MBA560 Class 5: Intellectual Property

  1. Copyrights
    Protects creative works. Books, plays, songs, movies, etc. Business context?

    Exists upon creation.

    Can be registered for extra protection

    Gives the creator the right to dictate when the work can be copied (or otherwise used).

    Copyright Definition: the exclusive legal right, given to an originator or an assignee to print, publish, perform, film, or record literary, artistic, or musical material, and to authorize others to do the same.
  2. Trade-marks
    Protects logos, slogans, phrases used in association with certain wares and services.

    Common law (lower level) protection upon use

    Registration provides superior protection

    Registration lasts 15 years, and can be renewed

    Trademarks Definition: a symbol, word, or words legally registered or established by use as representing a company or product.
  3. Patents
    Government grant giving inventor exclusive right to make, use or sell the invention.

    • -Must be:
    • Novel
    • Not obvious
    • Useful

    20 years from date of filing
  4. Confidential Information
    • A form of intellectual property which has the following attributes:
    • -Has commercial value
    • -Is not in the public domain
    • -Is reasonably protected
    • -Is communicated to others in confidence

    Unlike other forms, CI may last indefinitely

    • Examples of CI:
    • Ideas
    • Data
    • Customer and supplier lists
    • Business operations
    • Blueprints and designs
    • Internal business processes and methods
    • Financial information
    • Business plans
    • Recipes (such as food and chemical recipes)…
  5. Patents must be..

    Not obvious

  6. Copyright gives...
    the author the right to determine how their property can be used. 

    Copyright is automatic... but anyone who rights something that is creative automatically has copyright.  The benefit of having it registered makes it more official.  The duration of time you have copyright is generally the life of the creator plus 50 years.  After this, it becomes the public domain.
  7. When can you use copyrighted materials?
    Parodies, evaluating works (e.g. honest trailer), photocopying parts of an academic article

    After 50 years + the persons life (becomes public domain)

  8. Oracle Vs Java
    Jury decided that google was correct... the use of the API was allowable based on the fair use doctrine.  Even though google was using something similar to Oracles code, it was permitted.

    Oracle America, Inc. v. Google, Inc. was a dispute related to Oracle's copyright andpatent claims on Google's Android operating system. In May 2012, the jury in this case found that Google did not infringe on Oracle's patents, and the trial judge ruled that the structure of the Java APIs used by Google was not copyrightable.[1][2][3] The parties agreed to zero dollars in statutory damages for a small amount of copied code.[4] On May 9, 2014, the Federal Circuit partially reversed the district court ruling, ruling in Oracle's favor on the copyrightability issue, and remanding the issue of fair use to the district court.[5][6] A petition for certiorari was denied by the United States Supreme Court on June 29, 2015. A second trial began May 9th, 2016, in which Oracle soughtUS$8.8 billion in damages.[7] On May 26th, 2016, the trial jury sided in favor of Google, ruling the action to be fair use.[8]

    • Facts
    • [edit]Java was originally developed at Sun Microsystems starting in 1991. It included a new programming language, a virtual machine, and a set of libraries for use with the language.[9]Android, Inc. was founded in 2003 by Andy Rubin, Rich Miner, Nick Sears, and Chris White to develop a mobile phone platform.[10][11]Google purchased Android in 2005 and continued developing the Android operating system.[11] Google released a beta of the Android platform on November 5, 2007, noting that it would use some Java technologies.[12][13] Sun CEO Jonathan Schwartz responded the same day, congratulating Google and saying they had "strapped another set of rockets to the community's momentum – and to the vision defining opportunity across our (and other) planets."[14] Google released the Android software development kit (SDK) on November 12, 2007.[15] Amongst other APIs, Android included Apache Harmony implementations of some of the APIs[16] from theJava SE specification.[17] Google negotiated with Sun about possible partnership and licensing deals for Java, but no agreement was reached.[17][18]Oracle purchased Sun in January 2010, and continued developing Java.[19] Oracle continued discussing a possible licensing deal, but an agreement again was not reached.[18] Oracle sued Google for copyright and patent infringement in August 2010.[20]
  9. Examples of trademarks
    Names, logos and slogans tied to a particular service

    • Golden Arches
    • shamrock Shake
    • 7-11

    • Maple leaf is only trademarked by Canada
    • Can't trademark anything with the government of canada

    automatic upon use... but registered trademarks are more protected.  TM is lower R is higher protection.
  10. TM is...
    lower protection of a trademark
  11. R is...
    registered trademark higher protection
  12. Trademark protection laws last...
    15 years but they are renewable.
  13. Patents are
    government grants giving the inventor the exclusive right to make, use and sell the invention.

    Steam engine... think complicated.

    90% of patents are software or pharmaceutical.
  14. Patents last...
    20 years from date of filing
  15. The patent process takes xx years.
    8-10 years.

    E.g. trials before the drug hits the market.
  16. Many patents today are...
    extensions of patents to extend a patent.

    E.g. gel cap.  Different dose, etc.
  17. Confidential information has what attributes?
    Commercial value

    Is not in the public domain

    Is reasonably protected

    Is communicated to others in confidence.
  18. How can you protect confidential information?
    Confidentiality agreements in employment agreements

    Labelling information as confidential¡Must be active in protecting your CI.

    Limit access to those who “need to know”

    Vault for cocacola

    KFC example
  19. Examples of brands that did not protect their trademarks properly, and now have lost their association to the brand (losing the distinctiveness to their trademark).

    • Bandaid
    • Kleenex



  20. Monetizing your IP
    • The owner of IP can:
    • -Use
    • -Sell
    • -License
    • -Sit / Squat…

    Or, can make your IP open source, like… TESLA.  Electric car competitors are not competitors to each other.  There will be more more electric cars out there... which means teslas will sell better.   Creating a market.

    Long history of governments and kings and rulers providing exclusivity to permit people to innovate.

    First trademarks used in imperial china to distinguish pots so people should know to whom they should complain if it was broken.
  21. Making patents open source...
    TESLA.  Electric car competitors are not competitors to each other.  There will be more more electric cars out there... which means teslas will sell better.   Creating a market.

    Don't have to spend so much money enforcing it.
  22. Using your IP
    Traditional method of turning IP into cash.

    Pharmaceutical industry still follows this model to a large degree.


    Disadvantages?  Limited to output and is time limited.
  23. Selling your IP
    Divest your interest in your IP to a buyer.

    How to maximize value? IP auction…

    Advantages?  Make money.  You don't have to manufacture it yourself.   Lump sum payment.  That payment can be used for other things.

    Disadvantages?  Once it's sold, it's gone.
  24. Northern Telecom  aka Nortel Networks
    At it's peak, the value of nortel represented 1/3rd of the entire value of the toronto stock exchange.  

    When a company goes bankrupt a trustee steps in.  The most valuable nugget that nortel owned was 6,000 patents and patent applications.  They held a patent auction.  The starting price was 9 million, closing price was 4.5 google.  Apple, RIM, erickson and Sony formed a concoction and bought the patents.

    They bought the patents to protect themselves... as leverage.  If you have a stable of patents you can steamroll people.
  25. How Can you be a troll?
    Acquire a number of patents with no intention to use them in producing goods or selling services;

    Search marketplace and patent register for uses similar to yours;

    Send SLL, don’t disclose the specifics;

  26. Why is there a lot of trolls in the states?
    No loser pay system.

    In Canada we have  a loser pay system, e.g. if you lose you suit you pay their fees.
  27. Blackberry litigation
    • Filed lawsuit in 1991
    • Email & wireless transmission system 
    • Registered the patent
    • Registered the company
    • Sat on it

    Sent a very scary lawyer letter to RIM.

    Ignored letter.

    Sent a scarier letter.

    Ignored letter.

    they get sued.  The initial judge agrees that there is patent infringement.  Over the course of several years they continue the lawsuit.  RIM is spending 5 mil per month in legal fees.  

    RIM settles for 612 million.
  28. Advantages to licensing IP
    May not have ability to make or distribute yourself

    Easier expansion

    Focus on your specialitie

    Gain rights in improvements

    IP litigation?

    New revenue stream

    Retain ownership
  29. Disadvantages to licensing ip
    Control, control, control

    Licensee may become your competitor

    Licensee may request expensive things…

    Royalty stream reliant on how licensee performs

    Technology incomplete?
Card Set
MBA560 Class 5: Intellectual Property
MBA560 Class 5: Intellectual Property