Intellectual property covers a wide area of intangible property interests: patents, trademarks, copyrights, and trade secrets. Patents protect novel, non-obvious, and useful inventions of things or methods (e.g., stapler, coffee-maker, etc.). Trademarks protect a word, name, logo, or device used in commerce as a source identifier for goods or services (e.g., SWINGLINE staplers or STARBUCKS coffee). Copyrights protect original works of authorship fixed in a tangible form, such as a drawing, musical composition, photograph, sculpture, book, or software program (e.g., the content of a play or movie). Trade secrets protect information that is not generally known to the public; confers an economic benefit from not being publicly known; and is the subject of reasonable efforts to maintain its secrecy (e.g., the formula for Coca-Cola).

The firm has successfully prosecuted and defended copyright infringement claims. These claims arise when an original work of authorship is fixed in a tangible medium of expression, such as books, poems, plays, movies, songs, sounds, sheet music, paintings, photographs, and sculptures, and another copies protected expressions without consent. A copyright gives the owner the exclusive right to reproduce the copyrighted work, to distribute copies, to perform the work, to display it publicly, and to create derivative works. The copyright exists upon creation of the work.

To qualify for patent protection, an invention must have patentable subject matter, that is, consist of a “new and useful” process, machine, manufacture or composition of matter; must have “utility,” that is, be useful; must be “novel,” or new; must be “non-obvious,” meaning its use or function cannot be something that is simply the next logical step of an already patented invention; and must not have been “disclosed” to the public prior to the application for the patent (so-called “prior art”).

A patent can cover any processes (business processes, computer software, engineering methods, etc.); machines (anything that performs a function); articles of manufacture (a catchall category that covers manufactured goods); and composition of matter (pharmaceuticals, chemical compounds, etc.)

The firm has successfully prosecuted and defended trademark infringement claims. These claims arise from use of a word or symbol on or in connection with goods or services to identify source. Infringement claims can be filed if there is a valid and legally protectable mark; plaintiff owns the mark; use of the mark (or substantially similar mark) in commerce, without consent, to identify goods or services; and that causes a likelihood of confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods.  The infringing use can be any reproduction, counterfeit, or copy of a registered mark, used in commerce in connection with the sale, offering for sale, distribution, or advertising of any goods or services, where such use is likely to cause confusion, or to cause mistake, or to deceive. The “likelihood of confusion” factors include: strength of the mark; proximity of the goods; similarity of the marks; evidence of actual confusion; marketing channels used; type of goods and the degree of care likely to be exercised by the purchaser; defendant’s intent in selecting the mark; and likelihood of expansion of the product lines.

The firm has successfully prosecuted and defended misappropriation of trade secret claims. Most states, including California, adopted a version of the Uniform Trade Secrets Act (UTSA). In 2016, Congress passed the Defend Trade Secrets Act (DTSA), 18 U.S.C. §§ 1836-39 et. seq., in order to establish uniformity for trade secret claims in federal court. The DTSA protects information that “derives value from not being generally known to (or readily ascertainable by) another person who can obtain economic value from such information.” This definition covers “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if the owner thereof has taken reasonable measures to keep such information secret.”

State and federal law protects against the acquisition by improper means, or the disclosure or use of trade secrets without consent by a person who used improper means to acquire knowledge of the trade secret. “Improper means” include theft, fraud, bribery, industrial espionage, breaching a contractual duty to keep something confidential, or inducing others to breach that duty. The term “improper means” does not include “reverse engineering, independent derivation, or any other lawful means of acquisition.” Liability can extend not only to the person who stole the information, but to one who knowingly uses or discloses the trade secrets.

A federal court may enjoin “any actual or threatened misappropriation … provided the order does not prevent a person from accepting an offer of employment under conditions that avoid actual or threatened misappropriation.” 18 U.S.C. § 1836(b)(3)(A)(i). This provision allows for employee mobility without threat of injunction in certain situations.