Chapter 11 IP for BLaw

Publisher or work-for-hire-first of:

(1) 120 years from the date of creation or (2) 95 years from the date publication.

Acquiring Rights for Trademark Protection

(1) By being the first to use the mark in commerce (2) By being the first to register the mark with the U.S. PAtent and TRademark OFfice (USPOTO)

In order to gain copyright protection, a work must meet a three-part test

(1) Originality (2) some degree of creativity (3) fixed in a durable medium. - the work must be more than just an idea or thought process. In fact, the work must be in a tangible form, such as writing, digital, video and so forth. Copyright protections extend automatically to a work once created. Although there is no need to register the work with the USCO to obtain protection, registration is a prerequisite to actually enforcing the holder's rights in court.

eight-factor polaroid test

(1) The strength of the mark (@)Degree of similarity between the two marks (3) the proximity of the products/services (4) likelihood that prior owner will bridge gap . (5) actual confusion (6) defendant's good faith in adopting own mark (7) the quality of the defendant's product (8) The sophistication of the buyers.

Misappropriation of a trade secret

(1) the acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means (2) any disclosure or use of a trade secret of another without express or implied consent.

what are the factors considered by Dept of Justice in whether to Prosecute?

(a) Scope of the criminal activity, including evidence of involvement by a foreign governement/agent/instrumentality. (b) The degree of economic injury to the trade secret owner (c) type of trade secret misappropriated (d) the effectiveness of civil remedies; and (e) Potential deterrent value of prosecution.

protetion period for patents:

20 years from date of filing except for design patents - 14 years.

Arbitrary or fanciful trademark

A mark that has no direct connection to the product. Its a real word being used as part of a mark that has nothing to do wit hthe word's literal meaning (apple or amazon). A fanciful mark is one that centers upon a word made up with the intention of being used a distinctive term. For example, Google's name and symbol were created by the company's founders and have no obvious connection to an Internet search engine. Therefore, google fits into the fanciful category.

Patent

A patent is a government-sanctioned monopoly right that allows an inventor the exclusive entitlement to make, use, license, and sell her invention for a limited period of time (Utility patents, Design patents, Plant patents)

what may be patented?

A process or method A machine (moving parts/electrical boards A manufactured article (no moving parts) A new composition (new Rx drug) an asexually reproduced and new variety of plant: cloned animals/organisms Artistic methods: structure of storylines.

Per se

A standard used by courts when no additonal facts are needed to prove a point

What is a trade secret?

A trade secret is a formula, pattern, compilation, program, device, method, technique, or process that meets the following criteria: (1) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use. (2) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Economic value must be identified by the owner, and the secrecy must be kept.

Novelty standard for patents:

An invention or process must be unique and original, and a patent applicant must show that no other identical invention or process exists.

copyrights in the digital age:

Audio home recording act digital millennium copyright act file sharing

Patentable subject matter standard:

Bars laws of nature, natural phenomena, and abstract ideas from being patentable.

Trade dress:

Business are increasingly eager to extend trademark protection beyond words and symbols and to gain protection for a product's shape or the color combination of its packaging. These beyond-the mark features are called trade dress. Traditionally, courts have allowed trade dress protection for sounds, scents, textures, shapes, and color combinations for businesses such as restaurants. The US Patent and Trademark Office (USPTO) has granetd protection to trade dress charateristics so long as the makr holer proves that the trade dress provides an exclusive link to the source product in the consumers mind. Company must prove an exclusive link to the source product in the consumer's mind...example = ipod symbol.

Business method patents

Business methods may be patentable so long as they accomplish something practically useful in a novel and non-obvious way

Examples of trade secrets:

Coca cola, Twinkies, Listerine and RMs. Field's cookies. Goggle's search formula Baseball rubbing mud Methodology to get on NYT Bestseller list Software for product development (e.g. Ford recently sued by software company)

Business must protect trade secrets - ideas and expression because of commercial value.

Customer Lists R&D Plans Pricing/Marketing/production information

When a copyright holder pursues a party that it beleives has infringed on its copyright, the aggrieved party will generally pursue on of three theories of infringement.

Direct - occurs when the copyright owner can prove that she has legal ownership of the work in question and that the infringer copied the work w/o permission. - courts have developed the substantial similarity standard to guide the definition of copy udner copyright laws. Indirect (also known as contributory) - involves three parties. The copyright owner, the direct infringer, and the facilitator of the infringement. Theory of indirect infringement is one that holds the facilitator liable for damages. (imputed knowledge is gained from circumstances or a relationship with a third party in which a diligent party "should have known" about the fact at issue. vicarious infringement - similar to indirect infringemnet in that they both involve three parties not involved in actual idrect infringement. This liability is based on agency law and can be used as a theory of liability when the infringing party(the agent) is acting on behalf of or for the benefit of another party (the principal) In that case, the principal party is vicariously liable. This most often occurs in an employer-employee circumstance in which the employee is acting with authority from the employer and commits an act of infringement that benefits the employer.

What may not get copyright protection?

Ideas, discoveries Processes, plans (Get pattened) Mathematical calculations, page numbers, unoriginal compilation of facts (telephone book) Facts widely known to the public.

Likelihood of confusion:

In order for a trademark holder to prevent another from using the holder's mark, the holder must prove that the USE OF THE MARK BY ANOTHER WILL BE LIKELY TO CAUSE CONSUMER CONFUSION AS TO THE SOURCE OF THE GOODS.

Copyright Act of 1976 protect literary and artistic productions for:

Life of author + 70 years for author. Life of last surviving author if multiple + 70 years First date of publication or 120 years for publishing co.

what may not be patented

Mathematical formulas: ideas naturally occuring substances; laws of nature

Biggest disadvantage of trade secrets?

Owners have recourse only against misappropriation. Discovery of protected information through independent research or reverse engineering (taking a product apart to see how it works) is not misappropriation.

Trade secret protections are provided by:

State statutes and/or state common law.

What is the primary objective of a trademark protection?

To provide the mark holder with a means of preventing others from fooling consumers into buying a product that they erroneously believe is produced by the mark holder. Trademarks allow consumers to quickly identify a product and distinguish it from similar or competing products. The lanham Act is designed to prevent business competitors from getting a "free ride" on the shoulders of a more famous brand.

What is a trademark?

a nonfunctional, ditincitve word, name, shape, symbol, phrase, or combination of words and symbols that helps consumers to distinguish one prodcut from another

In order to obtain a patent:

an invention must be: Novel, non-obvious, proper subject matter for protection.

What ORIGINAL WORKS may be copyrighted?

books, films, art, scores (lyrics and/or music) Records, Music Videos Architectural plans Product packaging Computer software

A secondary meaning is:

created when the consuming public primarily associated a amrk with a particular product rather than any alternate meaning. For example, Microsoft attempted to protect the term Windows as a mark for its revolutionary operating system for many years. In order to attain that right, Microsoft was required to show that much of the consuming public more often associated that term with its operating system rather than panes of glass.

Anti-Cybersquatting Consumer Protection Act (ACPA)

cyber-squatting is registering multiple domain names and selling them back to companies at inflated prices. Must have acted in bad faith.

The Uniform Trade Secrets ACT (UTSA)

defines trade secrets as information or articles that are to be kept secret because of its particular value.

The key requirement to a protect-able trademark is:

distinctiveness that indicates the product's source. For example, the name and logo of Coca-Cola comprise one of the most famous trademarks in the world. Consumers have confidence in the product, and the Coca-Cola trademark distinguishes the product from competing colas.

UTSA (Uniform trade secrets act)

does not contain any criminal sanctions, many states have added a separate set of statutes that make certain trade secret misappropriation in a criminal offense.

courts use to assess likelihood of confusion

eight-factor Polaroid test.

defense to copyright infringement?

fair use: factors: Purpose and Nature of the use Nature of the work Amount and substantiality used Market Effect educators have limited fair use arguments.

Company must take steps to protect trade secrets:

have employees sign confidentiality agreements and consultant sign Non-Disclosure Agreements. Unauthorized use is a tort (state and federal laws)

In order to be protected, a trademark must be in :

in use and stay distinctly tied to a product in the consuming public's mind.

The NO electronic Theft (net) Act of 1997

increased the criminal penalties for violation of the copyright Act. for anyone with a total retail value of more than 1000.

Nonobviousness standard for patents

invention must be something more than that which would be obvious, in light of publicy available knowledge, to one who is skilled in the relevant field.

The Economic Espionage Act

is a federal statute passed in 1996 providing criminal penalties for domestic and foreign theft of trade secrets. must be intent to benefit a 3rd party National Security Division must approve the prosecution.

The Lanham Act

is the federal statute that protects an owner's registed trademark from use without the mark holder's permission.

For a trademark to be distinctive:

it must identify the source of a particular product (or service for service marks). Courts classify marks based on their level of distinctiveness, and this classification determines their level of protection. The more distinctive the mark, the more protection the mark has under the Lanham Act.

Suggestive mark:

marks that suggest the product or service without literally describing it. Courts classify a mark as sugestive if imagination, thought, and perception are required to understand how it is tied to the underlying product or service. For example the trademark "Under Armor" suggest a product used under something for protection. Understanding the actual product however, requires a leap of imagination, thought, or perception.

Are satires and parodies infringment?

no cuz of fair use doctrine

Descriptive mark:

one that makes specific reference to features, qualities, or characteristics of a product or service and is not inherently distinctive. Because descriptive marks are not inherently distinctive, they are not protected under the Lanham Act unless they have acquired a secondary meaning.

Computer software copyright act

protect computer programs readable by humans/machine

The most significant advantage of trade secret protection over other forms of intellectual property (such as patents) is that:

protection for trade secrets does not exprie after a fixed period of time. A trade secret owner has the right to keep others from misappropriating and using the trade secret for the duration of the firm's existence.

Copyrights registed with IS copyright office:

provide better protection than "Arising through creation"

literal patent infringement has occured according to three ruels

rule of exactness rule of addition rule of omission

Copyright arises automatically upon completion

true

While trademarks are typically associated with products, service marks are:

used to identify business services. Examples of famous service marks include Hilton Hotels (accommodation) and Greyhound Lines (transportation)