 year from disclosure) Independent development no defense Avoiding willfulness Notice / actual controversy (venue) Indemnities, distribution chains Interplay with USPTO proceedings
    • Patent - Remedies • • • • • • • • • • • • • 24 InjunctionLost ProfitsReasonable RoyaltyDisgorge ProfitsHarm to ReputationCorrective Measures“Punitive” DamagesStatutory DamagesDestroy GoodsInterestCostsAttorney FeesCriminal Penalties- 283 284 284 284 284 284 285
    • Spotting Intellectual Property Issues in Business Litigation THANK YOU! John N. Zarian Stoel Rives LLP 25