Intellectual Property Infringement, Misappropriation, and Enforcement

Violation of intellectual property rights, "infringement" with regard to patents, copyright, and trademarks, and "misappropriation" with respect to trade secrets, can be a breach of civil law or criminal law, which depends on the type of intellectual property involved, the jurisdiction, and the nature of the action.

Overview

As of 2011, trade in counterfeit copyrighted and trademarked works was a $600 billion industry worldwide. It accounted for 5% - 7% of global trade.

Patent Infringement

Overview

Patent infringement is the using or selling of a patented invention without permission from the patent holder. Permission is typically granted in the form of a license. In many countries, a "use" is required to be commercial (or to have commercial purpose) to constitute patent infringement.

The scope of the patented invention is defined by the claims of the granted patent, which is always on file with the USPTO.

Patents are territorial, and infringement is only possible in a country where a patent is in force. For example, a patent granted in the United States prohibits anyone in the United States from making, using, selling, or importing the patented item, while people in other countries may be free to exploit the patented invention in their country.

Clearance, Validity & Enforcement Opinions

Clearance opinion. A clearance search is typically conducted by a professional patent searcher who are under the direction of patent attorneys. Once the search is conducted, the attorney will issue a clearance opinion, which is a legal opinion as to whether a given product or process infringes the claims of one or more issued or pending patent applications.

Validity & enforceability opinions. A validity or an enforceability opinion is a legal opinion that analyzes an issued patent and provides an opinion on how a court might rule on it's validity or enforceability.

The average cost of a validity opinion is estimated to be over $15,000, with an infringement analysis adding $13,000.

Overview

Copyright infringement is the use of works protected by copyright law without the permission of the copyright holder. Copyright infringement typically violates the exclusive rights of the copyright holder, including: the right to reproduce, distribute, display, perform the work, or make derivative works.

Limitations

Non-infringing uses

The Berne Convention mandates that national laws provide for limitations to copyright for "fair practice" purposes, i.e. minimal quotations used in journalism and education. In the United States, this idea is expressed in the doctrine of "fair use." Examples of fair use include commentary, search engines, criticism, parody, news reporting, research, teaching, library archiving and scholarship.

Another example is the practice of compulsory licensing, which forbids copyright owners from denying a license for certain types of works. These works typically include compilations and live performances of music. The doctrine of compulsory licensing generally says that no infringement will occur as long as the using party pays a royalty, at a rate determined by law rather than by private negotiation.

Non-infringing types of works

To qualify for copyright protection, a work must be an expression (rather than an idea) with a degree of originality, presented in a fixed medium (such as on paper, recorded digitally, displayed in an art work, etc.). Thea idea itself is not protected, meaning that a copy of someone else's original idea is not infringing unless one copies that person's unique expression of the idea.

Trademark Infringement

Overview

Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees of the trademark. Infringement can occur when the infringer uses a trademark which is either identical or confusingly similar to a trademark owned by another, on products or services which are identical or similar to the products or services which the trademark registration covers. In the United States, typical trademark infringement proceedings are civil. However, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services.

The United States, Japan, Switzerland, and the EU entered into the ACTA trade agreement in May 2011. It requires criminal penalties for copyright and trademark infringement.

Likelihood of confusion standard

When the infringing mark is not identical to the valid trademark, courts will assess similarity by reference to whether there is a likelihood of consumer confusion. Consumer confusion is defined as consumers erroneously believing that the products or services originated from the trademark owner.

Likelihood of confusion is not solely measured by actual consumer confusion, although it is one of the 8 factors typically considered.

The Ninth Circuit Court of Appeals in the United States has articulated eight specific elements to measure likelihood of confusion:

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 consumer
Defendant's intent in selecting the mark
Likelihood of expansion of the product lines

In some jurisdictions, licensee's may be able to pursue trademark infringement proceedings against an infringer if the trademark owner fails to do so.

Trademark Dilution

If the respective trademarks and products or services are entirely dissimilar, a party may still bring a trademark dilution claim.

Exceptions

Valid exceptions to trademark infringement include comparative advertising, a legal defense (such as the statute of limitations, or abandoning of the trademark), or the infringer can attack the underlying validity of the trademark registration.

Trade Secret Misappropriation

Overview

Companies often attempt to lawfully discover another's trade secrets through reverse engineering or employee poaching. Companies can also engage in unlawful means of discovering another's trade secrets, including hacking into sensitive computer systems or violating non-disclosure agreements. As previously noted, a trade secret is not deemed to exist (and thus be protected) unless it's owner takes reasonable steps to maintain its secrecy.