Intellectual Property: Protecting Other Forms of IP- A Presentation by Sandeep Hegde - BananaIP

Protecting Other forms of IP
Sandeep Hegde M.
Managing Associate
BananaIP

IP Beyond Patents
Trade Secrets
Industrial Design
Copyright
07-12-2015
Copyright- Brain League now BananaIP
2013

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.
07-12-2015
2013

07-12-2015
2013

Reasonable Measures to
Maintain Secrecy
• Agreements
• Physical Security
• Confidentiality Notices
• Information Security
2013
07-12-2015

Agreements: NDA
• Definitions
Confidential Information
Purpose
• Confidentiality Obligations
• Term and Termination
2013
07-12-2015

Agreements
• Employees’ obligation to maintain secrecy
• Secrecy obligations survive termination of
Contract
• Validity of Non-compete clauses
2013
07-12-2015

Physical and Information
Security
• Entry and exit restrictions
• Surveillance camera
• Clean Desk
• Firewalls and Password Protection
• Email restrictions
• Storage device and camera restrictions
07-12-2015
2013

Misappropriation
• Acquisition by Improper Means
• Use of other’s 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
2013
07-12-2015

Exceptions
• Discovery by fair and honest means
• Independent Invention
• Lawful acquisition of information
• Reverse Engineering
2013
07-12-2015

Remedies
• Injunction
• Damages
• Profits
• Reasonable Royalties
• Criminal Action
2013
07-12-2015

Cases (INDIA)
• John Richard Brady v. Chemical Process Equipments (Delhi HC)
1987
• Anil Gupta v. Kunal Dasgupta (Delhi HC) 2002
07-12-2015
2013
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
Plot, concept and idea of an unpublished TV reality show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

Protection Strategy- Patents v. TS
Inventions
2013
Patentable Non-patentable Doubtfully patentable
Protect as
Trade Secrets
Protect as Trade
Secrets
Business Decision
07-12-2015

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
2013
07-12-2015

Creative Expression:
COPYRIGHTS
• Ideas Expressed in Tangible form
• Protects Expression and not the Idea
Recognized Forms
07-12-2015
Dramatic WorkLiterary Work Musical WorkArtistic Work
PhotographsSound Recording
Cinematograph
Film Copyright- Brain League now BananaIP
2013

Copyrights:
• Idea/Expression Dichotomy
• Tangible Form
• Originality and Modicum of creativity
• Term - Life plus 60 years
07-12-2015
2013

Rights granted
• Economic Rights
– Reproduction
– Distribution
– Adaptation and Translation
– Modification
– Public Communication and Public Performance
• Neighboring Rights
– Performers Rights
– Moral Rights
– Broadcasters Rights
07-12-2015 Copyright- Brain League now BananaIP 2013

Term of Copyright
TYPE 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

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

Copyright Infringement
• Exercise of exclusive rights without permission
• Identical/Substantially Similar
– Look and feel test
– Abstraction-Filtration-Comparison test

07-12-2015 Copyright- Brain League 2013

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

Fair Use
• List of exceptions for Copyright Infringement
• Includes use of copyright work for
– Educational purposes
– Research Purposes
– News/Current events reporting
– Parody, Criticism

Remedies
• Damages
• Accounts of Profit
• Injunction
• Criminal Actions

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
07-12-2015
2013

Protecting Designs
• Do not publish without registration
• Sign NDAs
• Mark Documents
• India
Industrial Design Registration
• USA
Design Patent
07-12-2015
2013

Registering Designs
• Search
• Identifying the right Class (Locarno)
• Preparing a representation
• Disclaimer
• Priority
• Fee
• Objections
07-12-2015
2013

Design and Copyright
Interface
Designs
Designs serving Eye-
Appeal, Capable of
Industrial Application
Registration:
• Original and Novel
• Applied to a particular article
to be manufactured by
Industrial Process or means.
Copyrights
Works of Art such as
drawing, painting,
sculpture, graphics (2D
and 3D)
07-12-2015
2013

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)
07-12-2015
2013

• ‘Just because an article has utilitarian use, that usefulness does not
preclude 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 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.
07-12-2015
Clarification issued for
Copyright- Design
interface post Mazer
and subsequent cases
2013

THANK YOU.
Open IP Discussion forum: www.sinapseblog.com/forums
Kalyan’s Patent Law Thriller
Details at www.kalyankankanala.com
sandeep@brainleague.com

Intellectual Property: Protecting Other Forms of IP- A Presentation by Sandeep Hegde - BananaIP

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Intellectual Property: Protecting Other Forms of IP- A Presentation by Sandeep Hegde - BananaIP