ACCT 1290: Chapter 8 Intellectual Property Rights

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, graphic, 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.

Generally, copyright owners are protected against the following:

1. Reproduction of the work. 2. Development of derivative works 3. Distribution of the work. 4. Public display of the work.

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.

Copyrights

A copyright is on intangible property right granted by federal statute to the author or originator of certain literary or artistic productions. The Copyright Act of 1976, as amended, governs copyrights.

Trademark

A distinctive word, symbol, or design that identifies the manufacturer as the source of particular goods and distinguishes its products from those mode or sold by others.

Trade Secret

A formula, device, idea, process, or other information used in o business foot gives the owner a competitive advantage in Marketplace.

Patent Definition

A grant from the government that gives an inventor exclusive rights to an invention.

Collective Mark

A mark used by members of a cooperative, association, union, or other organization to certify the region, materials, mode of manufacture, quality, or other characteristic of specific goods or services.

Certification Mark

A mark used by one or more persons, other than the owner, to certify the region, materials, mode of manufacture, quality, or other characteristic of specific goods or services.

Trade Name

A name that a business uses to identify itself and its brand. A trade name that is the some as the company's trodemarked product is protected as a trademark, and unique trade names ore protected under the common law.

Patent

A property right granted by the federal government that gives an inventor an exclusive right to make, use, sell, or offer to sell an invention in the United States for a limited time.

Service Mark

A trademark that is used to distinguish the services (rather than the products) of one person or company from those of another.

Patent: How Acquired

By filing a patent application with the U.S. Patent and Trademark Office and receiving its approval.

Trade Secret: How Acquired

Through the originality and development of the information and processes that constitute the business secret and are unknown to others.

Even business processes of methods are patentable

if they relate to a machine or transformation*

The Anti-Counterfeiting Trade Agreement

in 2011, Australia, Canada, Japan, Korea, Morocco, New Zealand, Singapore United States signed the Anti-Counterfeiting Trade Agreement (ACTA), an international treaty to combat global counterfeiting and piracy.

Trade Secrets

include customer lists, plans, research and development, and pricing information. Trade secrets are protected under the common law and in some states, under statutory law against misappropriation by competitors. The Economic Espionage Act mode the theft of trade secrets a federal crime (see Chapter 6).

The Lanham Act

incorporates the common law of trademarks and provides remedies for owners of trademarks who wish to enforce their claims in federal court. Many states also have trademark statutes.

A trademark

is a distinctive word, symbol or design that identifies the manufacturer as the source of the goods and distinguishes its products from those made or sold by others.

A patent

is a grant from the government that gives an inventor the exclusive right to make, use, and sell an invention for a period 0f twenty years (fourteen years for a design patent) from the date when the application for a patent is filed. To be patentable, an invention (or a discovery, process, or design) must be genuine, novel, useful, and not obvious in light of current technology.

Stealing of confidential business data by industrial espionage, as when a business taps into a competitor's computer,

is a theft of trade secrets without any contractual violation and is actionable in itself.

Trademark Dilution

is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness.

It a firm makes, uses, or sells another's patented design, product, or process without the patent owner's permission,

it commits the tort of patent infringement.

Under ACTA,

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. The treaty neither requires nor prohibits random border searches of electronic devices, such as laptops, tablet devices, and smartphones, for infringing content.

Trademark infringement

occurs when one uses a mark that is the same as, or confusingly similar to, the protected trademark, service mark, trade name, or trade dress of another without permission when marketing goods or services.

Patent infringement

occurs when one uses or sells another's patented design, product, or process without the patent owner's permission.

Copyright infringement

occurs whenever the form or expression of an idea is copied without the permission of the copyright holder. An exception applies if the copying is deemed a "fair use."

The period of patent protection begins

on the date when the patent application is filed, rather than when the patent is issued, which can sometimes be years later.

Generic terms

receive no protection, even if they acquire secondary meanings.

The fair use of a copyrighted work, including such use by reproduction in copies or phono-records or by any other means

specified by [Section 106 of the Copyright Act], for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is riot an infringement of copyright.

In 2006, Congress further amended the law on trade- mark dilution by passing

the Trademark Dilution Revision Act (TDRA).

How does the law protect patents?

the first person to file an application for a patent on a product or process will receive patent protection. Also established a 9 month limit for challenging a patent on any ground

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: 1. They discovered the secret by improper means, or 2. Their disclosure or use constitutes a breach of a duty owed to the other party.

What are trade secrets, and what laws offer protection for this form of intellectual property?

unlimited duration until revealed to others, once revealed it is no longer a trade secret: a formula, device, idea, process, or other information used in business that gives the owner a competitive advantage in the marketplace. protected under the common law.

What are trade secrets, and what lows offer protection for this form of intellectual property?

unlimited duration until revealed to others, once revealed it is no longer a trade secret: a formula, device, idea, process, or other information used in business that gives the owner a competitive advantage in the marketplace. protected under the common law.

The Lanham Act

was enacted in part to protect manufacturers from losing business to rival companies that used confusingly similar trademarks.

In 1995, Congress amended the Lanham Act by passing Federal Trademark Dilution Act,

which allowed trademark owners to bring a suit in federal court for trademark dilution.

In 1980, Congress passed the Computer Software Copyright Act,

which amended the Copyright Act to include computer programs in the list of creative works protected by federal copyright law.

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 commerce 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; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The Web site of the European Patent Office

(www.epo.org) provides online access to 50 million patent documents in more than seventy nations through a searchable network of databases.

The Web site of the U.S. Patent and Trademark Office

(www.uspto.gov) provides searchable databases covering U.S. patents granted since 1976.

Trademark (service mark and trade dress): How Acquired

1. At common law, ownership created by use of the mark. 2. Registration with the appropriate federal or state office gives notice and is permitted if the mark is currently in use or will be within the next six months.

Trademark (service mark and trade dress): Remedy For Infringement

1. Injunction prohibiting the future use of the mark. 2. Actual damages plus profits received by the party who infringed (can be increased under the Lanham Act). 3. Destruction of articles that infringed. 4. Plus costs and attorneys' fees.

However, after five years of registration a federal trademark becomes incontestable.

In other words, once you receive a federal registration for your trademark and once it has been registered for five years it cannot be challenged by another on the grounds that someone else may have earlier rights than you in the trademark.

Section 102 Exclusions

It is not possible to copyright an idea. Section 102 of the Copyright Act specifically excludes copyright protection for any "idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form which it is described, explained, illustrated, or embodied." Thus, others can freely the underlying ideas or principles embodied in a work.

Trade Secret: Remedy For Infringement

Monetary damages for misappropriation (the Uniform Trade Secrets Act also permits punitive damages if willful), plus costs and attorneys' fees.

Patent: Remedy For Infringement

Monetary damages, including royalties and lost profits, plus attorneys' fees. Damages may be tripled for intentional infringements.

What is intellectual property?

Property resulting from intellectual and creative processes.

What Is Protected Expression?

Protecting Creative Expression Under Copyright Laws. When most people think of creative expression, they naturally envision the work of individual authors, artists, poets, singers, and musicians. ... It is used to protect original works of authorship that are fixed in a tangible medium of expression.

The TRIPS Agreement

Representatives from more than one hundred nations signed the TRIPS agreement in 1994. The agreement established, for the first time, standards for the international protection of intellectual property rights, including patents, trademarks, and copyrights for movies, computer programs, books, and music. The TRIPS agreement provides that each member country must include in its domestic laws broad intellectual property rights and effective remedies (including civil and criminal penalties) for violations of those rights.

A single letter used in a particular style can be an arbitrary traddemark.

Strong Marks

Copyright

The exclusive right of an author or originator of a literary or artistic production to publish, print, sell, or otherwise use that production for a statutory period of time.

Section 107 of the Copyright Act provides as follows:

The fair use of a copyrighted work, including such use by reproduction in copies or phono-records or by any other means specified by [Section 106 of the Copyright Act], for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is riot an infringement of copyright.

Trade Dress

The image and overall appearance ("look and feel") of a product that is protected by trademark law.

Copyright Definition

The right of an author or originator of a literary or artistic work, or other production that falls within a specified category, to have the exclusive use of that work for a given period of time.

Why is the protection of trademarks important?

The value of incontestability for a trademark holder cannot be understated. In short, once your trademark becomes incontestable your ability to enforce it is effectively supercharged as you virtually do not have to worry about an alleged infringer claiming earlier rights in their trademark to yours. From an enforcement perspective, this is as good as gold Because if you adopt a trademark that is confusingly similar to another's brand down the road, after spending thousands on marketing and rolling out your product, you may have to re-brand completely if your trademark is found to be infringing upon another's.

In 2011, the European Union agreed to extend the period of royalty protection for musicians from fifty years to seventy years.

This decision aids major record labels— as well as performers and musicians—who previously faced losing royalties from sales of their older recordings. The profits of musicians and record companies have been shrinking in recent years because of the sharp decline in sales of compact discs and the rise in digital downloads (both legal and illegal).

Global Products develops, patents, and markets software. World Copies, Inc., sells Global's software without the maker's permission. Is this patent infringement? If so, how might Global save the cost of suing World for infringement and at the same time profit from World's sales? (See Patents.)

This is patent infringement. A software maker in this situation might best protect its product, save litigation costs, and profit from its patent by the use of a license. In the context of this problem, a license would grant permission to sell a patented item. (A license can be limited to certain purposes and to the licensee only.)

Who does the Trademark Dilution protect?

Trademark dilution laws protect "distinctive" or "famous" trade- marks (such as Rolls Royce, McDonald's, and Apple) from certain unauthorized uses even when the use is on noncompeting goods or is unlikely to confuse. More than half of the states have also enacted trademark dilution laws.

A famous mark may be diluted not only by the use of an identical mark but also by the use of a similar mark.

True

A trade secret is basically information of commercial value.

True

A trademark may not be derogatory to a person, institution, belief, or national symbol.

True

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

True

Almost anything is patentable, except the laws of nature, natural phenomena, and abstract ideas (including algorithms).

True

Computer software may be copyrighted.

True

Computer software may be patented.

True

Even a color can qualify for trademark protection, such as the color schemes used by state university sports teams, including Ohio State University and Louisiana State University.

True

In other words, 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.

True

Patent searches may also be conducted to study trends and patterns in a specific technology or to gather information about competitors in the industry.

True

Registration is renewable between the fifth and sixth years after the initial registration and every ten years thereafter (every twenty years for trademarks registered before 1990).

True

The Madrid Protocol may simplify and reduce the cost of trademark registration in foreign countries.

True

The key requirement for the copyrightability of a compilation is originality.

True

The patent holder can also request damages and attorneys' fees. If the infringement was willful, the court can grant treble damages.

True

The patent holder can sue the infringer in federal court and request an injunction, but must prove irreparable injury to obtain a permanent injunction against the infringer.

True

Trademarks apply to products.

True

Trademarks may be registered with the state or with the federal government.

True

Unlike ideas, compilations of facts are copyrightable.

True

What most people do not know is that even a federal trademark registration can be challenged (e.g., cancelled) under certain circumstances (e.g., if another started use of a similar trademark to yours first).

True

in 1996 Congress passed the Economic Espionage Act, which made the theft of trade secrets a federal crime.

True

Patent: Duration

Twenty years from the date of the application; for design patents, fourteen years.

What Is Patentable?

Under U.S. patent law, any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent." ... The invention must not be obvious. Patentable subject matter. A patent cannot protect an idea.

What Is Patentable?

Under federal law, "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Thus, lo be patentable, an invention must be novel, useful, and not obvious in light of current technology.

The Berne Convention

Under the Berne Convention of 1886 (an international copyright agreement), if a U.S. citizen writes a book, every country that has signed the convention must recognize the U.S. author's copyright in the book. Also, if a citizen of a country that has not signed the convention first publishes a book in one of the 165 countries that have signed, all other countries that have signed the convention must recognize that authors copyright. Copyright notice is not needed to gain protection under the Berne Convention for works published after March 1, 1989.

Trademark (service mark and trade dress): Duration

Unlimited, as long as it is in use. To continue notice by registration, the owner must renew by filing between the fifth and sixth years, and thereafter, every ten years.

Trade Secret: Duration

Unlimited, so long as not revealed to others. Once revealed to others, it is no longer a trade secret.

International Protections

Various international agreements provide international protection for intellectual property. A landmark agreement is the agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which provides for enforcement procedures in all countries signatory to the agreement

Roslyn is a food buyer for Organic Cornucopia Food Company when she decides to go into business for herself as Roslyn's Kitchen. She contacts Organic's suppliers, offering to buy their entire harvest for the next year, and Organic's customers, offering to sell her products for less than her ex-employer. Has Roslyn violated any of the intellectual property rights discussed in this chapter? Explain. (See Trade Secrets.)

Yes, Roslyn has committed theft of trade secrets. Lists of sup- pliers and customers cannot be patented, copyrighted, or trade- marked, but the information they contain is protected against appropriation by others as trade secrets. And most likely, Roslyn signed a contract, agreeing not to use this information outside her employment by Organic. But even without this contract, Organic could have made a convincing case against its ex-employee for a theft of trade secrets.

Under Section 103 of the Copyright Act,

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

To register for protection under federal trademark law,

a person must file an application with the U.S. Patent and Trademark Office in Washington, rently in commerce or (2) if the applicant intends to put the mark into commerce within six months.

Descriptive terms, geographic terms, and personal names are not inherently distinctive and do not receive protection under the law until they acquire

a secondary meaning.

Once a secondary meaning is attached to a term or name,

a trademark is considered distinctive and is protected.

What is intellectual property?

a work or invention that is the result of creativity, such as a manuscript or a design, to which one has rights and for which one may apply for a patent, copyright, trademark, etc.

What laws protect authors' rights in the works they create?

copyright law protects the rights of the authors of certain literary or artistic productions. The Copyright Act of 1976, as amended, covers these rights

Generally, the TRIPS agreement

forbids member nations from discriminating against foreign owners of intellectual property rights in the administration, regulation, or adjudication of those rights. In other words, a member nation cannot give its own nationals (citizens) favorable treatment without offering the same treatment to nationals of all member countries.

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.

Copyright: Remedy For Infringement

Actual damages plus profits received by the party who infringed or statutory damages under the Copyright Act, plus costs and attorneys' fees in either situation.

License

An agreement by the owner of intellectual property to permit another to use a trademark, copyright, patent, or trade secret for certain limited purposes.

The "Fair Use" Exception

An exception to liability for copyright infringement is made under the "fair use" doctrine. In certain circumstances, a person or organization can reproduce copyrighted material without paying royalties (fees paid to the copyright holder for the privilege of reproducing the copyrighted material).

Trademark (service mark and trade dress) Definition

Any distinctive word, name, symbol, or device (image or appearance), or combination thereof, that an entity uses to distinguish its goods or services from those of others. The owner has the exclusive right to use that mark or trade dress.

Trade Secret Definition

Any information that a business possesses and that gives the business an advantage over competitors (including formulas, lists, patterns, plans, processes, and programs).

Why is the protection of trademarks important?

Article I, Section 8, of the US constitution authorizes congress "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." laws protecting trademarks- and patents and copyrights as well- are designed to protect and reward inventive and artistic creativity.

Copyright: How Acquired

Automatic (once the work or creation is put in tangible form). Only the expression of an idea (and not the idea itself) can be protected by copyright.

Copyright: Duration

For authors: the life of the author, plus 70 years. For publishers: 95 years after the date of publication or 120 years after creation.

Stop Counterfeiting in Manufactured Goods Act

In 2006, Congress enacted the Stop Counterfeiting in Manufactured Goods Act9 (SCMGA) to combat counterfeit goods. The act made it a crime to intentionally traffic in, or attempt to traffic in, counterfeit goods or services, or to knowingly use a counterfeit mark on or in connection with goods or services.

The First Sale Doctrine Section 109(a) of the Copyright Act

also known as the first sale doctrine provides that "the owner of a particular copy or phonorecord lawfully made under [the Copyright Act], or any person authorized by such owner is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord."

Whenever the form or expression of an idea is copied,

an infringement of copyright occurs.

ACTA

applies not only to counterfeit physical goods, such as medications, but ah also to pirated copyrighted works being distributed via the Internet. The idea is to create a a new standard of enforcement for intellectual property rights that goes beyond the TRIPS agreement and encourages international cooperation and information sharing among signatory countries.

Generic terms

are terms that refer to an entire class of products, such as bicycle and computer.

The major federal statutes protecting trademarks and related property

are the Lanham Act of 1946 and the Federal Trademark Dilution Act of 1995. Generally, to be protected, a trademark must be sufficiently distinctive from all competing trademarks.

The goals of the treaty

are to increase international cooperation, facilitate the best law enforcement practices, and provide a legal framework to combat counterfeiting. The treaty will have its own governing body.

A secondary meaning

arises when customers begin to associate a specific term or phrase, such as "London Fog," with specific trademarked items (coats with "London Fog" labels) made by a particular company.

Statutory protection of trademarks and related property is provided

at the federal level by the Lanham Act of 1946.

Suggestive trademarks

bring to mind something about a product without describing the product directly.

The Madrid Protocol

which was signed into law in 2003, may help to resolve these problems. This is is an international treaty that has been signed by eighty-six countries. Under its provisions, a U.S. 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 treaty was designed to reduce the costs of international trademark protection by more than 60 percent.