PATENT DESTRUCTION OF TRADE SECRET LIMITED TO WHAT IS DISCLOSED

Just because you have applied for a patent for your invention does not necessarily mean that all of your trade secret protection is lost. A recent Fifth Circuit case explains that particular processes and know how that may relate to the invention but are not part of the disclosure remain subject to trade secret protection, as do undisclosed combinations of disclosed elements.

It is settled that publication by the USPTO constitutes a public disclosure that destroys any trade secret protection one might exist in the invention. Thus, historically once a patent issued and, after patent applications became subject to publication (year 2000), once a patent application is published, trade secret protection is lost. As a result, patent protection and trade secret protection can be mutually exclusive.

What is lost when a patent is published, however, is limited to what is disclosed. Knowledge such as how to adapt the invention to work with another device, how to care for the invention, and even how to use the invention in combination with other disclosed inventions, may remain subject to trade secret protection. Patentees would be well-served to consider what secret knowledge they have developed beyond what is disclosed in their patents, and treat that knowledge as they would any other trade secret.
 

WHY FASHION ISN'T COPYRIGHTABLE

As debate continues about whether to extend copyright protection to clothing design, the recent decision in Jovani Fashion v. Cinderella Devine explains why clothing has been denied copyright protection, although fabric design has been protected. The issue is functionality. Even the clearly creative elements of clothing design are so interwoven (pun intended) with the clothing’s function that clothing design typically fails both the physical and conceptual separability tests.  The physical separability test, as its name suggests, concerns whether the creative elements literally can be separated from the utilitarian aspects of the work.  The conceptual separability test concerns whether one can conceive of the creative elements apart from the useful ones. 

 

If you are interested in further explanation of those tests and the copyrightability of useful articles, I recommend the Jovani Fashion case and cases cited therein, and Chapter 16 of Substantial Similarity in Copyright Law.
 

COPYRIGHT IDEA/EXPRESSION: TOWARD A BRIGHTER LINE?

A recent decision from the District of Connecticut in Scholz Design v. Sard Custom Homes holds that for architect to sue successfully for infringement of his drawing, the copied drawing must convey sufficient information to allow construction of the building depicted. In Scholz Design Because the allegedly copied drawings were not sufficiently detailed to enable one to construct a building using them, the court dismissed the copyright claims.

Of all the tricky issues in copyright law, one of the trickiest is distinguishing between idea and expression. Copyright law prohibits copying the expression but permits copying the idea. Determining where to draw the line between the two often involves a close judgment call. The Scholz Design decision arguably makes the call easier in the context of architectural works, because it offers a clear standard: information sufficient to allow construction. Copyright jurisprudence has, however, generally rejected such strict rules. It remains to be seen whether the Scholz Design decision signals a shift in the paradigm.
 

COPYRIGHT - DAMAGES BETTER, INJUNCTIONS WORSE

Copyright litigants would be wise to focus early on available infringement remedies in light of recent decisions. Following the Supreme Court decision in Ebay v. MercExchange and the Second Circuit Decision in the Salinger v. Colting case, litigants need to plan that they will need to prove irreparable injury to get an injunction, the presumption of irreparable harm is no longer available. That could make injunctions tougher to get in some cases. At the same time, litigants should plan that pre-judgment interest, dating back to the beginning of the infringement, is available based on the Third Circuit's recent decision in the Haughey case. Pre-judgment interest could significantly increase damages in certain cases.  So it might be harder to make 'em stop, but you might make 'em pay more.