Protecting Other forms of IP

Sandeep Hegde M. Managing Associate Brain League

IP Beyond Patents

Trade Secrets Industrial Design Copyright

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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, technical know-how, device, formula, business method, etc.
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Reasonable Measures to Maintain Secrecy

Agreements Physical Security Confidentiality Notices Information Security

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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 of Contract Validity of Non-compete clauses

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Physical and Information Security

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 by Improper 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
Plaintiff approached defendant to supply thermal units for their new fodder manufacturing plant and shared designs of the plant without any NDA. Defendant misappropriated the designs. Court found in favor of the plaintiffs citing implied obligation of confidentiality

Anil Gupta v. Kunal Dasgupta (Delhi HC) 2002

Plot, concept and idea of an unpublished TV reality show by the plaintiff was held to be a trade secret and defendant was found guilty of misappropriation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

Patentable

Non-patentable
Protect as Trade Secrets

Doubtfully patentable Protect as Trade Secrets

Business Decision
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Factors to be Considered
Possibility of Independent Creation Possibility of Successful Reverse Engineering Number of Competitors working on the invention 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

Literary Work

Dramatic Work

Artistic Work

Musical Work

Cinematograph Film

Sound Recording
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Photographs

Copyrights:
Idea/Expression Dichotomy

Tangible Form
Originality and Modicum of creativity Term - Life plus 60 years

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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 Copyright
TYPE OF COPYRIGHTS Literary Work Artistic Work Musical Work Dramatic Work Sound Recording Cinematograph Film Photograph TERM Life of the Author plus 60 years Life of the Author plus 60 years Life of the Author plus 60 years Life of the Author plus 60 years 60 years from the date of Publication 60 years from the date of Publication 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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Photocopy

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?

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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
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Design and Copyright Interface

Designs
Designs serving EyeAppeal, Capable of Industrial Application

Copyrights
Works of Art such as drawing, painting, sculpture, graphics (2D and 3D)

Registration:
Original and Novel Applied to a particular article to be manufactured by Industrial Process or means.

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Design and Copyright Interface

Works of Art capable of design protection are 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 not Clarification issued for preclude copyright protection- US Supreme Court in Mazer v. Stein 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 as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.
Copyright- Design interface post Mazer Artistic Components of a utilitarian thing can be subject of copyright and subsequent cases

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Open IP Discussion forum: www.sinapseblog.com/forums Kalyans Patent Law Thriller Details at www.kalyankankanala.com

THANK YOU.
sandeep@brainleague.com