protecting other forms of ip

7/28/2019 Protecting Other Forms of IP

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Protecting Other forms of IP

Sandeep Hegde M.

Managing AssociateBrain League


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IP Beyond Patents

Trade Secrets

Industrial Design

Copyright10-06-2013 Copyright- Brain League 2013


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What is a Trade Secret?

Any information which:

Has commercial value

Is not generally known

Is not readily ascertainable; and

Is the subject of reasonable efforts to maintain secrecy

Ex: Computer program, Market data, technicalknow-how, device, formula, business method, etc.

10-06-2013 Copyright- Brain League 2013


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Reasonable Measures toMaintain Secrecy

Agreements Physical Security

Confidentiality Notices

Information Security

Copyright- Brain League 201310-06-2013


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Agreements: NDA

Definitions

Confidential Information

Purpose

Confidentiality Obligations

Term and Termination



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Agreements

Employees obligation to maintain secrecy

Secrecy obligations survive termination ofContract

Validity of Non-compete clauses



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Physical and InformationSecurity

Entry and exit restrictions

Surveillance camera

Clean Desk Firewalls and Password Protection

Email restrictions

Storage device and camera restrictions



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Misappropriation

Acquisition by Improper Means

Use of others trade secret without consent

Derived from a person who has acquired byImproper means

Derived from a person having duty to maintain

secrecy Accident or Mistake



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Exceptions

Discovery by fair and honest means

Independent Invention

Lawful acquisition of information Reverse Engineering



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Remedies

Injunction

Damages

Profits Reasonable Royalties

Criminal Action



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Cases (INDIA)

John Richard Brady v. Chemical Process Equipments (Delhi HC)1987

Anil Gupta v. Kunal Dasgupta (Delhi HC) 2002


Plaintiff approached defendant to supply thermal units

for their new fodder manufacturing plant and shared

designs of the plant without any NDA. Defendantmisappropriated the designs. Court found in favor of the

plaintiffs citing implied obligation of confidentiality

Plot, concept and idea of an unpublished TV reality show

by the plaintiff was held to be a trade secret and

defendant was found guilty of misappropriation


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Protection Strategy- Patents v. TS

Inventions

Copyright- Brain League 2013

Patentable Non-patentable Doubtfully patentable

Protect as

Trade Secrets

Protect as Trade

Secrets

Business Decision

10-06-2013


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Factors to be Considered

Possibility of Independent Creation

Possibility of Successful Reverse Engineering

Number of Competitors working on theinvention

Shelf life of the invention

Number of patents relating to the invention



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Creative Expression:COPYRIGHTS

Ideas Expressed in Tangible form

Protects Expression and not the Idea

Recognized Forms

10-06-2013

Dramatic WorkLiterary Work Musical WorkArtistic Work

PhotographsSound RecordingCinematograph

Film Copyright- Brain League 2013


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Copyrights:

Idea/Expression Dichotomy

Tangible Form

Originality and Modicum of creativity

Term - Life plus 60 years

10-06-2013Copyright- Brain League 2013


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Rights granted

Economic Rights

Reproduction

Distribution

Adaptation and Translation Modification

Public Communication and Public Performance

Neighboring Rights

Performers Rights

Moral Rights

Broadcasters Rights



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Term of CopyrightTYPE OF COPYRIGHTS TERM

Literary Work Life of the Author plus 60 years

Artistic Work Life of the Author plus 60 years

Musical Work Life of the Author plus 60 years

Dramatic Work Life of the Author plus 60 years

Sound Recording 60 years from the date of Publication

Cinematograph Film 60 years from the date of Publication

Photograph Life of the Author plus 60 years



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Registration

Inherent Right

Registration not mandatory

Registration certificate is prima facie evidence Necessary for enforcement in USA

Bombay High Court Mandate

Dhiraj Dharamdas Dewani v. M/s Sonal Info Systems Pvt. Ltd



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Copyright Infringement

Exercise of exclusive rights without permission

Identical/Substantially Similar

Look and feel test

Abstraction-Filtration-Comparison test



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Illustration 2

Xerox Shop at a University library copies and

sells course materials taken from different

prescribed books. The publishers of the book

sue the University for copyright infringement.

What do you think?


Photocopy


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Fair Use

List of exceptions for Copyright Infringement

Includes use of copyright work for

Educational purposes

Research Purposes

News/Current events reporting

Parody, Criticism



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Remedies

Damages

Accounts of Profit

Injunction Criminal Actions



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Creative Expression: Designs

Any aesthetic design that- Is new

Is original

Is not functional

Is Capable of industrial application utility articles

Term: 5 years and renewable twice

Originally subject of Copyrights Rights- To make, copy, sell, offer for sale,

import



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Protecting Designs

Do not publish without registration

Sign NDAs

Mark Documents

India

Industrial Design Registration

USA

Design Patent



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Registering Designs

Search

Identifying the right Class (Locarno)

Preparing a representation Disclaimer

Priority

Fee

Objections


Design and Copyright


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Design and CopyrightInterface

Designs

Designs serving Eye-Appeal, Capable of

Industrial Application

Registration:

Original and Novel

Applied to a particular articleto be manufactured byIndustrial Process or means.

Copyrights

Works of Art such asdrawing, painting,

sculpture, graphics (2Dand 3D)


D si a d Cop i ht


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Design and CopyrightInterface

Works of Art capable of design protectionare not eligible for copyright protection.

Copyright in an unregistered design is lost

when more than 50 copies of an article with

the design is industrially produced. (Sec. 15,

Indian Copyright Act, 1958)



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Just because an article has utilitarian use, that usefulness does notpreclude copyright protection- US Supreme Court in Mazer v. Stein

Artistic Components of a utilitarian thing can be subject of copyright

protection Sec. 17, US Copyright Act- Pictorial, graphic, and sculptural works

include two-dimensional and three-dimensional works of fine,graphic, and applied art, photographs, prints and art reproductions,maps, globes, charts, diagrams, models, and technical drawings,including architectural plans.

Such works shall include works of artistic craftsmanship insofar astheir form but not their mechanical or utilitarian aspects areconcerned; the design of a useful article, as defined in this section,shall be considered a pictorial, graphic, or sculptural work only if, andonly to the extent that, such design incorporates pictorial, graphic, or

sculptural features that can be identified separately from, and arecapable of existing independently of, the utilitarian aspects of thearticle.

10-06-2013

Clarification issued for

Copyright- Design

interface post Mazer

and subsequent cases

Copyright- Brain League 2013


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