Chapter 24 Smartbook
No Electronic Theft Act of 1997
(Known at the NET act) provides for punishment of violators who "willfully" infringe on copyrighted material worth at least $1,000 even if they do not profit from the activity.
advantages to uspto registration
1. gives mark holder right to use the mark nationwide 2. continues nationwide constructive notice to public of trademark ownership 3. enables a party to bring an infringement suit in federal court 4. allows a party to potentiallt recover treble damages, attorney fees, and other remedies 5. registered trademarks may after five years become "incontestable" at which point the exclusive right to use the mark is conclusively established
when can a mark be rejected
1. immoral 2. deceptive 3. scandalous
advantages of trade secret protection over other forms of intellectual property (such as patents), (2)
1. no formal registration is required 2. protection for trade secrets does not expire after a fixed period of time
2 ways holders acquire rights to a trademark protection
1. use in commerce 2. registration of the mark with the us patent and trademark office
3 categories of patents
1. utility patents-- cover invention of any new and useful process, machine 2. design patents-- invention of new designs on articles of manufacture, how the product looks vs functions 3. plant patents-- least frequently used, cover invention of reproducable plants
length of registration period for uspto
10 years, but can be renewed infinite times. if the holder stops using the mark in commerce for 3 years, the rights to the mark are lost through abandonment.
Patent Duration
20 years
how long does the sole author or originator of a copyright own the protection
70 years from the death of the author or originator
how long does more than one author or originator hold copyright protection
70 years from the death of the last surviving author or originator
Copyright Act of 1976
A federal statute that (1) establishes the requirements for obtaining a copyright and (2) protects copyrighted works from infringement.
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.
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.
trade secret
A formula, device, idea, process, or other information used in a business that gives the owner a competitive advantage in the marketplace.
uniform trade secrets act (UTSA)
A model law defining and protecting trade secrets which has been enacted in 44 states.
intellectual property
A product of the intellect, such as an expressed idea or concept, that has commercial value.
rule of addition
A rule stating that the probability that an event can occur in two or more alternative ways is the sum of the separate probabilities of the different ways.
Copyright
An exclusive right granted by the federal government allowing the owner to reproduce and sell an artistic or published work.
Mattel v. MCA Records
Barbie girl song made by MCA Records. Mattel brought an action against the label for use of the Barbie mark. Trial court ruled that no infringement occurred. Court of Appeals ruled in favor of MCA because the use of a mark in a song title is different from the use of a mark on a product.
Public Domain
Creative work that's not copyrighted and therefore free for you to use whenever you want.
Federal Trademark Dilution Act
Federal law that permits trademark owners to file lawsuits to prevent others from impairing the mark's distinctiveness. 6 factors for courts to consider in determining whether there is dilution by blurring: 1. degree of similarity between mark and the famous mark 2. degree of inherent or acquired distinctiveness of the mark 3. extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark 4. degree of recognition (fame) of the mark 5. whether the use of the mark by the alleged infringer was intended to create an association with the famous mark 6. any actual association between the mark and the famous mark
Durable Medium
For copyright protection, the requirement that the work must be in a tangible form, such as writing, digital, video, and so forth.
Sony Corp. v. Universal City Studios
Home use of video recorders did NOT infringe the copyright of program producers Fair Use
Remedies for Patent Infringement
Patent holder can seek an injunction, monetary damages, and perhaps attorneys fees and costs
T/F: Trade Secret Law is based on Common Law
T
rule of exactness
The principle that literal patent infringement has occurred when the infringer makes, uses, or sells an invention that is exactly the same as the patent holder's claims in the patent application.
Trademark Infringement
Unauthorized use of another's mark. The holder may recover damages and other remedies from the infringer.
Genericide
When a trademark becomes so well known that it becomes the generic term for a product, and trademark rights are lost
Lanham Act
a 1946 law that spells out what kinds of marks (including brand names) can be protected and the exact method of protecting them
doctrine of equivalence
a doctrine that allows courts to find patent infringement when an invention, compared with a patented device, performs substantially the same function in substantially the same way to achieve the same result
patentable subject matter standard
a standard that bars laws of nature, natural phenomena, and abstract ideas from being patentable subject matter
substantial similarity standard
a test that is used to determine whether an ordinary reasonable observer comparing two works would have to conclude that the work being questioned was copied from the other
Nonobvious standard
an invention must be something more than that which would be obvious to one who is skilled in the relevant field
infringement
anyone who without authority makes, uses, or sells a patented invention, within the us during the term of the patent-- literal infringement or through equivalence
Feist Publications, Inc. v. Rural Telephone Service Co.
compilations of fact can only be copyrighted if the compilation contained some degree of creativity (alphabetical order is not creative)
criteria used to define a trade secret
derives independent economic value from not being generally known or accessible by other people who can obtain economic value from its use is the subject of efforts that are reasonable to maintain its secrecy
how long does a publisher or other work for hire hold copyright protection
either 120 years from date of creation or 95 years from the date of publication (whichever is earlier)
patent
exclusive rights over an invention for a limited period of time
Copyright laws protect the expression of the idea or the idea itself?
expression of the idea
Factors courts rely on to determine whether material/info is a probable trade secret
extent to which info is known outside the business of the claimant, measures taken by the claimant to guard the confidentiality of the info, value of the info to its competitors, amt invested in developing the information, efforts taken to maintain secret confidentiality among the claimants employees potential investors and third party vendors
Computer Software Copyright Act
in 1980, congress passed this act, which amended previous copyright acts; now, all forms of computer programs are protected
Misappropriation
intentional use or theft of property or funds of another person for one's own use
Vicarious Infringement
involves an infringement that occurs in an area under your supervision, and when you should have been policing and preventing such acts
Indirect Infringement (contributory infringement)
involves the copyright owner, the direct infringer, and the facilitator of infringement the facilitator is liable for damages the copyright owner must identify the direct infringer first the party must have direct or imputed knowledge of the infringement contribution for the facilitator to be liable
fanciful marks
made up words
Factors of fair-use determination
nature of the work being copied, fair use, nature of the work, amount and substantiality used, market effect
To obtain copyright protection, a work must pass the 3 part test:
originality, some degree of creativity, fixation in a durable medium
literal patent infringement
patent infringement in which the invention or process violates either the rule of exactness or the rule of addition
2 types of tangible property
personal property-- things you can see /touch real property-- real estate
small R in a circle
registration has been completed with uspto
secondary meaning
special meaning of a mark that distinguishes goods. a business must prove that their meaning distinguishes them from other brands. Example: Microsoft tried to obtain the word Windows by proving people connected it w their business more than with panes of glass
likelihood of confusion
standard employed in trademark law to determine if the use of a mark by two companies is too similar takes into account: 1. strength of the mark 2. similarity between marks 3. proximity of the products and their competitiveness with one another 4. evidence that the mark holder may be preparing to launch a product for sale in the market of the alleged infringer's product 5. evidence of actual consumer confusion 6. evidence of bad faith by the infringer 7. respective quality of the products 8. sophistication of consumers in the relevant market
trade secret protections are provided by...
state statutes and state common law principles
Fair Use
the conditions under which you can use material that is copyrighted by someone else without paying royalties
First Sale Doctrine
the doctrine that allows purchasers of a copyrighted work to resell it or rent it out
Trademark
the exclusive right to use a brand or part of a brand (word, name, shape, symbol, phrase, or combo to distinguish the brand)
TM and SM symbols indicate...
the mark is not yet registered with the uspto but they think it is distinctive enough to be protected, and may be pending registration
service mark
the same as a trademark except that it refers to a service offering (ex: greyhound lines, buses)
Copyright Notice
the text copyright followed by the year of publication
when registered by the uspto...
there is bona fide intent to use the mark in commerce the mark holder has nationwide rights to its use the mark may be used by anyone who used the mark in commerce prior to registration (so diff companies may have simultaneous use of the trademark protection)
novelty standard
this is based on a three-prong test, the first prong is the "public use" test and requires that the invention or process not already be in public use; the second prong governs priority for inventors of the same invention or process which provides that the inventor who has been determined to invent first has priority over other inventors; and finally the last prong requires a determination by the USPTO that the applicant filed the patent within a reasonable time of the invention
Arbitrary Marks
those that have no relation to the goods or services associated with the mark other than identifying the source
if the work in question has added a new expression or meaning (such as a parody) it is called...
transformative. and it is not an infringement on copyrighted work, to a certain extent
trade dress
visual components that contribute to the overall look of a brand (ex: Loubitins red bottoms)
rule of omission
when the alleged infringing invention lacks an essential element of the patent holder's claims int he patent application, infringement has not occurred
Direct Infringement
when the copyright owner can prove that she has legal ownership of the work in question and that the infringer copied the work without permission
original ownership
work that is original to the author
Works for hire
works created by an employee as part of their job
