The Roots of Intellectual Property Trade Secrets, Patents, Trademarks and Copyrights
| Jurisdiction | Kansas,United States |
| Citation | Vol. 62 No. 01 Pg. 30 |
| Pages | 30 |
| Publication year | 1993 |
62 J. Kan. Bar Assn. January, 30 (1993). THE ROOTS OF INTELLECTUAL PROPERTY TRADE SECRETS, PATENTS, TRADEMARKS AND COPYRIGHTS
January, 1993
Mike Martinez
Copyright (c) 1993 by the Kansas Bar Association, Topeka, Kansas; Bruce Day and Mike Martinez
FNNote 1. WM. BRUCE DAY is a 1977 graduate of the University of Missouri-Kansas City School of Law and practices exclusively in the area of patents, trademarks, copyrights and unfair competition, both obtaining patents and registering trademarks and copyrights and in litigation. He is a partner at Wirken & King, P.C. and is head of its intellectual property department. He is registered to practice before the U.S. Patent and Trademark Office and is a member of the Kansas and Missouri bar associations. He is also a member of the American Intellectual Property Law Association. He has been an adjunct professor of law at University of Missouri-Kansas City and has lectured extensively in the subject area.
FNNote 2. J. MICHAEL MARTINEZ is a 1991 graduate of the University of Kansas School of Law. He is a member of the Kansas Bar and practices exclusively in the area of Intellectual Property with the firm of Wirken & King, P.C. He is also a member of the American Intellectual Property Law Association, Kansas Bar Association and president of the Hispanic Bar Association of Greater Kansas City. He has a Master in Business Administration degree from the College of William and Mary and a Bachelor of Science degree in Aerospace Engineering from the University of Virginia.
Imagine yourself fielding a call from a Kansas gift shop owner seeking your advice about a line of novelty figures portraying the Wizard of Oz characters. Or a promoter asks about hiring a local group to perform the latest country and western hits at a benefit dance. Or a curbside entrepreneur seeks your advice about selling t-shirts depicting a popular sculpture.
In the latter instance, the sculptor of the Three Servicemen Statue and the Vietnam Veterans Memorial Fund (VVMF), who jointly own the copyright to the statue, brought an infringement action against sellers of t-shirts and photographs of the statue. [FN1] The plaintiffs displayed a copyright notice on the base of the statue and registered the copyright on November 8, 1982. The defendants disputed that the plaintiffs owned a valid copyright and argued that the notice of copyright was invalid because it mentioned only the name of the sculptor, and not the VVMF. The court held that the copyright notice was valid and that it had been infringed. [FN2] Further, the court enjoined the defendants from further infringement, ordered the destruction of infringing impounded materials, and awarded reasonable costs and attorney's fees to the copyright owners. [FN3]
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The case illustrates the significance of registering a copyright and the importance of protecting a client's intellectual property. The Kansas attorney representing the entrepreneurial business developing its own new products will confront the often confusing modes of intellectual property protection. Intellectual property refers to intangibles that give a business operation advantages over its competitors or which can be sold for profit. Intellectual property includes inventions, works of authorship, trademarks and new, efficient ways of doing a particular job.
This article will address the major types of intellectual property, the available protection for this property, and the difference between the federal and state protection. Its intent is to demonstrate how the Kansas lawyer can assist the client in protecting its intellectual property and to avoid infringing the property of others.
THE FEDERAL AND KANSAS STATE LAW
Federal law and Kansas state law both protect intellectual property. Federal law is generally more significant in the protection of intellectual property, as it is the sole source of law for protection of patents and copyrights. Some state law, however, does provide the only protection for certain intellectual property rights. In other situations, state and federal law provide simultaneous protection, such as for trademarks. When the federal law provides the only protection for intellectual property rights, it "preempts" any state law which would purport to create a different result or provide different protection.
Kansas state law protects trade secrets and confidential information. For example, the Kansas Uniform Trade Secrets Act of 1981 (UTSA) specifically relates to the protection of trade secrets. [FN4] UTSA codified former Kansas trade secret decisions and added additional protections. Trade secrets also can be protected by actual or implied contracts. For states that have not passed the Uniformed Trade Secrets Act (Act), [FN5] protection is by state common law. Of course, common law also governs the enforceability of noncompetition agreements, which restrict an employee or former owner from competing with a former employer or business.
Protection for patents and copyrights comes exclusively from federal law. The Patent Act allows the Commissioner of Patents and Trademarks to issue time-limited patents to inventors. [FN6] The Plant Variety Protection Act provides similar protection for new plants. [FN7]
The 1976 Federal Copyright Act (Copyright Act) provides protection for works of authorship. [FN8] The Semiconductor Chip Protection Act (an adjunct to the Copyright Act) provides protection for semiconductor masks or the tracings used in the making of integrated circuit chips. [FN9]
The Federal Trademark (Lanham) Act provides for the registration of trademarks and prohibits certain forms of misrepresentations concerning the sale of products through the damage of competitors. [FN10] Similarly, Kansas has statutes providing protection for trademarks used on goods or services used within the state of Kansas. [FN11] If a mark is to be used in interstate commerce, however, then federal registration is favored because of the former's broader protection, although it is more difficult and expensive to obtain.
The next few sections will present the four main types of intellectual property as well as requirements to obtain.
TRADE SECRETS
The drafters of the Uniform Trade Secrets Act designed the Act to codify the common law and to insure consistent results in all adopting states. [FN12] It provides for injunctive, compensatory, exemplary and protective relief.
The statutory definition of a trade secret in Kansas is information, including a formula, pattern, compulation, device, method, technique or process that: 1) provides independent economic value which is actual or potential, 2) is not generally known to, and 3) not readily ascertainable by proper means by 4) other persons who can obtain economic value from its disclosure or use and 5) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. [FN13] The UTSA eliminates the requirement that the information be "continuously used in one's business" before qualifying as a trade secret. [FN14]
The Kansas Supreme Court in Mann v. Tatge Chemical Co. held that a plaintiff suing for misappropriation of a trade secret obtained in the course of a confidential relationship must show "(1) a confidential relationship between the parties, (2) disclosures by plaintiff to defendant of what amounts to a trade secret, and (3) a use of those disclosures by defendant." [FN15] In an action to enjoin unfair competition arising by reason of the unauthorized use of a trade secret, the court in Koch Engineering Co., Inc. v. Faulconer held that the plaintiff must show "(1) the existence of a trade secret used by plaintiff in its business or trade, (2) a confidential relationship between the parties, (3) disclosures made in confidence by plaintiff to defendant concerning the trade secret, and (4) an authorized use of those disclosures by the defendant." [FN16]
In establishing the requisite secrecy for determining
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whether a trade secret exists, courts generally look to how the information was handled by the person asserting it as a trade secret. Accordingly, attorneys would be well advised to include in contracts with employees, subcontractors and others a term establishing that the information which the other party will be exposed to in the course of performing a contract is a trade secret. This language will support the owner's claim that the information was considered a trade secret and that the other party was given notice and that the other party was aware of the owner's claim.
A second aspect of the trade secret investigation and which is a major source of conflict is in the area of unsolicited ideas. Under Section 757 of the Restatement of Torts (First), a marketing idea or concept does not fall within the definition of a trade secret because the restatement requires that the information be continuously used for one's business. [FN17] In Kansas, there is no continuous use requirement. [FN18]
In the usual factual situation, an originator of an idea is unable to effectively make use of the idea. The...
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