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IP in Hospitality. Intellectual “Properties” in HRIM Trademark & Franchising Tech Transfer. IP Overview. Patents Trade Secrets Copyrights Unfair Competition Trademarks & Trade Dress Sui Generis Protections:

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ip in hospitality

IP in Hospitality

Intellectual “Properties” in HRIM

Trademark & Franchising

Tech Transfer

ip overview
IP Overview
  • Patents
  • Trade Secrets
  • Copyrights
  • Unfair Competition
  • Trademarks & Trade Dress
  • Sui Generis Protections:
    • Semiconductor chips, asexual plants, designs, petty patents, Databases, boat hull design
recurring hrim ip s
Recurring HRIM IP ?s
  • What is intellectual property and what does it all mean to the entrepreneur?
  • Can I patent a recipe?
  • How do I go about establishing a trademark?
  • Is a brand , like McDonalds protected under any type of IP?
  • How do I establish a franchise and protect it?
distinguishing ip from tangibles
Distinguishing IP from Tangibles
  • Tangible Property
    • Physical substance
    • Only one copy exists, totally exhaustible
  • Intangible Property
    • No physical substance
    • Often only represented by something of substance
    • Apparent inexhaustibility
ip theory economics
IP Theory & Economics
  • Incentive Theory
    • Investment likely when exclusivity assured
    • Suboptimal investment w/o ownership & control
    • Lockean theory of initiative: innovation forthcoming w/ rewards of private property
  • Contract Theory
    • Maximize the public domain
    • Ltd. monopoly exchanged for disclosure
patentable subject matter
Patentable Subject Matter

New, Useful & Human-made

  • Process
  • Machine
  • Manufacture
  • Composition of Matter
  • Not in The Public Domain
  • Statutory Bars:“Known or Used...Patented or Published”
  • Diligence
    • Not abandon, suppressed or concealed
  • The U.S. One Year Grace Period
    • No Public Use or Sale
    • US: no use or sale
    • World: no patent or publication
non obviousness
  • Patent should not grant if the advancement is small, merely minor improvements over prior art
  • Not obvious at the time of invention to one skilled in the art
  • Graham v. John Deere:

1. Determine scope and content of the prior art

2. Determine differences between prior art and the claim(s) at issue; and

3. Determine the level of ordinary skill in the pertinent art

confidentiality of application materials
Confidentiality of Application Materials
  • Trade Secrets Maintained?
  • Most nations - confidential only for 18 mos after filing
  • U.S. law changed to Int’l Standard:
    • Confidential only for 18 months if application is also filed in country that publishes files after 18 months
    • Otherwise, confidential until patent issues, then publicly available unless national security matter
trade secret under uniform act
Trade Secret Under Uniform Act
  • information (formula, pattern, compilation, program, device, method, technique or process)
  • derives independent economic value from secrecy or by proper means discovery by potential competitors, and
  • subject of efforts, reasonable under the circumstances, to maintain secrecy.
eligible information
Eligible Information:

pattern, device, engineering data, formulas, customer lists or preferences, raw materials, manufacturing processes, design manuals, operating & pricing policies, price codes, bid information, method, technique, bookkeeping methods, market studies/research, sales data, marketing plans/strategies, new product information, business plans, equipment & machinery, program, software, flow charts, drawings, blueprints, negative results, unique compilation or combination of public domain info, know-how

duty of secrecy
Duty of Secrecy
  • Implied Confidentiality Duty
    • Fiduciary duty of loyalty
  • Express Confidentiality Agreements NDA
    • Employment contract; covenant not to compete
    • independent contract, consulting contract, certain distribution contracts, franchise agreement, prior assignment of innovations,
employee confidentiality agreements nda
Employee Confidentiality Agreements (NDA)
  • Provision or addendum to employment contract imposing confidentiality
  • Continuously updated list of specified documents, projects, corporate functions, etc.
  • Establish ownership of particular innovations
  • Define theft of IP, custody or removal of documents, files, computer disks, E-Mail
what are databases under law
What are Databases under Law?
  • Systematic data accumulation/ordering
    • Collections of works, data or other materials arranged in a systematic or methodical way for retrieval or access by manual or electronic means
  • Used for learning, research, science, governing & control, commerce
  • File composed of records, each with fields, operations search, sort &/or recombine for useful report
elements of copyrightability
Elements of Copyrightability
  • Must be original
  • Must be fixed in a tangible medium of expression
  • Must be directly or indirectly perceivable by humans
types of copyrightable works
Types of Copyrightable Works

Literary works

Pictorials, graphics, and sculptures

Musical works

Motion pictures and A/V works

Dramatic works

Sound recordings

Pantomimes and choreography

Architectural works

non copyrightable material
Non-copyrightable Material
  • Ideas are not copyrightable – only the expression of ideas.
  • Includes ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries.
  • The idea-expression dichotomy rule states that creators can maintain control over ideas only if they qualify as patentable or remain as trade secrets.
trademark protection
Trademark Protection
  • Word, Name Symbol, Device
    • Recently: color, sound, smell
  • Identifies Source of Goods or Services
    • Distinguishes from competitors
  • Protection Schemes:
    • State C/L, misappropriation, unfair competition
    • Federal registration under the Lanham Act
    • Int’l: Paris Conv, Madrid Arrange, Pan-Am
fundamental purposes of trademarks
Fundamental Purposes of Trademarks
  • Trademarks differ conceptually from patents, trade secrets, or copyrights.
  • Promote business ethics
    • Prevent palming off
    • Symbol or device identifies source
    • Knowledge about prior use
    • Likelihood of confusion
  • Protect investments in goodwill
  • Promote Distributional Efficiency
    • Consumer search costssavings outweigh costs of regulation & forgone competitor opportunities
    • Identifiers are often suggestive
  • Capacity to distinguish owners goods or services
  • Protectability Scale
  • Ranges from Descriptive to Distinctive
  • Spectrum of Distinctiveness – a Scale of Decreasing Protectability
    • Arbitrary or Fanciful
    • Suggestive
    • Descriptive
    • Generic
trade dress
Trade Dress
  • Configuration of package, product &/or premises
    • 3D design, ornamentation, color scheme, sound, smell, ambience, look & feel
    • Not merely decoration; must serve to distinguish & make a commercial impression
  • Must be distinctive & not primarily functional
    • Separate protection & consumers impression
  • EX:
    • Website, homepage distinctive graphics
    • Pole lamp
    • Taco Cabana patio Mexican restaurant
      • http://www.tacocabana.com/
trademark subject matter




Product package design





Manufacturer’s premises

Trademark Subject Matter

The Coca Cola trademark is an example of a product in which the recipe, bottle design, and brand name are all trademarks.

two pesos v taco cabana
Two Pesos v. Taco Cabana

Facts: Family restaurant split, 2 Pesos used Taco Cabana “motif”

Issue: Is trade dress protectable w/o proof of secondary meaning?

Rationale: Difficulties of determining inherent distinctiveness; restaurant motif, look & feel protectable

legal tools for technology transfer
Legal Tools for Technology Transfer
  • Assignments
  • Licensing: scope, duration, fields of use, compensation, geographic limits, etc. (e.g., software “sales,” terms & conditions of website use)
  • Shop Rights
  • Work Made for Hire; Hired to Invent; M-S & S/E
  • Confidentiality Duties
    • Non Disclosure Agreements (NDA)
  • Non-Competition Agreements (non-competes)
    • Emerging Inevitable Disclosure Doctrine
  • Leasing, Franchising
common license terms
Common License Terms
  • Scope & Exclusivity
  • Duration & Termination
  • Geographic Limitations
  • Confidentiality & Non-Competition
  • Establishes & Perpetuates Trade Secrets
  • Limits on Improvements & Sub-Licensing
  • Warranties of IP Ownership
    • Infringement indemnity
principe v mcdonald s 1980
Principe v. McDonald’s (1980)
  • Facts: McDonald’s denied Principe another franchise; Principe sued claiming tying: franchise to premises lease
  • Issue: Is franchise illegal tying? NO
  • Rationale: Lease is not separate from franchise due to importance of site selection & other factors improving quality & potential success for franchisees.
  • Franchise Definition
    • Business Organization, Network
    • Franchisor Exerts Control/Provides Assistance
      • Business Methods; ™
    • Franchise Trademarks & the Lanham Act
      • Control: Must Police ™ Use!
    • Required Fees & Payments
  • Franchise Agreements
  • Franchise Marketing Disclosures as Business Opportunity Investment (security, FTC)
  • Maintaining Limited Liability F’or – F’ee
    • McDonalds Scalding Coffee