| Publication Date: | 2022 |
| Electronic Forms: | 10 |
| Available Formats: | Print (242 pages, softcover, 1 volume) |
| Electronic (searchable PDF via flash drive, CD, or immediate download) | |
| Both Print and Electronic formats | |
| Product #: | 945 |
This book is drawn from the 2022 edition of The Virginia Lawyer: A Deskbook for Practitioners.
Intellectual property permeates every part of the law, and IP litigation can be complex and confusing. Simply knowing the concepts, terms, and special concerns that arise in the context of IP disputes will better prepare and inform any litigator or transactional attorney about the most valuable aspect of their clients’ businesses, and enable counsel to identify issues before they become liabilities and deal with them appropriately.
Intellectual Property Law in Virginia will provide the basic information that every practicing lawyer needs about intellectual property protection in the United States, including patents, copyrights, trademarks, and trade secrets. Without this background, the unwary attorney may overlook issues that have important and far-reaching consequences to their clients. These specialized areas can appear not only in expected situations, such as the sale of business assets where the brand name or product name is involved, but also in unexpected situations, such as the simple employment contract where companies are more frequently requiring employees to assign to the employer all rights to any invention developed as part of their employment.
CHAPTER 1: TRADE SECRETS
1.1 INTRODUCTION
1.2 WHAT IS A TRADE SECRET?
1.3 PROTECTING AND MAINTAINING TRADE SECRETS
1.301 In General
1.302 Identify the Business’s Trade Secrets
1.303 Establish Rules Governing the Disclosure of and
Access to Trade Secrets
1.304 Establish Trade Secret Training Programs
1.305 Establish Security Measures
1.306 Use Post-Employment Restrictive Covenants
1.307 Conduct Exit Interviews
1.308 Institute Procedures to Investigate Suspected
Unauthorized Disclosure
1.4 LIMITING DISCLOSURE OF TRADE SECRETS
1.5 NONDISCLOSURE AGREEMENTS
1.501 For Employees
1.502 For Nonemployees
1.6 MISAPPROPRIATION OF TRADE SECRETS
1.7 REMEDIES FOR MISAPPROPRIATION OF TRADE
SECRETS
1.701 Injunctions
1.702 Damages
1.703 Punitive Damages
1.704 Attorney Fees
1.705 Criminal Penalties
1.706 Virginia Computer Crimes Act
1.8 DEFENSES TO MISAPPROPRIATION OF TRADE SECRETS
1.801 In General
1.802 Reverse Engineering
1.803 Independent Creation
1.804 Statute of Limitations
1.805 Information Widely Available and Generally Known
1.9 DURATION OF TRADE SECRET PROTECTION
1.10 TRADE SECRETS VERSUS OTHER FORMS OF
INTELLECTUAL PROPERTY
APPENDIX 1-1: INTELLECTUAL PROPERTY ASSIGNMENT
AGREEMENT FOR NEWLY HIRED EMPLOYEES
APPENDIX 1-2: MUTUAL NONDISCLOSURE AGREEMENT
(TRANSACTIONAL)
APPENDIX 1-3: NONDISCLOSURE AGREEMENT
(DEVELOPMENT OF INTELLECTUAL PROPERTY)
CHAPTER 2: COPYRIGHTS
2.1 INTRODUCTION
2.2 WHAT IS A COPYRIGHT?
2.3 CREATION AND OWNERSHIP OF COPYRIGHTED WORKS
2.301 In General
2.302 Works Created by Individuals
2.303 Joint Works
2.304 Works Made for Hire
2.305 Works Created by Independent Contractors
2.306 Works That Are Not Copyrightable
2.4 WHEN COPYRIGHT PROTECTION BEGINS
2.5 COPYRIGHT NOTICE
2.6 MORAL RIGHTS
2.7 COPYRIGHT REGISTRATION
2.701 In General
2.702 The Idea/Expression Dichotomy
2.703 Originality
2.704 Works of Authorship
2.705 Fixation in Tangible Form
2.8 COPYRIGHT PREREGISTRATION
2.9 COPYRIGHT REGISTRATION PROCEDURES
2.10 BENEFITS OF COPYRIGHT REGISTRATION
2.11 REGISTRATION OF COMPILATIONS
2.12 TERM OF COPYRIGHT
2.13 COPYRIGHT SEARCHING
2.1301 In General
2.1302 Copyright Search Procedures
2.1303 Avoiding Inconclusive Copyright Searches
2.1304 Counseling Clients About Copyright Searches
2.14 COPYRIGHT LICENSES, TRANSFERS, AND
ASSIGNMENTS
2.1401 In General
2.1402 Click-Wrap and Shrink-Wrap Licenses
2.1403 Termination of Transferred Rights
2.15 UNIFORM COMPUTER INFORMATION
TRANSACTIONS ACT
2.16 SECURITY INTERESTS IN COPYRIGHTS
2.17 COPYRIGHT INFRINGEMENT
2.1701 Jurisdictional Prerequisite
2.1702 Direct Liability
2.1703 Secondary Liability: Contributory and
Vicarious Infringement
2.18 DIGITAL MILLENNIUM COPYRIGHT ACT
2.1801 In General
2.1802 Online Service Providers
2.1803 Anti-Circumvention Provisions
2.1804 Impact of the DMCA
2.19 DEFENSES TO COPYRIGHT INFRINGEMENT
2.1901 Fair Use
2.1902 Library Exception
2.1903 First-Sale Doctrine
2.1904 Compulsory Licenses
2.1905 Home Use of Recording Devices
2.1906 Copyright Misuse
2.1907 Statute of Limitations
2.1908 Abandonment of Copyright
2.1909 Equitable Estoppel
2.1910 Innocent Intent
2.1911 Unclean Hands
2.1912 Staple Article of Commerce Doctrine
2.1913 DMCA Defenses
2.20 REMEDIES FOR COPYRIGHT INFRINGEMENT
2.2001 In General
2.2002 Injunction
2.2003 Seizure and Forfeiture
2.2004 Damages
2.2005 Costs and Attorney Fees
2.2006 Willful Infringement
2.21 COPYRIGHT VERSUS OTHER FORMS OF INTELLECTUAL
PROPERTY PROTECTION
2.22 FOREIGN COPYRIGHT PROTECTION
2.23 COMPANY LOGOS
APPENDIX 2-1: COPYRIGHT ASSIGNMENT AGREEMENT
(SOFTWARE)
APPENDIX 2-2: COPYRIGHT REGISTRATION APPLICATION
FOR A NONDRAMATIC LITERARY WORK (FORM TX)
APPENDIX 2-3: CLICKWRAP LICENSE AGREEMENT FOR
INTERNET ACCESSIBLE SOFTWARE
APPENDIX 2-4: COPYRIGHT ASSIGNMENT AGREEMENT (PLAY)
APPENDIX 2-5: SOFTWARE DEVELOPMENT AND
CONSULTING AGREEMENT
CHAPTER 3: TRADEMARKS
3.1 INTRODUCTION
3.2 WHAT IS A TRADEMARK?
3.3 TYPES OF MARKS
3.301 In General
3.302 Trademark
3.303 Service Mark
3.304 Certification Mark
3.305 Collective Mark
3.306 Trade Dress
3.307 Domain Name
3.4 SELECTING A TRADEMARK
3.5 SPECTRUM OF DISTINCTIVENESS
3.501 In General
3.502 Generic Marks
3.503 Descriptive Marks
3.504 Suggestive Marks
3.505 Arbitrary or Fanciful Marks
3.6 OWNERSHIP AND USE OF TRADEMARKS
3.7 CONVERGING USE OF TRADEMARKS
3.8 REGISTRATION OF TRADEMARKS
3.801 Trademark Searches Generally
3.802 Benefits of Trademark Searches
3.803 Federal Trademark Application
3.9 FEDERAL TRADEMARK EXAMINATION PROCESS
3.901 In General
3.902 Trademark Examiner’s Review
3.10 PUBLICATION PERIOD FOR FEDERAL TRADEMARKS
3.11 ISSUANCE OF FEDERAL REGISTRATION
3.12 ISSUANCE OF FEDERAL NOTICE OF ALLOWANCE
3.13 FEDERAL TRADEMARK REGISTRATION SYMBOL
3.14 BENEFITS OF FEDERAL TRADEMARK REGISTRATION
3.1401 In General
3.1402 Principal Register Versus Supplemental Register
3.1403 Benefits of Registration on the Principal Register
3.1404 Benefits of Registration on the Supplemental Register
3.15 FEDERAL TRADEMARK MAINTENANCE AND RENEWAL
FILINGS
3.1501 In General
3.1502 Affidavit of Continued Use: Section 8 Filing
3.1503 Affidavit of Incontestability: Section 15 Filing
3.1504 Affidavit of Use and Renewal: Section 8 and
Section 9 Filing
3.16 INTERNATIONAL TRADEMARK REGISTRATION:
THE MADRID PROTOCOL
3.1601 In General
3.1602 Application Process
3.1603 International Registration Steps
3.1604 Advantages of the Madrid Protocol System
3.1605 Disadvantages of the Madrid Protocol System
3.1606 Madrid Protocol Filing Trends
3.17 VIRGINIA TRADEMARK REGISTRATION PROCESS
3.18 BENEFITS OF STATE TRADEMARK REGISTRATION
3.19 VIRGINIA TRADEMARK RENEWAL FILINGS
3.20 MAINTAINING TRADEMARK RIGHTS
3.21 TERM OF TRADEMARK RIGHTS
3.22 TRANSFER, ASSIGNMENT, AND LICENSING OF
TRADEMARKS
3.2201 In General
3.2202 Licensing
3.23 TRADEMARK INFRINGEMENT GENERALLY
3.24 TRADEMARK TRIAL AND APPEALS BOARD
3.25 TRADEMARK INFRINGEMENT IN THE FOURTH CIRCUIT
3.26 TRADEMARK INFRINGEMENT IN VIRGINIA
3.27 DEFENSES TO TRADEMARK INFRINGEMENT
3.2701 Defenses Under the Lanham Act
3.2702 Defenses Under the Madrid Protocol
3.2703 Defenses Under Virginia Law
3.28 ANTICYBERSQUATTING CONSUMER PROTECTION ACT
3.2801 In General
3.2802 Elements of an ACPA Claim
3.2803 Liability Under the ACPA
3.2804 Bad Faith Test
3.2805 In Rem Jurisdiction
3.29 REMEDIES FOR TRADEMARK INFRINGEMENT
3.2901 Remedies Under the Lanham Act
3.2902 Remedies Under the ACPA
3.2903 Remedies Under the Madrid Protocol
3.2904 Remedies Under Virginia Law
3.30 ALTERNATIVE DISPUTE RESOLUTION
3.3001 Domain Name Disputes
3.3002 Elements of a Uniform Dispute Resolution
Process Claim
3.3003 Defenses
3.3004 Remedies
3.31 TRADEMARK DILUTION
3.3101 In General
3.3102 Is the Mark Famous?
3.3103 Has the Trademark Been Diluted?
3.32 REMEDIES FOR TRADEMARK DILUTION
3.33 TRADEMARK VERSUS OTHER FORMS OF
INTELLECTUAL PROPERTY PROTECTION
APPENDIX 3-1: TRADEMARK CERTIFICATE OF REGISTRATION
APPENDIX 3-2: TRADEMARK CEASE AND DESIST LETTER
APPENDIX 3-3: TRADEMARK ASSIGNMENT AGREEMENT
CHAPTER 4: PATENTS
4.1 INTRODUCTION
4.2 WHAT IS A PATENT?
4.201 In General
4.202 Specification
4.203 Claims
4.204 Drawings
4.205 Oath or Declaration
4.3 INVENTION CREATION AND PATENT OWNERSHIP
4.301 Individual Inventors
4.302 Joint Inventors
4.303 Inventions Created by Employees for Employers
4.4 PRESERVATION OF PATENT RIGHTS
4.5 WHO MAY FILE A PATENT APPLICATION?
4.6 PATENT EXAMINATION PROCESS
4.7 BENEFITS OF PATENTING
4.8 CATEGORIES OF UNITED STATES PATENTS
4.801 In General
4.802 Utility Patents
4.803 Design Patents
4.804 Plant Patents
4.9 TYPES OF PATENT APPLICATIONS
4.901 In General
4.902 Provisional Applications
4.903 Nonprovisional Applications
4.904 Patent Cooperation Treaty Applications
4.10 PATENTABILITY OF INVENTIONS
4.1001 In General
4.1002 Novelty
4.1003 Utility
4.1004 Nonobviousness
4.1005 First to Invent
4.1006 Patentable Subject Matter
4.1007 No Double Patenting
4.11 PATENT TERM
4.1101 Utility and Plant Patents
4.1102 Design Patents
4.1103 Term of Unexpired Patents in Force After
June 8, 1995
4.1104 Submarine Patents
4.1105 Maintenance Fees
4.1106 Effect of Expiration
4.12 PATENT MARKING
4.1201 Patent Pending Notice
4.1202 Patent Notice
4.13 PATENT LICENSING
4.14 SECURITY INTERESTS IN PATENTS
4.1401 Creating a Security Interest in Intellectual Property
4.1402 Characterization of an Intellectual Property Asset
4.1403 Perfecting Liens on Intellectual Property Assets
in Virginia
4.1404 Perfecting Liens on Federally Filed or Registered
Intellectual Property Assets
4.15 INTELLECTUAL PROPERTY VALUATION
4.1501 In General
4.1502 Asset Valuation
4.1503 Exceptions to Dual Searching
4.1504 Patent Auctions
4.16 PATENT INFRINGEMENT
4.1601 In General
4.1602 Direct Infringement
4.1603 Active Inducement to Infringe
4.1604 Contributory Infringement
4.17 TEST FOR INFRINGEMENT
4.1701 In General
4.1702 Patented Inventions Infringing Other Patents
4.18 REMEDIES FOR INFRINGEMENT
4.1801 Injunctions
4.1802 Lost Profits
4.1803 Reasonable Royalties
4.1804 Increased or Trebled Damages
4.1805 Attorney Fees
4.1806 Statute of Limitations
4.19 DEFENSES TO PATENT INFRINGEMENT
4.1901 Invalidity Defenses
4.1902 Unenforceability Defenses
4.20 PATENT VERSUS OTHER FORMS OF INTELLECTUAL
PROPERTY PROTECTION
APPENDIX 4-1: REGISTERED UTILITY PATENT
APPENDIX 4-2: SIMPLE INVENTION RIGHTS ASSIGNMENT
BY EMPLOYEE TO EMPLOYER
TABLE OF AUTHORITIES
INDEX
Thomas M. Dunlap, Dunlap Bennett & Ludwig PLLC / Leesburg
Thomas M. Dunlap, co-author of Chapter 8, manages the intellectual property practice of Dunlap Bennett & Ludwig, PLLC, which was named a Best of Virginia firm by Virginia Living for each year from 2014 through 2017. Mr. Dunlap’s practice focuses on transactions and disputes in patent, copyright, and trademark. He has handled patent, copyright, and trademark cases in courts across the United States, including recent success in winning three major preliminary injunctions in patent cases (EDTX and DNJ) and successfully arguing a number of major patent matters before the Federal Circuit. Mr. Dunlap has taught numerous CLE courses in intellectual property (including recently Lost Profits: The Footprint Approach and Determining Damages in Patent Infringement Cases, A 2017 Perspective) and has often been named a Virginia and Washington D.C. SuperLawyer. He has also been included in Virginia Business magazine’s Legal and Business Elite. Mr. Dunlap is a Certified Patent Valuation Analyst and is also a founder and patent holder of the biotechnology company Ceres Nanosciences, Inc. He has served as a special prosecutor in Loudoun County and has a background in retail commercial banking and finance at JP Morgan Chase and the Bank of New York.
David Ludwig, Dunlap Bennett & Ludwig PLLC / Leesburg
David Ludwig, co-author of Chapter 8, is a partner at Dunlap Bennett & Ludwig, PLLC and co-chair of the firm’s litigation group. Mr. Ludwig’s practice focuses on intellectual property disputes in the areas of copyright, patent, trademark, and domain names, in addition to commercial transactions and government contracts. He has represented manufacturing companies in complex patent infringement matters, technology companies in trademark infringement matters, and copyright holders in infringement actions against companies that include Disney, ABC, and Oracle. Mr. Ludwig is an adjunct professor on intellectual property matters at the George Washington University Law School, and he has taught numerous CLE courses on intellectual property and domain name issues. He maintains an “AV Preeminent” peer review rating from Martindale-Hubbell and has been included in Virginia Business magazine’s Legal Elite.
Mr. Ludwig received his B.A. from Sonoma State University and his J.D. from the George Washington University Law School. He regularly volunteers at community non-profit organizations and serves as President of the Board of Directors of Every Citizen Has Opportunities, Inc., a nonprofit that provides employment, vocational training, and community integration opportunities for persons with intellectual and developmental disabilities.
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