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AV and Intellectual Property Roundtable

Copyright protection does not exist for

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AV and Intellectual Property Roundtable

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    1. AV and Intellectual Property Roundtable Chicago, Illinois May 2, 2006

    2. Why We’re Here Motivate and Educate

    3. Topics Certain Aspects Of An Audio-Visual (AV) System Examples Of Types Of IP Protection Available In The United States Exemplary IP Issues Facing Members Of The AV Industry (Including The Use Of Contracts Establishing IP Ownership) What If There Is No Contract Establishing IP Ownership? … Other IP Ownership Rules Other Examples Of IP-related Contracts Fair Use Of IP

    4. Certain Aspects Of An AV System Software/code control systems pre-packaged software and control systems custom software (written by a member of the AV integration team, the AV consultant, the control manufacturer or a third-party programmer) Images and designs (e.g., graphical user interfaces) AV system design drawings and specifications (e.g., one-line signal flow drawings with a set of specifications)

    5. Examples Of Types Of IP Protection Available In The United States Patent Utility Design Copyright Trademark/trade dress Trade secret Such IP protection exists for, e.g., products, processes, writings, designs, words, terms, symbols and information.

    6. U.S. Utility Patent Protects any new, non-obvious and useful product or process (e.g., software). 35 U.S.C. §§101, 102, 103. Term (generally): 20 years from the application’s filing date (or priority date). 35 U.S.C. §154. Co-inventors Need not physically work together or at the same time Need not make the same type or amount of contribution Need not make a contribution to the subject matter of every patent claim

    7. Example of Software-related U.S. Utility Patent – “Video Teleconferencing Assembly And Process”

    8. Example of Software-related U.S. Utility Patent – “Web-Based Apparatus And Method For Enhancing And Monitoring Picture Archiving And Communication Systems”

    9. U.S. Design Patent Protects any new, non-obvious, original and ornamental design for a product. 35 U.S.C. §171. “A design patent protects the non-functional aspects of an ornamental design [as seen as a whole and] as shown in the patent.” KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993). Term: 14 years from the date of issue. 35 U.S.C. §173.

    10. Graphical User Interfaces and Design Patents “Good user interfaces are crucial to the success of control systems and even entire projects in many cases[.]” (Audiovisual Best Practices, p. 120) Certain aspects of a graphical user interface may be functional: User interfaces should “function as intuitively as possible” (Audiovisual Best Practices, p. 163) The ICIA “Dashboard For Controls” effort seeks “standardization on some basics of user interface design and identification of fundamental AV system functions” (ICIA Dashboard For Controls Design Guide, p. 2) However, a given graphical user interface may still be or include a patentable design(s). What if persons collaborate on the design of a graphical user interface? (Audiovisual Best Practices, p. 145) They may be co-inventors. As to a design patent, each co-inventor must contribute to the claim (i.e., figures).

    11. Example of U.S. Design Patent – “Graphic User Interface For A Medical Monitor”

    12. Example of U.S. Design Patent – “User Interface Icon For A Portion Of A Display Screen”

    13. Example of U.S. Design Patent – “Video Teleconferencing Center”

    14. Example of U.S. Design Patent – “Video Teleconferencing Center With Full Screen”

    15. Example of U.S. Design Patent –“Video Conferencing Terminal”

    16. Copyright Copyright protection exists for “original [i.e., independently created] works of authorship fixed in any tangible medium of expression[.]” 17 U.S.C. §102(a); Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1445 (9th Cir. 1994). “Copyright protects only expression of ideas[.]” Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1369 (Fed. Cir. 2006). Copyright protection does not exist for “any idea, procedure, process, system, method of operation, concept, principle, or discovery[.]” 17 U.S.C. §102(b). Merger doctrine: where there is only one way to express an idea, its expression cannot be covered by copyright. ATC Distrib. Group, Inc. v. Whatever It Takes Transmission & Parts, Inc., 402 F.3d 700, 707-08 (6th Cir. 2005). Term: Generally, “life of the author and 70 years after the author’s death.” “Work made for hire:” “95 years from the year of [the work’s] first publication, or a term of 120 years from the year of its creation, whichever expires first.”

    17. Examples Of Works Subject To Copyright Protection Literary works, such as software (i.e., program code) Graphic works, such as “[t]echnical drawings, including architectural plans” Audio-visual works, such as software-generated displays, i.e., graphical user interfaces/ “look and feel” (including the layout, menus, commands and functions)

    18. Trademark/Trade Dress A trademark is, e.g., a word, term, symbol, design, shape, color or combination thereof that functions as a source identifier, i.e., a symbol of origin. McCarthy on Trademarks, §16:40, p. 16-64.3–64.4; §16:41, pp. 16-66-67. Trade dress can be or include: (1) product packaging or containers, (2) the design of the product and (3) some or all of the total image or overall appearance of a product or service when used to identify the source of the product or service. McCarthy on Trademarks, §8:1, pp. 8-2-3; §8:4, p. 8-15; Publications Int’l, Ltd. v. Landoll, Inc., 164 F.3d 337, 338 (7th Cir. 1998).

    19. Trade Secret A trade secret is “information, including but not limited to, technical or non-technical data, a formula, pattern, compilation, program, device, method, technique, drawing, process, financial data, or list of actual or potential customers or suppliers, that: (1) is sufficiently secret to derive economic value, actual or potential, from not being generally known to 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 or confidentiality.”

    20. Exemplary IP Issues Facing Members Of The AV Industry Who owns the IP? What can you do to protect your IP? Why protect your IP? How can you utilize your IP?

    21. Who Owns The IP? Generally, the creator or inventor, but the contract controls. “Common sense tells us that agreements should routinely be put in writing.”

    22. How And Why To Use A Contract To Establish IP Ownership Contracts: Are a product of the cooperation between/among the parties; cooperation is typically easier to generate at the outset of a project. Generally, should be directly between/among the affected parties (e.g., programmer and owner) (See Audiovisual Best Practices, pp. 73-75, 188) Should address IP rights and issues, including ownership, licenses, etc.

    23. What can you do to protect your IP? Identify it (e.g., through laboratory/research notebooks or invention/discovery/creation disclosure forms). Establish and fortify ownership of it (e.g., through registrations (i.e., for patents, copyrights, trademarks, trade dress) and contracts).

    24. Why protect your IP (through registrations and contracts)? For example: Benchmarking can provide significant benefits. (See Audiovisual Best Practices, pp. 86-87,102) However, imitation (that may result from overreaching benchmarking) may not be the highest form of flattery; it may be an infringement upon your IP rights or, worse yet, your unprotected IP rights.

    25. How can you utilize your IP? Practice it License it (or sell it) Enforce it (e.g., exclude others from using it (through litigation))

    26. What If There Is No Contract Establishing IP Ownership?… Other IP Ownership Rules Patents Copyrights Trademarks/Trade Dress Trade Secrets

    27. What If There Is No Contract Establishing IP Ownership?… Other IP Ownership Rules A shop right is not necessarily limited to a formal employer-employee relationship -- i.e., may exist where the developer is an independent consultant or contractor. McElmurry, 995 F.2d at 1583, n.15.

    28. What If There Is No Contract Establishing IP Ownership?… Other IP Ownership Rules Copyrights Copyright “rests initially in the author or authors of the work. The authors of a joint work are co[-]owners of copyright in the work.” 17 U.S.C. §201(a). “In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author…, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.” 17 U.S.C. §201(b). “A ‘work made for hire’ is – (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use… as a part of a[n] audiovisual work,… if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” 17 U.S.C. §101. “Absent an express transfer of ownership, a contributor who is not an employee retains ownership of his copyright.” Effects Associates, 908 F.2d at 558. “[T]he ‘shop right’ doctrine of patent law is not applicable to copyright.” Nimmer, §5.03[C], p. 5-56.9.

    29. What If There Is No Contract Establishing IP Ownership?… Other IP Ownership Rules A trademark or trade dress is owned by the company or person “who is in fact using the mark [or trade dress] as a symbol of origin.” McCarthy on Trademarks, §16:35, p. 16-61; §8.1, p. 8-4. “If an employee designs a mark in the course of employment and the employer uses it, it would seem clear that the employer is the ‘owner’ of the mark.” Id., §16:36, p. 16-62. Rights in a trademark “cannot be obtained through discovery or invention alone.” Arvelo v. American Int’l Ins. Co., 875 F. Supp. 95, 101 (D. P. R. 1995). As between manufacturer and distributor, there is a rebuttable presumption (absent an agreement) that the manufacturer owns the trademark used on or in connection with the goods. McCarthy on Trademarks, §16:48, pp. 16-82-88.

    30. What If There Is No Contract Establishing IP Ownership?… Other IP Ownership Rules Generally, the principles used to determine ownership of a patent will be applied to determine ownership of a trade secret. A shop right may exist for a trade secret.

    31. Other Examples Of IP-related Contracts Covenant Not To Compete Non-Disclosure Clause or Agreement (Confidentiality Clause or Agreement) Joint Development Agreement

    32. Covenant Not To Compete Generally disfavored (under Illinois law), i.e., will be strictly construed. Requirements Part of an otherwise valid contract (typically, between an employer and an employee) Supported by “adequate consideration” (e.g., initial, continued or extended employment) Reasonable and necessary to protect an employer’s legitimate business interest (e.g., (1) near permanent customer relationships and but for the employee’s association with the employer, the employee would not have had contact with the customers or (2) employee acquired trade secrets or other confidential information through his/her employment and then tried to use them or it for his/her own benefit).

    33. Non-Disclosure Clause or Agreement (Confidentiality Clause or Agreement) “It is appropriate for the owner to require all project personnel to sign non-disclosure agreements that ensure the protection of intellectual property.” (Audiovisual Best Practices, p. 143.) In fact: A non-disclosure clause or agreement may be used with an employee or consultant or in connection with soliciting bids or pursuing collaborators All IP owners should consider using a non-disclosure clause or agreement in their commercial pursuits Generally, the same analysis (e.g., requirements) as a covenant not to compete

    34. Joint Development Agreement Used where two or more entities (affiliated or not) will collaborate and combine resources to develop a new product, process, etc. (A formal joint venture may or may not be involved.) Should account for all IP issues (e.g., ownership, licenses, etc.)

    35. Fair Use Of IP Patents Copyrights Trademarks/Trade Dress

    36. Fair Use Of Patents, i.e., Experimental Use Experimental use by the inventor(s) A person shall not be entitled to a patent if, e.g., “the invention was … in public use or on sale in [the United States], more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b). However, “[i]f the [consummated] sale [or public use] was primarily for experimentation [e.g., to refine the invention or assess its value relative to the time and expense of prosecuting a patent application] rather than commercial gain, then the sale is not invalidating under § 102(b).” Electromotive Div. of General Motors Corp. v. Transportation Systems Div. of General Electric Co., 417 F.3d 1203, 1210, 1213 (Fed. Cir. 2005). To establish experimentation: Customer “must be made aware of the experimentation [i.e., tests];” Inventor must control the testing; Detailed records of the testing should be kept; Inventor should inquire about and monitor the testing and/or receive sufficiently detailed reports about the test results; and Financial terms for experimental goods (e.g., the prices for experimental goods) should generally be better than the corresponding financial terms for non-experimental commercial goods. Id. at 1212-1215, 1217. Experimental use defense (or exception) asserted by a third party “[V]ery narrow and limited to actions performed [solely] for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry” and “use does not qualify for the experimental use defense when it is undertaken in the ‘guise of scientific inquiry’ but has ‘definite, cognizable, and not insubstantial commercial purposes.’” Madey v. Duke Univ., 307 F.3d 1351, 1362 (Fed. Cir. 2002). Use having the “slightest commercial implication” or use, regardless of commercial implications, that “keep[s] with the legitimate business of the alleged infringer does not qualify for the experimental use defense.” Id.

    37. Fair Use Of Copyrights For example: making a copy of software as part of an effort to make compatible products may be a fair use. Sega Enterprises, Ltd. v. Accolade, Inc., 977 F.2d 1510, 1518 (9th Cir. 1992).

    38. Fair Use Of Trademarks/Trade Dress

    39. Thank you. . . any questions?

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