Chapter 7

Penalties for counterfeit goods

$2mm or 10 years in prison forfeit the counterfeit items

Trademark

A distinctive word, symbol, or design that identifies the manufacturer as the source of particular goods and distinguishes its products from those made or sold by other companies. Customers begin to associate the name with the source of the product under common law, the person who used a symbol or mark to identify a business or product was protected in the use of that trademark

A mark can be registered if

(1) it is currently in commerce (2) the applicant/filer intends to put the mark into commerce w.i. 6 months

4 Types of IP

1. patents 2. trademarks 3. trade secrets 4. copyrights

patients for design

14 years of protection from filing date this is a distinct configuration jewelry, cars, fonts, emojis

Paris convention of 1883

170 countries allows parties in one country to file for patent and trademark protection in any other signatory country

Patents for inventions

20 years of protection from filing date

Trade Secret

A formula, device, idea, process, or other information used in a business that gives the owner a competitive advantage in the marketplace. -Information of commercial value - Protection extends to both an idea and its expression - Traditionally protected under common law but now under state laws based on Uniform Trade Secrets Act and federal statute (Economic Espionage Act) - Ex: customer lists, plans, research and development, pricing information, marketing techniques, and production methods

trade name

A name that a business uses to identify itself and its brand. A trade name is directly related to a business's reputation and goodwill. can be the same as the company's trademarked product (e.g. Coca-cola) or different protected under common law -cannot be registered with USPTO unless it is also used as a trademark or service mark ex. Safeway

How to protect IP

Article 1, Section 8 of U.S. Constitution -Patent and copyright clause of constitution Congress -US patent and trademark office -US copyright office

Trademark registration

Federal: register the mark with the U.S. Patent and Trademark office (USPTO)

Important aspects of IP

Fosters innovation, w/out IP businesses would not be able to reap what they sew, w/out it business would focus less on R&D

counterfeit goods

Goods that copy or otherwise imitate trademarked goods but are not genuine (knockoffs) have negative financial effects on legitimate businesses can also pose serious health risks (e.g. pharmaceuticals) real life examples Superbowl Merch/goods roadside stands--Louis Vuitton

What is currently the most valuable trademark currently in the world

Google

Trademark Statutory law (federal and state)

Lanham act of 1946

Madrid Protocol

simpler process and lower costs for trademark registration US company may submit one application and designate other member countries in which it would like to register mark -But will member countries enforce laws and protect marks

One protection period ends...

the product or process enters the public domain anyone can make, sell, or use the invention without paying patent holder

purpose and character of the use

Nonprofit and educational purposes are generally favored Criticism, comment, news reporting, teaching, scholarship, research, or transformative -Transformative is not merely reproduction -Transformed into something new

What can be copyrighted?

Particular way in which an idea is expressed -not the idea itself -Literary works (newspaper/magazine articles, advertisements) -Musical works and accompanying words -Dramatic works and accompanying music -Pantomimes and choreographic works -Pictorial, graphic, and sculptural works (including cartoons, maps, posters, statutes, and stuffed animals) -Motion pictures and other audiovisual works -Sound recordings -Architectural works -Computer code -Original compilations

TRIPS Agreement of 1994

Standards for international protection of IP rights, including patents, trademarks, and copyrights for movies, computer programs, books, and music Each signatory country must include in its domestic laws broad IP rights and effective remedies

the nature of the copyrighted work

the type of work those that are creative tend to be more protected (ie. non fiction v. fiction)

Fair use exception

a person or organization can reproduce copyrighted material without paying royalties court looks at balanced application of 4 factors fair use provision section 107 of the U.S. Copyright act Need to apply all 4 factors: (1) purpose and character of the use (2) nature of the copyrighted work (3) amount and substantiality of the portion used in relation to copyrighted work as a whole (4) effect of the use upon the value for the copyrighted materials

Patent Infringement

a tort a firm makes, uses, or sells another's patented design, product, or process without the patent owner's permission May occur even though the patent owner has not put the patented product in commerce (reverse engineer) May also occur even though not all features or parts of an invention are copied --However, to infringe on a process, all steps must be copied

damages (copyright)

actual damages-- the true harm caused statutory: between $750-$300K at the discretion of the court willful infringement up to $150K

license agreement

agreement which permits the use of a trademark, copyright, patent, trade secret, or other forms of intellectual property for certain limited purposes

what is patentable?

an invention that is novel, useful, and not obvious in light of current technology i.e. artistic method, works of art, certain business processes

suggestive trademark

bring to mind something about the product without describing it (i.e. cornflakes, Dairy Queen)

What falls under trademarks

catchy phrases, abbreviations, ornamental colors, ornamental design, and sounds

ornamental colors

color use -christian louboutin -yellow post-it

Berne Convention of 1886

copyright protection afforded in all signatory countries

injunction

court order that restrains a person from committing an act which infringes upon the legal rights of another person

Copyright Infringement Remedies

damages and/or criminal penalties

secondary meaning

descriptive term, geographic. Not generally registered until customer associates them with specific items made by a company. Depends on the extent of advertisement, marketing, sales, etc... then can become stronger

sounds

distinctiveness -NBC sound -MGM lion

Federal Trademark Dilution Act

federal cause action that allows trademark users to bring a lawsuit in federal court for trademark dilution protects against certain unauthorized uses even when the use is noncompeting goods or is unlikely to confuse need to show: plaintiff owns a famous mark that is distinctive defendant using the mark that allegedly dilutes similarity of the marks gives rise to an association of the marks association likely to impair the famous mark

Lanham Act of 1946

federal law to protect companies from losing business to rival companies using confusingly similar trademarks based on common law and states' statutory law too

America invents act

federal statute enacted in 2011 which established that the first person to file a patent application received protection (as opposed to the first person to invent a product or process; also provides 9-month challenge period)

weak trademark

generic terms: escalator, trampoline, raisin bran or secondary meaning.

trademark dilution

the weakening of a famous mark's ability to identify and distinguish goods or services, regardless of competition in the marketplace or the likelihood of confusion

Copyright Act of 1976

granted to author of certain literary or artistic products Copyright is registered with the US copyright office., but not required. Note have to have a copyright symbol on it to have it protected. If someone created it then someone owns it. Works created after January 1, 1978 are automatically given copyright protection for the life of the author plus 70 years For copyrights owned by publishing companies, the copyright expires 95 years from the date of publication or 120 years from the date of creation (whichever is first) For works by more than one author, the copyright expires 70 years after the death of the last surviving author

copyright infringement remedies

guilty may be liable for damages or criminal penalties (for willful violations)

Patent Infringement Remedies

injunction against infringer (defendant), damages, lost profits treble damages if the infringement was willful

Remedy for trademark infringement

injunction and plaintiff may also recover damages, plus profits received by defendant; court may also order destruction of related goods

the amount or substantiality of the portion used

law not set exact quantities but the amount used is analyzed

what is not patentable?

laws of nature, natural phenomenon, abstract ideas

challenge to patent

there is a challenge period where others can challenge

the effect of the use on the potential mark for or value of the work

most complicated part if you could have purchased license to the work it goes against the user/infringer look at market see if available

strong trademark

most distinctive. Usually completely made up. Fanciful. Making it inherently distinctive. Combination of words (i.e. google)

General rule patent infringement

must be sold within the US, importing patented product in the US

Trademark common law

no application process. Just use in the community. not nationwide

intellectual property

not really property. But a right to that which invent of the brain. Intellectual and creative process

copyright infringement

occurs when the form or expression of an idea is copied reproduction does not have to be exactly the same as the original also, infringement occurs only if a substantial part of the original is reproduced

General rule for trademarks

only those trademarks that are sufficiently distinctive from all competing trademarks will be protected

licensee

party that obtains the license from the licensor

catchy phrases

phrase with the brand i.e. just do it

elements of a successful claim for trademark infringement

plaintiff must show defendant's use of the mark created a likelihood of confusion about the origin of the defendant's goods or services does NOT have to show defendant intentionally or that mark is registered (although it's helpful for timing)

patent

property right granted by federal gov't gives an inventor exclusive right to make, use, sell, or offer to sell an invention in the U.S. for a limited time

What results in registering a trademark

registration of a trademark with USPTO gives notice on a nationwide basis that mark belongs exclusively to registrant registrant uses the symbol (r) to indicate the registration

renewal of trademark registration

renewable between fifth and sixth years after initial registration. Every 10 years thereafter

abbreviations

shorted name (i.e. bud)

Middle of road strength

suggestive trademark

trade dress

the image and overall appearance of a product (look and feel) that is protected by trademark law i.e. decor, menu, and style of service of a popular restaurant may be regarded as the restaurant's trade dress subject to the same protection as trademarks in cases involving trade dress infringement, the key issue is whether consumers are likely to be confused by the allegedly infringing use

licensor

the party that owns the intellectual property rights and issues the license

treble damages

three times the damages actually sustained

certification mark

trademark used to show consumers that good/service has met certain standards. Quality, materials, mode of manufacture, or other characteristic of specific goods or services (i.e. energy star, and good of housekeeping seal of approval)

International protection for IP

various international agreements to which U.S. is a party

copyright attachment

when affixed

Trademark Infringement

when someone else uses the registered trademark in its entirety or copies it to a substantial degree, intentionally or unintentionally can be common law too, but really in your locale

Trademark (second definition)

word, phrase, symbol and or design that identifies and distinguishes the source of GOODS of one party from those of another

service mark

word, phrase, symbol, or design that distinguishes the source of the service rather than a good