Med Law Blog

Issues arise when one re-publishes material created by others -- i.e., another's intellectual property. Generally, the intellectual property involves copyrights and trademarks/servicemarks. Text, images, and sounds on a web page may be copyrighted. Trademarks and servicemarks which are commercial identifiers for a particular company's product or service are proprietary to that company. Both copyrighted and trademarked material must be used and referenced appropriately.

Is hyperlinking to another site permissible?

Yes. One can hyperlink to another site and even display the web address (also known as the Uniform Resource Locator ("URL")). See, e.g., Ticketmaster Corp. v. Tickets.com, 2003 U.S. Dist. LEXIS 6483 (C.D. Cal. 2003) ("A Uniform Resource Locator (URL) is simply an address, open to the public, like the street address of a building, which, if known, can enable the user to reach the building. There is nothing sufficiently original to make the URL a copyrightable item, especially the way it is used."), aff'd by Ticketmaster Corp. v. Tickets.com, 2005 U.S. App. LEXIS 6227 (9^th Cir. 2005).

Can I copy relevant portions of a web page?

Yes, short quotations are generally permitted as "fair use" under copyright law. Fair use means that one need not permission from the copyright owner of the material. (In contrast, however, one should obtain permission from the copyright owner if one wants to replicate an entire web page or a substantial portion of it.)

Can I use the facts and ideas from another web page?

Yes. One is free to disseminate facts and ideas gathered from another web page. Copyright only extends to original expression, but not facts and ideas.

Can I use images from another web page?

One can copy images from another web page if it is done for the purpose of comment, criticism, or some other "transformative" (i.e., productive) use. The use of smaller versions of images would point more towards fair use. However, if the use of the images is not necessary, then it is best not to do so.

Can I reference another's trademark or servicemark?

Yes. Reference the mark so that it is emphasized such as by underlining, italicizing, bolding, capitalizing, and/or putting the mark in quotation marks along with the appropriate SM (for an unregistered servicemark or a state-registered servicemark), TM (for an unregistered trademark or a state-registered trademark), or ® symbol (for a federally registered servicemark or trademark). Use the mark as an adjective followed by the generic name of the products/services associated with the mark. Do not use the mark in a plural or possessive form. Do not use the mark as a verb. See, e.g., Example

Is it permissible to post other's comments to one's blog?

In all likelihood, a person who posts a comment to a blog is granting an implied license to publicly display the comment to the blog (unless, of course, that person requests that such a comment not be published).

What is considered "fair use" under copyright law?

"Fair use" is not a litmus test. However, there are four factors that courts generally consider when determining if the challenged use is "fair use":

1) The purpose and character of the use.

• Transformative uses are favored over mere copying.
  • E.g., comment, criticism, news reporting, etc.
• Non-commercial use is favored over commercial use.

2) The nature of the copyrighted work.

• Use of fictional material is favored over non-fictional material (however, please keep in mind that facts and ideas are not copyrightable subject matter -- therefore, if one wants to paraphrase, this is not be a copyright violation).
• Use of published material is much favored over unpublished material.

3) The amount and substantiality of the portion used.

• Copying large portions or the entire work or the heart of the work (i.e., the most memorable portion of the work) is not favored.
• Using short quotations/excerpts is favored.

4) The effect on the market or the potential market.

• If the challenged use substitutes for the market of the original work or if it diminishes the market or potential market of the work, then the use is not favored.
  
  Lee Kim
  412-594-3915
  lkim@tuckerlaw.com

| Posted By Michael Cassidy In Intellectual Property | 0 Comments | Permalink

Everyone has heard of the term "trade secret" but what exactly is it? This article provides an overview of trade secrets law in Pennsylvania.

1.         What kind of information is considered a "trade secret"?

In 2004, Pennsylvania adopted the Uniform Trade Secret Act ("UTSA"). The Pennsylvania statute now defines a "trade secret" as follows: "[i]nformation, including a formula, drawing, pattern, compilation including a customer list, program, device, method, technique or process that: (1) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use. (2) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy."

In other words, a "trade secret" is confidential, proprietary information which is not publicly known or otherwise discoverable (e.g., reverse engineered). The information must provide a potential or actual economic advantage over one's competitors. To safeguard the trade secret, the company should have policies or procedures in place to vigorously safeguard the confidential nature of the trade secret. If the trade secret is ever publicly disclosed (whether intentionally or unintentionally), the information would no longer proprietary to the company. Employees have an implied, contractual duty to keep such information confidential under Pennsylvania common law. 

            A.        Examples of Trade Secrets

A non-exhaustive list of trade secrets include business or marketing plans, chemical or pricing formulas, software, design or manufacturing processes, and customer lists. Classic examples of trade secrets include the secret formula for Coca-Cola® or Colonel Sander's secret recipe of eleven herbs and spices for Kentucky Fried Chicken®. Inventions may be trade secrets, but they must not be patented since issued patents are accessible to the public.

2.         How are trade secrets lost or stolen?

            A.        Loss of Trade Secret Protection

Trade secret protection is lost once the proprietary information becomes public. For example, if a patent application is published, the invention is no longer a trade secret since the information is now public. Further, even if a patent application is not published while it is pending with the patent office, it will become published once granted and so the trade secret is therefore "lost."

Trade secret protection may also be lost if one is disclosing proprietary information to a third party in the absence of a confidentiality agreement.

Trade secret protection may be lost if the company does not vigorously enforce trade secret policies to keep the confidential, proprietary information a secret.

            B.        Theft of Trade Secrets

Trade secrets are stolen when an unauthorized third party unlawfully acquires the trade secret information or when an authorized party (e.g., an employee or contractor) discloses the information to an unauthorized third party (e.g., a competitor). 

The following are examples of how trade secrets can be stolen:

• unauthorized disclosure by a trusted employee (e.g., manager, engineer, scientist, etc.) or other trusted individual (e.g., contractor) who is currently with or has left the employment of the company;
• unauthorized disclosure by suppliers, consultants, financial advisors or others who entered into non-disclosure (i.e., confidentiality) agreements with the company;
• unauthorized disclosure by any person owing an implied duty to the company not to make such a disclosure (e.g., directors, corporate officers, high-level employees); and
• industrial espionage.

3.         How are Trade Secrets Enforced?

One can sue for trade secret misappropriation (i.e., theft) if an unauthorized disclosure of trade secret information has occurred. The remedies for such a suit include an order of the court in the form of an injunction which requires those who are in unlawful possession of the trade secret information to refrain from using it or disclosing it to others so as to prevent the trade secret information from being public (and thus the loss of the trade secret protection). The court may also award the company monetary damages to compensate for any economic loss suffered as a result of the trade secrets theft. Criminal penalties may also apply for theft of trade secrets.

4.         Can Trade Secrets be Sold?

Yes. Trade secrets are a form of intellectual property (i.e., proprietary information) and thus may be sold as intangible assets, just as patents, trademarks, and business goodwill may be transferred with the name of a company.

Conclusion

Adequate and effective use and management of trade secret information is necessary to help maintain the competitive edge. Establishing and maintaining best trade secret practices as part of one's global business strategy is a necessity. Vigorously protecting intangible assets such as trade secrets gives companies a competitive edge in an information-driven world where the intangible assets increasingly outweigh the tangible assets. 

Lee Kim
412-594-3915
lkim@tuckerlaw.com

| Posted By Michael Cassidy In Intellectual Property | 0 Comments | Permalink

By: Lee Kim, Esq.

Who owns the intellectual property rights (e.g., copyrightable material, invention, etc.) if one's employment contract is silent on the issue and is in the absence of an intellectual property ("IP") policy?

The following are situations in which the employer owns the IP:

-           Intellectual property has been created by an employee within the scope of employment.

-           Intellectual property has been created during working hours with the use of employer's facilities.

-           Intellectual property has been specially commissioned by the employer pursuant to a written agreement.

-           Intellectual property has been funded by federal funds, state funds, or third party sponsorship.

The following are exemplary in which the employee owns the IP:

-           Intellectual property created is unrelated to employee's job responsibilities and the employee made no more than incidental use of the employer's resources.

-           Employer has released the intellectual property to the inventor.

-           Employee has created a scholarly work, unless the employer specially commissioned such work (e.g., specifically hired the employee to create such a work or otherwise required the employee to create such a work).

| Posted By Tucker Arensberg Attorneys In Intellectual Property | 0 Comments | Permalink

Securing Rights to Your Website, By: Lee Kim

About the author: Lee Kim is an intellectual property associate at Tucker Arensberg, P.C.  She specializes in copyrights, trademarks, trade secrets, and patents.  See http://www.tuckerlaw.com/att/alpha/K/kim_lee.html

1. Securing Your Domain Name

If you are creating a website, you should first register at least one domain name of your choice with a reputable domain name registrar.  While there are many domain name registrars out there, well-regarded registrars include register.com, Go Daddy, and Network Solutions.

Tip: It is recommended that you register the domain name yourself instead of having a third party (e.g., consultant) do this on your behalf.  Domain name registrars such as the ones named above generally have support numbers that one can call if one needs assistance registering the domain name(s) of choice.

Why this is recommended: There are individuals, companies, and other entities (a.k.a. "cybersquatters") that attempt to make money by holding one's domain name hostage.  For example, if one owns a trademark and the domain name that is being held hostage is identical or substantially similar to that trademark, then one needs to go through a dispute resolution process such as the Uniform Dispute Resolution Policy ("UDRP"), below.

Tip: Since domain name registration is relatively inexpensive, it is recommended that one register several domain name variants, such as top level domain ("TLD") variants (e.g., .org, .com, .net, .us, and the like) and singular/plural variants of the domain name.  You also may consider registering commonly misspelled variants of your domain name.  Also, there are commercial services which monitor the web for misuse of your domain name.  Thomson CompuMark is one such reputable provider.  Thomson CompuMark's website has the following Uniform Resource Locator ("URL"): http://www.thomson-thomson.com.

Why this is recommended: There are individuals, companies, and other entities (a.k.a. "typosquatters") that attempt to make money off of typo-variants of domain names and oftentimes ask for exorbitant sums of money in exchange for these domain names.  See, e.g., http://searchengineland.com/070711-083600.php for an article on domain name best practices.  See, e.g., http://www.icann.org/tlds/ for an informational page on TLDs.  For example, if one owns a trademark and the domain name that is being held hostage is identical or substantially similar to that trademark, then one needs to go through a dispute resolution process such as the Uniform Dispute Resolution Policy ("UDRP"), below.

Question: What if someone holds my domain name hostage (i.e., a cybersquatter) or someone has a typo-variant of my domain name (i.e., a typosquatter)?

Answer: Often, the domain name is parked and the domain name owner makes revenue using click-through links.  Some domain name registrars and other Internet domain services offer domain name holders cash for parked domain names in exchange for the traffic that their respective domain name generates through the click-through links.  See, e.g., https://www.godaddy.com/gdshop/park/landing.asp?se=; http://www.whypark.com/.  If the cybersquatter or typo-squatter has a domain name that is identical or substantially similar to your trademark or service mark, has no rights or legitimate interests in the domain name, and is using the domain name in bad faith, then you may be able to successfully dispute the third party's ownership of that domain name and request transfer or cancellation of the domain name by filing a Uniform Dispute Resolution Policy ("UDRP") complaint against that third party.  See http://www.icann.org/dndr/udrp/policy.htm for the UDRP policy.  The complaint may be filed with a dispute resolution provider such as the National Arbitration Forum or the World Intellectual Property Organization.
 
Question: Can I register my domain name as a trademark or a service mark?

Answer: Yes, if the domain name functions as a trademark or service mark which serves to identify your company's name, products, and/or services.  The domain name may be registered with the United States Patent and Trademark Office ("USPTO") under certain conditions such as these. 

Question: What are the benefits of trademark or service mark registration of my domain name?

Answer: By obtaining a trademark or service mark registration with the USPTO, one may have legal recourse against a cybersquatter or typo-squatter under federal law.  Further, having the trademark or service mark registration leads to a stronger case if one has to file a complaint based upon the UDRP.  See, e.g., http://www.uspto.gov/web/offices/tac/tmfaq.htm#Basic002.

| Posted By Tucker Arensberg Attorneys In Intellectual Property | 0 Comments | Permalink