Chapter 8 - Intellectual Property

Lanham Act

(1946) Written down law; statute. Protection of trademarks at federal level to protect manufacturers from loosing business to rival companies that use confusingly similar or identical trademarks, incorporates common law.

Trademark Dilusion Act

(1995) Congress amended the Lanham. Allows trademark owners to bring a suit in federal court for trademark dilution. Famous mark may be diluted not only by the use of an identical mark but also by the use of a similar mark. Trademark delusion laws protect "distinctive" or "famous" trademarks (Rolls Royce, Apple) from certain unauthorized uses even when the use is on noncompeting goods or is unlikely to confuse.

How Trademark is 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 6 months.

Trademark 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 attorney fees

Patent Duration

20 years from the date of the application; for design patents, 14 years. After 20 years anyone can use the invention.

Patent

A grant from the government that gives an inventor exclusive rights to an invention. Only get patents for things that work. Must prove to government that it works.

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

Fair use

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). The courts determine whether a particular use is fair on a case-by-case basis. Thus, anyone reproducing copyrighted material may be committing a violation. Consider: how much did you take and what is the effect on the owner in the market place? If doesnt effect the owner it is legal under fair use.

Trademark (service mark and trade dress)

Any distinctive word, name, symbol, or device (image or appearance), or combo 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

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

Secondary

Arises when customers begin to associate a specific term with specific trademarked items made by a particular company. No protection under law until there is secondary meaning. Didn't make up words, so you have to wait some time to register product in order to get secondary meaning and then get exclusive rights

How copyright is acquired?

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

Distinctive strong marks

Can be trademarked right away/instantly as long as you are first in time and words are made up. Exclusive rights; no one else can use it. Fanciful, arbitrary, or suggestive trademarks are generally considered to be the strongest trademarks. Normally taken from outside the context of the particular product, best means of distinguishing one product from another. Includes invented words (Xerox, Dairy Queen, etc.)

Certification mark

Certification companies test products to meet certain standards. Another whole industry that certifies something else. One being certified has nothing to do with the other industry. But makes product/business look better - does the work for the consumer. Example: Oprah book club

Generic

Example: Apple. Refers to an entire class of products. Receive no protection or exclusive rights, even if acquires second meaning. (Must be first in time and distinctive strong mark. If not? Wait until company does well/becomes recognizable).

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

Meta tags

Keywords in search bar. Courtrule: If using trademark for metatag and is only for nominal/small use and have some of the type of relationship to trademark word and no one will be confused with you and trade mark company = Okay; can use.

License

License to use (for certain time at certain cost). Yours for exclusive use. Way to avoid litigation and still make use of another's trademark or other intellectual property. A license is an agreement permitting the use of a trademark, copyright patent, or trade secret. Only grants the rights expressively described in the agreement.

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.

Collective mark

Organizations that you belong to with your competitors. Companies belongs to industry life needs; all belong to a group together. Example: Dairy Farmers of America.

Proving Trademark Dilusion

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 defendants 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.

Service mark

Service industry (not trade industry; trademark). A trademark that is used to distinguish the services of a person or company from others.

Copyright

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.

How Trade Secret is Acquired?

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

What must be registered

To be protected = 1st in time

Trademark duration

Unlimited, as long as it is in use. To continue notice by registration, the owner must renew by filing between the 5th and 6th years, and thereafter, every 10 years.

Trade secret duration

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

Without permission, Sally copies photographs from Isaiah's book Mount Everest: Top of the World and uses them in a new book. Sally's book is about photography, not mountains. Sally's use of the photos is

an infringement of Isaiah's copyright

How Patent is acquired?

by filing a patent app with the U.S. Patent and Trademark Office and receiving its approval

In 2010, Mugaba wrote her memoirs, My Life in the Congo. Mugaba did not register a copyright. Under federal copyright law, Mugaba's book

is protected for her life plus 70 years

Cason thinks of a new concept for a palm-sized computer notebook. He also thinks of a new, faster process for producing the notebooks. Federal copyright law protects

neither Cason's concept nor his process

Deragatory words

not trademarked

Amy Mendoza is a local radio personality who goes by the name "Amy in the A.M." on the air. She also uses that label in print ads to help radio listeners distinguish her show from the other morning radio shows in her town. Amy would be most likely to register her name as a

service mark

Rachel has just finished the business plan for a franchise that she expects to have international appeal. She is concerned about protecting the trade name of the business. Which of the following provides her an avenue for registering a trade name internationally?

the Madrid Protocol

Trade dress

the image and overall appearance (look and feel) of a product. A broad concept that can include all or part of the total image or overall impression created by a product or its packaging. Subject to the same protection as trademarks. In a case, must consider whether consumers are likely to be confused by the allegedly infringing use. Ex: Starbucks color, lighting, shape of building, architecture, etc. They have rights to everything/ same protection as trademark.

A&O is the software designer of the most popular video game in the country. A&O decides to develop the game into a series and have its best designer, Laz, head the team of programmers working on the next game. Laz quits and goes to work for GameWare, taking some files for the new game with him. Under trade secret laws, A&O has protection for

the info in the file and Laz's ideas for the game design

Buster invents a new camp grill that he names Buster's Burger Blaster. He writes specific instructions about how to use it in a manual that comes with every grill. Buster can obtain a trademark for

the name only

On the Border Mexican restaurants all have the same terracotta and turquoise color scheme, with posters of bullfighters and maps of Mexico on the walls. The restaurants also have identical furniture and menus, the wait staff wear similar types of clothing, and the same music plays in the background. The restaurants have a unique ambience, known in legal terms as their

trade dress

Alpha Corp. creates a syrup that is flavored with coffee and chocolate and sells it under the name MochaMerge. Beta Co. begins to sell a similar product under the name MokaMerge. This is most likely a matter of

trademark infringement

Hot Products owns a patent for a fan motor that it uses in ceiling fans. Allied Electric uses a fan motor that is identical to Hot's in the air conditioners it manufactures. Allied does not have Hot's permission to use the motor. Can Hot sue Allied for patent infringement?

yes, because Allied infringed on Hot's patent