Chapter 8: Intellectual Property Rights

II. Trademark E. Distinctiveness of Mark 3. Generic Terms

Generic terms like bicycle and computer do NOT receive protection even if they acquire a secondary meaning.

III. Patents B. What is Patentable?

1) "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title." 2) Basically: anything that is NOVEL and NOT OBVIOUS can be patented (artistic methods, structures of stories, asexual plant reproduction...etc). 3) NOT patentable: laws of nature, natural phenomena; abstract ideas, including algorithms.

VI. International Protections for IP

1) Berne Convention--if US writes a back, a book, ALL at the convention recognizes the U.S.'s copr. over that book. 2) Trade-Related Aspects of IP Rights--Standard for IP of IP Rights, legal procedures, prohibits discrimination. 3) Madrid Protocol-Decreases the costs of getting a trademark...international, 1 application 4) Anti-counterfeiting Trade Agreement--Requires to establish border measures

II. Trademark F. Service, Certification and Collective Marks

1) Service Mark-Used to distinguish services (rather than products) EX: Airlines w their mark/symbol, titles and character names used in radio and TV 2) Certification Mark-Used by 1 or more people, other than owner, to certify the region, materials, mode of manufacturing, quality, or other characteristic of a specific good/service. EX: "Good housekeeping seal of approval" or "UL tested" 3) Collective Mark-When used by members of corporation, association, or other organization, this certification mark qualifies as a "collective mark". EX: Union mark on tags of products. Also appear at ends of movies to show associations and organizations that participated in the making.

IV. Copyright Law E. Copyright Infringement (someone using work without permission): 2. "Fair Use" Exception to Copyright Infringement a. 6 protected "fair uses"

1. Criticism (essay comparing works) 2. Commentary 3. New Reporting (*) 4. Teaching (*) (work comes from older textbooks in class, no infringement) 5. Scholarship 6. Research

III. Patent D. Remedies for Patent Infringement

1. Injunctions-patent holder MUST prove they suffered irreparable injury and that the public interest would NOT be disserved by a permanent injunction...Instead of injunction: Microsoft had to spend a TON of $ to the other co. to essentially buy their patent in a way because the harm to the public would have been too big to issue the permanent injunction (would've forced them to be unable to have updates). 2. Damages for royalties and lost profits 3. Attorney's fees...not available in all cases 4. Treble damages...means: TRIPLE (the money or damages for willful infringements)...know of infringement AND follow through w it.

IV. Copyright Law E. Copyright Infringement (someone using work without permission): 2. "Fair Use" Exception to Copyright Infringement b. 4 Statutory Factors used by courts to determine on a case by case basis if the use of a work is a "fair use"...need these as well:

1. Purpose and character of use 2. Nature of copyrighted work 3. Amount/Portion of the work used in relationship to work as a whole 4. Effect of use on potential maker or value of work

IV. Copyright Law D. What is Protected Expression?

1. To be protected, a work "must be fixed in a durable medium" from which it can be perceived, reproduced, or communicated; 2. Original AND 3. Fall into one (1) of the following 8 categories:

II. Trademark B. Statutory Protection of Trademarks-The Lanham Trademark Act of 1946 and as amended in 1995 by the Federal Trademark Dilution Act.

1. Trademark Dilution Revision Act-2006 Plaintiff must prove 4 elements (from book: P owns a famous mark that is distinctive. P has begun using a mark that is allegedly diluting the famous mark. Similarity between D mark and famous mark gives rise to assoc. between the mark. Assoc. is likely to impair distinctiveness of famous mark or harm its reputation.) 2. Marks do NOT need to be identical...Helps NOW able to protect from companies in other industries from competition. Helps protect you from losing business if another is using a mark similar to yours. Starbucks v Lundberg..."Samberg" same line of work AND same name

I. Introduction C. Types:

1. Trademarks 2. Patents 3. Copyrights 4. Trade Secrets

III. Patents: Pros/Cons

20 year right to exclude others-relatively short. Expensive ($5,000-$100,000+ and sometimes millions)

IV. Copyright Law F. Copyright Protection for Software

???Generally, copyright protection extends to those parts of a computer program that can be read by humans, such as the "high-level" language of a source code. Protection also extends to the binary-language object code, which is readable only by the computer, and to such elements as the overall structure, sequence, and organization of a program.

II. Trademark A. Definition

A distinctive mark, motto, device, or implement that a manufacturer stamps, prints, or otherwise affixes to the goods it produces so that they can be identified on the market and their origins made known. A SOURCE INDICATOR....Coca-Cola Co. v Koke shows people are JEALOUS of each other.

III. Patents A. Definition

A grant form the government that gives an inventor the right to exclude others from MAKING, USING, and selling an: 1. Invention for a period of 20 years 2. Design for a period of 14 years. 3. Since 2011, the protections begin when the patent application is filed-NOT when patent is issued. 4. "Race to Patent Office"-First person to file the patent application receives the patent protection 5. Challenges to a patent on any grounds are prohibited for the first 9 months...CAN patent an idea. Patent lawyers have HUGE fees. Regardless of if you get money from it, you're USING it (patent infringement). .

II. Trademark E. Distinctiveness of Mark

A trademark must be SUFFICIENTLY DISTINCT to enable consumers to identify the manufacturer of the goods easily and to distinguish between those goods and competing products

V. Trade Secrets

A. Trade secret law protects some business processes AND information that are not and cannot be patented, copyrighted or trademarked against appropriation by competitors...Anything that helps give you a "COMPETITIVE ADVANTAGE".

IV. Copyright Law E. Copyright Infringement (someone using work without permission): 2. "Fair Use" Exception to Copyright Infringement

ALLOWED to copyright...gives one permission to do so

IV. Copyright Law A. Definition

An intangible property right granted by federal statute to the author or originator of a literary or artistic production of a specified type. An author's exclusive right to publish, print, or sell a product of her intellect for a certain period of time.

III. Patents...Apple v Samsung

Appellate Court reversed (to now favor Samsung who hadn't infringed upon 5 of Apple's patents) because the product features in question were functional and essential. BUT: main point=VERY PRICY CASES. If case hadn't been overturned, Apple would've won $1 billion in appeals.

IV. Copyright Law B. Copyright Act of 1976 and Copyright Term Extension Act of 1998- 3. Works by more than 1 author:

Automatically given copyright protection for life of authors plus 70 years after death of last surviving author.

IV. Copyright Law B. Copyright Act of 1976 and Copyright Term Extension Act of 1998- 1. Works created after 1/1/98

Automatically given statement of copyright protection for the life of the author plus 70 years.

IV. Copyright Law B. Copyright Act of 1976 and Copyright Term Extension Act of 1998- 2. Works owned by publishing houses:

Automatically given statutory copyright protection for 95 years from date of publication or 120 years from date of creation, whichever comes first.

V. Trade Secrets Pros/Cons

Can be longest lived form of IP-as long as the secret, can be inexpensive, can be expensive (Stelth Fighters), doesn't always work. Coca-cola has been protecting their secret since 1888.

II. Trademark J. Licensing

Can obtain a license: contract allowing use of trademark, copyright, patent or trade secret to avoid lawsuits.

II. Trademark H. Counterfeit Goods

Copy or imitate trademark goods but they AREN'T genuine. Statutes in the US to promote fines and includes punishments w labels. Can't protect w foreign infringements

IV. Copyright Law C. Registration:

Copyrights can (but is not required) be registered with the U.S. Copyright Office in Washington, D.C. A copyright owner no longer needs to place the symbol "C" or the term "Copr." or "Copyright" (basically says "I created it" and don't need to register to use that) on the work to have the work protected against infringement. --Chances are if somebody created it, somebody owns it.--Can still claim others are engaged in infringement even if I haven't registered...harder to win the case though because you need to prove it's yours.

V. Trade Secrets B. Examples:

Customer Lists, plans, research and development, pricing information, marketing methods, production techniques, recipes, and generally anything that makes an individual company unique and that would have value to a competitor....also: future products

II. Trademarks E. Distinctiveness of Mark 2. Secondary Meaning

Descriptive terms, geographic terms, and personal names are not inherently distinctive and do NOT receive protection under the law UNTIL they acquire a secondary meaning (from book: when people begin to associate a term or phrase w trademarked item...even a color can qualify like w Ohio State)

I. Introduction D. Examples of intellect and creativity that can become IP:

Examples: Architectural DESIGN of building. DESIGN of consumer good/product. Source code, logo/co. name, design of cover, code/software, motif (theme) of restaurant, secret recipes, menu--Non-Examples: Land (ownership) and buildings on land, actual consumer good, stocks/bonds (are personal goods that are intangibles but NOT IP).

III. Patents C. Patent Infringement

If a firm makes, uses, or sells another's patented design, product, or process without the patent owner's permission, the tort of patent infringement occurs.

IV. Copyright Law D. What is Protected Expression? 5. License Agreement

If someone other than the copyright owner wishes to use the copyrighted material, a license agreement (contract) should be formed and royalties paid to the copyright owner.

II. Trademarks G. Trade Dress

Image and overall appearance of the product...considers whether or not it will confuse a customer. Can include ALL or PART of total image or overall impression. Decor, menu, layout, style, fish shape of cracker

II. Trademark I. Trade Names

Indicates part of all of a business's name (whereas Trademarks apply to products). Protected if tradename is also trademarked product (Coca-Cola).

II. Trademark Pro/Con (don't mem)

Inexpensive AND longest lasting (think McDonald's and Walt Disney)

IV. Copyright Pros/Cons

Inexpensive-$20 to register a copyright, long lasting, doesn't protect ideas, still lots of controversy with technology.

I. Introduction A. Definition:

Intellectual Property is the work of the human mind which consists of the products that result from intellectual and creative processes...LOTS OF TIME is spent making IP. Author/inventor had an exclusive right to their IP. IP intangible.

IV. Copyright Law G. Plagiarism

Is plagiarism the same thing as copyright infringement? No! What is plagiarism? Using others work as your own. Can you be engaged in "fair use", therefore, not infringement, and still commit plagiarism? Yes (if you fail to give credit to the author)!

IV. Copyright Law E. Copyright Infringement (someone using work without permission): Bridgeport Music v UMG

Issue: copyright infringement? 1. Plaintiff has to own the work 2. Work=original...defined this as "both independent creation of its author and involve at least minimal creativity" 3. There has to be evidence of copying...the refrain was more indirect evidence but it was an integral part that was recognizable like in ET.

IV. Copyright Law D. What is Protected Expression? 4. "Idea"

It is not possible to copyright an "idea". Ideas embodied in a work may be freely expressed by others. What IS copyrightable is the particular WAY in which the author expresses (the form it takes) an idea-book, music. etc. (Production of idea)...could patent an idea as a trade secret though!

V. Trade Secrets E. State and Federal Law on Trade Secrets 3. Economic Espionage Act of 1996

Makes theft of trade secrets a FEDERAL crime.

II. Trademark E. Distinctiveness of Mark 1. Strong Marks

More quick/easy with the registration process..."most distinctive" a. Fanciful Trademarks-Include inventive words: Google, Kodak, Xerox b. Arbitrary Trademarks-Those that use common words in an uncommon way that is non-descriptive: Dutchboy, Dutchbros c. Suggestive Trademarks-Impy something about a product without directly describing the product: Blueray, Quicken (books/bookkeeping), Dairy Queen

IV. Copyright Law E. Copyright Infringement (someone using work without permission): 3. First Sale Doctrine

Once you solde your copr. material, you as the copr. owner do not need to give permission to others to use it. No longer have rights over it. From Book: Owner of a particular item that is copyrighted can, without the authority of the copyright owner, sell or otherwise dispose of it. This rule is known as the first sale doctrine.

V. Trade Secrets E. State and Federal Law on Trade Secrets 1.

Restatement of torts (compilation of comm. law rules followed by most states) states, "one who discloses or uses another's trade secret, without a privilege to do so, is liable to the other if: a. he discovered the secret by improper means (stole or took it without permission) OR b. his disclosure or use constitutes a breach of confidence reposed in him by the other in disclosing the secret to him."...bring tort claims under this.

Fair Use Analysis Exercise

Scenario 1) Article from newspaper printed for class discussion (All good) 2) Professor collects chapters from various books and makes them into a "class anthology" which is sold and has been sold at the bookstore for 3 years (Copr. Infringement...although the purpose of the work is literacy, the amount of the work is substantial and the effect on the market could be big) 3) Same thing as above but prof doesn't sell for money and it's posted to a website (Copr. Infringement...Doesn't matter whether he's selling it" because the effect on the market is really great) 4) Critic quotes from 6 short stories in a review of author's newest collection (All good) If "student doesn't cite", then the criticism /commentary is still fair use BUT plagiarism

IV. Copyright Law E. Copyright Infringement (someone using work without permission): 2. "Fair Use" Exception to Copyright Infringement: Sony BMG Music v Tennenbaum

Sued for illegally downloading and distributing songs via Kazaa a file sharing co. 1) Purpose: Commercial v educational use: He wasn't making money...tried to argue teaching himself. 2) Nature of the work-music=highly protected. 3) You are allowed to preview then buy songs, to record with DVR and VHS tape and then watch later...but his use was not allowed. He didn't take the whole albums, but he took the whole songs. 4) He says it was "just him", so small effect on market, but he rly played a big role w dist. and sales.

V. Trade Secrets E. State and Federal Law on Trade Secrets 2. Uniform Trade Secrets Act of 1979

This uniform law (don't have to adopt the whole thing, when states adopt these, they become part of statutory law. Attempt to create uniformity in subject areas) was presented to the states in 1979 in an effort to reduce the unpredictability of the common law amongst the states in this area. Part of the act have been adopted by about 44 states as of 2007....if charged with theft, it is a state crime.

I. Introduction E. Licensing Agreements:

To avoid a lawsuit for infringement on an IP a user of another's property can enter into a contract to receive rights to use the property and in exchange pay a royalty. Tort of copyright infringement/patent infringement would be defended by a license agreement.

V. Trade Secrets D.

Trade Secret involves no registration or filing requirements.

V. Trade Secrets F. Confidentiality Agreements

Trade secrets must be disclosed to some persons, particularly key employees. So, businesses protect their trade secrets contractually by having all employees who use the process or information agree in their employment contracts to never divulge it...can get an injunction too. Different from non-compete. More to keep things confidential.

II. Trademark C. Trademark Registration

Trademarks may be registered with the state OR federal govt. To register federally (takes LOTS of time), a person must file an application with the U.S. Patent and Trademark Office in Washington D.C. Trademark can be registered if 1) It is currently in commerce or: 2) The applicant intents to put it into commerce within 6 months....R with a circle=federal level (trumps state) TM=state level....only protects in the state you are in.

I. Introduction B.

U.S. Constitution, Article 1, Section 8: Congress is authorized "to promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive right to their respective Writings and Discoveries."

V. Trade Secrets C.

Unlike copyright and trademark protection, protection of trade secrets extends both to IDEAS and to their EXPRESSION...CAN MAKE AN IDEA A TRADE SECRET

IV. Copyright Law B. Copyright Act of 1976 and Copyright Term Extension Act of 1998- 4. When protection ends-Public Domain

When copyrights expire, protected works return to the public domain. It is a "creative commons" where the law cannot control what you do with the material you find. EX: Walt Disney changed it a bit, then it became his.

II. Trademarks D. Trademark Infringement

Whenever a trademark is copied to a substantial degree OR used in its entirety by another, intentionally OR unintentionally, the trademark has been infringed. (Even if you don't know you're using it, you can be sued)

IV. Copyright Law E. Copyright Infringement (someone using work without permission): 1. Remedies

a. Damages ($) b. Injunctions--orders blocking 1 from continuing or forcing one to do something

IV. Copyright Law D. What is Protected Expression? 3: The 8 categories

a. literary works (printed or written) b. musical works and accompanying words (all forms of dance/music) c. dramatic works and accompanying music d. pantomime or choreographic work e. pictorial, graphic, or sculptural work (posters, statues and stuffed animals) work. f. motion pictures and other audiovisual works g. sound recordings h. architectural works

IV. Copyright Law B. Copyright Act of 1976 and Copyright Term Extension Act of 1998-

gives the author or originator the exclusive rights to their works for a specific amount of time (how long you can use your own copyrighted material) as follows: