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Updates to Copyright and Trade Secrets

Updates to Copyright and Trade Secrets

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  • Trade secrets are not insignificant - DuPont Won a $919.9 Million Award in a Trade Secret Case Against Kolon Industries for information regarding DuPont Kevlar aramid fiber (known for its use in body armor, but is also used in tires, fiber optic cables, sports equipment, and spacesuits.) http:// www.wgmd.com/?p =34945&cpage=1
  • Reasonable Efforts to Maintain Secrecy – It is difficult to articulate the efforts required to protect the confidentiality of the information, since the standard is one of reasonableness.
  • Conduct exit interviews to confirm understanding about continued confidentiality and to ensure employee has returned all trade secret materials to which he or she had possession.
  • Misappropriation is the wrongful acquisition, disclosure, or use of a trade secret. ; “Improper Means” in Indiana includes Theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means Ind. Code. Sec. 24-2-3-2
  • AIRFRAME SYSTEMS, INC., f/k/a Airline Software, Inc., Plaintiff, Appellant/Cross-Appellee, v. L-3 COMMUNICATIONS CORPORATION, Defendant, Appellee/Cross-Appellant, and RAYTHEON COMPANY, Defendant. (1 st Cir. 2011) - Airframe alleged copyright infringement of a 2009 version of its source code, but could not produce a copy of that code. Instead, Airframe compared the allegedly infringing copy to an updated 2009 version. 1 st Cir. held that Airframe could not prove that there was “substantial similarity” between L-3’s source code and the source code that was allegedly infringed.
  • 304(c) and (d) allow authors or statutory successors to terminate pre-1978 grants by AFFIRMATIVELY serving notice of termination, effective within 5-yr windows
  • As of the date of the copyright act, which is 1/1/1978
  • - Remember that a grant by person other than an author must follow an earlier grant by the author
  • In response to Sonny Bono CTEA of 1998, adding 20 more years, gave author second bite at the apple
  • Assume copyright secured 3/1/1956 5 yr window opens 3/1/2012 5 yr window closes 3/1/2017 Effective date within 5yr window (arbitrary) 8/1/2013 Time to serve notice: 8/1/2003 – 7-31-2011
  • WFH - If in business of acquiring other artists works, advantageous to get agreement as work for hire rather later grant Derivative works - If know termination is approaching, can still exploit that work by creating derivatives prior to effective date
  • Twist: Effectively gives Grantee 5 yr grace-period to publish before clock starts
  • Ways to get around termination rights *1 -new agreement can’t be with author *2 –exercise of unilateral right, not agreement – explicitly contemplated by Congress, evidenced by legislative history re-negotiation after notice of termination: specifically contemplated by Congress (legislative history) Work can be transferred back to original grantee AFTER notice of termination becomes effective, even BEFORE termination becomes effective – “ termination notice” is not an “agreement”, but is a unilateral right WFH – comes with authorship rights, not subject to termination
  • *2 – successors could use as bargaining tool for new royalty rates, or

Midwest ip summit_copyright_trade_secret_handouts_2011_mmm Midwest ip summit_copyright_trade_secret_handouts_2011_mmm Presentation Transcript

  • Trade Secrets & Copyrights Mike Morris
  • Overview
    • Trade secret refresher
    • Copyright refresher
    • Termination of Copyright Transfers
    • Thanks to the following for their contributions:
    • John McNett
    • Braden Duffin
    • Professor Marshall Leaffer
  • Trade Secrets
    • = information
    Neither the form of the information nor the media on which the information is stored matters: written; human memory; electronic; physical sample, etc.
  • Trade Secrets
    • Under the Uniform Trade Secrets Act, adopted by 45 states including IN, a trade secret is information including a formula, pattern, compilation, program, device, method , technique , or process that:
      • (1) derives independent economic value , actual or potential, from not being known or readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use; and
      • (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy
  • Examples of Trade Secrets
    • Manufacturing methods, jigs, processes
    • Formulas
    • Customer lists
    • Customer preferences
    • Material composition
    • Computer code
    • Engineering drawings, specs, changes
    • Pricing, cost & profit information
    • Data compilations
    • Information re: regulatory approval
    • Failures; what did not work
    • Bids
    • Lab notebooks, meeting minutes
    • Legal information
    • Vendor & raw material identification, pricing, etc.
    • Testing and QC procedures
  • Examples Of Efforts That Are “Reasonable” to Maintain Secrecy
    • Confidentiality agreements
      • Vendors and contractors
      • Employees
      • Visitors
    • Security alarms, systems
    • Restrict computer access (user groups, limited authorization, passwords)
    • Legends on documents: “Confidential” or “Trade Secret”
    • Limit tours and other access
    • Visitor sign-in log
    • Compartmentalize information: access given on a “need to know” basis
    Courts look at what efforts you undertook – be active, not passive.
  • Trade Secrets vs. Patents
    • Trade Secrets
    • Establishment:
      • Procedures to limit access
      • Notice to those with access
      • Immediately Enforceable
    • Duration:
      • Can potentially last forever
    • Patents
    • Establishment:
      • Filing application with USPTO
      • Expensive
      • Delay in effective date
    • Duration:
      • Statutory term (20yrs. from filing + PTA)
  • Trade Secrets vs. Patents
    • Trade Secrets
    • Scope:
      • Trade secrets apply only to persons who have a duty with the owner, either by contract or by custom.
        • Employees
        • Vendors
      • Can be defined at time of litigation
    • Patents
    • Scope:
      • Only applies to geographic territory (i.e., country by country)
      • Limited number of claims
      • Often drafted years before party is targeted for infringement suit
  • Trade Secrets vs. Patents
    • Trade Secrets
    • Statute of Limitations
      • 3 years in IN and most states
    • Ownership:
      • Multiple parties can separately own trade secrets in the same information
    • Patents
    • Statute of Limitations
      • 6 years before laches issues
    • Ownership:
      • Only one patent can have a particular patent claim
  • Trade Secrets
    • Remedies
      • Damages (including punitive damages)
      • Injunctions
      • Attorney fees (if bad faith or willful and malicious misappropriation)
    • No trade secret violation if:
      • Information is in the public domain (known or “readily ascertainable”)
      • Someone independently develops
      • Purchased from legitimate 3 rd party
      • Information is obtained through reverse engineering
  • UTSA - Misappropriation
    • (a) acquisition of a TS of another by a person who knows or has reason to know that the TS was acquired by improper means OR
    • (b) disclosure or use of a TS of another without express or implied consent by a person who:
      • Used improper means to acquire knowledge of TS
      • At time of disclosure, knew or had reason to know his knowledge of TS was:
      • Derived from person who used improper means to acquire it
      • Acquired under circumstances giving rise to duty of secrecy; OR
      • Derived from or through a person who owed a duty to maintain secrecy; or
    • (c) before a material change in his position, knew or had reason to know that it was a trade secret and knowledge of it had been acquired by accident or mistake.
  • Confidentiality Agreements
    • Before disclosing, have him/her sign a confidentiality agreement.
    • Disclose only on a need to know basis.
    • Reclaim possession of documents afterwards.
    • Beware : duration clauses (“this Agreement shall be for a term of three (3) years…”) create a strong argument that the information is no longer confidential thereafter.
    • Also get a noncompetition agreement!
  • Copyrights Protecting Original Works of Authorship
  • Copyrights
    • What is a copyright? – “original works of authorship fixed in any tangible medium of expression …”
    • Only the “expression” is protectable, not the underlying idea itself.
    • Ideas, methods, discoveries and machines are not copyrightable (they may be patentable).
    • Titles and slogans are not copyrightable (they may be trademarks) – but logo artwork is copyrightable.
    • Pure information is not copyrightable (phone book; raw data).
  • Copyrights Are Most Helpful if Registered Early
    • Copyrights automatically come into being when the work is created.
    • Registration is not required, but is strongly recommended (particularly if value or creation time/effort/expense is great).
  • Federal Copyright Registration – How To Obtain
    • Old Method:
      • Fill out a paper form (TX, VA, SR, SE, or PA) and send it to the U.S. Copyright Office along with the required fee and two copies of the work.
      • $65 filing fee ($50 for Fill-In Form CO)
      • 11 month minimum processing time
      • Check or money order
    • Preferred Method:
      • eCO Online System (launched June 2008)
      • $35 fee for basic claims
      • 3 month minimum processing time
      • Credit card, debit card, electronic check, or Copyright Office deposit account
  • Federal Copyright Registration
    • Has several advantages:
      • Provides proof of creation date
      • Required before bringing copyright infringement action in court
      • If registration is applied for within 5 years of publication, registration will establish a legal presumption of validity and ownership.
      • If registration is made within 3 months after publication or prior to infringement , statutory damages and attorneys’ fees are available to copyright owner.
      • Otherwise, only award of actual damages and profits is available to copyright owner— no attorneys’ fees .
    • Register early and often for different versions
  • Copyright Notice
    • Optional today, but strongly recommended
      • Extensive use of helps show willful infringement
    • Notice = Symbol + Year of 1 st publication + Name of owner:
        • © 2010 Jones Industries, Inc.
        • Copyright 2010 Jones Industries, Inc.
    • Required for statutory damages and attorneys’ fees
    Notice is optional. §§ 401-404. Lack of notice may allow reduction in amount of statutory damages for innocent infringers. §§ 401(d), 402(d) Notice required for all published works. If work published w/out notice, copyright owner had to comply with 5-year cure provisions to avoid placing work in public domain. § 405(a). See also § 104A regarding TRIPS restoration of foreign copyrights. Federal protection began upon general publication with proper notice. Publication without proper notice placed work in public domain. §§ 10, 19 (1909 Act). See also § 104A (1976 Act) regarding restoration of foreign copyright under TRIPS. For works published on or after 3/1/1989 For works published on or after 1/1/1978 and before 3/1/1989 For works published before 1/1/1978
  • Categories of Works
    • 17 U.S.C. § 102(a) :
      • Literary works;
      • Musical works, including any accompanying words;
      • Dramatic works, including any accompanying music;
      • Pantomimes and choreographic works;
      • Pictorial, graphic, and sculptural works;
      • Motion pictures and other audiovisual works;
      • Sound records; and
      • Architectural works.
    • 17 U.S.C. § 102(b) :
      • Does not extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form
  • What Rights are in a Copyright?
    • Exclusive Rights (17 U.S.C. § 106) :
      • Reproduction
      • Adaptation (derivative works)
      • Public distribution of copies (sale, rental, lease, & lending)
      • Public performance
        • Does not apply to sound recordings
      • Public display
        • Does not apply to architectural works
          • © in architectural works also does not include pictures, photographs or other pictorial representations of the work (note: this is only a U.S. limitation)
      • Digital audio transmission of sound recording(s)
      • Moral rights (not in § 106)
        • Integrity, Attribution, and Disclosure
        • Very limited - adopted in a piecemeal fashion
        • § 106A such as VARA (Visual Artists Rights Act of 1990)
  • Ownership
    • Unlike patents and trade secrets:
      • no joint owner may license a third party without consent of the other joint owners, and
      • all royalty income is shared equally among the owners, absent an agreement to the contrary.
    • A work created by a person belongs to that person unless it was:
      • within the scope of the person’s employment, or
      • subject to a contrary agreement which clearly characterizes the work as a “work for hire”, or . . .
  • Work Made for Hire
      • [a work is not a work for hire unless it is] specially ordered or commissioned for use as:
        • a contribution to a collective work
        • a compilation, or an atlas
        • a supplementary work
        • a part of a motion picture, a sound recording or other audiovisual work
        • a translation
        • an instructional text, a test or answer material for a test
      • Merely saying something is a “work made for hire” does not make it so
  • Remedies
    • Injunction:
      • Stop selling order from a court
      • Destruction of infringing inventory
    • Actual damages and infringer’s profits
    • Statutory Damages:
      • $750 ≤ x ≤ $30,000 per work
        • (all parts of a compilation or derivative work constitute one work for statutory damages)
        • $200 per work min. if innocent infringer
      • $150,000 per work max. for willful infringement
    • Costs (regardless of registration)
    • Attorneys’ fees (only if timely registered)
  • Copyright Duration—for works created today
    • For works originally created on or after January 1, 1978, a copyright lasts for:
      • 70 years after the last surviving author’s death, unless …
      • If “work for hire” or if anonymous, then 95 years from publication or 120 years from creation, whichever is shorter.
  • Copyright Duration From Copyright Law , sixth edition, Joyce, Leaffer, Jaszi, Ochoa. Used with permission. Renewal term of 67 years, but only if renewal was properly obtained Automatic renewal term of 67 years (renewal registration is optional but incentives attach to renewal registration) Work is now in the public domain N/A N/A Works Published Before 1923 28-year first term Dual term When work was published with notice Works Published between 1923 and 1963 28-year first term Dual term When work was published with notice Works Published Between 1964 and 1977 Same as above, at least through 12/31/2002, if the work remained unpublished as of that date, or until 12/31/2047 if the work was published before 1/1/2003 Unitary Federal protection began on 1/1/78 Works Created but not Published Before 1/1/78 Basic-term: Life of the author (or last-surviving author for joint works) plus 70 years Alternative term for anonymous or pseudonymous works, or works made for hire: 95 years from publication or 120 years from creation, whichever is shorter Unitary When work was fixed in a tangible medium of expression Works Created On or After 1/1/78 Length of Term Nature of Term Date of Protection DURATION AFTER THE CTEA
  • After 1976 Act
    • Congress chose to give the author and statutory successors the chance to recover some of the extended renewal term for pre-1978 works and part of the copyright term for post-1978 works
    • Under the 1976 Act, the author and statutory successors (spouse, children, etc.) were given a right under §§ 304(c) and (d) to terminate pre-1978 grants to recover some of the extended renewal term for pre-1978 works
    • Under the 1976 Act, the author and statutory successors given rights under §203(a) to terminate post-1978 grants made by author
    • Sections 304 (c) and (d) allow statutory successors to terminate pre-1978 assignments and exclusive or non-exclusive licenses of the renewal term of copyright, or any right under it, by affirmatively serving notice of termination effective within specified 5-year windows
    • Copyrights to which termination under §§ 304(c), (d) applies:
      • Works “subsisting in either [their] first or renewal term” as of 1/1/78
    • Grants subject to termination under §§ 304(c), (d):
      • Executed prior to 1/1/78
      • by the author or, after author’s death, by the author’s statutory successors (i.e., spouse or children/ executors/ next of kin)
    • Who can terminate under §§ 304(c), (d) :
      • For grants by author: author, surviving spouse, children, grandchildren, estate, can terminate
        • In case of joint works: either author (or successors) can terminate the particular author’s share
      • For grants by persons other than the author: surviving person(s) who executed it can terminate
  • § 304(c) Provides for termination of grants with effective dates from the end of the 56th year through the 61st year (the first 5-year window) measured from the date copyright was originally secured .
    • §304(d)
    • Limited second chance: § 304(d) provides for termination of grants during a period from the end of 75 years through the 80th year (a second 5-year window) measured from the date copyright was originally secured – but only for copyrights secured on or between 1/1/1923 and 10/26/1939 (37 CFR § 201.10)
    • Sections 304(c) and (d) both provide that notice must be served between 2 years and 10 years (8-year window) before the effective date of termination, and the effective date must occur within the relevant 5-year window
    2 yrs 8-year window 5-year window
  • Example
    • Assume copyright date of 11/18/1951
    • 5yr termination window 11/18/2008 to 11/17/2013
    • Must serve notice between 11/18/1998 to 11/17/2011
    11/18/1998 11/17/2006 11/17/2011 11/17/2013 11/18/2008 11/18/2008 2 yrs 8-year window 5-year window
  • Major exceptions to §§ 304(c), (d) termination mechanisms
    • Grants related to works for hire can not be terminated
    • Dispositions by will can not be terminated
    • Derivative works created prior to effective date of termination can still be utilized under terms of the grant after termination
    • Exploitation outside of U.S.A unaffected
    • Non-copyright grants (e.g., trademark rights or publicity rights), even in the same agreement as a terminated copyright grant, can not be terminated
  • In 2013 another termination window opens
    • §203(a) provides a right of termination for post-1978 grants made by author (applicable both to pre-1978 and post-1978 works ) with a 5-year window open from the end of the 35th year through the 40th year measured from the date of the grant .
    • The twist: If the grant covers the right of publication of the work, effective date must occur between (i) the end of the 35th year through the 40th year measured from the date of publication OR (ii) the end of the 40th year through the 45th year measured from the date of execution of the grant , whichever ends earlier.
  • § 203(a)
    • Same advance notice as in § 304(c) and (d):
    • The § 203(a) 5-year window opens for the first time in 2013 (1978 + 35 = 2013)
    • Termination notices can be sent now for effective dates in 2013-2021 (2-10 yrs)
    • Same exceptions as in § 304(c) and (d)
    • Who can terminate under § 203(a)?
    • Author if alive
    • If author is dead: the author’s statutory successors (including surviving spouse, children and grandchildren/or executor, administrator, personal representative or trustee)
  • § 203(a)
    • Important differences from §§ 304(c), (d):
    • Under § 203(a) the grant to be terminated must have been executed after January 1, 1978 by the author
    • For joint grants of joint works, majority of joint authors (or respective/successors) must terminate
  • Comparison of §203(a) and § 304(c) and (d) Majority of joint authors can terminate Either joint author can terminate Author/successors can terminate Author/successors or surviving persons who executed grant can terminate Applies to grants by authors only Applies to grants by authors and others Measure from date grant executed Measure from date copyright secured Post-1978 grants Pre-1978 grants §203 §304
  • Ways to get around termination rights
    • Negotiate a new post-1978 agreement with a party other than the author (not subject to termination under § 304 or § 203) that revokes and replaces the pre-1978 contract that’s subject to termination ( Milne, Steinbeck )
    • Serve timely notice of termination followed by prompt sale of terminated interest back to grantor – termination is not “agreement” but exercise of unilateral right
    • Devise by will
    • Work for hire
  • Takeaway
    • New window opening in 2013 offers new opportunities for works subject to post-1978 grants
    • Termination rules are complicated but potentially rewarding to author and successors
    • During 2-10 year periods when termination notices may be sent, re-negotiation and a new grant may make more sense (send notice then transfer rights)
    • Re-negotiations could cancel previous grant and remove option for termination of grant ( Milne, Steinbeck )
  • Takeaway
    • Original parties (must include author) can anytime re-negotiate and reset the 35 year clock – does not eliminate termination right, only postpones
    • Best practice for businesses seeking rights in a work is to acquire the work as a work for hire
    • If termination is imminent, can create derivative works prior to effective date and exploit after effective date
  • Questions