Review by Steve Harkness
ALFRED A. FRESSOLA, Esq., Partner: Ware, Fressola, Maguire & Barber LLP
The law firm of Ware, Fressola, Maguire & Barber LLP was founded in 1921 and is located in Monroe, CT. The Firm specializes in intellectual property law.
AL FRESSOLA graduated from the University of Connecticut with an Honors B.S.E.E. and an M.S.E.E. Then he received an Honors J.D. from the University of Connecticut School of Law. Al was admitted to the Connecticut Bar in 1973 and then to the Bars of the U.S. District Court for the District of Connecticut, the U.S. Court of Appeals – Second Circuit, and the U.S. Court of Appeals for the Federal Circuit. Al is also a registered patent attorney. He has served as the Chairman in the Intellectual Property Law Section of the Connecticut Bar Association. He holds memberships in the Institute of Electrical and Electronics Engineers, the American Association for the Advancement of Science,
Al’s 27 slides were very informative and presented in a very logical and methodical manner. He outlined the four different intellectual property types: patents, copyrights, trademarks and trade secrets.
Al’s first slide defined the difference between copyright law and patent law by showing one sentence from our US Constitution that empowers our US Congress “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.” And reminding us that Science = writings = copyright law… and Useful Arts = discoveries = patent law.
Copyright protects original works of “authorship fixed in any tangible medium of expression” like literary works, musical works, dramatic works, pictures, graphs, sculptures, audio & video, and architectural. Exclusive rights to these works prevents others from reproducing your work, displaying it publicly or even preparing a derivative work, such as a translation. A work prepared by an employee that is within the scope of his or her employment objective is considered to be the property of the employer. Generally, the owner of any resulting copyright is the employer. The company generally has an employee agreement that covers ownership of copyrights and other intellectual property.
“The fair use of a copyrighted work…for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research is not an infringement of copyright.” [quoted from Federal law:17 U.S.C. 107] Factors that determine if you may use the copyrighted material include non-profit, educational purpose rather than commercial use, the proportion of the work copied, and the effect of the use upon the potential market value of the copyrighted work. An infringer of copyright is liable to the copyright holder for damages. Statutory damages in lieu of actual damages may be available and can range from $750 to $30,000 or if willful up to $150,000. For works created on or after January 1, 1978, the duration of a copyright is the lifetime of the author plus 70 years when the work is fixed in a tangible medium of expression. For works made for hire, the employer is considered the author and owns all rights of the copyright and is good for the next 95 years.
Software is a “writing” like a book and is copyrightable.
Trademarks include a word like “NIKE” or a design like the “Nike Swoosh or check mark” or a combination of the two. A “3D-Object” may be a trademark, such as the 3D Coke bottle. A sound may be a trademark, such as the ESPN “sound” of a blaring megaphone. There are four categories of “Word Marks”… generic, descriptive, suggestive and arbitrary or fanciful. Generic marks are not registrable. The duration of trademark registration is in 10 year increments provided that there is a continued use of the trademark. Trademark infringement occurs when a third party uses a mark that is confusingly similar to the registered mark.
A trade secret is information, including a formula, pattern, compilation, program, device, method, technique, process, drawing, cost data, or customer list that is considered and treated as secret by the owner. Trade secret law is a state issue and thus can vary between states.
A patent gives the patent owner an exclusive right to exclude others from making, using, offering to sell, selling or importing the patented invention in the United States, while the patent is in force (approximately 20 years from its filing date, but does not begin until the patent issues). There are 3 types of patents: 1. A utility patent protects a new or improved machine, article of manufacture or process; 2. A design patent protects an ornamental design of a manufactured item for 15 years from date of issue. 3. A plant patent protects asexually-reproduced new plant varieties for a period of 20 years. The patent office provides a quick reference flowchart that provides patent eligibility guidance for invented products and processes.
Certain computer programs can be patented if the overall invention is significantly more than an abstract idea.
There are 3 types of patent infringement… 1. Direct infringement for manufacture, use or sale of any patented invention; 2. Indirect / inducement states that whoever actively induces infringement of a patent shall be liable as an infringer; 3. Indirect / contributory infringement is for offering to sell a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use. Your remedies for patent infringement include… 1. Injunction against an infringer to stop the infringing activity. 2. Damages suffered by the patent owner. Attorney fees and increased damages may be available if the court finds that the case is exceptional.
This was a very interesting and informative subject with several questions posed during and after the presentation.