Chapter 7: Intellectual Property

Fair Use Protections

(1) quotation of the copyrighted work for review or criticism or in a scholarly or technical work (2) use in a parody or satire (3) brief quotation in a news report (4) reproduction by a teacher or student of a small part of the work to illustrate a lesson (5) incidental reproduction of a work in a newsreel or broadcast of an event being reported, and (6) reproduction of a work in a legislative or judicial proceeding.

a successful plaintiff in a civil misappropriation of a trade secret action can:

(1) recover the profits made by the offender from the use of the trade secret, (2) recover for damages, and (3) obtain an injunction prohibiting the offender from divulging or using the trade secret.

To succeed in a trademark infringement case the owner must prove that

(1) the defendant infringed the plaintiff's mark by using it in an unauthorized manner and (2) such use is likely to cause confusion, mistake, or deception of the public as to the origin of the goods or services.

Trademarks and Servicemarks -Definition -Source

- any distinctive word, phrase, symbol or device (image or appearance) or combination thereof, that identifies or distinguishes one's goods or products from others. Servicemark is the same except for service (Weightwatchers, InNout, DirectTV, News) instead of good/service. -The purpose of a trademark is to protect words, phrases and logos used in federally regulated commerce to identify the source of goods and/or services. -Lanham Act enacted by congress provides federal protection; state law can provide add'l protections

3 Main things that can be patented

-Designs: packaging, the way things look -Plants -Utility: Invent, discover or improve, a new process, machine, device, manufactured item, or composition of matter

Patent Infringement

-If another company has stolen your patent, you have to pay what you made from product + royalty rate, must destroy those products, and get injunction to never be able to make again

Suing for Trade Secrets

-If you want to sue in State- Civil action (misappropriation of a Trade Secret); only if secret obtained through unlawful means; -If you want to sue in Federal - Economic Espionage Act; definition is more broad here; criminal penalties include imprisonment up to 15 years for each violation, org's can be fined up to 10M per act

Trade Secrets -Definition -Examples -How long does it last? -Source (Act, law, etc)

-Proprietary, confidential business information that sets a business apart from its competitors (differentiate) Eg. product formulas, patterns, compilations, program device, method, technique, or processes -lasts indefinitely (forever), as long as you can keep it -protected in most states with UTSA) -owner of trade secret must: Take all reasonable precautions to prevent that secret from being discovered by others -it is not a violation to reverse engineer a product

Copyright -Definition -Examples -Source

-Protection provided to the authors of original works including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. -Protects only tangible items (artworks, writings, photographs, movies, etc.) - Eg. cant have patent for poem spoken orally but can have patent if written down or recorded (tangible form)( walt disney characters are copyrights) -comes from Article 1 of US cons.

Uniform Trade Secrets Act

-Provides statutory protection to trade secrets -Adopted by majority of states; states that have not adopted have state common law providing protection

What can't be patented?

-abstractions and scientific principles -Public use doctrine: if you sell for more than a year, you can no longer try to patent

Patent -Examples -How long does it last? -Source (Act, law, etc)

-comes from article 1 of US Cons: US wanted to reward people who can invent things; gives you exclusive monopoly over this invention for a certain period of time -If you sell for more than a year, you can no longer try to patent -inventions are protected for 20 years; design patents are for 14 years; period begins to run at app. time; once it expires becomes public domain; priority is first to file

Things that cannot be trademarked (5)

-flags (US, state, etc) -generic names & names that have become generic -immoral or scandalous marks -geographic names standing alone -any mark that resembles a mark already registered

Trademark Infringement

-plaintiff must prove mark is used in an unauthorized manner and is likely to cause confusion, mistake, or deception to the public -plaintiff can recover: profit made from trademark, damages suffered, destruction of infringed works, injunction, and treble damages (triple compensation) if intentional infringement is found

Trademark Registration and Duration

-registrate with United States Patent and Trademark Office (PTO); is entitled to use R symbol but not mandatory -original mark is valid for 10 years; can be renewed for an unlimited number of 10 year periods

Copyright Infringement Remedies -Criminal Copyright Infringement

-you would get profits made from copyright, any damages suffered by plaintiff, destruction of infringing works, injunction -if you assist someone for violating copyright you can be held liable (is called contributory copyright infringement) -Criminal Copyright Infringement: when you infringe of material with retail value of copyrighted work exceeds $1,000 (get imprisonment for up to 5 years and fines of up to $100,000)

In a trademark infringement case a successful plaintiff can recover:

1) the profits made by the infringer through the unauthorized use of the mark, (2) damages caused to the plaintiff's business and reputation, (3) an order requiring the defendant to destroy all goods containing the unauthorized mark, and (4) an injunction preventing the defendant from such infringement in the future.

3 Patent Requirements

1. Novel: has not been invented or used in the past 2. Useful: has some practical purpose 3. Non-obvious or apparent to a reasonable person (eg. someone created 4 legged table (not obvious at time) then someone wants to make 3 legged (now this is obvious and cant patent))

Copyright registration certificate

A certificate that is issued to a copyright holder who has properly registered his or her copyright with the U.S. Copyright Office.

U.S. Court of Appeals for the Federal Circuit in DC

A court of appeals located in Washington, DC, that has special appellate jurisdiction to review the decisions of the U.S. Court of Federal Claims, the U.S. Patent and Trademark Office, and the U.S. Court of International Trade.

Copyright Revision Act

A federal statute that (1) establishes the requirements for obtaining a copyright and (2) protects copyrighted works from infringement.

Lanham Act of 1946

A federal statute that (1) establishes the requirements for obtaining a federal mark and (2) protects marks from infringement. Also called the Lanham Act.

Leahy-Smith America Invents Act (AIA)

A federal statute that established the first-to-file rule of patent law.

Federal Patent Statute

A federal statute that establishes the requirements for obtaining a patent and protects patented inventions from infringement.

No Electronic Theft Act (NET Act)

A federal statute that makes it a crime for a person to willfully infringe on a copyright.

Economic Espionage Act

A federal statute that makes it a crime for any person to convert a trade secret for his or her own or another's benefit, knowing or intending to cause injury to the owners of the trade secret.

Trademark Dilution Revision Act

A federal statute that provides that a dilution plaintiff does not need to show that it has suffered actual harm to prevail in its dilution lawsuit, but instead only show that there would be the likelihood of dilution.

Patent Trial and Appeal Board

A government body within the U.S. Patent and Trademark Office that reviews adverse decisions by patent examiners, reviews reexaminations, conducts post-grant reviews, and conducts other patent challenge proceedings.

Define Patent

A grant by the federal government upon the inventor of an invention for the exclusive right to use, sell, or license the patent for a limited amount of time.

first-to-file rule

A rule that stipulates that the first person to file a patent on an invention receives the patent even though some other party was the first to invent the invention. This rule superseded the first-to-invent rule.

TEAS

A system that permits the electronic filing of trademark applications with the U.S. Patent and Trademark Office (PTO).

generic name

A term for a mark that has become a common term for a product line or type of service and therefore has lost its trademark protection.

provisional application

An application that an inventor may file with the Patent and Trademark Office that gives the inventor three months to prepare a final patent application.

Samsung v. Apple

Apple sued Samsung for copying some of their patents in their smartphone design. Originally Apple was paid the entire profit Samsung made off the phones, however the U.S. Supreme Court stated that damages for infringing a design patent of a multi-component product may either be the entire profits made from the sale of the product or the profits attributable to the infringing components, depending on the facts of the case. The Supreme Court reversed the award of $399 million to Apple and remanded the case for a determination of damages based on the facts of this case.

Association for Molecular Pathology v. Myriad Genetics, Inc.

Association discovered location of important DNA strands and wanted to patent them. Allowed by court of appeals but reversed by SC because they didn't invent anything, just discovered it.

Two most common forms of dilution

Blurring occurs where a party uses another party's famous mark to designate a product or service in another market so that the unique significance of the famous mark is weakened. Tarnishment occurs where a famous mark is linked to products of inferior quality or is portrayed in an unflattering, immoral, or reprehensible context likely to evoke negative beliefs about the mark's owner.

cancelation of a previously registered mark

Can be done if the party did not meet the requirements for the mark

True or False: While filing for a trademark, the R symbol can be used.

False, but TM or SM can be used (TM for product, SM service)

"abandonment of mark"

If a holder of a mark fails to use or continue to use a mark in commerce, the holder runs the risk of being found to have abandoned the mark. Nonuse in commerce for 3 consecutive years is evidence of abandonment of a mark.

Copyright Extension Act of 1998

Individuals are granted copyright protection for their lifetime plus 70 years. Copyrights owned by businesses are protected for the shorter of either: 120 years from the year of creation, or 95 years from the year of first publication.

3 requirements a senior mark must have

Its mark is famous. The use by the other party is commercial. The use by the other party causes a likelihood of dilution of the distinctive quality of the mark.

United States v. Williams

Joya Williams tried to sell Coca-Cola information to Pepsi. Williams was convicted by a federal jury of conspiring to steal Coca-Cola trade secrets and attempting to sell them to archrival PepsiCo. The trial court judge sentenced Williams to 8 years in jail.

Broadcast Music, Inc. v. McDade & Sons, Inc.

McDade had to pay Broadcast for having a live band play the songs owned by the corporation.

Trademarks Federal Dilution Act

Protects company where an infringer uses the mark and confuses consumers as to the source of the goods or services -mark must be famous, use must be commercial, no harm required

What can a third party do up to 9 months after a patent has been issued?

Seek postgrant review of a patent by submitting prior art references and other information that assert that the patent holder's claim is not patentable.

4 Types of Intellectual Property Rights

Trade Secrets, Patents, Copyright, Trademarks & Servicemarks

Types of Marks

Trademark. A distinctive mark, symbol, name, word, motto, or device that identifies the goods of a business. Service mark. A mark used to distinguish the services of the holder from those of its competitors. Certification mark. A mark that establishes certain geographical location requirements, quality standards, material standards, or mode of manufacturing standards that must be met by a seller of products or services to use the certification mark. Collective membership mark. A mark owned by an organization whose members use it to identify themselves with a level of quality or accuracy or other characteristics set by the organization.

Star Athletica v. Varsity Brands

Varsity sued Star for infringing on their cheerleader designs. Supreme Court ruled in their favor.

V Secret Catalogue, Inc. and Victoria's Secret Stores, Inc. v. Moseley

Victoria's Secret sued owners of Kentucky sex shop for using similar name, found liable because of dilution.

Defend Trade Secrets Act of 2016

a federal statute that allows an owner of a trade secret to bring a civil lawsuit in federal court against a defendant for the misappropriation of a trade secret. Thus, the DTSA creates a federal remedy for trade secret theft. Under the DTSA, a lawsuit must be brought within 3 years from the date the misappropriation is discovered or should have been discovered.

design patent

a patent that may be obtained for the ornamental nonfunctional design of an item. A design patent is valid for 14 years.

Utility Patent

a patent that protects the functionality of the invention

prior art

a showing that an invention as a whole would have been obvious to a person of ordinary skill in the art when the invention was patented

ex parte seizure order

an order to seize allegedly stolen trade secret items in the defendant's possession. Only done if the plaintiff can prove immediate financial harm from the defendant if the item isn't recovered.

mark

any trade name, symbol, word, logo, design, or device used to identify and distinguish goods of a manufacturer or seller or services of a provider from those of other manufacturers, sellers, or providers.

Berne Convention

international treaty that protects copyrights

Trademark Requirement

must be: Distinctive OR Have acquired a secondary meaning (brand name that has evolved from an ordinary term) -must be USED IN COMMERCE (actually used in the sale of goods or services)

What happens if the owner of a trade secret fails to protect it from being discovered by others?

the secret is no longer subject to protection under state unfair competition laws.