The document provides an overview of intellectual property (IP) basics. It defines IP as property that derives from the work of the mind or intellect, and notes the four main types of IP are patents, copyrights, trademarks, and trade secrets. For each type, it briefly outlines what they protect and their governing laws. The document then focuses on providing more detail on copyrights, including what is copyrightable, the bundle of rights, duration, and fair use. It also covers trademarks, patents, and licensing. The overall summary is an introductory guide to understanding different forms of IP.

1. IP BASICS
October 4, 2015
©
2015
Kronenberger
Rosenfeld,
LLP

2. Who Am I?
Lawyer
• Star%ng
startups
• Keeping
startups
out
of
hot
water
• Suing
bad
guys
Hacker
• Since
age
10
• Lex
Machina
• Mechanical
Turk
module
for
Boto
(AWS
for
Python)
• Raspberry
Pi
&
Arduino
robot
• Common
Form
Writer
• TechCrunch
contributor
• legal
tech
• startup
law
• computer
crime
• Paper
on
Somali
mari%me
piracy
and
transna%onal
organized
crime
Daddy

3. Lawyer Disclaimers!
1.
IANAL
IAAL
but
IANYL
2.
This
is
general
informaCon
for
educa%onal
purposes.
It
might
not
be
right
for
you!
Talk
to
a
lawyer
for
advice
about
your
own
specific
situa%on.

4. Agenda
What
is
IP,
and
Why
Do
We
Have
It?
The
Four
Kinds
of
IP
Copyrights
Trademarks
Patents
Trade
Secrets
Licensing
Open
Source
Miscellaneous

5. What is Property?
a : something owned or possessed; specifically : a piece
of real estate
b : the exclusive right to possess, enjoy, and dispose of a
thing : ownership
c : something to which a person or business has a legal
title
d : one (as a performer) who is under contract and whose
work is especially valuable
e : a book or script purchased for publication or
production
Source: Merriam-Webster

6. What is Intellectual Property?
• property (as an idea, invention, or process)
that derives from the work of the mind or
intellect; also : an application, right, or
registration relating to this
Intellectual property grants a
right to exclude others from using
ideas, inventions, creative works,
etc.
Translation: Without a license, you
cannot use someone else’s IP.

7. Why Do We Have IP?
IP is supposed to incentivize innovation.
Parents and copyrights are in the US
Constitution:
To promote the progress of science and useful
arts, by securing for limited times to authors
and inventors the exclusive right to their
respective writings and discoveries…
—Article I, section 8, clause 8

8. Why Do We Have IP?
Does IP actually incentivize innovation?
• It’s very hard to know.
• Some experts think it doesn’t—
especially patents, and especially in
high tech.
• The case for patents is more clear in
some industries than others—for
example, pharmaceuticals.
IP does protect a business, though.

9. Agenda
What
is
IP,
and
Why
Do
We
Have
It?
The
Four
Kinds
of
IP
Copyrights
Trademarks
Patents
Trade
Secrets
Licensing
Open
Source
Miscellaneous

10. The Four Kinds of IP
Kind
Protects
Laws
Patent
Technological
inven%ons
Federal
Copyright
Original
expression
Federal
Trademark
Signals
of
source
Both
Federal
and
State
Trade
Secrets
Informa%on
that
is
valuable
because
it
is
secret
Mostly
State

11. Agenda
What
is
IP,
and
Why
Do
We
Have
It?
The
Four
Kinds
of
IP
Copyrights
Trademarks
Patents
Trade
Secrets
Licensing
Open
Source
Miscellaneous

12. What is Copyrightable?
Copyright protection subsists…in original works
of authorship fixed in any tangible medium of
expression, now known or later developed, from
which they can be perceived, reproduced, or
otherwise communicated, either directly or with
the aid of a machine or device.
17 U.S.C. § 102(a)
Original Expression

13. What is Copyrightable?
Works of authorship include the following categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.
17 U.S.C. § 102(a)
Includes software
Two aspects of music
are protected separately

14. What is NOT Copyrightable?
In no case does copyright protection for an original work of
authorship extend to any idea, procedure, process, system,
method of operation, concept, principle, or discovery, regardless
of the form in which it is described, explained, illustrated, or
embodied in such work.
17 U.S.C. § 102(b)
Ideas,
Inven%ons,
etc.
Patents
do
this.

15. Copyright’s “Bundle of Rights”
Subject to sections 107 through 122, the owner of copyright under this title has
the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the
public by sale or other transfer of ownership, or by rental, lease, or
lending;
(4) in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and motion pictures and other audiovisual works, to
perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and pictorial, graphic, or sculptural works, including the
individual images of a motion picture or other audiovisual work, to
display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work
publicly by means of a digital audio transmission.
17 U.S.C. § 106

16. History of Copyright Law
1710: Statute of Anne
1790: Copyright Act
1886: Berne Convention
1976: Copyright Act
1998: Digital Millennium Copyright Act

17. Duration of Copyrights
1710: Statute of Anne: 14 years
1790: Copyright Act: 14 years
1976: Copyright Act
– life of author + 50 years
– 75 years for corporate authorship
1998: Sonny Bono Copyright
Term Extension Act
– life of author + 70 years
– 120 years or 95 years after publication for corporate
authorship
Published
1928
Enters
public
domain
2023

18. Duration of Copyrights
Published
1928
Enters
public
domain
2023
Source:
Tom
W.
Bell,
Copyright
Dura%on
and
the
Mickey
Mouse
Curve

19. Fair Use
• Allows me to use a small Steamboat Willie
image in this educational presentation
• Available only under US law

20. Fair Use—Four Factors
Notwithstanding the provisions of sections 106 and 106A, the fair
use of a copyrighted work, including such use by reproduction in
copies or phonorecords or by any other means specified by that
section, for purposes such as criticism, comment, news reporting,
teaching (including multiple copies for classroom use),
scholarship, or research, is not an infringement of copyright. In
determining whether the use made of a work in any particular
case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including
whether such use is of a commercial nature or is for
nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or
value of the copyrighted work.
…
17 U.S.C. § 107

21. Copyright Takeaways
• Automatic: Copyright exists by default
• Registration: More and better remedies
• Long Duration: Copyright lasts as long as
Mickey Mouse needs it
• Fair Use: Probably not what you think it is
(and doesn’t exist outside the US)

22. Agenda
What
is
IP,
and
Why
Do
We
Have
It?
The
Four
Kinds
of
IP
Copyrights
Trademarks
Patents
Trade
Secrets
Licensing
Open
Source
Miscellaneous

23. These Are All Trademarks
Toyota
More
on
this
later

24. What is a Trademark?
• Trademarks identify the source of a product.
• “A trademark is a word, phrase, symbol or
design, or a combination of words, phrases,
symbols or designs, that identifies and
distinguishes the source of the goods of one
party from those of others.” (USPTO)
• “Service mark”: same thing, but for services.
(Technically, “trademark” refers only to goods. In practice, using just
“trademark” is fine in almost all cases.)

25. History of Trademarks
• Marks on ancient pottery
• Blacksmiths in the Roman Empire
• Medieval guilds marked their goods
(bell makers, watermarks on paper, etc.)
• 1618: Southern v. How in England
• 1870: U.S. federal trademark legistlation
• 1946: Lanham Act
• 1999: Anticybersquatting Consumer Protection Act

26. How to Get a Trademark
• Start using it in commerce!
– Trademark rights are established by use.
– You cannot stockpile trademarks you don’t use.
– Trademarks are abandoned through non-use.
• Optionally, register it with the USPTO

27. Trademark Licensing
• Tricky: license will be invalid if results confuse
consumers.
• Owner must maintain quality control over
goods delivered under trademark—else
abandoned through “naked licensing.”

28. Agenda
What
is
IP,
and
Why
Do
We
Have
It?
The
Four
Kinds
of
IP
Copyrights
Trademarks
Patents
Trade
Secrets
Licensing
Open
Source
Miscellaneous

29. Seriously? More Disclaimers???
I’m not a patent lawyer, which means:
• I can talk about patents.
• I can litigate patent cases.
BUT
• I can’t write patents.
• I can’t file patent applications.

31. What is a Patent?
• Government-granted exclusivity right
• Covers technological inventions, designs, or
methods

32. The Patent Quid Pro Quo
Government grants a
limited monopoly
in exchange for
public knowledge
(publication of patent)

33. Kinds of Patents
Stage
• Provisional
• Non-Provisional
• Reissue
Kind
• Utility
• Design
• Plant

34. What Can Be Patented?
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this
title.
35 U.S.C. § 101

35. Novelty
(a) Novelty; Prior Art.— A person shall be entitled
to a patent unless—
(1) the claimed invention was patented, described
in a printed publication, or in public use, on sale,
or otherwise available to the public before the
effective filing date of the claimed invention; or…
35 U.S.C. § 102

36. Non-Obviousness
A patent for a claimed invention may not be
obtained, notwithstanding that the claimed invention
is not identically disclosed as set forth in section 102,
if the differences between the claimed invention and
the prior art are such that the claimed invention as a
whole would have been obvious before the effective
filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed
invention pertains. Patentability shall not be negated
by the manner in which the invention was made.
35 U.S.C. § 103

37. Abstract Ideas
• Patents must be for something concrete—
not abstract ideas.
• Supreme Court rejected a set of software
patents as abstract ideas in Alice v. CLS Bank
(2014):
“We have long held that this provision contains an
important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.”
Association for Molecular Pathology v. Myriad Genetics,
Inc. (2013). We have interpreted § 101 and its
predecessors in light of this exception for more than 150
years. Bilski v. Kappos (2010); see also O’Reilly v. Morse
(1854); Le Roy v. Tatham,(1853).

38. History of Patent Laws
• 1450: Venice
• 16th century: English letters patent
• US Constitution
• 1952: Patent Act
• 2011: America Invents Act

39. How to Get a Patent
(Grossly Oversimplified)
• Hire a patent lawyer
• File a provisional patent early (US only!)
• Decide whether to go forward with full
application
• Decide in which additional countries to file
• File a non-provisional application
(< 1 year from the provisional filing)
• Wait
• Respond to office actions (issues raised by
patent examiner)

40. Patent
Trolls
• Assert patents without practicing them
• Frequently buy patents from individual inventors, failing
businesses, at auction, etc.
• Aggressive tactics (sue first, negotiate later)
• Huge spike in 2000s (~60% of all U.S. patent cases)
• Other terms:
• PAE (patent assertion entity)
• NPE (non-practicing entity)

41. Patent Reform
2011: America Invents Act
• First-to-file: matches rest of world
• Streamlined post-issuance challenge procedures
• Special challenge to business-method patents
• Reduced fees for “micro entities” (some startups)
• Branch offices for USPTO

42. Design Patents
• Protect only ornamental design
(NOT utility / functionality)
• 17 year term
• Less uniform international coverage
– also called “industrial designs” or
“registered designs” in other
countries (with some differences)

46. Patent Litigation
• Average patent case costs over $2M to defend
• Damages may be in hundreds of millions of
dollars
• Injunctions can stop sales of infringing
products
• Imports may be blocked by U.S. International
Trade Commission

47. Recent Cases and Software Patents
The Supreme Court has been on a tear…
• Bilski v. Kappos (2010)
Abstract ideas not patentable
(method of hedging risk)
• Alice Corp. v. CLS Bank (2014)
Can’t just add a computer to an abstract idea
(intermediated settlement in financial markets)
• Highmark v. Allcare and Octane Fitness v. Icon
Health & Fitness (2014)
More deference for lower courts to shift fees in
“exceptional” cases

48. Agenda
What
is
IP,
and
Why
Do
We
Have
It?
The
Four
Kinds
of
IP
Copyrights
Trademarks
Patents
Trade
Secrets
Licensing
Open
Source
Miscellaneous

49. What is a Trade Secret?
Examples
• Customer list
• Unpublished source code
• Ingredients and amounts for KFC spices

50. What is a Trade Secret?
“In 2008, when the company
updated its headquarters, it gave
reporters a glimpse behind the
curtain. The ingredient list is kept
in a computerized vault with two
separate locks, alongside vials of
the eleven seasonings, and only
two executives have access to the
full recipe.”
Shhh: 10 Make-or-Break Trade
Secrets

51. What is a Trade Secret?
“Trade secret” means information, including a
formula, pattern, compilation, program, device,
method, technique, or process, that:
(1) Derives independent economic value, actual
or potential, from not being generally known to
the public or 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.
Cal. Civil Code § 3426.1(d)

52. History of Trade Secrets Law
• English common law
• American common law
• 1939: Restatement of Torts
• 1979, 1985–: Uniform Trade Secrets Act
– 47 states (except NY, MA, NC)
• 1996: Economic Espionage Act
• Next: National federal legislation??

53. Misappropriation
(another word for infringement)
(b) “Misappropriation” means:
(1) Acquisition of a trade secret of another by a person who knows or
has reason to know that the trade secret was acquired by improper
means; or
(2) Disclosure or use of a trade secret of another without express or
implied consent by a person who:
(A) Used improper means to acquire knowledge of the trade secret; or
(B) At the time of disclosure or use, knew or had reason to know that
his or her knowledge of the trade secret was:
(i) Derived from or through a person who had utilized improper
means to acquire it;
(ii) Acquired under circumstances giving rise to a duty to maintain
its secrecy or limit its use; or
(iii) Derived from or through a person who owed a duty to the
person seeking relief to maintain its secrecy or limit its use; or
(C) Before a material change of his or her position, knew or had
reason to know that it was a trade secret and that knowledge of it had
been acquired by accident or mistake.
Cal. Civil Code § 3426.1

54. Misappropriation
(a) “Improper means” includes theft, bribery, misrepresentation,
breach or inducement of a breach of a duty to maintain secrecy,
or espionage through electronic or other means. Reverse
engineering or independent derivation alone shall not be
considered improper means.
Cal. Civil Code § 3426.1

55. Common Scenarios
• Departing employees
• Competitors poaching employees
• Hacking (along with Computer Fraud and
Abuse Act claims)

56. Reasonable Security Precautions
in Software Development
• Lock the building
• Passwords
• Employee confidentiality agreements, NDAs
• “Strong” passwords and rotation policy?
• Two factor authentication?
• Biometrics?
• No Internet connection for the building?
“…Is
the
subject
of
efforts
that
are
reasonable
under
the
circumstances
to
maintain
its
secrecy.”

57. Agenda
What
is
IP,
and
Why
Do
We
Have
It?
The
Four
Kinds
of
IP
Copyrights
Trademarks
Patents
Trade
Secrets
Licensing
Open
Source
Miscellaneous

58. What is a License?
1. Contract
(bargain and exchange of value)
which
2. Allows use of IP
(because it’s prohibited by default)
and
3. Imposes conditions

59. Consequences of Screwing Up Licensing
Lose control of your…
• code
• patents
• trade secrets
• company

60. Agenda
What
is
IP,
and
Why
Do
We
Have
It?
The
Four
Kinds
of
IP
Copyrights
Trademarks
Patents
Trade
Secrets
Licensing
Open
Source
Miscellaneous

61. Open Source
“That,
as
we
enjoy
great
advantages
from
the
inven%ons
of
others,
we
should
be
glad
of
an
opportunity
to
serve
others
by
any
inven%on
of
ours;
and
this
we
should
do
freely
and
generously.”
—The
Autobiography
of
Benjamin
Franklin

62. Too Much for Today
bit.ly/OpenSourceKR

63. What Is Open Source?
The Open Source Definition by the
Open Source Initiative:
10 paragraphs
The Free Software Definition by the
Free Software Foundation:
4 pages

64. What Is Open Source?
“Open source software is software that can
be freely used, changed, and shared
(in modified or unmodified form) by anyone.”
Free of charge
Published source code
Varying restrictions on commercial use

65. Proprietary Software vs. Open Source
Proprietary
SoKware
Open
Source
High
price
tag
Free
Strong
warran%es
No
warran%es
Support
provided
No
support
Black
box
–
no
source
code
Source
code
provided
No
modifica%ons
or
reverse
engineering
Modifica%ons
encouraged
No
sublicensing
Sublicensing
with
condi%ons
Express
patent
license
Patent
treatment
varies
by
license

66. Dimensions of Open Source Licenses
• Copyleft
Your code must be under the same license
• Notice
Must include notice and a copy of the license
• Source code disclosure
Must include a copy of your source code
• Sublicensing
Can you grant downstream licenses?
• Patent license
Some give express patent license
(GPLv2 is silent!)

67. Copyleft
Requires that you MUST share modifications.
“You must cause any work that you distribute or
publish, that in whole or in part contains or is
derived from the Program or any part thereof, to
be licensed as a whole at no charge to all third
parties under the terms of this License.”
—GPL v2 § 2

68. History and the GPL
• 1989
– Berlin Wall falls
– GPL 1.0
• 1991
– Gulf War
– Soviet Union Dissolves
– GPL 2.0
• 1993
– Mosaic graphical web browser released
• 2007
– GPL 3.0

69. More Obscure Licenses
DO WHAT THE FUCK YOU WANT TO PUBLIC LICENSE
Version 2, December 2004
Copyright (C) 2004 Sam Hocevar <sam@hocevar.net>
Everyone is permitted to copy and distribute verbatim or modified
copies of this license document, and changing it is allowed as long
as the name is changed.
DO WHAT THE FUCK YOU WANT TO PUBLIC LICENSE
TERMS AND CONDITIONS FOR COPYING, DISTRIBUTION AND MODIFICATION
0. You just DO WHAT THE FUCK YOU WANT TO.
/*
* ----------------------------------------------------------------------------
* "THE BEER-WARE LICENSE" (Revision 42):
* <phk@FreeBSD.ORG> wrote this file. As long as you retain this notice you
* can do whatever you want with this stuff. If we meet some day, and you think
* this stuff is worth it, you can buy me a beer in return. Poul-Henning Kamp
* ----------------------------------------------------------------------------
*/
1,089
items
in
Wikipedia
305
items
in
Wikipedia

70. Open Source in Court
• Jacobsen v. Katzer
Open source licenses are enforceable
• BusyBox cases
GPL violations by embedded developers
• Linksys: Free Software Foundation, Inc. v. Cisco
Systems, Inc.
GPL violation in routers
Settlement: $ donations to FSF + open source
compliance director
• XimpleWare Corp. v. Versata Software, Inc.
GPL violation in enterprise software
• VMWare case (Germany)
Mixed proprietary/GPL Linux kernel

71. “I found this code on the web.
I can use it, right?”
Source:
Open
source
license
usage
on
GitHub.com
(March
9,
2015)
hgps://github.com/blog/1964-­‐open-­‐source-­‐license-­‐usage-­‐on-­‐github-­‐com

72. “I found this code on the web.
I can use it, right?”
• Not all “code on the web” is open source.
• All open source is not the same.
• Look for explicit licensing information—do not
assume anything.
• When in doubt, ask the author.
• Without a license, you do not have permission
to copy a copyrighted work!

73. “This code is open source, that means I can
do whatever I want with it, right?”
• Open source licenses have strings attached.
(Lawyers call them terms and conditions.)
• Notice requirements are easy to mess up.

74. “I’ll be okay, because…fair use?”
• Probably not.
• The fair use doctrine is probably not what you
think it is.
• The scope of protection is narrow.
• It exists only in the US.
• How it is applied is unpredictable and
very fact-specific.
• Recent case law says fair use is a right, not an
affirmative defense. (Lenz)

75. Open Source Audits
• Identify components in a code base
• Deep dependency tracing
• License identification
• Identify known security vulnerabilities in packages
When?
• Due diligence
(financing, acquisition)
• Enterprise software sales
(e.g., warranting no copyleft)

76. Agenda
What
is
IP,
and
Why
Do
We
Have
It?
The
Four
Kinds
of
IP
Copyrights
Trademarks
Patents
Trade
Secrets
Licensing
Open
Source
Miscellaneous

77. Lawsuits
• Patent and copyright cases are exclusively in
federal court.
• Trademark cases are usually in federal court.
– State trademark laws still exist, and may be
enforced in state court.
• Trade secrets cases may be in either federal or
state court.

78. How Long Does IP Last?
• Copyright
– life of author + 70 years
– 120 years or 95 years after publication for corporate
authorship
– until Mickey Mouse is no longer famous
• Patent
– 20 years from filing (plus adjustments)
• Trademark
– potentially forever
(as long as the mark is in use)
• Trade Secret
– potentially forever
(as long as the secret is kept)

79. Those Funny Symbols
© gives notice of copyright ownership
℗ is for audio recording copyright notices
™ gives notice that something is a trademark
℠ is for service marks
® is only for registered trademarks
uses a Creative Commons license

80. Thank you!
hgps://github.com/anseljh
@krinternetlaw
@anseljh
Ansel
Halliburton
KRONENBERGER
ROSENFELD,
LLP
(415)
955–1155
Ext.
122
ansel@krinternetlaw.com
hgps://krinternetlaw.com

81. Appendix 1: Links
• Opensource.org: Read the Open Source Definition,
review OSI-approved licenses
• tldrlegal.com: Better understand key open source
license terms
• choosealicense.com (by GitHub): Pick the right
license for your new project
• Copyright Statutes (17 U.S.C.)
• Trademark Statutes (15 U.S.C. Chapter 22)
• Patent Statutes (35 U.S.C.)
• California Trade Secret Statutes
(Cal. Civ. Code § 3426–3426.11)

82. Appendix 2: Attributions
• The Open Source Initiative logo is a trademark of the
Open Source Initiative.
http://opensource.org/trademark-
guidelines#Publications
• Beer mug by Nicubunu (public domain)
https://openclipart.org/detail/14854/beer-mug
• “Percentage of repositories licensed” chart by
Ben Balter at GitHub
https://github.com/blog/1964-open-source-license-
usage-on-github-com
• “Stop sign” photo by “Kt Ann” on Flickr (CC-BY)
https://www.flickr.com/photos/
54409200@N04/5070012761/
• Tom W. Bell,
Copyright Duration and the Mickey Mouse Curve