MGT 12AH - Chapter 24 - Intellectual Property

One intellectual property law firm estimated that legal fees and application fees related to obtaining a patent ranged from _______ to ________.

$20,000, $30,000

Trademark Dilution Revision Act

1. degree of similarity between the mark and the famous mark 2. degree of inherent or acquired distinctiveness of the mark 3. extend to which the owner of the famous mark is engaging in substantially exclusive use of the mark 4. the degree of recognition (fame) of the mark 5. whether 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

Trade Secret Protection

1. no formal registration is required 2. no expiration date

Copyright

1. originality 2. creativity 3. durable medium

Fair use in Copyright Act

1. purpose and nature of use 2. amount and substantiality of material used 3. the effect of the use on the market

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. any disclosure or use of a trade secret of another without express or implied consent

Trade secret is based on common law

1. the firm is claiming that info is a trade secret 2. measures taken by the claimant to guard the confidentiality of the information 3. the value of info to competitors 4. amount invested 5. efforts taken to maintain trade secret

Patent

1. utility patents - constitute a broad category that covers the invention of any new and useful process, machine, article of manufacture, or composition of matter or any new and useful improvements 2. design patents - cover the invention of new ornamental design on articles of manufacture. Looks over function 3. plant patent - invention/discovery of asexually or sexually reproductive plants (flowers)

A patent of invention duration

20 years from the date of filing

There are _______ stages of patent prosecution.

3

Indirect Infringement

A theory of copyright infringement under which a third-party facilitator is liable for damages when the facilitator has knowledge of the infringement and/or contributes to the infringement in some material way. Also called contributory infringement.

Which of the following offers protection for original work of authorship fixed in any tangible medium of expression, not known or later developed from which it can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device?

Copyright

Copyrights are regulated by the

Copyright Act.

Which of the following is the most common defense to a claim of copyright infringement?

Fair use

Which of the of following allows the owner of a copyrighted work to resell or gift the work to another without the permission of the copyright owner?

First sale doctrine

Suggestive Marks

Marks that suggest the product or service without literally describing it are considered highly distinctive, have higher level of protection. (imagination, thought, perception are required to understand how it is tied to the underlying product

Which of the following imposes criminal sanctions for violations of the Copyright Act?

No Electronic Theft Act

infringement

One who makes, uses or sells a patented invention without permission is guilty of patent

Work in which of the following is not protectable under copyright laws?

Public domain

Individuals who engage in Illegal file sharing have been pursued by the

Recording Industry Association of America.

A mark is considered which of the following if imagination, thought, and perception are required to understand how it is tied to the underlying product or service?

Suggestive

To help enforce one's copyright protection, the work should be registered with the

United States Copyright Office.

Which of the following would account for circumstances where a court would most likely find that the fair use doctrine will not be a sufficient defense for copyright infringement?

Value of the copyrighted work is diminished by the use

Which of the following is (are) true:

a mark holder must take steps to protect the exclusive use of the mark a mark holder can prevent another from using their mark

Using the transformative factor, the courts will look at _______ to see if the new work infringes on the copyrighted work.

aesthetics

Federal Trademark Dilution Act of 1995

amended in 2006 that permits mark holders to recover damages and prevent others from diluting distinctive trademarks

A mark that has no direct connection to the service or product is categorized as ____

arbitrary or fanciful.

Failure to give notice of patent protection may result in the inability to collect ______ against patent infringers.

damages

Uniform Trade Secret Act (UTSA)

defines trade secret as information/articles that are to be kept secret because of their particular value. (formula, pattern, compilation, program, device, method, technique ) meets 2 criteria: 1. independent economic value (actual or potential) 2. subject of efforts that are reasonable under the circumstances to maintain its secrecy

Marks that require no leap of imagination to connect to the product are called ____ marks

descriptive

Marks that make specific references to qualities, features or characteristics of a product or service are considered

descriptive.

A current trend in strategic business planning is to trademark product ______ as a form of trade dress.

design

To protect product _____ through trademark protection laws, a business must overcome any notion that the design purpose was to allow the product to function properly rather than as a distinctive trademark.

design

Blurring dilutes

dilutes the distinctive quality of the mark through its identification with goods that are not alike.

If a copyright owner can prove that he has legal ownership of the work and that an infringer copied the work without permission, what type of infringement has occurred?

direct infringement

Trademark protection is based on

distinctiveness

Sounds, scents, shapes, and color combinations have been given trade ____ protection

dress

Acquiring rights to trademark

either through 1. use in commerce 2. registration of the mark with the U.S. Patent and Trademark Office (USPTO)

Dilution Claim

evidence of consumer confusion is not necessary in order for the mark holder to prevail. Dilution occurs through either blurring or tarnishment

A holder of a mark has the ______ right to use the mark.

exclusive

Copyright owners do not enjoy unlimited rights to their work; rather, the law balances public interests with the property rights of copyright owners. The most common and powerful defense to a copyright infringement claim is _____ _____

fair use

Reasonable educational use of copyrighted material is usually recognized under the defense of

fair use.

A mark that centers upon a word made up with the intention of being used as a distinctive term is considered _____

fanciful

Rights are lost through _____ when a word becomes too generic to the point where it has lost its distinctiveness,

genericide

service marks

identify business services (transportation, accommodations)

rule of addiction

infringement occurs if the device does more than is described in the patent application of the protected invention

rule of exactness

infringer makes, uses, sells an invention that is exactly the same as the patent holder's claims in the patent application

Mark Maintenance

initial registration period of 10 years, registered through the USPTO may be renewed unlimited number of times.

rule of omission

invention lacks an essential element of the patent application, infringement has not occurred

The recording industry association of America (RIAA)

invested substantial resources in tracking down and recovering damages from individual infringers

Indirect Infringement

involves copyright owner, direct infringer and facilitator of the infringement

per se

latin for "by itself", standard used by courts when no additional facts are needed to prove a point

Registration of copyrighted work allows the owner _____ methods for enforcing the copyright.

legal

Descriptive Marks

makes specific reference to features, qualities, characteristics of a product. After Tan( moisturizing lotion for use after sunbathing) etc.

Descriptive Marks

makes specific reference to features, qualities, characteristics to the product, but not inherently distinctive. Protected under the Lanham Act unless have acquired a secondary meaning.

Arbitrary or fanciful marks

marks that has no direct connection to the product. Arbitrary mark is a real word being used as a part of mark that has nothing to do with the word's literal meaning. Fanciful mark is a mark that centers upon a word made up with the intention of being used as a distinctive term

Public Domain

not protectable work under copyrights laws. Works fall into public domain either because copyright has expires or because federal or state governments publish the work.

A business method may be patentable so long as it accomplishes a useful purpose in a(n) ______ and nonobvious way.

novel

Dilution by tarnishment

occurs when an association arising from the similarity between a mark or trade name and a famous mark harms the reputation of the famous mark with something that a consumer might find objectionable or unflattering

Laws of nature and natural phenomena are not patentable under the

patentable subject matter standard.

Lanham Act

prevents business competitors from getting a free-ride on the shoulders of a more famous brand

If vicarious infringement is proven, damages can be recovered from the

principal

trade dress

product's distinctive design, packaging, color etc that makes it unique from other products/goods.

Copyright

protects the creative work of authors, composers, and artists

First sale doctrine

sale doctrine allows the owner of a copyrighted work to resell or gift the work to another without the permission of the copyright holder.

To get protection under the Lanham Act, the holder of a descriptive mark must prove that the mark has

secondary meaning.

Patent

statutorily created monopoly right that confers on an inventor the exclusive right to make, use, license, and sell her invention for a limited period of time

To help define the term "copy" as it pertains to copyright laws, courts have developed the

substantial similarity standard.

Durable medium means that the work must

take tangible form.

Novelty standard of patent

three-prong test: 1. public use test (requires that the invention/process not already be in public use) 2. priority for inventors of the same invention. The U.S. has the first inventor-to-file rule 3. determination by the USPTO that the applicant filed the patent within a reasonable time of the invention

The _______ factor allows a court to first analyze whether the work in question has added new expression or meaning to the copyrighted work.

transformative