Chapter 28

The Digital Millennium Copyright Act

1. It is illegal to delete copyright information, such as the name of the author or the title of the article. It also illegal to distribute false copyright information. Could not delete name off of a drawing for example and email it, or claim it as their own. 2. It is illegal to circumvent encryption or scrambling devices that protect copyrighted works. 3. It is illegal to distribute tools and technologies used to circumvent encryption devices. 4. Internet service providers (ISPs) are not liable for posting copyrighted material so long as they are unaware that the material is illegal and they remove it promptly after receiving notice that it violates copyright law. Youtube for example, was ruled in favor when sued by Viacom. Its only requirement was to respond when notified of infringement.

Utility Patent Inventions

1. Mechanical Invention 2. Electrical Invention 3. Chemical Invention 4. Process 5. Machine 6. Composition of Matter

Requirements for a Patent

1. Novel 2. Nonobvious 3. Utility 4. Patentable Subject Matter

International Trademark Treaties

1. Paris Convention; registers in one country, grace period of six months to register in any other country with original filing date of first one. 2. Madrid Agreement; any trademark registered with the international registry is valid in all signatory countries. (US is a signatory) 3. Trademark Law Treaty; Applicant seeking international trademark protection need file only one application, in English, with the PTO, which sends the application to the World Intellectual Property Organization (WIPO), which transmits it to each country in which the applicant would like trademark protection.

Not Distinctive and Invalid Tradermarks

1. Similar to an existing trademark; "Pledge" polish granted, "Promise" polish refused. 2. Generic trademark; ordinary names like "shoe" or "book" can not be trademarked; but sometimes trademark names like "Zipper" or "Aspirin" become generic and so the holder loses the trademark because it not longer distinguishes one product from the other. 3. Descriptive marks; Descriptive words (green, crunchy, etc) can not be trademarked if they describe the product, but if they do not describe it, then they may be trademarked; such as "Blue Diamond" nuts. 4. Names; You can't register "Obama" as a trademark. 5. Scandalous or immoral trademarks; nude man and woman embracing was refused; marijuana trademarks like "Sweet Mary Jane, she never lets you down" are refused by PTO.

Fair Use - Factors

1. The purpose and character of the use; when used for criticism, parody, comment, news reporting, scholarship, research, or education it is most likely fair use. 2. The nature of the copyrighted work; Facts receive less protection than fiction. For example, if we were not allowed to use facts described in a textbook, education would be stifled. 3. The amount and proportion of the work that is used; Less is more likely to be fair use. 4. The effect of the use upon the potential market; Courts generally do not permit a use that will deprive the copyright owner of income or compete with the original work.

Design Patent

A design patent protects the appearance, not the function of an item. Granted to anyone who invents a new, original, and ornamental design for an article. Last 14 years from the date of issuance.

Trade Secrets

A formula, device, process, method, or compilation of information that, when used in business, gives the owner an advantage over competitors. To determine if it is a trade secret, courts consider: 1. How difficult (and expensive) was the information to obtain? Was it readily available from other sources? 2. Does the information create an important competitive advantage? 3. Did the company make a reasonable effort to protect it? Companies may not want to publicly disclose the formula to public with a patent, additionally, it only lasts 20 years. Other trade secrets, like customer lists, business plans, and marketing strategies can not be patented.

Patent

A grant by the government permitting the inventor exclusive use of an invention for a specified period. During this period, no one may make, use, or sell the invention without permission. In return, the inventor publicly discloses information about the invention that everyone can use upon expiration of the patent.

Infringement

A patent holder has the exclusive right to make, use, or sell the patented invention during the term of the patent. A holder can prohibit others from using any product that is substantially the same, license the product to others for a fee, and recover damages from anyone who uses the product without permission.

Trademarks

A trademark is any combination of words and symbols that a business uses to identify its products or services and distinguish them from others.

Track One System

Allowed by under the American Invents Act, PTO has set up a Track One system that permits inventors to buy their way to the head of the line paying an additional fee of $4800 (large companies) and $2400 (small). Only 10,000 applications will be accepted in any given year.

Novel

An invention must be new to be patentable. An invention is not patentable if it has already been: 1. Patented 2. Described in a printed publication 3. In Public Use 4. On sale 5. Otherwise available to the public any place in the world.

Nonobvious

An invention must be unexpected to be patentable. An invention is not patentable if it is obvious to a person with ordinary skill in that particular area. Patent and Trademark Office and courts look at the difference between it and existing technologies to see if that difference would be unexpected to someone skilled in the field (at the time of patenting).

Utility

An invention must be useful. It need not be commercially valuable, but generally, it must do something.

Prior Sale

An inventor must apply for a patent within one year of selling the product commercially. This is to encourage prompt disclosure of inventions. It prevents someone from inventing a product, selling it for years, and then obtaining a 20-year monopoly with a patent.

Plant Patents

Anyone who creates a new type of plant can patent it, provided that the inventor is able to reproduce it asexually - through grafting, for instance, rather than by planting its seeds. Plant patents are without controversy. Monsanto for example, sued a farmer who had genetically modified seeds blow over onto his land who also kept some of these seeds for future use. Monsanto won because it had infringed on its plant patent by using it without permission.

Priority Between Two Inventors

Before 2013, the person who invented it first and put it into practice had priority over the first filer. After 2013, the first filer has priority to an application.

Infringement Damages

Damages can be substantial. In a recent case, a jury ordered SAP to pay Oracle $1.3 billion for copyright infringement of Oracle's software.

Patent Application and Issuance

Inventor must file a complex application with the PTO. If a patent examiner determines that the application meets all legal requirements, the PTO will issue the patent. If an examiner denies an application for any reason, the inventor can appeal that decision to the Patent Trial and Appeal Board in the PTO and from there to the Court of Appeals for the Federal Circuit in Washington.

Patent Cooperation Treaty (PCT)

Inventors who pay a fee and file a so-called PCT patent application are granted patent protection in the 148 PCT countries for up to 30 months. During this time, they can decide how many countries they actually want to file in.

Diamond v. Chakrabarty

Involved genetically engineered bacteria that was used to treat oil spills. Supreme Court ruled in 1980 that living organisms could be patented as long as they were not found in nature and a product of human ingenuity.

Lapine v. Seinfeld

Lapine writes book about hiding healthy pureed food in children's favorite foods. Seinfeld's wife then publishing a book with the same idea. Lapine sues for copyright infringement. Court ruled that Lapine did not have copyright over the idea of the book, and that both books were substantially different enough to prove that Seinfeld did not steal the expression of Lapine's book.

Infringement - Trademark

Must show the defendant's trademark is likely to deceive customers about who has made the goods or provided the services. eBay prevented perfumebay from being used as a name for a perfume seller.

Association for Molecular Pathology v. Myriad Genetics, Inc.

Myriad held patents for genes BRCA1 and BRCA2 which greatly increased risk of breast and ovarian cancer. Association of Molecular Pathology sued on grounds that the patents were invalid. District court struck down patents, Appeals reversed, and Supreme Court Ruled that their patents for DNA were invalid, but their patent for cDNA (genetically modified genes) were valid because they did not occur in nature.

Patentable Subject Matter

Not every innovation is patentable. A patent is not available for solely an idea, only for its tangible application.

Digital Music and Movies

One of the major challenges for legal institutions in regulation copyrights is simply that modern intellectual property is so easy to copy.

Lanham Act

Owner files an application with the PTO in Washington, D.C. The PTO will accept an application only if the owner has already used the mark attached to a product in interstate commerce or promises to use the mark within six months after the filing. In addition, the applicant must be the first to use the mark in interstate commerce. Initially, the trademark is valid for 10 years, but the owner can renew it for an unlimited number of 10-year terms as long as the mark is still in use.

Fair Use

Permits limited use of copyrighted material without permission of the author.

Utility Patent

Protects the function of an invention; 94 percent of all patents are utility patents.

The Limits of Patentable Subject Matter: Living Organisms

Supreme Court ruled in 1980 living organisms could be patented, as long as they are different from anything found in nature and a product of human ingenuity. That is, if they were made or significantly modified by humans.

International Patent Treaties

The Paris Convention for the Protection of Industrial Property requires each member country to grant to citizens of other member countries the same rights under patent law as its own citizens enjoy. The patent office in each member country must accept and recognize all patent and trademark applications filed with it by anyone who lives in any member country. i.e. A French patent office may not refuse an application from an American as long as they have complied with French law.

First Sale Doctrine

The first sale doctrine permits a person who owns a lawfully made copy of a copyrighted work to sell or otherwise dispose of the copy. This does not permit the owner to make a copy and sell it. It is not legal to scan a textbook onto your iPad and then sell the original or any copy of it.

Copyrights

The holder of a copyright owns the particular expression of an idea, but not the underlying idea or method of operation. Unlike patents, the ideas underlying copyrighted material need not be novel, but the expression must be different. A work is copyrighted automatically once it is in tangible form. Registration with the Copyright Office of the Library of Congress is necessary only if the holder wishes to bring suit to enforce the copyright. The copy right symbol is not required in the US but lawyers still recommend it because other countries recognize it and intentional copyright infringement holds heavier penalties.

Copyright Term

The term for a copyright in the United States is the life of the author plus 70 years. For a corporation, the copyright lasts 95 years from publication or 120 years from creation, whichever is shorter. Once a copyright expires, anyone may use the material.

Valid Tradermarks

The trademark must be distinctive - must clearly distinguish one product from another.

Proving Infringement

To prove a violation, the plaintiff must present evidence that the work was original and that either: 1. The infringer actually copied the work; or 2. The infringer had access to the original and the two works are substantially similar.

Network Automation, Inc. v. Advanced Systems Concepts, Inc.

Two companies selling competing software; Network purchased keyword ActiveBatch which was the trademark of competitor's software. Systems sued for trademark infringement.

Pollack v. Skinsmart Dermatology and Aesthetic Center P.C.

Two doctors, instead of buying Dr. Pollack's practice, started Skinsmart, took the medical assistant and staff, along with patient lists and appointment books, before all suddenly resigning. Called patients and mailed them along with referring doctoring telling them about Skinsmart. Pollack sued for misappropriating trade secrets. Court ruled in favor of Pollack because these secrets were the particular information of the employer, not general secrets of the trade, which Pollack had spent years compiling, maintaining, and protecting it, which all required substantial time and investment. It was valuable to his practice, it was not known among his employees, and it was reasonably protected. Therefore, Skinsmart misappropriated the trade secrets.

Ownership and Registration

Under common law, the first person to use a mark in trade owns it. Registration under the federal Lanham Act is not necessary. However it has several advantages: 1. Registration makes it valid nationally. 2. Registration notifies the public that a mark is in use, which is helpful because anyone who applies for registration searches the Public Register to ensure that no one else has rights to the mark. 3. The holder of the registered trademark generally has the right to use it as an Internet domain name.