BLAW CH 8

Patent Infringement and Foreign Sales

Foreign firms can apply for and obtain U.S. patent protection on items that they sell within the United States, and U.S. firms can obtain protection in foreign nations where they sell goods.

The goals of the Anti-Counterfeiting Trade Agreement (ACTA) are to:

- Increase international cooperation for combating counterfeiting - Facilitate the best law enforcement practices for combating counterfeiting - Provide a legal framework for combating counterfeiting *applies to both physical goods and to pirated copyrighted works being distributed via the Internet.

Trademark

A distinctive mark, motto, device, or implement that a manufacturer stamps, prints, or otherwise affixes to the goods it produces so that they may be identified on the market and their origins made known. Once established (under the common law or through registration), the owner is entitled to its exclusive use.

Marks Need Not Be Identical

A famous mark may be diluted by the use of an identical mark or by the use of a similar mark. A similar mark is more likely to lessen the value of a famous mark when the companies using the marks provide related goods or compete against each other in the same market.

Patent

A government grant that gives an inventor the exclusive right or privilege to make, use, or sell his or her invention for a limited time period.

Trade name

A term that is used to indicate part or all of a business's name and that is directly related to the business's reputation and goodwill. are protected under the common law, but only if they are unusual and fancifully used. Example: Safeway may also be protected under trademark law, if the name is the same as the firm's trademark. Example: Coca-Cola

distinctive

A trademark must be sufficiently ________ to enable consumers to identify the manufacturer of the goods easily and to distinguish between those goods and competing goods.

A trademark owner that successfully proves infringement can recover:

Actual damages The profits that the infringer wrongfully received from the unauthorized use of the mark Attorneys' fees

The fair use of a copyrighted work is not an infringement of copyright for the following purposes:

Criticism and comment News reporting Teaching Scholarship Research

Trade secrets include, but are not limited to, the following:

Customer lists Plans Research and development Pricing information Marketing methods Production techniques

Strong Marks

Fanciful, arbitrary, or suggestive trademarks are generally considered to be the most distinctive (strongest) trademarks.

patent infringement

If a firm makes, uses, or sells another's patented design, product, or process without the patent owner's permission, that firm commits the tort of

Under current law, a mark can be registered:

If it is currently in commerce If the applicant intends to put it into commerce within six months

Trade secret

Information or a process that gives a business an advantage over competitors who do not know the information or process.

Persons found guilty of violating the SCMGA:

May be fined up to $2 million or imprisoned for up to ten years Must forfeit the counterfeit products Must forfeit any property used in the commission of the crime Must pay restitution to the trademark holder or victim in an amount equal to the victim's actual loss

Intellectual property

Property resulting from intellectual, creative processes. Examples: Patents, trademarks, copyrights

Trademark Registration

Trademarks may be registered with the state or with the federal government. To register for protection under federal trademark law, a person must file an application with the U.S. Patent and Trademark Office in Washington, D.C. Registration of a trademark with the U.S. Patent and Trademark Office gives notice on a nationwide basis that the trademark belongs exclusively to the registrant. The symbol ® indicates that a mark has been registered.

The Stop Counterfeiting in Manufactured Goods Act (SCMGA) makes it a crime to:

Traffic, or attempt to traffic, intentionally in counterfeit goods or services Knowingly use a counterfeit mark on or in connection with goods or services

The most commonly granted remedy for trademark infringement is

an injunction to prevent further infringement

Compilations

are copyrightable. is "a work formed by the collection and assembling of preexisting materials or data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship."

Patents for designs

are given for a fourteen-year period.

Patents for inventions

are given for a twenty-year period.

The TRIPS agreement

has been the most significant and far reaching in scope of all international agreements that have given protection to intellectual property rights.

Suggestive trademarks

indicate something about a product's nature, quality, or characteristics, without describing the product directly. Example: "Dairy Queen" suggests an association between its products and milk, but it does not directly describe ice cream.

Generic terms

that refer to an entire class of products receive no protection, even if they acquire secondary meaning. Examples: "Bicycle," "computer," "aspirin," "thermos"

To succeed in a trademark infringement action

the owner must show that the defendant's use of the mark created a likelihood of confusion about the origin of the defendant's goods or services.

Arbitrary trademarks

use common words in an uncommon way that is not descriptive of the product. Example: "Dutch Boy" as the name for paint

Fanciful trademarks

use invented words. Examples: "Google," "Xerox"

Section 102 of the Copyright Act explicitly states that it protects original works that fall into one of the following categories:

1. Literary works (including newspaper and magazine articles, computer and training manuals, catalogues, brochures, and print advertisements) 2. Musical works and accompanying words (including advertising jingles) 3. Dramatic works and accompanying music 4. Pantomimes and choreographic works (including ballets and other forms of dance) 5. Pictorial, graphical, and sculptural works (including cartoons, maps, posters, statues, and even stuffed animals) 6.Motion pictures and other audiovisual works (including multimedia works) 7. Sound recordings 8. Architectural works

Under the TDRA, to state a claim for trademark dilution, a plaintiff must prove the following:

1. The plaintiff owns a famous mark that is distinctive. 2. The defendant has begun using a mark in commerce that allegedly is diluting the famous mark. 3. The similarity between the defendant's mark and the famous mark gives rise to an association between the marks. 4. The association is likely to impair the distinctiveness of the famous mark or harm its reputation.

In determining whether the use made of a work in any particular case is a fair use, the factors to be considered shall include:

1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes 2. The nature of the copyrighted work 3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole 4. The effect of the use upon the potential market for or value of the copyrighted work

Dilution

A doctrine under which distinctive or famous trademarks are protected from certain unauthorized uses regardless of a showing of competition or a likelihood of confusion.

Collective mark

A mark used by members of a cooperative, association, or other organization to certify the region, materials, mode of manufacture, quality, or accuracy of the specific goods or services. Examples: The labor union marks found on tags of certain products; the credits of movies, which indicate the various associations and organizations that participated in the making of the movies

Certification mark

A mark used by one or more persons, other than the owner, to certify the region, materials, mode of manufacture, quality, or accuracy of the owner's goods or services. Examples: "Good Housekeeping Seal of Approval," "U L Tested"

Service mark

A mark used in the sale or the advertising of services, such as to distinguish the services of one person from the services of others. Titles, character names, and other distinctive features of radio and television programs may be registered as service marks.

Patent Infringement Lawsuits and High-Tech Companies

Companies that specialize in developing new technology are holders of numerous patents and are frequently involved in patent infringement lawsuits.

Trade Secrets in Cyberspace

Computer technology is undercutting many business firms' ability to protect their confidential information, including trade secrets. Dishonest employees can easily appropriate trade secrets via computer hardware, software, and social media.

Trademark Dilution

Congress created a federal cause of action for dilution in 19 95 with the passage of the Federal Trademark Dilution Act.

Copyrights Registration

Copyrights can be registered with the U.S. Copyright Office in Washington, D.C.; however, registration is not required. A copyright owner no longer needs to place the symbol © or the term C o p r . or Copyright on the work to have the work protected against infringement.

Secondary Meaning

Descriptive terms, geographic terms, and personal names are not inherently distinctive and do not receive protection under the law until they acquire a ________. may arise when customers begin to associate a specific term or phrase with specific trademarked items made by a particular company. Example: "Calvin Klein" is associated with designer clothing and goods.

The TRIPS agreement established, for the first time, standards for the international protection of intellectual property rights:

Each member country of the World Trade Organization must include in its domestic laws broad intellectual property rights and effective remedies for violations of those rights. Each member nation must ensure that legal procedures are available for parties who wish to bring actions for infringement of intellectual property rights.

Section 102 Exclusions

Generally, anything that is not an original expression will not qualify for copyright protection. It is not possible to copyright an idea. However, the particular way in which an idea is expressed is copyrightable. Thus, an idea and its expression must be separable to be copyrightable.

Whether a secondary meaning becomes attached to a name usually depends on:

How extensively the product is advertised The market for the product The number of sales

Under the Berne Convention:

If a citizen of a country that has signed the convention writes a book, all other countries that have signed the convention must recognize that author's copyright in the book. If a citizen of a country that has not signed the convention first publishes a book in one of the countries that have signed, all other countries that have signed the convention must recognize that author's copyright. Copyright notice is not needed to gain protection for works published after March 1, 19 89. In 2011, the European Union altered its copyright rules under the Berne Convention to extend the period of royalty protection for musicians from fifty years to seventy years.

License

One way to avoid litigation and still make use of another's trademark or other form of intellectual property is to obtain a _______ to do so. A contract permitting the use of a trademark, copyright, patent, or trade secret for certain purposes. The party that owns the intellectual property rights and issues the ________ is the licensor. The party obtaining the________ is the licensee. The licensee generally pays fees, or royalties, for the privilege of using the intellectual property. A _______ grants only the rights expressly described in the agreement.

fifth and sixth; ten

Registration is renewable between the ____ &___ years after the initial registration and every_____ years thereafter (every twenty years for trademarks registered before 19 90).

Generally, copyright owners are protected against the following:

Reproduction of the work Development of derivative works Distribution of the work Public display of the work

If a patent is infringed, the patent holder may sue for relief in federal court. The patent holder can:

Seek an injunction against the infringer Request damages for royalties and lost profits *If the court determines that the infringement was willful, the court can triple the amount of damages awarded (treble damages). Seek reimbursement for attorneys' fees and costs

There are a number of international agreements relating to intellectual property rights, including:

The Paris Convention The Berne Convention The Trade-Related Aspects of Intellectual Property Rights (the TRIPS agreement) The Madrid Protocol The Anti-Counterfeiting Trade Agreement

Prohibits Discrimination

The TRIPS agreement forbids member nations from giving their own citizens favorable treatment without offering the same treatment to citizens of all other member countries.

Combating Foreign Counterfeiters

The United States cannot prosecute foreign counterfeiters because our national laws do not apply to them. One effective tool that U.S. officials have used to combat online sales of counterfeit goods is to obtain a court order to close down the domain names of websites that sell such goods.

Statutory protection of trademarks and related property is provided at the federal level by the Lanham Act of 1946.

The act incorporates the common law of trademarks and provides remedies for owners of trademarks who wish to enforce their claims in federal court.

Copyright

The exclusive right of authors to publish, print, or sell an intellectual production for a statutory period of time. has the same monopolistic nature as a patent or trademark, but it differs in that it applies exclusively to works of art, literature, and other works of authorship, including computer programs.

patent protection

The first person to file an application for a patent on a product or process will receive _________. The period of ____________ begins on the date the patent application is filed, rather than when the patent is issued. After the patent period ends (either fourteen or twenty years later), the product or process enters the public domain, and anyone can make, sell, or use the invention without paying the patent holder.

Typically, copyright protection is not extended to the "look and feel" of computer programs, which includes:

The general appearance Command structure Video images Menus Windows

Trade dress

The image and overall appearance of a product. Example: The distinctive décor, menu, layout, and style of service of a particular restaurant Basically, this is subject to the same protection as trademarks.

Almost anything is patentable, except:

The laws of nature Natural phenomena Abstract ideas

Counterfeit goods

copy or otherwise imitate trademarked goods, but they are not the genuine trademarked goods. have negative financial effects on legitimate businesses. Certain types, such as pharmaceuticals and nutritional supplements, can present serious public health risks.

protection of trade secrets

extends to both ideas and their expression. There are no registration or filing requirements for trade secrets. Businesses generally attempt to protect their trade secrets by having all employees who use a protected process or information agree in their contracts, or in confidentiality agreements, never to divulge it.

The Madrid Protocol

is designed to reduce the time and expense of securing international trademark protection. Under its provisions, a company wishing to register its trademark abroad can submit a single application and designate other member countries in which the company would like to register its mark.

The Economic Espionage Act

makes the theft of trade secrets a federal crime. Stealing confidential business data by industrial espionage, such as by tapping into a competitor's computer, is a theft of trade secrets without any contractual violation and is actionable in itself.

The Anti-Counterfeiting Trade Agreement: Border Searches

member nations are required to establish border measures that allow officials, on their own initiative, to search commercial shipments of imports and exports for counterfeit goods. If border authorities reasonably believe that any goods in transit are counterfeit, the treaty allows them to keep the suspect goods until the owner proves the items are authentic and non infringing.

State and Federal Law on Trade Secrets

Trade secrets have long been protected under the common law. Nearly every state has enacted trade secret laws based on the Uniform Trade Secrets Act.

First Sale Doctrine

Under the_________ , the owner of a particular item that is copyrighted can, without the authority of the copyright owner, sell or otherwise dispose of it. Once a copyright owner sells or gives away a particular copy of a work, the copyright owner no longer has the right to control the distribution of that copy.

Trademark Infringement

Whenever a trademark is copied to a substantial degree or used in its entirety by another, intentionally or unintentionally, the trademark has been infringed (used without authorization). When a trademark has been infringed, the owner of the mark has a cause of action against the infringer.

infringement of copyright

Whenever the form or expression of an idea is copied, an __________ has occurred. The reproduction does not have to be exactly the same as the original, nor does it have to reproduce the original in its entirety.

The Copyright Act of 19 76 governs copyrights.

Works created after January 1, 1978, are automatically given statutory copyright protection for the life of the author plus 70 years. For copyrights owned by publishing houses, the copyright expires 95 years from the date of publication or 120 years from the date of creation, whichever comes first. For works by more than one author, the copyright expires 70 years after the death of the last surviving author. When copyright protection ends, works enter into the public domain.

Patent infringement may occur even though:

The patent owner has not put the patented product into commerce. Not all features or parts of a product are copied.

Under Section 757 of the Restatement of Torts, those who disclose or use another's trade secret, without authorization, are liable to that other party if either of the following is true:

They discovered the secret by improper means. Their disclosure or use constitutes a breach of a duty owed to the other party.

Generally, copyright protection extends to:

Those parts of a computer program that can be read by humans, such as the "high-level" language of a source code The binary-language object code, which is readable only by the computer The overall structure, sequence, and organization of the program

Remedies for Copyright Infringement

Those who infringe copyrights may be liable for damages or criminal penalties. - Actual damages are based on the harm caused to the copyright holder by the infringement. - Statutory damages, not to exceed $150,000, are provided for under the Copyright Act. - Criminal proceedings may result in fines and / or imprisonment. A court can also issue a permanent injunction against a defendant when the court deems it necessary to prevent future copyright infringement.

What Is Protected Expression?

To be protected, a work must be "fixed in a durable medium" from which it can be perceived, reproduced, or communicated.