BUL 3320 Chapter 41 (Intellectual Property)

Trademark: Any combination of words and symbols that a business uses to identify its products or services and distinguish them from others.

- Trademarks are valid for 10 years and can be renewed for an unlimited time.

A copyright gives its creator the exclusive right to reproduce, distribute, and perform his original work for a limited time.

1. Copyrights protect the way ideas are presented, not the ideas themselves. 2. Things that can be copyrighted include songs, books, movies, computer software, and even tattoos. 3. The ideas underlying copyrighted material need not be novel; movies may have the same plot but there is no copyright violation because their expression differ. 4. An expression is copyrighted as soon as it is in tangible form. (For example, when the song is written down on paper or even napkin)

Defenses to Copyright Infringement

1. First Sale Doctrine: This permits a person who owns a lawfully made copy of a copyrighted work to sell or otherwise dispose of the copy. - The person cannot make or sell copies. 2. Fair Use Doctrine: Permits limited use of copyrighted material without permission of the author for purposes such as criticism, comment, news reporting, scholarship or research. Factors that affect the determination of fair use: - Nature of use: criticism, comment, etc... - Nature of work: fiction more likely to be protected than facts. - Extent of use: A lot vs a little and whether the most important part of the work is used. - Econ/market impact: Lessen value vs no effect.

The Digital Millennium Copyright Act (DMCA)

1. It is illegal to delete copyright information, such as the name of the author or title of the article. 2. It is illegal to circumvent encryption or scrambling technologies that protect copyrighted works (copy protection) - However, purchasers of the work can make a backup copy. 3. It is illegal to distribute tools and technologies to circumvent encryption devices. 4. ISPs, such as YouTube, are not liable for posting copyrighted material if they are unaware the material is illegal, and they remove it promptly after receiving a "takedown" notice.

Types of Marks

1. Trademarks are affixed to goods (Nike) 2. Service Marks are used to identify services (Burger King) 3. Certification Marks are words or symbols used to attest that products and services meet certain standards (FCC) 4. Collective Marks are used to identify members of an organization (CPA)

Design Patents (last 14 years)

A design patent protects the appearance, not the function, of an item (Apple's iPhone designs)

Patent Infringement

A patent holder has the exclusive right to make, use, or sell the patented invention during the term of the patent. - However, intellectual laws are territorial: U.S. patents are only enforceable in the U.S.

Valid trademarks: can be symbols, sounds, slogans, shapes, etc ...

A trademarks must be distinctive 1. Fanciful (Arbitrary) marks are made up words 2. Suggestive marks indirectly describe the product. 3. Descriptive marks directly describe the product or service (It has a secondary meaning that is associated with the product, such as Apple)

Utility Patent (last 20 years)

About 94% of all patents are these; they protect the way an invention works: - Mechanical Invention - Electrical Invention - Chemical Invention - Process - Machine - Composition of Matter

Requirements for a Utility Patent

An invention must be: 1. Novel (new or unusual) - cannot be patented, described in a printed publication, in public use, on sale, or otherwise available to the public anyplace in the world. 2. Nonobvious - to a person with ordinary skills in that area. 3. Utility - It does not need to be commercially valuable but must at least do something. 4. Patentable subject matter - Needs to have tangible application. Ideas are not patentable.

Prior sale

An inventor must apply for a patent within one year of selling the product commercially anywhere in the world - Stop inventors from selling it for years and then apply for patent that lasts for another 20 years.

International Patent Treaties

An inventor must apply in each country where protection is sought; several treaties now facilitate this process: 1. The Paris Convention requires each member country to recognize all patent and trademark applications filed with it by anyone who lives in a member country. 2. Under the Patent Cooperation Treaty (PCT) applicants are offered a single filing and streamlined review process. - Inventors will receive a review report by the PCT and can translate the report to apply for patents in member countries that they want. - PCT does not issue international patent.

Patent Application and Issuance

An inventor must file a complex application, if it meets all legal requirements, the PTO will issue the patent - If an examiner denies a patent, the inventor can appeal to PTO and from there to the Court of Appeals - During the process, 3rd parties have the right to submit evidence that the invention is not novel - For 9 months after a patent has been granted, 3rd parties have a right to challenge its validity in the PTO (without going to court)

The limits of patentable subject matter: Business methods

Business Method Patents: After the advent of computers, the PTO began issuing patents on ways of doing business with softwares, computers, and the internet. - These are controversial because they allow one firm to block others from using common technologies. - The Supreme Court has not explained these patents precisely, so the law in this area will continue to evolve.

3 Types of patents

Design, Plant, Utility

Priorities between two inventors

If two people invent the same product, who is entitled to a patent - the first to invent or the first to file an application? Before 2013, it was the person who invented; since then, the patent belongs to the first to file the application.

The limits of patentable subject matter: Living organisms

Living Organisms: the Supreme Court ruled that living organisms could be patented if they were different from anything found in nature, and a product of human ingenuity. Supreme court later clarified that new and composition of matter is patentable. - Extracting/locating new genes is not patentable - Creating a new DNA that does not exist in nature is patentable.

Digital Music and Movies

Modern IP is easy to copy; many consumers violate the law by downloading music, movies, and books - for free The (Recording Industry Association of America) RIAA developed a strategy of aggressively suing those who download music illegally, but it could only get so far by suing college students.

Plant Patents (last 20 years)

One who creates a new type of plant can patent it, provided that he is able to reproduce it through grafting.

International Trademarks Treaties

Paris Convention: If someone registers a trademark in one country, then he has a grace period (6 months) during which he can file in any other country using the same filing date. Madrid Agreement: Any trademark registered with the international registry is valid in all signatories countries. Trademark Law Treaty: simplifies and harmonizes the process of applying for trademarks around the world.

"Hey, Paula," a pop hit that spent months on the music charts, was back on the radio 30 years later, but in a form the song's author never intended. Talk-show host Rush Limbaugh played a version with the same music as the original but with lyrics that poked fun at President Bill Clinton's alleged sexual misconduct with Paula Jones. Has Limbaugh violated the author's copyright?

Parody (especially about politics!) is a fair use of copyrighted material so long as use of the original is not excessive.

PTO

Patent and Trademark Office

Patent

Patents give inventors the right to prevent others from making, using, or selling their inventions for a limited time.

International Copyright Treaties

The Berne Convention for the protection of Literary and Artistic Works requires all 172 member countries to provide automatic copyright protection to any works created in other member countries. - This protection expire 50 years after the death of the authors.

Trade Secret: A formula, device, process, method, or compilation of information that, when used in business, gives the owner an advantage over competitors. - Under the Uniform Trade Secret Act, trade secrets thieves can be liable to the owner for actual damages, unjust enrichment, or a reasonable royalty (civil penalties)

The 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.

DatagraphiX manufactured and sold computer graphics equipment that allowed users to transfer large volumes of information directly from computers to microfilm. Customers were required to keep maintenance documentation onsite for the DatagraphiX service personnel. The service manual carried this legend: "No other use, direct or indirect, of this document or of any information derived there from is authorized. No copies of any part of this document shall be made without written approval by DatagraphiX." In addition, on every page of the maintenance manual, the company placed warnings that the information was proprietary and not to be duplicated. Frederick J. Lennen left DatagraphiX to start his own company that serviced DatagraphiX equipment. Can DatagraphiX prevent Lennen from using its manuals?

The court held that these manuals were DatagraphiX's trade secrets.

Valid Trademarks

The following cannot be trademarked: 1. Generic Trademarks: owners may lose trademarks that became generic (aspirin, ping-pong, etc...) 2. Personal namesL unless it has a secondary meaning (Ford) 3. Geographical terms: unless it is used arbitrarily (Boston Market instead of Boston Lobster) 4. Deceptive marks (IRS as a name of the company) 5. Similar to an existing mark.

Research Corp. applied for a patent for a so-called halftoning technique that uses a mathematical formula to enable monitors and printers with limited color options to simulate a wider range of colors. Is this technique patentable?

The trial court ruled that this patent application was invalid because it was too abstract. But the appellate court overruled, holding that, although the patent used mathematical algorithms, the inventors were patenting the process not the algorithms. It upheld the patent.

Copyright Infringement

To prove a violation, plaintiff must present evidence that the work was original, and either. - The infringer actually copied the work, or - The infringer had access to the original, and the works are substantially similar.

Infringement and Dilution

To prove infringement suit, the trademark owner must show that the alleged infringer's trademark is likely to confuse customers about who has made the goods or provided the services. Trademark holders can object the use of their marks that decrease its value. Dilution occurs in two ways: 1. Blurring: Lessening of the mark's capacity to identify, such as Microsoft burgers or Tesla bicycles. 2. Tarnishment: An association with unwholesome goods or services (Barbie dolls used in appropriate websites)

Copyright Term

Today, a copyright is valid until 70 years after the death of the author, or, if the works are owned by a corporation, for 95years from publication or 120 years from creation, whichever is shorter. - Work is automatically copyrighted if it's in a tangible form, but registration is necessary to sue others for infringement.

Trademark Registration

Under common law, the first person to use a mark in trade owns it; registration with the federal government is not required; the owner may use the symbol (TM) at anytime. But under the federal Lanham Act, the owner may register the mark; once it is registered, the owner may use (R) Federal registration has several advantages (Textbook) - Registered trademarks are valid nationally; notifies the public that this trademark has been registered, etc ...