LEGL-2064 - Chapter 8: Intellectual property rights
Whether a secondary meaning becomes attached to a name usually depends on:
• How extensively the product is advertised • The market for the product • The number of sales
If a patent is infringed, the patent holder may sue for relief in...
Federal court
Intellectual property
Property resulting from intellectual, creative processes. Examples include patents, trademarks, and copyrights.
Under current law, a mark can be registered:
1. If it is currently in commerce 2. If the applicant intends to put it into commerce within six months
Section 102 of the Copyright Act explicitly states that it protects original works that fall into one of the following categories:
1. Literary works (including newspaper and magazine articles, computer and training manuals, catalogues, brochures, and print advertisements) 2. Musical works and accompanying words (including advertising jingles) 3. Dramatic works and accompanying music 4. Pantomimes and choreographic works (including ballets and other forms of dance) 5. Pictorial, graphical, and sculptural works (including cartoons, maps, posters, statues, and even stuffed animals) 6. Motion pictures and other audiovisual works (including multimedia works) 7. Sound recordings 8. Architectural works
Generally, copyright owners are protected against the following:
1. Reproduction of the work. 2. Development of derivative works. 3. Distribution of the work. 4. Public display of the work.
Under the TDRA, to state a claim for trademark dilution, a plaintiff must prove the following:
1. The plaintiff owns a famous mark that is distinctive. 2. The defendant has begun using a mark in commerce that allegedly is diluting the famous mark. 3. The similarity between the defendant's mark and the famous mark gives rise to an association between the marks. 4. The association is likely to impair the distinctiveness of the famous mark or harm its reputation.
In determining whether the use made of a work in any particular case is a fair use, the factors to be considered shall include:
1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes 2. The nature of the copyrighted work 3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole 4. The effect of the use upon the potential market for or value of the copyrighted work
Under Section 757 of the Restatement of Torts, those who disclose or use another's trade secret, without authorization, are liable to that other party if either of the following is true:
1. They discovered the secret by improper means. 2. Their disclosure or use constitutes a breach of a duty owed to the other party.
TRIPS agreement example
A U.S. software manufacturer brings a suit for the infringement of intellectual property rights under Germany's national laws. Because Germany is a member of the TRIPS agreement, the U.S. manufacturer is entitled to receive the same treatment as a German manufacturer.
License
A contract permitting the use of a trademark, copyright, patent, or trade secret for certain purposes.
Trademark
A distinctive mark, motto, device, or implement that a manufacturer stamps, prints, or otherwise affixes to the goods it produces so that they may be identified on the market and their origins made known. Once a trademark is established (under the common law or through registration), the owner is entitled to its exclusive use.
Dilution
A doctrine under which distinctive or famous trademarks are protected from certain unauthorized uses regardless of a showing of competition or a likelihood of confusion.
Tort of patent infringement
A firm that makes, uses, or sells another's patented design, product, or process without the patent owner's permission.
Suggestive trademarks
A form of trademark that indicates something about a product's nature, quality, or characteristics, without describing the product directly. An example would be "Dairy Queen" as it suggests an association between its products and milk, but it does not directly describe ice cream.
Arbitrary trademarks
A form of trademark that uses common words in an uncommon way that is not descriptive of the product. An example would be "Dutch Boy" as the name for paint
Fanciful trademarks
A form of trademark that uses invented words. Two examples would be "Google" and "Xerox."
Patent
A government grant that gives an inventor the exclusive right or privilege to make, use, or sell his or her invention for a limited time period. Grants for inventions are given for a twenty-year period, and grants for designs are given for a fourteen-year period.
Collective mark
A mark used by members of a cooperative, association, or other organization to certify the region, materials, mode of manufacture, quality, or accuracy of the specific goods or services.
Certification mark
A mark used by one or more persons, other than the owner, to certify the region, materials, mode of manufacture, quality, or accuracy of the owner's goods or services. Some examples would be "Good Housekeeping Seal of Approval," "UL Tested."
Service mark
A mark used in the sale or the advertising of services, such as to distinguish the services of one person from the services of others. Some examples include titles, character names, and other distinctive features of radio and television programs.
Trade name
A term that is used to indicate part or all of a business's name and that is directly related to the business's reputation and goodwill. These names are protected under the common law, but only if they are unusual and fancifully used, such as Safeway, for example. In addition, these names may also be protected under trademark law, if the name is the same as the firm's trademark, such as Coca-Cola, for example.
Lanham act of 1946
An act that incorporates the common law of trademarks and provides remedies for owners of trademarks who wish to enforce their claims in federal court. In addition, it also provides statutory protection of trademarks and related property at the federal level.
Penalties for counterfeiting example
Charles Anthony Jones pleaded guilty to trafficking in counterfeit prescription erectile dysfunction drugs. The court sentenced Jones to thirty-seven months in prison and ordered him to pay $633,019 in restitution. Jones appealed, arguing that the amount awarded was more than the pharmaceutical companies' actual losses. The court agreed. The pharmaceutical companies were entitled only to their lost net profits rather than the retail price of the genuine drugs [United States v. Jones, 616 Fed.Appx. 726 (5th Cir. 2015)].
Collective mark example
Collective marks appear at the ends of motion picture credits to indicate the various associations and organizations that participated in the making of the films. The union marks found on the tags of certain products are also collective marks.
Patent Infringement Lawsuits and High-Tech Companies
Companies that specialize in developing new technology are holders of numerous patents and are frequently involved in patent infringement lawsuits.
Compilation of facts
Compilations of facts are copyrightable. A compilation is "a work formed by the collection and assembling of preexisting materials or data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship."
Trade secrets in cyberspace
Computer technology is undermining many businesses' ability to protect their confidential information, including trade secrets. Dishonest employees can easily appropriate trade secrets via computer hardware, software, and social media.
Trade dress infringement example
Converse makes Chuck Taylor All-Star shoes. Nike, Inc., owns Converse. Nike sued thirty-one companies, including Ralph Lauren, for manufacturing shoes very similar to All-Stars. The knockoffs used the same white rubber soles, rubber caps on the toes, canvas tops, and conspicuous stitching as the All-Star shoes. Nike claimed the similarity was likely to confuse consumers. Ralph Lauren ultimately agreed to settle its dispute with Nike by destroying all remaining shoes in its line and paying Nike an undisclosed sum.
Secondary meaning example
Federal Express Corporation (FedEx) provides transportation and delivery services worldwide using the logo FedEx in a specific color combination. FedEx sued a competitor, JetEx Management Services, Inc., for using the same color combination and a similar name and logo. JetEx also mimicked FedEx's trademarked slogan ("The World on Time" for FedEx, and "Keeping the World on Time" for JetEx). FedEx alleged trademark infringement and dilution, among other claims. A federal district court in New York granted a permanent injunction to block JetEx from using the infringing mark in FedEx colors. When JetEx (now called JetEx Air Express) continued to use the infringing mark on its vehicles, FedEx went back to court to enforce the injunction and was awarded attorneys' fees and costs [Federal Express Corp. v. JetEx Air Express, Inc., 2017 WL 816479 (E.D.N.Y. 2017)].
Patent Infringement and Foreign Sales
Foreign firms can apply for and obtain U.S. patent protection on items that they sell within the United States, and U.S. firms can obtain protection in foreign nations where they sell goods.
What did the European Union alterer in 2011
In 2011, this union altered its copyright rules under the Berne Convention to extend the period of royalty protection for musicians from fifty years to seventy years.
Trade secret
Information or a process that gives a business an advantage over competitors who do not know the information or process.
Trade secrets in cyberspace example
Noah Kravitz worked for a company called PhoneDog for four years as a product reviewer and video blogger. PhoneDog provided him with the Twitter account "@PhoneDog_Noah." Kravitz's popularity grew, and he had approximately 17,000 followers by the time he quit. PhoneDog requested that Kravitz stop using the Twitter account. Although Kravitz changed his handle to "@noahkravitz," he continued to use the account. PhoneDog subsequently sued Kravitz for misappropriation of trade secrets, among other things. Kravitz moved for a dismissal, but the court found that the complaint adequately stated a cause of action for misappropriation of trade secrets and allowed the suit to continue [PhoneDog v. Kravitz, 2011 WL 5415612 (N.D.Cal. 2011). See also Mintel Learning Technology, Inc. v. Ambrow Education Holding Ltd., 2012 WL 762126 (N.D.Cal. 2012)].
What is one way to avoid litigation?
One way to avoid litigation and still make use of another's trademark or other form of intellectual property is to obtain a license to do so.
Copyright protection for software example
Oracle America, Inc., is a software company that owns numerous application programming interfaces, or API packages. Oracle grants licenses to others to use these API packages to write applications in the Java programming language. Java is open and free for anyone to use, but using it requires an interface. When Google began using some of Oracle's API packages to run Java on its Android mobile devices, Oracle sued for copyright infringement. Google argued that the software packages were command structure and, as such, not protected under copyright law. Ultimately, a federal appellate court concluded that the API packages were source code and were entitled to copyright protection [Oracle America, Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014)].
Remedies for Copyright Infringement example
Rusty Carroll operated an online term paper business, R2C2, Inc., that offered up to 300,000 research papers for sale at nine websites. Individuals whose work was posted on these websites without their permission filed a lawsuit against Carroll for copyright infringement. Because Carroll had repeatedly failed to comply with court orders regarding discovery, the court found that the copyright infringement was likely to continue unless an injunction was issued. The court therefore issued a permanent injunction prohibiting Carroll and R2C2 from selling any term paper without sworn documentary evidence that the paper's author had given permission [Weidner v. Carroll, 2010 WL 310310 (S.D.Ill. 2010)].
Trademark dilution example
Samantha Lundberg opened a coffee shop under the name "Sambuck's Coffee" in Astoria, Oregon, even though she knew that "Starbucks" was one of the largest coffee chains in the nation. Starbucks Corporation filed a dilution lawsuit, and a federal court ruled that use of the "Sambuck's" mark constituted trademark dilution. Not only was there a "high degree" of similarity between the marks, but also both companies provided coffee-related services and marketed their services through stand-alone retail stores. Therefore, the use of the similar mark (Sambuck's) reduced the value of the famous mark (Starbucks) [Starbucks Corp. v. Lundberg, 2005 WL 3183858 (D.Or. 2005)].
Generic Terms
Terms that refer to an entire class of products receive no protection, even if they acquire secondary meaning. Some examples include "bicycle," "computer," "aspirin," and "thermos."
Standards and procedures of the TRIPS agreement
The TRIPS agreement established, for the first time, standards for the international protection of intellectual property rights. Each member country of the World Trade Organization must include in its domestic laws broad intellectual property rights and effective remedies for violations of those rights. In addition, each member nation must ensure that legal procedures are available for parties who wish to bring actions for infringement of intellectual property rights.
What does the TRIPS agreement prohibit?
The TRIPS agreement forbids (prohibits) member nations from giving their own citizens favorable treatment without offering the same treatment to citizens of all other member countries.
TRIPS agreement
The TRIPS agreement has been the most significant and far reaching in scope of all international agreements that have given protection to intellectual property rights.
Fair use
The courts determine whether a particular use is fair on a case-by-case basis.
Trade dress example
The distinctive decor, menu, layout, and style of service of a Vinny's restaurant may be regarded as trade dress. Trade dress can also include the layout and appearance of a catalogue, the use of a lighthouse as part of the design of a golf hole, the fish shape of a cracker, or the G-shaped design of a Gucci watch.
Copyright
The exclusive right of authors to publish, print, or sell an intellectual production for a statutory period of time. This right has the same monopolistic nature as a patent or trademark, but it differs in that it applies exclusively to works of art, literature, and other works of authorship, including computer programs.
Trade dress
The image and overall appearance of a product that are subject to the same protection as trademarks. A example would be the distinctive décor, menu, layout, and style of service of a particular restaurant.
Licensee
The party obtaining the license
Licensor
The party that owns the intellectual property rights and issues the license.
The Madrid Protocol
This protocol is designed to reduce the time and expense of securing international trademark protection. Under its provisions, a company wishing to register its trademark abroad can submit a single application and designate other member countries in which the company would like to register its mark.
Website of the European Patent Office
This website provides online access to 100 million patent documents in more than seventy nations through a searchable network of databases.
The website of the U.S. Patent and Trademark Office
This website provides searchable databases covering U.S. patents granted since 1976.
Protected expression
To be protected, a work must be "fixed in a durable medium" from which it can be perceived, reproduced, or communicated.
Border searches under the Anti-Counterfeiting Trade Agreement (ACTA)
Under ACTA, member nations are required to establish border measures that allow officials, on their own initiative, to search commercial shipments of imports and exports for counterfeit goods. If border authorities reasonably believe that any goods in transit are counterfeit, the treaty allows them to keep the suspect goods until the owner proves the items are authentic and noninfringing.
The First Sale Doctrine (copyright)
Under the first sale doctrine, the owner of a particular item that is copyrighted can, without the authority of the copyright owner, sell or otherwise dispose of it. Once a copyright owner sells or gives away a particular copy of a work, the copyright owner no longer has the right to control the distribution of that copy.
Copyright infringement
Whenever the form or expression of an idea is copied, an infringement of copyright has occurred. The reproduction does not have to be exactly the same as the original, nor does it have to reproduce the original in its entirety.
Fair use example
• A number of research universities, in partnership with Google, Inc., agreed to digitize books from their libraries and create a repository for them. Eighty member institutions (including many colleges and universities) contributed more than 10 million works into the HathiTrust Digital Library. Some authors complained that this book scanning violated their rights and sued the HathiTrust and several associated entities for copyright infringement. • The court, however, sided with the defendants and held that making digital copies for the purposes of online search was a fair use. The library's searchable database enabled researchers to find terms of interest in the digital volumes—but not to read the volumes online. Therefore, the court concluded that the digitization did not provide a substitute that damaged the market for the original works [Authors Guild, Inc., v. HathiTrust, 755 F.3d 87 (2d Cir. 2014)].
A trademark owner that successfully proves infringement can recover:
• Actual damages • The profits that the infringer wrongfully received from the unauthorized use of the mark • Attorneys' fees
Copyright registration
• Copyrights can be registered with the U.S. Copyright Office in Washington, D.C.; however, registration is not required. • A copyright owner no longer needs to place the symbol © or the term "Copr." or "Copyright" on the work to have the work protected against infringement.
Remedies for patent infringement example
• Cordance Corporation developed some of the technology and software that automates Internet communications. Cordance sued Amazon.com, Inc., for patent infringement, claiming that Amazon's oneclick purchasing interface infringed on one of Cordance's patents. After a jury found Amazon guilty of infringement, Cordance requested the court to issue a permanent injunction against Amazon's infringement or, alternatively, to order Amazon to pay Cordance an ongoing royalty. • The court refused to issue a permanent injunction because Cordance had not proved that it would otherwise suffer irreparable harm. Cordance and Amazon were not direct competitors in the relevant market. Cordance had never sold or licensed the technology infringed by Amazon's one-click purchasing interface and had presented no market data or evidence to show how the infringement negatively affected Cordance. The court also refused to impose an ongoing royalty on Amazon [Cordance Corp. v. Amazon.com, Inc., 730 F.Supp.2d 333 (D.Del. 2010)].
Counterfeit goods
• Counterfeit goods copy or otherwise imitate trademarked goods, but they are not the genuine trademarked goods. • Counterfeit goods have negative financial effects on legitimate businesses. • Certain counterfeit goods, such as pharmaceuticals and nutritional supplements, can present serious public health risks.
The fair use of a copyrighted work is not an infringement of copyright for the following purposes:
• Criticism and comment • News reporting • Teaching • Scholarship • Research
Trade secrets include, but are not limited to, the following:
• Customer lists • Plans • Research and development • Pricing information • Marketing methods • Production techniques
Generic terms example
• David Elliot and Chris Gillespie sought to register numerous domain names (Internet addresses), including "googledisney.com" and "googlenewstvs.com." They were unable to register the names because all of them used the word google, a trademark of Google, Inc. • Elliot and Gillespie brought an action in federal court to have the Google trademark cancelled because it had become a generic term. They argued that because most people now use google as a verb ("to google") when referring to searching the Internet with any search engine (not just Google), the term should no longer be protected. The court held that even if people do use the word google as a verb, it is still a protected trademark if consumers associate the noun with one company. The court concluded that "the primary significance of the word google to a majority of the public who utilize Internet search engines is a designation of the Google search engine" [Elliot v. Google, Inc., 45 F.Supp.3d 1156 (D.Ariz. 2014)].
Secondary meaning
• Descriptive terms, geographic terms, and personal names are not inherently distinctive and do not receive protection under the law until they acquire a secondary meaning. • A secondary meaning may arise when customers begin to associate a specific term or phrase with specific trademarked items made by a particular company. An example would be "Calvin Klein," as it is associated with designer clothing and goods.
Section 102 exclusions (copyright act)
• Generally, anything that is not an original expression will not qualify for copyright protection. • It is not possible to copyright an idea. However, the particular way in which an idea is expressed is copyrightable. Thus, an idea and its expression must be separable to be copyrightable.
Licensing example
• George V Restauration S.A. and others owned and operated the Buddha Bar Paris, a restaurant with an Asian theme in Paris, France. One of the owners allowed Little Rest Twelve, Inc., to use the Buddha Bar trademark and its associated concept in New York City under the name Buddha Bar NYC. Little Rest paid royalties for its use of the Buddha Bar mark and advertised Buddha Bar NYC's affiliation with Buddha Bar Paris. This connection was also noted on its website and in the media. • When a dispute arose, the owners of Buddha Bar Paris withdrew their permission for Buddha Bar NYC's use of their mark, but Little Rest continued to use it. The owners of the mark filed a suit in a New York state court against Little Rest. The court granted an injunction to prevent Little Rest from using the mark [George V Restauration S.A. v. Little Rest Twelve, Inc., 58 A.D.3d 428, 871 N.Y.S.2d 65 (2009)].
The Copyright Act of 1976
• Governs copyrights. • Works created after January 1, 1978, are automatically given statutory copyright protection for the life of the author plus 70 years. • For copyrights owned by publishing houses, the copyright expires 95 years from the date of publication or 120 years from the date of creation, whichever comes first. • For works by more than one author, the copyright expires 70 years after the death of the last surviving author. • When copyright protection ends, works enter into the public domain.
Under the Berne Convention:
• If a citizen of a country that has signed the convention writes a book, all other countries that have signed the convention must recognize that author's copyright in the book. • If a citizen of a country that has not signed the convention first publishes a book in one of the countries that have signed, all other countries that have signed the convention must recognize that author's copyright. • Copyright notice is not needed to gain protection for works published after March 1, 1989.
Trademark dilution
• In 1995, Congress amended the Lanham Act by passing the Federal Trademark Dilution Act, which allowed trademark owners to bring suits in federal court for trademark dilution. • In 2006, Congress further amended the law on trademark dilution by passing the Trademark Dilution Revision Act (TDRA).
Goals and provisions of the Anti-Counterfeiting Trade Agreement
• Increase international cooperation for combating counterfeiting • Facilitate the best law enforcement practices for combating counterfeiting • Provide a legal framework for combating counterfeiting • ACTA applies to both physical goods and to pirated copyrighted works being distributed via the Internet.
Copyright infringement example
• Inhale, Inc., registered a copyright on a hookah—a device for smoking tobacco by filtering the smoke through water held in a container at the base. Starbuzz Tobacco, Inc., sold hookahs with water containers shaped exactly like the Inhale containers. • Inhale filed a suit in a federal district court against Starbuzz for copyright infringement. The court determined that the shape of the water container on Inhale's hookahs was not copyrightable. The U.S. Court of Appeals for the Ninth Circuit affirmed the judgment. "The shape of a container is not independent of the container's utilitarian function—to hold the contents within its shape—because the shape accomplishes the function." [Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d 1038 (9th Cir. 2014)].
Persons found guilty of violating the SCMGA:
• May be fined up to $2 million or imprisoned for up to ten years • Must forfeit the counterfeit products • Must forfeit any property used in the commission of the crime • Must pay restitution to the trademark holder or victim in an amount equal to the victim's actual loss
Trade secrets
• Protection of trade secrets extends to both ideas and their expression. • There are no registration or filing requirements for trade secrets. • Businesses generally attempt to protect their trade secrets by having all employees who use a protected process or information agree in their contracts, or in confidentiality agreements, never to divulge it.
The patent holder can:
• Seek an injunction against the infringer • Request damages for royalties and lost profits. If the court determines that the infringement was willful, the court can triple the amount of damages awarded (treble damages). • Seek reimbursement for attorneys' fees and costs
Fanciful and arbitrary trademarks example
• Sports entertainment company ESPN sued Quiksilver, Inc., a maker of youth-oriented clothing, alleging trademark infringement. ESPN claimed that Quiksilver's clothing used the stylized "X" mark that ESPN uses in connection with the "X Games" ("extreme" sports competitions). • Quiksilver filed counterclaims for trademark infringement and dilution, arguing that it had a long history of using the stylized X on its products. ESPN asked the court to dismiss Quiksilver's counterclaims, but the court refused, holding that the X on Quiksilver's clothing is clearly an arbitrary mark. The court found that the two Xs are "similar enough that a consumer might well confuse them." Therefore, Quiksilver could continue its claim for trademark infringement [ESPN, Inc. v. Quiksilver, Inc., 586 F.Supp.2d 219 (S.D.N.Y. 2008)].
The first sale doctrine example (copyright)
• Supap Kirtsaeng, a citizen of Thailand, was a graduate student at the University of Southern California. He enlisted friends and family in Thailand to buy copies of textbooks there and ship them to him in the United States. Kirtsaeng resold the textbooks on eBay, where he eventually made about $100,000. • John Wiley & Sons, Inc., had printed eight of those textbooks in Asia. Wiley sued Kirtsaeng in federal district court for copyright infringement. Kirtsaeng argued that Section 109(a) of the Copyright Act allows the first purchaser-owner of a book to sell it without the copyright owner's permission. The trial court held in favor of Wiley, and that decision was affirmed on appeal. Kirtsaeng then appealed to the United States Supreme Court, which ruled in Kirtsaeng's favor. The first sale doctrine applies even to goods purchased abroad and resold in the United States [Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519, 133 S.Ct. 1351, 185 L.Ed.2d 392 (2013)].
There are a number of international agreements relating to intellectual property rights, including:
• The Paris Convention • The Berne Convention • The Trade-Related Aspects of Intellectual Property Rights (the TRIPS agreement) • The Madrid Protocol • The Anti-Counterfeiting Trade Agreement
Combating Foreign Counterfeiters
• The United States cannot prosecute foreign counterfeiters because our national laws do not apply to them. • One effective tool that U.S. officials have used to combat online sales of counterfeit goods is to obtain a court order to close down the domain names of websites that sell such goods.
Typically, copyright protection is not extended to the "look and feel" of computer programs, which includes:
• The general appearance • Command structure • Video images • Menus • Windows
Almost anything is patentable, except:
• The laws of nature • Natural phenomena • Abstract ideas
Patent infringement may occur even though:
• The patent owner has not put the patented product into commerce. • Not all features or parts of a product are copied.
Copyright example
• The popular character Sherlock Holmes originated in stories written by Arthur Conan Doyle and published from 1887 through 1927. Over the years, elements of the characters and stories created by Doyle have appeared in books, movies, and television series, including Elementary on CBS and Sherlock on BBC. • Before 2013, those who wished to use the copyrighted Sherlock material had to pay a licensing fee to Doyle's estate. Then, in 2013, the editors of a book of Holmes-related stories filed a lawsuit in federal court claiming that the basic Sherlock Holmes story elements introduced before 1923 should no longer be protected. The court agreed and ruled that these elements have entered the public domain—that is, the copyright has expired, and they can be used without permission [Klinger v. Conan Doyle Estate, Ltd., 988 F.Supp.2d 879 (N.D.III. 2013)].
Generally, copyright protection extends to:
• Those parts of a computer program that can be read by humans, such as the "high-level" language of a source code • The binary-language object code, which is readable only by the computer • The overall structure, sequence, and organization of the program
Remedies for copyright infringement
• Those who infringe copyrights may be liable for damages or criminal penalties, such as actual damages that are based on the harm caused to the copyright holder by the infringement, statutory damages that are not to exceed $150,000, and criminal proceedings, which can result in fines and/or imprisonment. • A court can also issue a permanent injunction against a defendant when the court deems it necessary to prevent future copyright infringement.
State and federal law on trade secrets
• Trade secrets have long been protected under the common law. • The Economic Espionage Act makes the theft of trade secrets a federal crime. Stealing confidential business data by industrial espionage, such as by tapping into a competitor's computer, is a theft of trade secrets without any contractual violation and is actionable in itself. • Nearly every state has enacted trade secret laws based on the Uniform Trade Secrets Act.
Trademark registration
• Trademarks may be registered with the state or with the federal government. • To register for protection under federal trademark law, a person must file an application with the U.S. Patent and Trademark Office in Washington, D.C. Registration of a trademark with the U.S. Patent and Trademark Office gives notice on a nationwide basis that the trademark belongs exclusively to the registrant. In addition, the symbol ® indicates that a mark has been registered. • Registration is renewable between the fifth and sixth years after the initial registration and every ten years thereafter (every twenty years for trademarks registered before 1990).
The Stop Counterfeiting in Manufactured Goods Act (SCMGA) makes it a crime to:
• Traffic, or attempt to traffic, intentionally in counterfeit goods or services • Knowingly use a counterfeit mark on or in connection with goods or services
Trademark infringement
• Whenever a trademark is copied to a substantial degree or used in its entirety by another, intentionally or unintentionally, the trademark has been infringed (used without authorization). • When a trademark has been infringed, the owner of the mark has a cause of action against the infringer. To succeed in a trademark infringement action, the owner must show that the defendant's use of the mark created a likelihood of confusion about the origin of the defendant's goods or services. In addition, the most commonly granted remedy for trademark infringement is an injunction to prevent further infringement.
