LSTD Chp 24

Misappropriation

(1) The acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means (2) the disclosure of a trade secret to another without express or implied consent. -defined broadly to include not only improper acquisition of a trade secret, by also any disclosure of a trade secret without consent -discovery through independent research or reverse engineering is not this -private wrong or tort

mark maintenance

-after registration of 10 years, marks registered though USPTO may be renewed an unlimited number of times so long as the holder continues to pay the registration fee and continues to use the mark in commerce -holders that do not maintain the mark though registration risk losing the rights to mark

Indirect Infringement

-contributory infringement involves three parties: the copyright owner, the direct infringer, and the facilitator of the infringement. -facilitator is liable

Trade Secret and the protection of business information

-courts will apply several factors to determine whether certain material or information constitutes a protectable trade secret: 1. extent to which the info is known outside the business 2. measures taken by the claimant to guard the confidentiality of the info 3. value of the info to the competitors 4. amount invested in developing info 5. efforts taken to maintain trade secret confidentiality among claimant's employees

exclusive rights for unlimited duration

-most significant advantage of trade secret protection over other forms of intellectual property is that it does not expire after a fixed time -trade secret owners have recourse only against misappropriation -discovery of protected information though independent research or reverse engineering is not misappropriation

trademarks as a business asset

-primary objective of trademark protection is to prove that the mark holder with a means of preventing others from fooling consumers into buying a product that they erroneously believe is produced by the mark holder -businesses invest significant time and resources in their trademarks to build consumer loyalty

Policing the Mark

-primary threat to marks distinctiveness is the use of the mark by competitors and other parties

Trade Secret Protections

-provided by state statues and state common law -the Uniform Trade Secrets Act (UTSA) defines trade secrets as info or articles that are to be kept secret because of a particular value. -protection lasts for as long as the frim exists

registration and notice

-registration is not required for the creator to own the rights

defenses to infringement claims

1. The Public Domain 2. The first sale Doctrine 3. The Fair Use Test

classification of trademarks

1. arbitrary or fanciful 2. suggestive 3. descriptive -courts determine mark protection based on classification of distinctiveness -the more distinctive, the higher the chances of protection on lanham act

Copyright Law: 3 part test

1. originality: author must use own creative capabilities 2. some degree of creativity: there must be a creative element that makes work original 3. fixed in a durable medium: must be in tangible form

Categories of patents

1. utility: a broad category that covers the invention of any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement 2. design: new ornamental designs; focuses on looks 3. plant: cover invention or discovery of different plants

Trademark Dilution Revision Act

A federal statute that provides that a dilution plaintiff does not need to show that it has suffered actual harm to prevail in its dilution lawsuit, but instead only show that there would be a likelihood of dilution. -blurring or tarnishment

trade secret

A formula, device, idea, process, or other information used in a business that gives the owner a competitive advantage in the marketplace.

secondary meaning

A requirement for a descriptive trademark to gain protection; acquired when the consuming public primarily associates the mark with a particular product or service rather than with the ordinary meaning of the term.

nonobviousness standard

A standard requiring that to be patented, an invention must be something more than that which would be obvious, in light of publicly available knowledge, to one who is skilled in the relevant field.

novelty standard

An invention or process must be unique and original, and a patent applicant must show that no other identical invention or process exists. 3 prong test

public domain

Creative work that's not copyrighted and therefore free for you to use whenever you want. -copyright expires -not protectable under copyright laws

acquiring rights

Holders acquire rights to protection though: 1. use in commerce 2. registration of the mark with the U.S. Patent and Trademark Office

Cybersquatting

The act of registering a domain name that is the same as, or confusingly similar to, the trademark of another and then offering to sell that domain name back to the trademark owner.

Trademark Infringement

Unauthorized use of another's mark. The holder may recover damages and other remedies from the infringer if they have the burden of proving the infringement

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

trademarks

a nonfunctional, distinctive word, name, shape, symbol, phrase, or a combination of words and symbols that helps consumers to distinguish products

Arbitrary trademarks

a real word being used as part of a mark that has nothing to do with the worlds literal meaning EX: Apple

patentable subject matter standard

a standard that bars laws of nature, natural phenomena, and abstract ideas from being patentable subject matter -basically math algorithms, nature elements, and ideas are not patentable

patent

a statutorily created monopoly right that allows an inventor the excusive entitlement to make, use, license, and sell her invention for a limited period of time -statute -costly

remedies

actual damages prejudgment interest attorney fees

rule of exactness

applies when the infringer makes, uses, or sells an invention that is exactly the same as the claims made in the patent application, thus infringing on the patent

which is protected under the Copy Right act?

choreographic works -works that are protected include literary, musical, dramatic, choreographic, motion pictures, sound recordings, and pictoral works

trademark protection

designed to prevent others from fooling customers into thinking that a product is produced by the mark holder through Lanham Act

____ occurs when a copyright owner can prove that she has legal ownership of the work in question and the infringer copies the work without permission.

direct infringement

according to the patentable subject matter standard, materials common to nature, such as penicillin, are patentable

false

according to the rule of addition, if an infringing devices does more than it is described in the patent application of a protected invention, then no patent infringement has occurred

false

federal law provides copyright owners with civil remedies for copyright infringement but criminal penalties may not be imposed

false -copyright law provides for criminal penalties

discovery of protected information throughout independent research or reverse engineering qualifies as misappropriation of trade secrets.

false -trade secret owners only have recourse against misappropriation

Economic Espionage Act

federal statute providing criminal penalties for domestic and foreign theft of trade secrets

when acquiring rights for trademark protection, a mark holder may use the symbol (TM) to indicate that the

holder considers the mark distinctive enough to warrant protection and register with the USPTO but has not yet done so

generic marks

if a mark does not fall into the arbitrary, fanciful, suggestive, or descriptive with a secondary meaning categories -losses trademark protection

rule of addition

if the infringing device does more than is descried in the patent application of the protected invention

Vicarious Infringement

involves an infringement that occurs in an area under your supervision, and when you should have been policing and preventing such acts

direct infringement

occurs 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

fanciful trademarks

one that centers upon a word made up with the intention of it being used as a distinctive term EX: Spotify

Descriptive Trademark

one that makes specific reference to features, qualities, or characteristics of a product or service in which they are applied -is not inherently distinctive -EX: After Tan

holder

owner of a mark

trade dress

products shape or color combination of its packaging that makes it unique

copyright

protects the rights of creators of original works for a defined period of time during which the holder has the exclusive rights to copy, distribute, display, or perform the work -there are limitations to a copyright holders rights (fair use doctrine) -protection extends automatically to the work in question once it is created and is not required to be registered -ideas, facts, raw data, procedures, processes, systems, operations, concepts, principles, and discoveries cannot be protected

No Electronic Theft Act of 1997

provides for criminal liability for anyone who willingly infringes on a copyright

applications and the USPTO

registration is NOT automatic -a mark holder must undergo an approval process though USPTO: 1. examines the mark for distinctiveness 2.checks for any similar marks that are already registered 3. ensures compliance with trademark registration standards -for holder to be registered with USPTO, must have a bona fide intent to use the mark in commerce

Suggestive Trademarks

suggest the product or service characteristics without literally describing it -are considered highly distinctive -given high protection -EX: Under Armour

"Cubism" is a popular brand of household storage solutions. The mark "Cubism best fits into the ____ category.

suggestive trademark -suggests product or service without actually describing it

the trademark Dilution Revision Act includes factors for a court to consider in determining whether there is dilution of the protection mark by blurring. Which of the following is NOT one of the factors specified by the TDRA?

the degree of consumer confusion brought about by an infringing mark

First Sale Doctrine

the doctrine that allows purchasers of a copyrighted work to resell it or rent it out

Fair Use

the most common and powerful defense against copyright infringement under which the court examines: 1. Purpose and Nature of the use 2. Nature of the original work 3. Amount or substantiality of the use 4. Effect on the market for the original work

the difference between trademark copyright and patent

trademark: industry names, a distinguishing mark copyright: creative work expression patent: invention

service mark

used to identify business sources

genericide

when a word becomes too generic to the point where its lost its distinctiveness, the rights are lost to this

rule of omission

when the alleged infringing invention lacks an essential element of the patent holder's claims in the patent application, infringement has not occurred