Chapter 11, Test 3

Innocently acquiring a secret from another without knowledge of their theft is misappropriation. (T/F)

False

Trademark Dilution

Federal Trademark Dilution Act, 1995 ○ Prohibits the usage of a mark same as or similar to another's trademark to dilute its significance, reputation, and goodwill • The court has discretion to award the owner the infringer's profits, actual damages, and attorney's fees if the infringer "willfully intended to trade on the owner's reputation or to cause dilution of the famous mark." Types: Blurring Tarnishment

Design Patent

○ New, original and ornamental design for an article of manufacture ○ Term: 14 years from issue date ○ Apply to the appearance of an article of manufacture, unrelated to its function.

Plant Patent

○ New, variety of plant that can be reproduced asexually ○ Term: 20 years ○ Apply to new varieties of asexually reproduced plants ○ Just because it's a plant doesn't mean it's a Plant Patent.

Copyright must be:

○ Original ○ Fixed in a tangible medium of expression • Like a book, canvas, compact disk, hard drive, or flash memory. ○ Creative • Mere effort isn't enough • Protects expression, not an idea

Justification

○ Property relationships are believed to be more productive in allocating scarce resources and producing new ones than legal relationships that merely divide resources equally. ○ The justification for "securing" an "exclusive Right" is "to promote the Progress of Science (knowledge and creativity) and the useful Arts (inventions)."

2 Primary Elements of Trade Secret

1. Establishing that a trade secret exists. 2. Demonstrating misappropriation.

Obtaining a Patent

1. File application 2. Filing fee 3. Explain invention 4. Show difference from prior art a. Must show "how is this invention new" 5. Describe patentable aspects 6. Evaluation by the patent examiner

defenses for trademark lawsuit

1. The mark is not distinctive i. Argument that the mark is descriptive or generic and that the PTO should not have protected it in the first instance. 2. There is little chance of the public being confused by use of a term trademarked by someone else. i. Argument that there is little chance of public confusion over two uses of the same mark. 1. Example from book: the public is not likely confused between the Ford Automobile and the Ford Modeling Agency. 3. The use is a "fair use" i. Fair use of a registered trademark is allowed by the Lanham Act ii. Relates to a discussion, criticism, or parody of the trademark, the product, or its owner . 1. For example, in the news media, on the Internet, or in a textbook. iii. The courts have been explicit that the use of a rival's trademark in comparative advertising is also a fair use.

Importance

>75% of the value of fortune 500 companies is in Intellectual Property >Abraham Lincoln is the only U.S. President to have a patent • May 22, 1849 Lincoln received a patent for a device to lift boats and move them over shores.

Patent Law

A patent is associated with an inventive act It conveys the right to exclude others from making, selling, or importing the covered invention. A patent is an exclusive right created by statute and conveyed by the U.S. Patent and Trademark Office (PTO) for a limited period of time. The U.S. is the world leader in patent law New invention -> Legal monopoly Once a patent expires, it's public domain. • Patents must be granted by the PTO (Patent and Trademark Office)

Intellectual Property

Article 1 Section 8 > "Limited times for authors and inventors" Importance Justification Completion Competition

Infringement

Civil violation of a trademark ○ The violator infringes on the trademark's property right through an unintentional or a willful unauthorized use, misappropriating the goodwill and reputation that the trademark represents and confusing the public about the identity of the user. ○ Remedies include paying compensatory damages and injunctions and orders to destroy infringing products

Piracy

Large scale infringement

Not protected from a patent

Natural phenomenon Mathematical algorithms that reveal truths about the universe Abstract ideas Humans Preemption: if an inventor's patent would go beyond protecting something she invented and lock down an entire field of discovery, the patent claims have overstepped the Court's limits on appropriate subject matter.

3 Characteristics of Patents

Novelty Non obviousness Utility

Trade secrets do not have to be unique; two businesses may have trade secret property in substantially the same knowledge. (T/F)

True

Establishing the Existence of a Trade Secret

The first step is to identify secrets, and then take reasonable efforts to maintain secrecy • Conduct a trade secret audit to identify confidential knowledge-based resources • Preserve secrecy: ○ Lock written material ○ Secure computer-stored knowledge with firewalls and encryption ○ Impose confidentiality restrictions ○ Regulate visitors ○ Ask employees, customers, and business partners to sign nondisclosure agreements

Uniform Trade Secrets Act

The majority of states have adopted the UTSA for protection of Trade Secrets. Some states continue to rely on common law protection. Their elements are the same for the most part.

Civil Enforcement of Trade Secrets

The wrongful taking of any kind of intellectual property is called misappropriation or infringement. ○ Injunction: an order by a judge either to do something or to refrain from doing something ○ An injunction orders those who have misappropriated the trade secret to refrain from using it or telling others about it.

Marks Protected by the Lanham Act of 1946

Trademark Service Mark Certification mark Collective Mark Trade dress

Types of Patents

Utility Patent Design Patent Plant Patent

Trademark Dilution: Tarnishment

When usage of a mark creates a negative impression about the famous company • Adult film distributer tried to name company Ben & Sherry's

Copyrights: to make a case for infringement

ou cannot sue for infringement unless you've registered it. • To make a case, you must show that someone violated one of the author's exclusive rights 1. Reproduction 2. Creation of derivative works 3. Distribution 4. Performance 5. Display • Subconscious copying is still copyright infringement. • Willfulness is required for criminal activities. • If successful, the copyright owner may be able to obtain an injunction to stop the defendant's infringement. • An owner may request actual damages for any losses. • Must be registered before infringement for statutory damages

Trademark Registration

• A trademark must be distinctive to be qualified for trademark registration • Usage of mark in interstate commerce is required for registration with PTO • When one registers for a mark, PTO places the mark in the Official Gazette (existing can check it) • Registered on the Principal Register if the mark is acceptable • Generally, the PTO will not accept a person's name or a descriptive term for protection on the Principal Register. ○ If listed on the Supplemental Register for five years and acquires a secondary meaning, a name or descriptive term can acquire full trademark status • Trademarks enjoy potentially unlimited protection periods >>6 yrs: still in use >>10 yrs: renew

Trade Secret

• Any form of knowledge or information that has economic value from not being generally known to others, or readily ascertainable by proper means and has been the subject of reasonable efforts by the owner to maintain secrecy. ○ Owner has to make reasonable efforts to maintain secrecy. • To violate another's trade secret rights, one must misappropriate the information. ○ an important distinction from intellectual property rights that make one liable simply for unauthorized use. • Knowledge Or Info ○ Kept Secret (reasonable measures taken) ○ Economic Value

Copyright ownership

• Copyright law grants property in certain creative expressions & prohibits others from reproducing it w/o permission • Criteria for copyright protection: ○ Work must be original ○ Must be fixed in a tangible medium of expression ○ Must show creative expression

Length of copyright

• For individuals, they are valid for the author's lifetime + 70 years • For companies, they are valid for 95 years from publication or 120 years from creation. • Everything published before 1923 is considered in the public domain

PTO Deny Registration

• If the mark is the same or similar to a mark currently used on similar related goods • If the mark contains certain prohibited or reserved names or designs, including the U.S. flag, other governmental symbols, immoral names or symbols, the names or likenesses of living persons without their consent, and the names or likenesses of deceased American presidents without the permission of their spouses. • If the mark merely describes a product or service • If it's generic and represents the product • If it is disparaging to a certain community.

Copyright Fair Use

• Includes copying for: ○ Criticism ○ Comment ○ News reporting ○ Teaching ○ Scholarship ○ Research • Four Factors for "fair use" considered on case-by-case basis ○ Purpose and character of the use ○ Nature of the copyrighted work ○ Amount and substantiality of the portion used in relation to the copyrighted work as a whole ○ The effect of the use upon the potential market for the copyrighted work • The Copyright Act specifies that the fair use of copyright materials is not an infringement.

Trademark Enforcement

• Law protects the owner from unauthorized use of the mark • The standard for liability is proof that a defendant's use has created a "likelihood of confusion" with the plaintiff's trademark. • Generic marks cannot be protected • Manufacturing and trafficking counterfeit trademarked products is a criminal violation • People try register domain names containing well-known trademarks that do not belong to them.

Trademarks

• Marks on what is produced to represent the origin of goods & services • Recognizability or distinctiveness is the function of trademarks • Protection against confusion • The law protects the maker against use by others ○ One can have rights in an unregistered trademark and even sue for infringement. • Can be registered with the PTO, but they don't have to be • Common law and state law protect trademarks. • Registered marks are protected by the Lanham Act.

Demonstrating Misappropriation

• Misappropriation occurs when one improperly acquires or discloses secret information ○ Burglary ○ Espionage ○ Computer hacking • Misappropriation also occurs when one discloses information that one had a duty to keep secret, even if the original acquisition was proper. • If someone knowingly acquires information that is protected, they are guilty of misappropriation. • Independent creation and reverse engineering are exempted • Employee mobility and trades secrets ○ Businesses have to take reasonable steps to protect information... even from their own employees (not to compete, etc)

Copyright

• Protects creative expression • Deals with original expression rather than invention • Offers monopoly for a limited time • Developed with the invention of a printing press • A mark is not required • Assume something is copyrighted even if it does not have the mark. • Copyright laws protect authors rather than inventors. . Registration and the word "copyright" is not required

Patent Enforcement

• The constitution states that patents expire. • Patent owner can sue against infringement for injunction and damages • Inventions can cover methods and articles that can overlap • Simply owning a patent is not a license to produce a product or service ○ Patents only convey the right to exclude others from making, using, selling and importing the invention. They do not include the right to use the invention. ○ A single item can have several patents • Overlapping rights provide an opportunity for firms to purchase patent rights and sue companies • Patent trolls ○ Patents overlap. Companies that don't produce anything go around buying patents and enforcing them.

Copyright Infringement

• The owner has to establish that defendant violated his or her exclusive rights of: ○ Reproduction ○ Creation of derivative works ○ Distribution ○ Performance ○ Display

Service mark

○ A mark associated with a service rather than a product (ex: LinkedIn) • Sm is unregistered • R is registered

Non obviousness

○ Ability of an invention to produce surprising or unexpected results ○ Not obvious if it is different enough from prior art that it wasn't common to someone with ordinary skill in the prior art ○ Fought by experts

Trademark

○ Any mark, word, picture, or design that attaches to goods to indicate their source ○ On package ○ Designated by the superscript • Tm is unregistered • R is registered trademark

Trademark Dilution: Blurring

○ Blurring - When usage of a mark blurs distinctiveness of a famous mark • Ex: Google Lawn Care • McDowel's in Eddie Murphy's 'Coming to America'

Copyright Monopoly

○ Copying and marketing ○ Limited period of time ○ Original expression

Trademark become generic

○ If a trademark loses its distinctiveness, it also loses its status as a protected trademark. ○ A trademark becomes generic when, through the owner's actions or another's inappropriate use, the mark becomes synonymous in the consumer's mind with the name of the goods or services.

Criminal Enforcement of Trade Secrets

○ In addition to civil enforcement of trade secret boundaries, criminal prosecution can also result from misappropriation of trade secrets. ○ Most criminal prosecutions that take place today are under the Economic Espionage Act (EEA) which considers stealing trade secrets a crime. ○ Punishment for individuals: fines and up to 10 years in prison ○ Only the federal government can bring a case under the EEA. ○ While the EEA makes one liable for standard trade secret misappropriation, another provision addresses misappropriation to benefit a foreign government - true espionage.

Utility

○ Must do something useful ○ Any utility is sufficient, even if it is not how they plan to commercialize and use it.

Utility Patent

○ New, non-obvious, useful processes, machines, compositions of matter or improvements thereof ○ Term: 20 years from filing date ○ What most ○ Apply to useful, functional inventions

Completion

○ Protection for intellectual property does not apply automatically. ○ Some intellectual property forms have very strict deadlines for asserting rights or other formal requirements. • The failure to follow the rules may mean that information that could have been captured is instead dedicated to the public domain, meaning that anyone can use it. • Generally, once information is in the public domain, an intellectual property right cannot be applied to recapture it.

Collective mark

○ Represents membership in a collective organization like a union or cooperative ○ Used by the organization which owns them ○ Can be used by anybody who complies with the standards defined by the owner

Novelty

○ Something new and different from the prior art • The test is met when no single piece of prior art meets all of the elements of an invention's claims. ○ The claimed invention must not have been described in a publication, sold, or put to public use more than one year before a patent application on it is filed.

Trade dress

○ The look or design of a product or services ○ Applies to the total visual image: color or shape associated with a product or service ○ Includes distinctive store decorated motifs ○ Color trademarks apply to unique situations.

Certification Mark

○ Used by someone other than the owner to certify the quality, point of origin, or other characteristics of goods or services. ○ Often owned by trade associations or similar associations