Intellectual Property Issues For Information Technology Professionals Presented to: Organizational Systems Research Association 23rd Annual Conference, Pittsburgh, Pennsylvania February 6, 2004 : Intellectual Property Issues For Information Technology Professionals Presented to: Organizational Systems Research Association 23rd Annual Conference, Pittsburgh, Pennsylvania February 6, 2004 Franklin B. Molin
© 2004 Kirkpatrick & Lockhart LLP
Overview : Overview General intellectual property law principles
Copyright law and works-made-for-hire
Business software copyrights
The SCO Group v. IBM
General Intellectual Property Law Principles : General Intellectual Property Law Principles
Subject Matter Terms of Art : Subject Matter Terms of Art Copyrights – Works
Trademarks – Marks
Patents – Inventions
Trade Secrets, Confidential Information, and Know-How
Gross Generalizations : Gross Generalizations Copyrights – Creative works (e.g. art and software)
Trademarks – Brand names
Patents – Technology
Trade Secrets – Technology and business information
Patents & Copyrights : Patents & Copyrights Article I, Section 8, Paragraph [8]
“Congress shall have Power: To promote the Progress of Science and the Useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”
Trademarks : Trademarks Article I, Section 8, Paragraph [3]
Commerce Clause
“The Congress shall have Power: To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes”
General Patent Principles : General Patent Principles Statute: 35 U.S.C. section 1 et seq.
What can be protected: Process, machine, article of manufacture, or composition of matter, business method, design for an article of manufacture
Right granted: Right to exclude others from making, using, selling, offering to sell, and importing the claimed invention
General Patent Principles : General Patent Principles Term = 20 years from filing date
Invention must be: (1) useful/utility, (2) new/novel, and (3) unobvious
Patent issues after substantive examination.
General Trademark Principles : General Trademark Principles Statute: 15 U.S.C. section 1051 et seq.
What can be protected: Word, design, slogan, color, sound, trade dress
Must use the mark in commerce to gain rights
No merely descriptive or generic words
Right granted: Right to exclude others from using the mark or colorable imitations
General Trademark Principles : General Trademark Principles Measure of infringement: The use of the mark on the goods or services causes a likelihood of confusion on the part of the relevant consumers
Term: potentially forever
Registration optional and recommended
Application is substantively examined
General Copyright Principles : General Copyright Principles Statute: 17 U.S.C. section 101 et seq.
Subject Matter of Copyright : Subject Matter of Copyright Works of authorship fixed in a tangible medium of expression
Original creative expression
Includes: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works, sound recordings; and architectural works.
Copyright Does Not Protect : Copyright Does Not Protect 1. Ideas.
2. Procedures, processes, systems, methods of operation, concepts, principles, or discoveries.
3. Works of the U.S. government.
4. Works with no expressive features. The work must have minimal creativity.
Copyright Does Not Protect : Copyright Does Not Protect 5. Words and short phrases such as titles, product names, and slogans.
6. Facts. However, the original selection, coordination, or arrangement of such facts can be protected.
7. Merger of the idea and the expression.
8. Scenes-a-faire – items of expression that are commonly included in any expression of a particular topic.
Exclusive Rights in Copyrighted Works : Exclusive Rights in Copyrighted Works 1. To reproduce the work;
2. To prepare derivative works based on the work;
3. To distribute copies of the work;
4. To perform the work publicly;
5. To display the work publicly; and
6. To perform a sound recording publicly by means of a digital audio transmission.
Copyright Infringement : Copyright Infringement 1. A valid copyrighted work.
2. Copying the protectable expression in the copyrighted work.
3. Whether in the eyes of the average lay observer the works are substantially similar as to the protectable elements.
Remedies for Copyright Infringement : Remedies for Copyright Infringement An injunction prohibiting the infringer from copying the work.
Actual damages.
Profits of the infringer.
Statutory damages in the range of $750 to $30,000. Up to $150,000 if willful.
Costs and attorney’s fees.
Copyright Fair Use Preamble : Copyright Fair Use Preamble “. . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research . . .”
Copyright Fair Use Four Non-exclusive Factors : Copyright Fair Use Four Non-exclusive Factors 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.
“Works Made For Hire” : “Works Made For Hire” Employees
Works made by traditional employees
Works made by “employees” under CCNV v. Reid
Independent Contractors
Specially ordered or commissioned work
Written agreement that it is a work made for hire
Specified categories of works
Copyright Term : Copyright Term Life of the author plus seventy (70) years
Works Made For Hire, Anonymous, and Pseudonymous Works – 95 years from publication, or 120 years from creation, whichever expires first
Copyright Registration : Copyright Registration Registering
File application with the U.S. Copyright Office
Deposit copies of the work
$30
Benefits
Access to federal courts
Prima facie evidence of validity
Statutory damages
Attorney’s fees
Copyright Notice : Copyright Notice © 2004 Franklin B. Molin
© 2004 Kirkpatrick & Lockhart LLP
Business Software Copyrights : Business Software Copyrights Issue: Unlicensed copies of commercial software loaded onto company computers
Business Software - Background : Business Software - Background Examples of business software
Microsoft
Symantec
Adobe
Thirty-nine percent of the world’s software is unlicensed
Business Software : Business Software Business Software Alliance – BSA
http://www.bsa.org/usa/
Association of popular business software manufacturers
Members include:
Microsoft
Symantec
PeopleSoft
Intel
IBM
Adobe
Business Software : Business Software BSA is very vigilant about enforcing against the unlicensed copies of its members’ software on business computers
They may find out for instance through a disgruntled employee
Will doggedly pursue until they reach a satisfactory resolution
Business Software : Business Software Click on BSA’s “News Room” and you'll see their press releases publicizing the settlements they have extracted out of various companies
From a few thousand dollars to many hundreds of thousands of dollars
Business Software - What To Do : Business Software - What To Do Properly license all software
Create awareness about copying of software onto company computers
Information Systems should set up measures to prevent unlicensed copying, such as creating proper channels for installing new software, limits on downloading ability of individual users (administrative rights), and periodic software inventories
SCO Group v. IBM : SCO Group v. IBM
SCO Group v. IBM - Background : SCO Group v. IBM - Background UNIX
Proprietary operating system
AT&T
AT&T Technologies
Novell
Caldera (formed by Novell founder, later acquired Santa Cruz Operations, Inc.)
The SCO Group
SCO Group v. IBM - Background : SCO Group v. IBM - Background UNIX
Licensed over the years to many companies and slightly modified to create many “flavors”
IBM-Unix, HP-Unix, Sun-Unix, SGI-Unix, and SCO-Unix (OpenServer, for Intel Chips)
OS of choice for virtually all fortune 1000 companies
SCO-IBM – Project Monterey (for use on Intel Chip)
SCO Group v. IBM - Background : SCO Group v. IBM - Background Linux
Open source operating system
Linus Torvalds (now with Open Source Development Labs)
GNU Organization – General Public License (GPL) – No royalties – “Copyleft”
IBM – Substantial contribution to Linux
Linux vendors – Red Hat and SuSE Linux
Novell purchasing SuSE Linux
SCO Group v. IBM - Background : SCO Group v. IBM - Background Linux Users
Munich, Germany
Hewlett-Packard
Sun Microsystems
TiVo products
Motorola
Many internet servers
SCO Group v. IBM – Case : SCO Group v. IBM – Case Caldera Systems, Inc. d/b/a The SCO Group v. International Business Machines, Inc.
March 6, 2003
Utah State Court
Counsel for SCO - David Boies – led the U.S. government case against Microsoft
SCO Group v. IBM – Case : SCO Group v. IBM – Case Claims
Misappropriation of trade secrets
Unfair competition
Interference with Contract
Breach of Contract
No copyright claims!
SCO Group v. IBM – Case : SCO Group v. IBM – Case Asking for $3 Billion
Removed to Federal Court – March 2003
IBM Counterclaim against SCO - August 2003
Motion To Compel – To be heard February 6, 2004
SCO Group v. IBM - History : SCO Group v. IBM - History May 2003 – SCO sends letters to large Linux users
$699 license to use Linux on a single-processor server
$199 license to use on personal computers
December 2003 – SCO sends more letters to a few hundred (ultimately to be 3,000) UNIX licensees asking for certain information about their use of Linux
SCO Group v. IBM – Red Hat : SCO Group v. IBM – Red Hat Red Hat v. The SCO Group
August 4, 2003
Red Hat is asking the court for a declaratory judgment that there is no infringement of trade secrets or copyright by Red Hat using Linux
Asserting false advertising, unfair competition, deceptive trade practices, trade libel, and disparagement
SCO Group v. IBM – Defense Fund : SCO Group v. IBM – Defense Fund Open Source Development Labs (a Linux corporate software consortium) has set up a defense fund to protect users of Linux
For Linux users who are sued for Linux issues common in the industry, not for issues particular to that user or company
IBM, Intel, MontaVista Software and others have contributed up to $3 Million (goal is $10 Million)
Hewlett-Packard indemnifies its Linux customers against SCO Group actions
SCO Group v. IBM – MyDoom : SCO Group v. IBM – MyDoom MyDoom worm – comes as an email, copies itself, opens a backdoor, and installs a keystroke reading program
1 in 12 emails
Open source fan? – MyDoom targets Microsoft Windows, and it launched a successful denial of service attack on the SCO Group’s website
SCO Group v. IBM – Novell : SCO Group v. IBM – Novell SCO Group v. Novell
Novell was prior owner of UNIX version in question
August 4, 2003 letter from Novell to SCO
“We dispute SCO’s claim to ownership . . . to copyrights in UNIX System V”
Novell has some copyright registrations
SCO has some copyright registrations
SCO Group v. IBM – Novell : SCO Group v. IBM – Novell SCO Group v. Novell
SCO Group sued Novell in Utah state court in January 2004 for “slander of title”
SCO Group v. IBM : SCO Group v. IBM SCO has issued statements that the GNU GPL violates copyright and patent laws and violates the U.S. Constitution
In Germany, SCO has been fined 10,000 Euros for violating temporary orders to cease disparaging Linux
Australian consumer authorities have sought clarification of SCO’s claims
February 6, 2004, a hearing in the district court in Utah in the main case on a motion to compel, to force SCO to reveal exactly what part of its copyrighted code was imported into Linux
Thank you! : Thank you! Please feel free to contact me if you have any questions or comments:
Franklin B. Molin
Kirkpatrick & Lockhart LLP
Henry W. Oliver Building
535 Smithfield Street
Pittsburgh, PA 15222
412-355-6251 (phone)
412-355-6501 (fax)
fmolin@kl.com