Business Law- Chapter Seven

Statutory Protection of Trademarks

The Lanham Act of 1946 was enacted to protect manufacturers from losing business to rival companies that use similar trademarks.

the anti counterfeiting trade agreement

goal is to increase international cooperation, facilitate best law enforcement practices and provide a legal framework to combat & includes border searches

1976 copyright act

governs copyrights, works created after Jan 1 1978 are automatically given statutory copyright protection for the life of the author plus 70 years. For publishing companies, copyright expires 95 years from date of publication or 120 years from date of creation

the Berne Convention

international treaty that protects copyrights; countries that sign must recognize copyrights of other countries, even those that haven't signed the treaty

america invents act

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

trade dress

the image and overall appearance of a product or service

First Sale Doctrine

the owner of a particular item that is copyrighted can, without the authority of the copyright owner, sell or otherwise dispose of it

TRIPS agreement & prohibiting discrimination

forbids member nations from discriminating against foreign owners of intellectual property rights in the adminstration, regulation or adjudication of such rights

global scope & parent infringement

foreign firms can apply for US patent protection on items they sell within the US, just as US firms can do the same in other countries

exceptions under the fair use exception

1) dependent of the purpose & character of use 2) nature of the copyrighted work 3) the amount of substantially of the option used in relation to the copyright work as a whole 4) the effect of the use upon the potential market value

When can a trademark be registered?

1) if it is currently in commerce 2) if the applicant intends to put it into commerce within 6 months

Trademark Infringement

when a trademark is copied to a substantial degree, once this happens, the owner has a cause of action against the infringer

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

spectrum of 5 catergories of distinctiveness of trademarks (strongest to weakest)

1. fanciful & arbitrary marks 2. suggestive marks 3. descriptive marks 4. generic marks 5. service, certification, collective marks

what must a plantiff prove under the trademark dilution act

1. owns a famous mark that is distinctive 2. defendant has begun using a mark in commerce that allegedly is duilting the famous mark 3. the similarity between defendants mark and the famous mark gives rise to an association between the two marks 4. the association is likely to impair the distinctiveness of the famous mark or harms its reputation

the TRIPS agreement

Established standards for the international protection of intellectual property rights, provided that each member country must include in its domestic laws broad intellectual property rights & remedies, established a mechanism for settling disputes among member nations

when does the period of the patent start?

Period of patent starts the date when the application is filed, not issued

Remedies for Patent Infringement

Royalties, lost profits, attorneys' fees and, if the infringement is willful, treble damages.

when are those who use a trade secret liable?

Those who use without authorization are liable to that other party if 1) they discovered the secret by improper means 2) their disclosure or use constitutes a breach of duty owed to the other party

what is protected expression?

To be protected, a work must be fixed in a durable medium that can be perceived, reproduced or communicated

the madrid protocol

a US company wishing to register its trademark abroad can submit a single application and designate other member countries in which it would like to register the mark

trademark

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

trade secrets

a formula, device, idea, process or other information used in a business that gives the owner a competitive advantage in the marketplace that extends to both their ideas and expressions

collective marks

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

certification marks

a mark used by one or more persons, other than the owner, to certify the region, materials, mode of manufacturer, quality or other characteristics of specific goods or services

trade name

a name that a business uses to identify itself and its brand, directly related to a business's reputation and goodwill, and is protected under trademark law.

royalities

a payment made to a pentent or copyright holder for the privledge of using the patent of the copyrighted work

patent

a property right granted by the federal government that gives an inventor an exclusive right to make, use and sell an invention for a limited time (20 years) & has to be proven as novel

Remedies for Trademark Infringement

a trademark owner that has successfully provided infringement can recover actual damages plus profits that the infringer wrongfully received from unauthorized use

service marks

a trademark that is used to distinguish the services of one person or company from another

compliation

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 whole constitutes an original work of authorship (originality is key)

Remedies for Copyright Infringement

actual damages are based on the harm caused to the copyright holder by the infringment

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

patent requirements

an invention must be novel, useful and not obvious in the light of current technology

exceptions to protected expression under section 102 exclusions

anything that is not an original expression, facts widely known to the public, mathematical calculations, ideas

when do trademarks need to be registered?

applicant has three years from approval to make use of the trademark, reapply 5-6 years after and then ten years after

fanciful & arbitrary marks

apply words phrases with no commonly understood connection to the product - serve to identify a products source - often include invented words

trademark dilution

brought forth by the Federal Trademark Dilution Act, is the unauthorized use of a distinctive and famous mark in a way that impairs the mark's distinctiveness or harms its reputation

fair use exception

can reproduce copyrighted materials without paying royalties, based on the following factors

counterfeit goods

copy/ imitate trademarked goods but are not genuine, have negative financial effects on legitimate businesses & can present serious public health risks

Copyright Protection for Software

copyright protection applies to some parts of software but not all

descriptive marks

define a particular characteristic of the product in a way that doesn't require imagination - descriptive terms, geographic terms & personal names

generic marks

describe the product in its entirety & not entitled to trademark protection

SCMGA (Stop Counterfeiting in Manufactured Goods Act)

make it a crime to intentionally traffic in or attempt to

when are trade names protected as trademarks?

may be protected as a trademark if the trade name is the same as the company's trademarked product

requirements for permanent injunction from patent infringement

must prove that it has suffered irreparable injury and that the public interest would not be disserved by permanent injunction

How to prove trademark infringement

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

when does the US patent & trademark office require that trademarks be put into use?

put into use within 6 months or 3 years after the application was approved

suggestive marks

suggest a product's features and requires consumers to use some imagination to associate the suggestive mark with the product

copyrights

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

copyrightable under section 102

the way that ideas are expressed but idea and expression need to separable

why do companies use patents?

to list or inventory their patents (valuable assets) and enable companies to study trends to gather information about competitors in the industry

true or false: patent infringement may occur even though the patent owner hasn't put on commerce or when not all features of an invention are copied

true

Copyright Infingement

whenever the form or expression of an idea is copied but reproduction doesn't have to be exactly the same as the original nor does it have to reproduce the original in its entirety (has to be substantial)

how can suggestive marks be transformed into faniciful marks?

with significant market recognition