Business Law Chapter 24, Intellectual Property

To determine if information is a trade secret, courts consider

How difficult was the information to obtain? Was it readily available from other sources? Does the information create an important economic advantage? Does the company make a reasonable effort to protect it?

Parody

A fair use of copyrighted material so long as the use of original is not excessive

Trade Secrets

A formula, device, process, method, or compilation of information that gives the owner an advantage over competitors

Patents

A grant by the government permitting the inventor exclusive use of an invention for a specific period

Infringement

A patent holder has exclusive rights to use the invention during the terms of the patent

Provisional patent application

A shorter, simpler filing permitted to inventors by the Patent and Trademark Office (PTO)

Patent Cooperation Treaty

A step toward providing more coordinated patent review across many countries

Theft of domain name

Accused can convicted under the Computer Fraud and Abuse Act

Anyone who misappropriates a trade secret is liable to its owner for:

Actual damages Unjust enrichment A reasonable royalty

Prior Sale

An inventor must apply for a patent within one year of selling the product commercially anywhere in the world

Cybersquatting

Anticybersquatting Consumer Protection Act (ACPA): Permits both trademark owners and famous people to sue anyone who registers their name as a domain name in "bad faith"

Trademarks

Any combination of words and symbols that a business uses to distinguish products or services and distinguish them from others

Under the Madrid Agreement

Any trademark registered with the international registry is valid in all signatory countries

Plant Patent

Anyone who creates a new type of plant can patent it Provided the inventor is able to reproduce it asexually—through grafting

Utility Patent

Available to those who invent or significantly improve a: Mechanical invention Electrical invention Chemical invention Process Machine Composition of matter

Copyright Term

Currently, copyrights are valid until 70 years after the death of the work's only or last living author In the case of works owned by a corporation, the copyright lasts: 95 years from publication or 120 years from creation, whichever is shorter

A patent is not available solely for an idea, but only for its tangible application

Business method patents - Involve a particular way of doing business that often includes data processing and mathematical calculations Patents on living organisms

Business Method Patents

Controversial Amazon patented One-click payment, Barnes and Noble couldn't use it, jugde affirmed decision, Amazon patent expires in 2017

Domain Names

Difficult to find a distinctive name for a new business

Permits limited use of copyrighted material without permission of the author for purposes such as criticism, comment, news reporting, scholarship, or research.

Fair use doctrine

Trademark Categories

Fanciful marks: Made-up words such as Kodak Arbitrary marks: Use existing words that do not describe the product Suggestive marks: Indirectly describe the product's function Trade dress: The image and overall appearance of a business or product

Ownership and Registration

First person to use a mark in trade owns it Registration with federal government is not necessary Owner of the mark may register it on the Lanham Act Principal Register

Under the Paris Convention

If someone registers a trademark in one country, then he has a grace period of six months, during which he can file in any other country using the same original filing date

The No Electronic Theft Act

Intended to deter the downloading of copyrighted material

ICANN

Internet Corporation for Assigned Names and Numbers - A private, nonprofit, international organization that handles management of the Internet, including the allocation of names

The Family Entertainment and Copyright Act

It is a criminal offence to use a camcorder to film a movie in a theater Establishes criminal penalties for willful copyright infringement

Digital Millennium Copyright Act provides that:

It is illegal to delete copyright information It is illegal to circumvent encryption or scrambling devices that protect copyrighted works It is illegal to distribute tools and technologies used to circumvent encryption devices Online service providers are not liable for posting copyrighted material so long as they are unaware that the material is illegal They should remove it promptly after receiving notice that it violates copyright law

The Digital Millennium Copyright Act

It is illegal to delete copyright information such as the name of the author or the title of the article It is illegal to circumvent encryption or scrambling devices that protect copyrighted works It is illegal to distribute tools and technologies used to circumvent encryption devices Online service providers OSPs 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

The Copyright Act protects:

Literature, music, drama, choreography, pictures, sculpture, movies, recordings, architectural works, computer databases, and computer programs

The Economic Espionage Act of 1996

Makes it a criminal offence to steal (or attempt to steal) trade secrets for the benefit of someone other than the owner, including for the benefit of any foreign government

Ownership and Registration Advantages

Makes trademark protection valid nationally Notifies public of its use Five years after use, a mark incontestable because most challenges are barred Damages available under the Lanham Act are higher than under common law Generally gives first right to use the trademark as an Internet domain name

Examples of Utility Patents

Mechanical invention: a hydraulic jack used to lift heavy aircraft Electrical invention: a prewired, portable wall panel for use in large, open plan offices Chemical invention: the chemical 2-chloroethylphosphonic acid used as a plant growth regulator Process: a method for applying a chemical compound to an established plant such as rice in order to inhibit the growth of weeds selectively, the application can be patented separately from the actual chemical Machine: A device that enables a helicopter pilot to control all flight functions (pitch, roll and heave) with one hand Composition of matter: a sludge used as an explosive t construction sites; the patent specifies the water content, the density, and the types of solids contained in the mixture

Digital Music and Movies

Modern technology is very easy to copy A major challenge for legal institutions in regulating copyrights

Design Patent requirements

Novel, Nonobvious, Useful

Duration of the patent

Patents are valid for 20 years from the date of filing the application Design patents are valid for 14 years from the date of issuance

First Sale Doctrine

Permits a person who owns a lawfully made copy of a copyrighted work to sell or otherwise dispose of the copy

Fair Use

Permits limited use of copyrighted material without permission of the author for purposes such as criticism, comment, news reporting, scholarship, or research

Federal Trademark Dilution Act of 1995

Prevents others from using a trademark in a way that: Dilutes its value Even though consumers are not confused about the origin of the product Tarnishes it by association with unwholesome goods or services

Design Patent

Protects the appearance, not the function of an item Last 14 years from the date of issuance Not 20 years from the fate of filing

A work is automatically copyrighted once it is in tangible form

Registration with the Copyright Office of the Library of Congress is necessary only if the holder brings suit to enforce the copyright Authors routinely place the copyright symbol (©) on their works Such a precaution is not necessary in the United States

The Paris Convention for the Protection of Industrial Property (Paris Convention)

Requires each member country to grant to citizens of other member countries the same rights under patent law as its own citizens enjoy

The Berne Convention

Requires member countries to provide automatic copyright protection to any works created in another member country

The Patent Law Treaty

Requires that countries use the same standards for the form and content of patent applications

The Trademark Law Treaty

Simplifies and harmonizes the process of applying for trademarks around the world

Patent troll:

Someone who buys a portfolio of patents for the purpose of making patent infringement claims

Any country that joins the World Trade Organization must agree to

TRIPS (trade-related aspects of intellectual property rights)

Trademarking a domain name

The PTO will issue such a trademark only for services offered via the Internet

Copyrights

The holder of a copyright owns the particular tangible expression of an idea, but not the underlying idea or method of operation

Priority between two inventors

The person who invents and puts the invention into practice has priority over the first filer

A _____ is any combination of words and symbols that a business uses to identify its products or services and distinguish them from others. a. trademark b. patent c. copyright d. trade secre

a. trademark

Non-Valid Trademarks

To be valid, a trademark cannot be: Similar to an existing mark A generic trademark A descriptive mark A person's name alone Deceptive Scandalous or immoral

Valid Trademarks

To be valid, a trademark must be distinctive

Infringement

To prove a violation, the plaintiff must present evidence that the work was original and that either: The infringer actually copied the work, or That the infringer had access to the original and the two works are substantially similar A court may: Prohibit the infringer from further violations Order destruction of the infringing material, and Require the infringer to pay damages, profits earned, and attorney's fees

Requirements for a Patent

To receive a patent, the new invention must be: Novel Nonobvious Useful

Trademark Infringement

To win a infringement suit, the trademark owner must show that: Defendant's trademark is likely to deceive customers about who made the product or provided the service The rightful owner is entitled to: An injunction prohibiting further violations Destruction of the infringing material Up to three times actual damages Any profits the infringer earned on the product Attorney's fees

Types of Trademarks

Trademarks: Affixed to goods in interstate commerce Service marks: Identifies services, not products Certification marks: Words or symbols used to attest that products meet certain standards Collective marks: Used to identify members of an organization

Patent Prosecution Highway

Under which the United States PTO has bilateral agreements with 16 other patent offices

Types of Patents

Utility patents Design patents Plant patents

Role is to balance the rights of those

Who create intellectual property Who would enjoy it

Inventors who pay a fee and file a _____ Treaty patent application are granted patent protection in the 143 member countries for up to 30 months. a. Patent Cooperation b. Patent Law c. Geneva Convention d. Berne Convention

a. Patent Cooperation

According to the _____ Act, anyone who misappropriates a trade secret is liable to the owner for actual damages, unjust enrichment, or a reasonable royalty. a. Uniform Trade Secrets b. Implied Trade Secrets c. Economic Espionage d. Espionage

a. Uniform Trade Secrets

Which of the following types of patents is granted to someone who makes a significant improvement to a hydraulic jack used to lift heavy vehicles? a. Utility patents b. Plant patents c. Provisional patents d. Design patents

a. Utility patents

Julie, an author, writes a new book on philosophy called "Life and Music." Julie must register her book for a _____. a. copyright b. patent c. service mark d. collective mark

a. copyright

_____ are words or symbols used by a person or organization to attest that products and services produced by others meet certain standards. a. Collective marks b. Certification marks c. Trademarks d. Service marks

b. Certification marks

To safeguard national security and maintain the nation's industrial and financial edge, Congress passed the _____ Act of 1996, which makes it a criminal offense to steal trade secrets for the benefit of someone other than the owner, including for the benefit of any foreign government. a. Electronic Communications Privacy b. Economic Espionage c. Foreign Intelligence Surveillance d. Uniform Trade Secrets

b. Economic Espionage

In the context of copyrights, which of the following doctrines permits limited use of copyrighted material without permission of the author for purposes such as criticism, comment, news reporting, scholarship, or research? a. The first sale doctrine b. The fair use doctrine c. The best interests doctrine d. The estoppel doctrine

b. The fair use doctrine

In accordance with American law, a copyright is valid until _____ years after the death of the work's only or last living author. a. 45 b. 90 c. 70 d. 30

c. 70

Which of the categories of distinctive trademarks indirectly describe the product's function? a. Generic b. Fanciful c. Suggestive d. Arbitrary

c. Suggestive

Only _____ penalties are available under the Uniform Trade Secrets Act. a. corporal b. criminal c. civil d. administrative

c. civil

A _____ is a formula, device, process, method, or compilation of information that, when used in business, gives the owner an advantage over competitors who do not know it. a. copynorm b. copyright c. trade secret

c. trade secret

Patent of living organisms

can be patented, 1980 Supreme Court ruling that genetically engineered bacteria that was used to treat oil spills could be patented because it was different from anything found in nature and was useful. 20% of all genes have been patented, company valued at billions of dollars. In 2010 a federal district court ruled genes could not be patented, a federal appeals court overruled the district court

____ are used to identify members of an organization. a. Certification marks b. Service marks c. Trademarks d. Collective marks

d. Collective marks

To which of the following inventions does a design patent apply? a. The invention of a mobile x-ray machine. b. The invention of a new laundry wash program in a washing machine. c. The invention of a compressor for an air conditioner. d. The invention of a new look for a fountain pen.

d. The invention of a new look for a fountain pen.

The holder of a _____ owns the particular tangible expression of an idea, but not the underlying idea or method of operation. a. trade secret b. patent c. logo d. copyright

d. copyright

A _____ is a grant by the government permitting the inventor exclusive use of an invention for a specific period. a. trademark b. trade secret c. logo d. patent

d. patent

Intellectual property

has little economic value unless others use it It is nonexclusive Many don't see is a problem using it for free

Economic Espionage Act of 1996

makes it a criminal offense to steal (or attempt to steal) trade secrets for the benefit of someone other than the owner, including for the benefit of any foreign government