Ch. 28 Intellectual Property - GBL

Explain what a domain name is. Discuss if and how a domain name can be registered as a trademark or if a trademark can be registered as a domain name.

A domain name is an Internet address, and about 50 million have been registered. The Patent and Trademark Office will issue a trademark of a domain name only for services offered via the Internet. It will not trademark a domain name that is merely an address that does not identify the service provided. Management of the Internet, as well as allocation of domain names, is in the hands of a private, nonprofit, international organization, the Internet Corporation for Assigned Names and Numbers (ICANN). To bring a case under the ICANN policy, the plaintiff must allege that the domain name creates confusion because it is similar to a registered trademark, the defendant has no legitimate reason to use the domain name, and the respondent registered the domain name in bad faith. If the plaintiff wins, it is entitled to either take over the domain name or cancel it.

List the four different types of "marks" that can be protected under trademark law. Explain how each mark is used.

A trademark is any combination of words and symbols that a business uses to identify its products and services and distinguish them from others. Trademarks are important to both businesses and consumers. Often, the terms "trademark" or "mark" are used to refer to both trademarks and service marks. Technically, though, a trademark is affixed to goods in interstate commerce A service mark identifies services, not products. For example, Burger King is a service mark. Certification marks are words or symbols used by a person or organization to verify that certain products or services produced by others meet certain standards. An example of a certification mark would be the Good Housekeeping Seal of Approval. A collective mark is used to identify a group, such as the Rotary or Boy Scouts.

A color cannot be trademarked since it cannot be kept from use by other businesses.

False

A copyright is valid for 28 years after it is obtained and can be renewed for another 28 years.

False

A patent is available for an idea as well as a tangible application.

False

Martina developed a new type of apple tree which could be reproduced through grafting. She cannot protect her rights in this tree by obtaining a plant patent since the tree cannot be reproduced by planting its seeds.

False

The Supreme Court has held that parody of copyrighted material is a per se violation of copyright law.

False

The name "Johnson Garage Doors" cannot be a trademark because a surname is already being used and other people have the right to continue to use the name.

False

Under the "fair use doctrine," instructors cannot be liable for copyright violations.

False

Rick wrote a song entitled "Wonderful." At the bottom of the first page of music he wrote "© 1990 by Rick Reed." Four months later a local band was playing his song at a bar. Rick felt that the bar was an inappropriate setting for his music. What is his remedy?

Musical works are protected by the Copyright Act. Thus, as a creator of the song, Rick has the benefit of copyright protection. Moreover, Rick has provided public notice of his copyright by indicating the copyright symbol, the date, and his name on the music. If he has registered the copyright with the Library of Congress, Rick's recourse is to bring an action for copyright infringement against the band for using the music without permission. Rick will be entitled to an injunction ordering the band to refrain from playing his song and possibly damages and profits earned by the band's use of the song. Penalties for intentional copyright infringement are heavier than for unintentional violations, and the presence of a copyright notice is evidence that the infringer's actions were intentional.

Briefly discuss a patent, copyright, and trademark.

Patent - Patent is a federal right of exclusive use which may be granted to inventors. Patents may be of three types: utility, design, and plant. Utility patents may protect processes, machines, or compositions of matter. Patentable creations must be novel, nonobvious, and useful. A patent gives the owner the exclusive right to make, use, license, sell, or assign the patent for a period of 20 years from the date of filing the application for the patent (14 years from the date of issuance for a design patent). Copyright - Copyright is a federal right which protects artistic or literary works including literature, music, plays, photographs, motion pictures, recordings, and to some extent computer programs. Copyright protects the particular tangible expression of an idea, but not the underlying idea or method of operation. The federal act allows copyright without registration but will limit recourse if the work was not registered. The duration of copyright is the life of the author plus 70 years. For a corporate owner, copyright lasts 95 years from publication or 120 years from creation. Trademark - A trademark is a "mark," or a combination of words and symbols, used in conjunction with a trade or business which distinguishes that trade or business and the goods or services thereof from those of others. The trademark is valid for ten years, but can be renewed for an unlimited number of terms as long as the mark is still being used. If the mark or name becomes a generic term, trademark protection of the mark or name is lost.

Identify the main provisions of the Digital Millennium Copyright Act and two arguments opponents of the Act raise.

The Digital Millennium Copyright Act (DMCA) was passed to protect legitimate businesses from copyright pirates. The Act provides that: (a) it is illegal to delete copyright information, such as the name of the author or the title of the article, or to distribute false copyright information; (b) it is illegal to circumvent encryption or scrambling devices that protect copyrighted works; and (c) it is illegal to distribute tools and technologies used to circumvent encryption devices. Opponents of the Act allege that it interferes with legal activities, such as the copying of copy-protected CDs under the fair use doctrine. Also, opponents allege that the DMCA interferes with legitimate scientific research.

A design patent protects the appearance of an item and is valid for 14 years.

True

Christy and Sylvester trade movies by downloading each other's movie files. If the copyrighted material has a retail value greater than $1,000, Christy and Sylvester are subject to criminal penalties under the No Electronic Theft Act, even if they had no profit motive in reproducing the movies.

True

If a trademarked name acquires a generic meaning, the owner of the trademark loses protection.

True

In a recent case, In re Nuijten, the U.S. appeals court ruled that a method of encoding additional information on electronic signals emitted from digital audio files was not patentable because, although useful, the method was not a mechanical, electrical, or chemical invention, a process, a machine, or the composition of matter.

True

In hopes of speeding up the approval process and making it more accurate, the Patent and Trademark Office has begun a pilot program which allows anyone to participate in the patent approval process.

True

Provisional patents are good for one year.

True

Southern Bar-B-Q owns a special, secret recipe for sauce which it guards because it gives the restaurant a competitive advantage. If Mort willfully misappropriates the recipe, a court may hold him liable to Southern for double damages.

True

Unlike with patents, the ideas underlying copyrighted material need not be novel.

True

Derrick buys a CD, but after listening to it, decides he doesn't like the music. May he legally sell the CD to someone else? If he thinks his cousin would enjoy the music, may he legally copy the CD for her?

Under the first sale doctrine, Derrick has the legal right to sell the CD or otherwise dispose of it. However, the first sale doctrine does not allow the owner to make a copy of a copyrighted work. Copying and giving away a copy of the CD would be unfair to the owner of the copyright, who would not receive compensation for the intellectual property rights.

Jack goes to Fast Copy Center and pays to have 40 copies of a textbook made. Jack then sells the photocopied versions of the book to fellow students for $60 a copy (as opposed to the $95 textbook price). The textbook author learns of this and sues Jack and the copy center. Which statement is correct? a. Jack and the copy center are both liable to the author. b. Jack is liable to the author but the copy center is not. c. The copy center is liable to the author but Jack is not. d. Neither the copy center nor Jack is liable to the author.

a. Jack and the copy center are both liable to the author.

...What is the name of the treaty that allows American patents to be recognized and enforced in member countries? a. The Paris Convention for the Protection of Industrial Property. b. The International Treaty of Trademarks and Patents. c. The World Agreement of London. d. The Berne Convention.

a. The Paris Convention for the Protection of Industrial Property.

A college professor copies seven chapters from a book called "How to Get Better Grades—A Creative Approach to College Success!" There are ten chapters in the book. She incorporates this material into a packet of material that is printed in her college's copy center. The packet is then placed in the local book store and is placed on the required materials list for students to purchase. The author of the book on getting better grades believes the professor has violated his copyright. a. The author is right. The professor should not have copied the chapters and placed them for sale in the bookstore. b. The author is technically correct. However, even though an infringement occurred, he cannot sue the professor since educational personnel are exempt from liability under copyright law. c. The author is not correct. Under the "fair use doctrine" a college professor can copy material and distribute it to students for educational purposes. d. The author is not correct. It does not appear that the professor actually made any money from the alleged copyright infringement.

a. The author is right. The professor should not have copied the chapters and placed them for sale in the bookstore.

20. International copyright protection: a. is automatic for works created in member countries of the Berne Convention. b. is granted for the life of the author plus 70 years under the Berne Convention. c. is not yet available for computer programs. d. lacks any enforcement capability for overseas infringement of works authored in the United States.

a. is automatic for works created in member countries of the Berne Convention.

Ernest invents a novel, useful, nonobvious product. He: a. must apply for a patent within one year of selling the product commercially. b. is entitled to a patent over someone else who invents the same product if he is the first to file an application. c. may receive patent protection for two years by filing a simpler, shorter, cheaper provisional patent application while he is working on his complex, regular patent application. d. may sell his product for up to five years to see how well it sells before going through the complex process of filing a patent application with the PTO Office.

a. must apply for a patent within one year of selling the product commercially.

AVCO used a famous registered trademark of BNC, Inc. in a manner that reduced its value. This is a violation of the: a. Federal Fair Use Act. b. Federal Trademark Dilution Act. c. Federal Trade Protection Act. d. Cleveland/Myer Act.

b. Federal Trademark Dilution Act.

James and his band played a very familiar song. However, they made up different words for the song that were intended to be funny. James's version of the popular song with different words is known as: a. a "knock off." b. a parody. c. a "mockarama." d. a "link."

b. a parody.

The Basic Books, Inc. v. Kinko's Graphic Corp. case held: a. professors could print and sell lengthy course packets of copyrighted material under the "fair use" doctrine. b. professors could not print and sell lengthy course packets of copyrighted material under the "fair use" doctrine. c. professors could not use commercial printing companies under the "fair use" doctrine. d. None of the above.

b. professors could not print and sell lengthy course packets of copyrighted material under the "fair use" doctrine.

McDonald's famous golden arches and other marks used by the company illustrate a: a. suggestive mark. b. service mark. c. certification mark. d. collective mark.

b. service mark.

Richard wrote a song called "College Days." He copyrighted the composition and had it professionally printed. A couple years later he was attending a business meeting about 1500 miles from his home. While sitting in a nightclub, he heard a small local band perform a song called "College Memories." The music and words were extremely similar to his song. The composer of "College Memories" claims he never heard of Richard's song and that she is offended he would accuse her of stealing his work. If Richard wishes to sue for copyright infringement, he must prove: a. only that his song and the infringer's song are substantially the same. b. that his work was original, and the infringer actually copied his work or that the infringer had access to his song and that the two works are substantially the same. c. that he sustained money damages as a result of the infringement. d. that he registered the song for a copyright.

b. that his work was original, and the infringer actually copied his work or that the infringer had access to his song and that the two works are substantially the same.

Jason and Stacey go to the movie theater and decide to use a camcorder to film the show so they can watch it again with their friends later at home. They have: a. made an ethical, legal, wise economic decision since the cost of viewing the movie in the theater again is too high for their limited budget. b. violated the Family Entertainment and Copyright Act, and committed a criminal offense. c. violated the No Electronic Theft Act. d. committed an ethical but illegal act by violating the Digital Millennium Copyright Act.

b. violated the Family Entertainment and Copyright Act, and committed a criminal offense.

A trademark lasts for: a. 20 years after the application is filed. b. 70 years after the death of the creator. c. 10 years, but it can be renewed for an unlimited number of terms as long as it is used. d. as long as it is kept confidential.

c. 10 years, but it can be renewed for an unlimited number of terms as long as it is used.

Which of the following is correct? a. A copyright can be renewed once it expires. b. A patent can be renewed once it expires. c. A trademark can be renewed as long as the mark is still in use. d. None of the above.

c. A trademark can be renewed as long as the mark is still in use.

Janice wrote a song called "Feelings of Love." She wrote the piano score and lyrics for a class she was taking at college and turned it into her professor. a. Janice's song was automatically copyrighted when she wrote it down on paper. b. If Janice wishes to enforce her copyright, she must first register her song with the Copyright Office. c. Both of the above are correct. d. Neither a nor b.

c. Both of the above are correct.

Victoria registered a trademark under the Lanham Act. Six years later Don noticed Victoria's trademark and filed a lawsuit to enjoin her from using it. He proved he had registered the mark in several states more than ten years before Victoria obtained her trademark. Will Don prevail? a. Yes. Victoria should have conducted a better search of trademarks registered under state laws. b. Yes. Federal law specifically states a federal trademark is not valid for any lawful owner of the same mark under state law. c. No. Don will not prevail and Victoria can continue to use the mark because of the time involved. d. None of the above.

c. No. Don will not prevail and Victoria can continue to use the mark because of the time involved.

Monic, a college professor, makes 30 photocopies of a magazine article and passes the article out to her students. The students are assigned to read the article and write an opinion paper about it. Has Monic violated copyright law? a. Yes. Though the author will probably not enforce his or her rights under this situation, Monic has technically violated federal copyright law. b. Yes. Though educators have a right under the "fair use doctrine" to make limited use of copyrighted materials, Monic violated the law when she made photocopies of an entire article and distributed them to her students. c. No. Monic has acted within the fair use doctrine. d. No, as up to 50 photocopies of articles are always permissible.

c. No. Monic has acted within the fair use doctrine.

The advantages of trademark registration include all EXCEPT: a. potential damages are higher. b. after five years the mark becomes almost impossible to challenge. c. it allows the trademark owner to use the TM symbol to put others on notice of the protection. d. the mark is valid nationally.

c. it allows the trademark owner to use the TM symbol to put others on notice of the protection.

The requirements for a patent include all EXCEPT: a. the invention must be novel. b. the invention must be nonobvious. c. the invention must be commercially valuable. d. the invention must be useful.

c. the invention must be commercially valuable.

Intellectual property: a. producers are likely to be adequately paid in the free market. b. production is not subsidized by the government. c. typically is expensive to produce but cheap to reproduce and transmit. d. typically is expensive to produce, copy, and transmit.

c. typically is expensive to produce but cheap to reproduce and transmit.

If Cub Cadet wins a trademark infringement suit by proving the defendant's trademark, Kub Kadet, is likely to deceive customers about who made the goods, Cub Cadet is entitled to: a. up to three times actual damages. b. an injunction to prevent further infringement. c. any profits Kub Kadet made on its infringing product. d. All of the above.

d. All of the above.

Which of the following started out as a trademark name? a. Zipper. b. Linoleum. c. Nylon. d. All the above.

d. All the above.

4. In order for a copyright holder to collect money damages from a person who used copyrighted material, it must be proven that: a. the infringement was intentional. b. the copyright holder sustained more than $500 in actual damages. c. the copyrighted material contained the copyright symbol, name of the copyright holder, and the year of copyright. d. None of the above.

d. None of the above.

A company's trade secret lasts for: a. 20 years after the application is filed. b. 70 years after the death of the creator. c. 10 years, but it can be renewed for an unlimited number of terms as long as it is used. d. as long as it is kept confidential.

d. as long as it is kept confidential.

The Good Housekeeping Seal of Approval is an example of a: a. trademark. b. service mark. c. collective mark. d. certification mark.

d. certification mark.

Which of the following words could be registered as a trademark? a. Crunchy peanut butter. b. Low-fat peanut butter. c. Green peas. d. yStar peanuts.

d. yStar peanuts.