Business Law Cheeseman Chapter 7 - Intellectual Property and Information Technology
What happened in Specht v. Google, Inc.?
"Android" was given trademark status for Google because its previous holder showed abandonment of a mark.
What happened in Broadcast Music, Inc. v. McDade & Sons, Inc.?
A band at a small establishment played copyrighted songs. They were held liable.
What is handed to a copyright holder?
A copyright registration certificate
What is a trademark?
A distinctive mark, symbol, name, word, motto, or device that identifies the goods of a particular business
What is the U.S. Patent and Trademark Office (PTO)?
A federal office that grants more than 300,000 patents per year
What is the Defend Trade Secrets Act?
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
What is the Leahy-Smith America Invents Act (AIA)?
A federal statute that amended federal patent law by changing to a first-to-file rule and by instating a 20-year limit on utility patents before inventions enter the public domain
What is the Copyright Revision Act?
A federal statute that establishes the requirements for obtaining a copyright and protects copyrighted works from infringement
What is the Lanham (Trademark) Act?
A federal statute that establishes the requirements for obtaining a federal mark and protects marks from infringement.
What is the Federal Patent Statute?
A federal statute that establishes the requirements for obtaining a patent and protects patented inventions from infringement
What is the 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
What is the Digital Millennium Copyright Act (DMCA)?
A federal statute that prohibits unauthorized access to copyrighted digital works by circumventing encryption technology or the manufacture and distribution of technologies designed for the purpose of circumventing encryption protection of digital works
What is the Federal Trademark Dilution Act (FTDA)?
A federal statute that protects famous marks from dilution, erosion, blurring, or tarnishing
What is the Trademark Dilution Revision Act?
A federal statute that states that a plaintiff must only show in a dilution lawsuit that the mark is famous, the other party is commercial, and there is a likelihood of dilution to prevail
What is a patent?
A grant by the federal government to the inventor of an invention for the exclusive right to use, sell, or license the invention for a limited amount of time
What is the Uniform Trade Secrets Act?
A law adopted by many states to give statutory protection to trade secrets
What is a copyright?
A legal right that gives the author of qualifying subject matter, who meets other requirements established by copyright law, the exclusive right to publish, produce, sell, license, and distribute the work
What is a certification mark?
A mark that certifies the seller of a product or service has met certain geographical location requirements, quality standards, material standards, or mode of manufacturing standards established by the owner of the mark
What is a service mark?
A mark that distinguishes the services of the holder from those of its competitors
What is a collective membership mark?
A mark that indicates that a person has met the standards set by an organization and is a member of that organization
What is a design patent?
A patent that may be obtained for the ornamental nonfunctional design of an item
What is a utility patent?
A patent that protects the functionality of the invention
What is a trade secret?
A product formula, pattern, design, compilation of data, customer list, or other business secret
What is the Patent Trial and Appeal Board (PTAB)?
A section of the PTO that reviews adverse decisions by patent examiners, reviews reexaminations, conducts post-grant reviews, and conducts other patent challenge proceedings
What is a preissuance challenge?
A statement the pending patent is not patentable because it appeared in prior art
What is the Copyright Term Extension Act?
A statute which extended copyright protection. 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.
What happened in V Secret Catalogue, Inc. and Victoria's Secret Stores, Inc. v. Moseley?
A store used Victor's Secret. Because it caused likelihood of dilution for Victoria's Secret, the courts ruled against the Moseleys.
What is TM?
A symbol that designates an owner's legal claim to an unregistered mark that is associated with a product
What is SM?
A symbol that designates an owner's legal claim to an unregistered mark that is associated with a service.
What is R in a circle?
A symbol that is used to designate marks that have been registered with the U.S. Patent and Trademark Office
What is a 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
What's an ex parte seizure order?
A unique provision that allows trade secret owners to seek, on an ex parte basis (i.e., without telling defendants), an order to seize allegedly stolen trade secret items in the defendant's possession
Who said "[t]he patent system added the fuel of interest to the fire of genius"?
Abraham Lincoln
What is a provisional application?
An application that an inventor may file with the PTO to obtain 3 months to prepare a final patent application
What is copyright infringement?
An infringement that occurs when a party copies a substantial and material part of a plaintiff's copy-righted work without permission
What is a 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
What happened in Samsung Electronics Co., Ltd. v. Apple Inc.?
Apple got design patents for its smartphones. Samsung sold phones with the same design. Apple was first awarded the profits from all sales, then, upon appeal, awarded the profits just from the component parts relevant
What says "The Congress shall have the power . . . 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"?
Article 1, Section 8, Clause 8 of the U.S. Constitution
Who said "The phrase 'likely to cause dilution' used in the new statute significantly changes the meaning of the law from 'causes actual harm' under the pre-existing law"?
Circuit Judge Merritt
Who said "A trademark is abandoned if its use in commerce has been discontinued with no intent to resume use"?
Circuit Judge Rovner
Who said "Over time the holder of a valid trademark may become a victim of genericide"?
Circuit Judge Tallman
What happened in United States v. Williams?
Coca-Cola employees conspired to steal Coca-Cola trade secrets and sell them to archrival PepsiCo. PepsiCo informed Coca-Cola and the authorities, and the conspirators were found guilty.
Who most often misappropriates trade secrets?
Departing employees
What is reverse engineering with regard to trade secrets?
Discovering the trade secret by taking apart and examining a rival's product or re-creating a secret recipe
What must a mark have to qualify for federal protection?
Distinctiveness or secondary meaning
What happened in Elliot v. Google, Inc.?
Elliot had many domain names with "google" in them. Elliot sued Google, claiming their trademark had become generic. The court ruled this had not yet happened with Google. They also handed over many of the domain names to Google.
Who said "And he that invents a machine augments the power of a man and the well-being of mankind"?
Henry Ward Beecher
What are the requirements for obtaining a patent?
It must be novel, useful, and nonobvious
Who said "The Patent Act provides a damage remedy specific to design patent infringement"?
Justice Sotomayor
Who said "Laws of nature, natural phenomena, and abstract ideas are not patentable"?
Justice Thomas
Who said "The decorations are therefore separable from the uniforms and eligible for copyright protection"?
Justice Thomas
What can a successful plaintiff recover in a patent infringement suit?
Money damages equal to a reasonable royalty rate on the sale of the infringed articles, other damages caused by the infringement (e.g., loss of customers), an order requiring the destruction of the infringing article, and an injunction.
What happened in Association for Molecular Pathology v. Myriad Genetics, Inc.?
Myriad Genetics obtained a patent for identifying genes that contribute to ovarian and breast cancer. The Association for Molecular Pathology challenged their patent because it was a naturally occurring phenomenon. The courts sided with the association.
What is abandonment of a mark?
PTO cancellation of a mark triggered by the lack of use of a mark for three consecutive years
What is intellectual property?
Patents, copyrights, trademarks, and trade secrets. Federal and state laws protect intellectual property rights from misappropriation and infringement
What does it mean for an invention to enter the public domain?
Production and sale of the patent are available to anyone without having to pay a patent-holder
What does a successful plaintiff obtain in a misappropriation of a trade secret case?
Profits made by the defendant by use of the trade secret, damages, and an injunction
What must be proven in a trademark infringement case?
The defendant infringed the plaintiff's mark by using it in an unauthorized manner and such use is likely to cause confusion, mistake, or deception of the public as to the origin of the goods or services.
What is the first-to-file rule?
The first person to file for a patent gets the patent
What is the first-to-invent rule?
The first to invent gets the patent
What is dilution?
The lessening of the capacity of a famous mark to identify and distinguish its holder's goods and services, regardless of the presence or absence of competition between the owner of the mark and the other party
What is tarnishment?
The linking of a famous mark to products of inferior quality or its portrayal in an unflattering, immoral, or reprehensible context likely to evoke negative beliefs about the mark's owner
What can a successful plaintiff get in a copyright infringement suit?
The profit made by the defendant from the copyright infringement, damages, an order requiring the impoundment and destruction of the infringing works, and an injunction. The court, at its discretion, can award statutory damages for willful infringement in lieu of actual damages.
What can a successful plaintiff recover in a trademark infringement suit?
The profits made by the infringer through the unauthorized use of the mark, damages, an order requiring the defendant to destroy all goods containing the unauthorized mark, and an injunction
What is blurring?
The use by a party of 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
What is the Berne Convention?
This law eliminated the need to place the symbol © or the word copyright or copr. on a copyrighted work
Who said "Where a new invention promises to be useful, it ought to be tried"?
Thomas Jefferson
What is trademark infringement?
Unauthorized use of another's mark
What is patent infringement?
Unauthorized use of another's patent. A patent holder may recover damages and other remedies against a patent infringer
Who said "The record reflects that defendants' infringements were knowing and willful"?
United States Magistrate Judge Bade
What happened in Star Athletica, L.L.C. v. Varsity Brands, Inc.?
Varsity Brands made cheerleading uniforms and had many 2-D designs copyrighted. Star Athletica copied the designs. The U.S. District Court ruled the designs weren't separate from the utilitarian uniform, and so couldn't have copyright protection. The U.S. Court of Appeals ruled they were separate and protected by copyright. The U.S. Supreme Court agreed.
When is a trade secret protected?
When prudent measures have been taken to prevent its theft
Who said "The law in respect to literature ought to remain upon the same footing as that which regards the profits of mechanical inventions and chemical discoveries"?
William Wordsworth
What are tangible writings?
Writings that can be physically seen
