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A-1 APPENDIX A Legal Considerations This appendix supplements the material included in Chap- DEFINING, PROTECTING, AND USING ter 2 of the Guidebook by detailing the legal issues present INTELLECTUAL PROPERTY when developing maintenance practices, particularly intel- lectual property. The detail provided here is intended pri- The notion of encouraging technological progress is pro- marily for an agency's legal representative. This appendix vided for in the U.S. Constitution, which includes a section includes how intellectual property is created and protected that reads in part, "The Congress shall have Power . . . to pro- and how to claim your own work as intellectual property. The mote the progress of science and useful arts, by securing for appendix also discusses consequences for not complying limited times to authors and inventors the exclusive right to with legal requirements and provides examples of clauses their respective writings and discoveries." Patent and copy- and statements as a starting point for drafting your own dis- right law flows from these words. Trademark law is derived claimers that can help prevent any legal troubles. from the government's responsibility to regulate commerce among the states and with foreign nations. Trade secret law arises from the right of businesses to protect their confiden- tial information and is regulated by state law. The definitions INTRODUCTION below provide an overview of each type of intellectual prop- The rights and responsibilities for sharing information are erty relevant to writing maintenance practices. very broad and complex. This appendix should be relied upon for informational purposes only as a "springboard" for Patents a legal discussion with the attorney representing your agency. It cannot take the place of a licensed and competent A patent is a right given by the federal government to attorney who is familiar with the particular laws of your exclude anyone other than the owner of the patent from mak- jurisdiction and the particular laws, rules, policies, and ing, using, or selling an invention as described and claimed in guidelines that govern behavior within the scope of your the patent. A patent must be a new, useful, and "non-obvious" duties. No attorney-client relationship is created between the invention or process. In essence, a patent is a government- reader and the law firm that was consulted for this project or granted monopoly for a fixed number of years to encourage the firm's principals, employees, affiliates, or assigns. inventors to disclose their inventions to the public. After The attorney responsible for your agency will ultimately the patent has expired (a utility patent typically expires in know the legal issues involved with developing and sharing 17 years), the invention as described and claimed in the patent maintenance practices. Those issues may include: is opened to the public, at which time anyone can make, use, or sell the invention. A patent may not be renewed. "Sovereign immunity," which is the privilege against Utility patents are one type of patent that you may lawsuits that a government or entity acting on behalf of encounter when preparing maintenance practices. The four the government (e.g., contractor or municipality) types of utility patents are: enjoys; Environmental regulations; Processes, Workplace and employee safety; Machines, Insurance, including workers' compensation plans and Articles of manufacture, and facility management; Compositions of matter. Issues arising from the publication and distribution of information and the control of such information; A "process" could be a unique method for changing brake Issues arising from sharing information within the same linings on a bus. A "machine" could be a new device for industry, including anti-trust considerations; and measuring air pressure in bus tires. An "article of manufac- The encouragement of equal participation and diversity. ture" could be a new type of vehicle seat with neck support that minimizes injury in a collision, and a "composition of As a way of presenting legal examples, the fictitious "Cen- matter" could be a new type of antifreeze that uses different ter City Transit Agency" ("CCTA") will be used. You will chemicals than those traditionally used. need to substitute your agency's name, city, and state as If an invention is granted a registered patent by the United appropriate when using any clause or citation format demon- States Patent and Trademark Office (USPTO), the invention strated in this section. itself will normally have an inscription on its body that reads,

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A-2 "U.S. Pat. Reg. No. 0000000." In some cases this informa- about how to replace brake linings, the words chosen are pro- tion is provided on packaging or other labeling that accom- tected, but the information about how to replace the brake panies the invention. When referring to the invention in writ- linings is not. ten text, the patent holder will provide the same information Rights in a copyright last the life of the owner plus either in the body of the text or in a footnote at least the first 75 years. To determine whether material is formally regis- time the invention is mentioned. "Patent Pending" (also "Pat. tered with the Copyright Office, look for the notation "" Pend." and "patent applied for") is commonly noted on prod- normally found within the first few pages of a work of ucts to indicate that a patent application has been filed and is authorship or affixed to the medium in some obvious man- being examined by the USPTO. ner, such as the "copyright page" of a book or on the label of If it is necessary to reference a patent held by another an album. However, original works of authorship do not have entity in the course of creating a maintenance practice, you to be registered with the Copyright Office to be protected are allowed to discuss, reference, explain, and compare any because copyright law automatically protects any original information within the patent. However, you cannot use the material, including a maintenance practice or manual, once technology disclosed in the patent without first obtaining per- the material is in a fixed format. Courts are currently more mission (called a license) from the patent owner. For restrictive about allowing for photocopying and use of copy- instance, if the ACME Company has a patent on a unique righted material without gaining permission. Thus, "fair use" method for measuring exhaust gas emissions of a diesel allowances are becoming harder to prove, so do not assume engine and you want to refer to it because it helps explain that your use is automatically covered by fair use because it your procedure, then you may discuss the method as long as is noncommercial in nature. you identify that it is owned by ACME and cite the applica- "Cutting and pasting" information into your own docu- ble patent registration number. Remember, however, you ment without citing its source is a direct violation of the cannot use the method unless you first obtain permission Copyright Act. One should never cut and paste material pro- from the patent holder. tected by copyright without giving full credit to the owners If you need to refer to an invention of your own agency by citing the source and, if appropriate, by using text-editing that has been patented, you must cite the patent registration devices, such as indentions and quotation marks, to show number at a minimum the first time the invention is referred ownership by another. Even paraphrasing information can be to. If your agency only has a pending application, there is no problematic without proper attribution. If the idea from the need to include the application number in the notation. original source remains the same in the paraphrased version, Here's a sample notation for a registered patent: "U.S. then the original source must be cited. Distribution of mate- Patent Reg. No. 0000000." rial that has violated the Copyright Act is also illegal and can Here are some sample notations for a pending patent carry monetary damages if proven in a court of law. application: Your agency's attorney can offer further advice on whether certain material is protected or falls under the fair "U.S. Patent Pending" use exception for your purposes. As a side note, there still "Pat. Pend." remains a dispute about whether all governmental use of "Patent Applied For" copyrighted material qualifies as fair use. The consensus appears to be that government agencies, just like private enti- ties, must properly cite material and sometimes must also Copyrights obtain permission before using material. While it is not required to designate your work of author- A copyright is a "work of authorship" that is original and ship as proprietary information to claim protection, affixing fixed in a tangible medium of expression, such as in a repair a notation that includes the following can dissuade improper manual, computer document, or DVD. Copyrights are auto- use: the Copyright Notice (""), the year of publication (not matically protected under the Copyright Act of 1976. There year of inception), the name of the copyright owner (not nec- is no legal requirement to file with the U.S. Copyright Office essarily the author), and contact information if desired. (at the Library of Congress). The Copyright Act defines Affixing the statement, "All rights reserved" to your work of "works of authorship" as encompassing a variety of material, authorship notifies users that all available rights are claimed. including, but not limited to, literary works; computer pro- When you create an original maintenance practice and save grams, including databases and operating systems; pictorial, it on your computer, the procedure in this fixed form is auto- graphic, and sculptural works; audiovisual works; sound matically protected by copyright law. You do not need to file recordings; and architectural works. Copyrights protect the an application with the Copyright Office in order to enjoy the manner in which an idea or information is conveyed, but not protections of a copyright or to prevent others from claiming the idea or information itself. It is the creative expression of creative ownership over the work, copying the work, or dis- the idea or information that is covered by the Copyright Act. tributing the work. However, filing an application with the For example, in the case of a written maintenance procedure Copyright Office must be done before initiating a lawsuit for

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A-3 infringement in federal court. In some cases, as the copyright being worked on is manufactured by the ACME Company, holder, you may choose to waive your copyright protections you can identify the term "ACME Company" by placing "" either in part or in whole. Format examples are provided below. following the trademark, such as "ACME Company". Here is a copyright format example: "2004 Center City Transit agencies, like other entities, may have the need Transit Agency, Center City, ST. All rights reserved." to create and protect their own trademarks. The most com- The following could be added as a footnote or within an mon reason to own and protect trademarks is for the adver- agreement: tising and marketing material used for promoting rider- ship. Other reasons can include the publication of manuals, All rights reserved. The author(s) (unless otherwise indi- cated) either own the intellectual property rights in the con- conference materials, or other written documents for dis- tent that is made available or has obtained the permission of tribution or sale, but can also include promotional items the owner of the intellectual property to use such content. such as T-shirts. Another example may include a transit agency that wants to protect a slogan regarding the safety The following could be added to limit usage of copy- of their buses based on superior maintenance practices, righted work: such as the slogan, "Our Maintenance Team is Your Safety Team." No use of this copyrighted material other than for the If your agency owns trademarks, regardless of whether purposes of this project is permitted without the express they are registered, you should identify the words or slo- written permission of the author(s). gans as trademarks because you gain some rights by doing With the exception of properly cited sources presented so. You can identify trademarks by using "" for registered herein, this maintenance practice is copyright protected trademarks, "TM" for unregistered trademarks, or "SM" for under the copyright laws of the United States and are the unregistered service marks (i.e., unregistered trademarks exclusive property of Center City Transit Agency. for services). The owner's name ("Center City Transit") Incorporating any part of the maintenance practice into and contact information can be added in a footnote if another form is not permitted without prior written desired. consent of Center City. Except for personal, noncom- The following may be used in different situations, such as mercial use, the reproduction, copying, publication or in a footnote, in an agreement, in the credits pages of a main- distribution of all or any part of this document, in any tenance practice, or in a pop-up window on a website: medium, printed or electronic, is forbidden without the express written permission of Center City. The trademarks, "_________," "__________________," and "___________" are the intellectual property of Center City Transit Agency, Center City, ST. No use of these marks Consult with the attorney representing your agency to and any other marks owned may be used without express determine the appropriateness of including copyright protec- written consent. Any unauthorized commercial use will be tion material in practices developed for agency use or those deemed an infringement under applicable trademark laws. posted on the Web Board. Center City Transit Agency reserves the right to prosecute unlawful infringement and use of its intellectual property to the full extent allowed of the law. Trademarks The following additional information can also be added: The U.S. Patent and Trademark Office defines a trademark "", "TM", and "SM" indicate ownership in a registered or as "a word, phrase, symbol or design, or a combination of pending trademark or service mark by Center City unless words, phrases, symbols or designs that identifies and distin- otherwise noted. guishes the source of the goods of one party from those of others." Having a legitimate intention to use a trademark in commerce also qualifies for some protection under the Trade Secrets Trademark Act. In some cases, trademark owners who provide only services use the specific term "service mark" A trade secret is protected under state law. The Uniform rather than the general term "trademark," but there is no legal Trade Secrets Act, enacted in several states, defines distinction between the two; thus, service marks receive the trade secrets as "information, including a formula, pattern, same protection as other trademarks. Trademark registra- compilation, program, device, method, technique, or process tions can be renewed indefinitely and may last forever, as that derives independent economic value from not being gen- long as the trademark is continually used in commerce to erally known and not being readily ascertainable and is sub- identify the specified goods or services. ject to reasonable efforts to maintain secrecy." If you wish to use the trademarks of others in describing a A trade secret protects valuable, nonpublic information, bus maintenance procedure, you may want to indicate that the such as all forms and types of financial, business, scientific, marks are the property of another. For example, if, in the technical, economic, or engineering information, including process of explaining your procedure, you state that the engine methods, techniques, processes, procedures, programs, or

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A-4 codes, whether tangible or intangible, regardless of how the Consequences of Misusing information is stored, compiled, or memorialized. Two of the Intellectual Property most famous trade secrets are the Coca Cola formula (believed to be known by only two living individuals) and the The consequences for misusing the intellectual property of mixture of spices used in Kentucky Fried Chicken's "origi- others can vary and may depend on whether the misuser had nal recipe" chicken. knowledge of what they were doing. There is no particular way to notify the public whether a If you make, use, sell, or offer to sell the patented inven- trade secret exists or not; therefore, you are not liable if you tion of another (called infringement), the consequences may independently discover or even knowingly "reverse engi- be severe. If a patent owner believes there is infringement, neer" a trade secret of another. For example, conducting a typically the owner "stakes their claim of right" by sending chemical analysis of the mixture of spices used by Kentucky a warning letter to the party making the infringement. The Fried Chicken for your own use does not violate trade secret warning letter may include a copy of the patent itself for clar- laws. However, if you steal the recipe, then you are liable and ification. Sometimes the warning letter will contain an offer can be prosecuted under the law. to the party receiving the letter for purchasing a license to the A trade secret can be established without filing an appli- technology for a fee. Accepting the license offer and paying cation with a government body or giving public notice as is the fee allows for continued use under the guidelines set forth required for trademarks and patents. The only requirement is by the owner of the patent. that the subject matter of the trade secret be confidentially If a license is not offered, however, and you continue to use developed, provide some sort of economic advantage, and be the patent, the patent owner can sue in federal court to require kept a secret. A trade secret lasts indefinitely if secrecy is you to stop using the patent and to pay damages for using it. properly maintained. There is a general trend toward large damage awards in cases The responsibility to maintain a trade secret can entail of patent infringement. Similarly, if you violate someone's signing a confidentiality agreement and following guidelines copyright, the copyright owner can sue you in federal court. to protect the secret. If you have developed information that However, in the case of copyright, there is a legal distinction you believe should be protected by trade secret laws, you between knowingly and unknowingly violating a copyright, need to work closely with your agency's attorney to develop and this distinction can affect the amount of damages. There is guidelines and procedures that will maintain the level of an increasing trend toward strict interpretation of the Copyright secrecy necessary. Act, which can increase damages for aggrieved parties. There is no format for notifying third parties that a trade If you use someone else's trademark without their permis- secret exists because maintaining secrecy over the informa- sion, or "infringe" their trademark, you will typically receive tion is the advantage. The moment you disclose a trade secret a letter demanding that you cease using the trademark. This to someone who has not signed a confidentially agreement or letter is called a "cease and desist" letter. If you continue to who is not under obligation to keep the information confi- use the trademark, the trademark owner can sue you in court dential, you lose trade secret rights. Normally, if you have requesting that the court issue an order requiring you to stop access to a trade secret owned by your agency, you know it. using the trademark. The aggrieved party can ask the court for However, if you have any concerns, contact your agency's monetary damages and attorney's fees. If the trademark attorney before publishing information that you think might owner can prove that you knowingly used their trademark and be secret. Remember, once information is published, it is no continued to do so after you were warned, the trademark longer a trade secret. owner can ask the court to triple the damages award. Since trade secrets are governed by state law, each state can set out different penalties for stealing someone else's trade secret. In most states, the trade secret owner can take CONSEQUENCES OF NOT PROTECTING you to court and ask for monetary damages, including attor- INTELLECTUAL PROPERTY ney's fees. Furthermore, those who steal a trade secret are now subject to federal criminal statutes. An amendment to Responsibility the Uniform Trade Secrets Act made in 1996 gave additional Protecting the integrity of intellectual property and its protection against anyone who steals a trade secret. sources is a vital part of our economy. The U.S. Constitution clearly sets out provisions for the protection of original EXAMPLES AND CLAUSES works and inventions. When it comes to using reference material when developing practices, you are responsible for You may use the following examples and clauses in your maintaining the integrity of the intellectual property of own maintenance practices. However, be aware that some another. Simply put, it is unlawful to present a creative items may not apply to your particular situation and all ref- endeavor (patent, trademark, or copyright) of another as erences to CCTA or Center City Transit Agency are used as your own. examples only.

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A-5 Requesting Permission to Use Resources information for the purposes outlined for this project, but we make no claims, promises, or guarantees about the accuracy, The following sample letter can be used to request per- completeness, or adequacy of the content. Maintenance advice must be tailored to the specific circumstances of each mission to use the intellectual property of another: agency. Because bus maintenance practices can change with- To-Whom-It-May-Concern: out notice, nothing provided herein should be used as a substitute for the advice of competent mechanics and/or I am the maintenance supervisor for the Center City Transit maintenance crews. Agency. We have an exclusive contract with you, "Bus Man- The author(s) make no warranties, express or implied, ufacturer," for the buses we buy for our city. We are now including warranties of merchantability and fitness for a involved in a project sponsored by the Transportation particular purpose and assume no legal liability for the accu- Research Board (TRB) regarding the sharing of our bus racy, completeness, or usefulness of any information pub- maintenance procedures with other agencies. lished for the purposes stated herein. The reason behind the project is an effort to improve the The author(s) make no representations about the accuracy, efficiency and effectiveness of our maintenance program, as completeness, or suitability of the information contained in well as the programs of other agencies. We are requesting the content published. All such information is provided "as from you, "Bus Manufacturer," a limited, royalty-free license is" without warranty of any kind. The author(s) hereby dis- to use portions of the maintenance manual entitled "TITLE" claim all warranties and conditions with regard to this infor- in order to fully explain our bus maintenance procedures. mation, including all implied warranties and conditions of If we do not hear back from you within 30 days of the date merchantability, fitness for a particular purpose, title, and of this letter, we will presume there is no problem in using noninfringement. In no event shall the author(s) be liable for portions of the publication, "TITLE." We intend to give full any special, direct, indirect, consequential or incidental credit to the publishers or editors of the publication and have damages, or damages whatsoever resulting from loss of use, no intention whatsoever of misusing the work. CCTA will data, or profits whether in action of contract, negligence, or not intentionally infringe upon your established rights of other tortuous action arising out of or in connection with the copyright or trademark. published content. Users who follow the steps in the published maintenance practice do so at their own discretion and risk. Disclaimers and Limiting General Liability Here is a sample disclaimer for indemnity: Disclaimers are used when sharing information to fore- You agree to indemnify and hold "Center City Transit" and warn users that the agency providing the information is not its representatives, affiliates, officers, agents, co-branders, liable for the information or any consequences that may fol- other partners, and employees harmless from any claim or low from the use of the information. For example, imagine demand, including reasonable attorney's fees, made by any that you develop and share a maintenance procedure for third party due to or arising out of content submitted, posted, changing the brake linings on a particular model of bus. If transmitted, or made available through this project, your use of electronic forms of transmission of the content, or your another agency uses your procedure, you do not want to be violation of any rights of another. held liable for any problems resulting from their usage. Liti- You expressly understand and agree that the author(s) shall gation to determine who is at fault can be very time consum- not be liable to users of the content for any direct, indirect, inci- ing and expensive. Issues that could arise include whether dental, special, consequential, or exemplary damages, includ- your procedure was faulty or whether the user's incorpora- ing but not limited to damages for loss of profits, goodwill, use, data, or other intangible losses resulting from (i) the use or the tion of the procedure was faulty. inability to use the maintenance practices as published, (ii) the The maintenance procedure is presumed to be for informa- cost of following the maintenance practices as published, and tional purposes only. Therefore, it is critical to notify users that (iii) any other matter relating to the published content. the procedure you are sharing is to be followed at the users' own risk of injury or liability. The following examples are pro- vided to illustrate the types of common clauses placed along Blanket Licenses with published information to limit liability to the author(s). Here is a sample disclaimer of endorsement: If you would like to allow your peers permission to use the contents of your maintenance practice without contacting Any reference obtained in the published content does not you or paying for a license, you can issue a "blanket license." constitute or imply an endorsement by the author(s) of products, processes, services, businesses, organizations, Blanket licenses normally cover a certain group of users for associations, or other entities. The views and opinions particular uses and are an efficient means to allow properly expressed in any referenced document do not necessarily controlled usage of intellectual property. Blanket licenses do state or reflect those of CCTA. not allow for the acquisition of intellectual property as one's own, but rather can establish a royalty-free (i.e., payment- Here are three sample general disclaimers: free) arrangement to more than one entity or individual. The information contained in the published content is pro- Basically, a blanket license tells the reader that the informa- vided as a service to the bus transit community, and does not tion is intellectual property and that they can use it in a constitute advice. Every attempt was made to provide quality limited manner. In most cases, this means to give credit for

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A-6 the origin of the information and to refrain from altering the procedure, provided that (1) the appropriate trademark regis- material, including trademarks, in any way. tration symbol or copyright symbol appears where applicable; (2) after the first mention of such intellectual property, a foot- Here's a sample blanket license: note or other text formatting is used to tell the reader who the source and owner of said intellectual property is; (3) usage is Center City grants limited and revocable permission to use, for informational and noncommercial purposes only and copy, and distribute information and materials, including related to participation in this project only; and, (4) no modifi- copyrights and trademarks referenced within this maintenance cation occurs to the protected material by the user.