Chapter 24
Misappropriation
1) 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, or (2) disclosure or use of a trade secret of another without express or implied consent.
Polaroid Test
1.the strength of his mark. 2.the degree of similarity between the two marks. 3.the proximity of the products/services. 4.the likelihood that the prior owner will bridge the gap. 5.actual confusion. 6.the defendant's good faith in adopting its own mark. 7.the quality of the defendant's product. 8.the sophistication of the buyers.
Protection Period for Patent
20 years, except design which is 14
Trademark
A distinctive mark, symbol, name, work, motto or device that identifies the goods of a particular business, e.g., Xerox A trademark is a word, symbol, or phrase used to identify a particular seller's products and distinguish them from other products For example, the word Nike and the Nike "swoosh" symbol identify shoes made by Nike and distinguish them from others.
Patents
A patent is a government-sanctioned monopoly right that allows an inventor the exclusive entitlement to make, use, license, and sell her invention for a limited period of time. Utility patents Design Patents Plant Patents
Exclusive Rights for Unlimited Duration
Advantage: protection for trade secrets does not expire after a fixed period of time Disadvantage: owners have recourse only against misappropriation. Discovery of protected information through independent research or reverse engineering (taking a product apart to see how it works) is not misappropriation.
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.
Vicarious Infiringement
Based on agency law Can be used as a theory of liability when the infringing agent is acting on behalf of or to the benefit of the principal The principal party is vicariously liable. Example: Owners of dance hall held liable when renting property out and renters violate copyrights with music at event.
Business Method Patents
Business methods may be patentable so long as they accomplish something practically useful in a novel and nonobvious way.
Direct Infringement
Copyright owner can prove legal ownership of the work in question, and The infringer copied the work without permission.
Descriptive Trademark
Directly describe a characteristic or quality of the underlying product, but has acquired a secondary meaning. Such as size, texture, purpose, color, and so on . Holiday Inn
Different Levels of Protection for Trademarks
Distinctive (Note: Degrees of Protection) Fanciful or Arbitrary Fanciful - means that it has been invented - it is a "coined term." Google, Exxon, Kodak, Samsung Eat 'n Park Smiley-Face Cookie Lawsuit Arbitrary - actual words that have no relationship to the underlying product. London Fog, Apple, Tesla Suggestive -Suggests something indirectly about the product without actually describing it ex. Coppertone
RIAA Lawsuit
Example: 2009 case that garnered substantial media attention, a jury imposed damages of $1.92 million against Jammie Thomas-Rasset in a federal court in Minnesota (later reduced to $220,000 - Capitol Records, Inc. v. Thomas-Rasset) The award was the result of a lawsuit filed by RIAA against Thomas-Rasset that alleged she shared more than 1,700 songs.
Policing the Mark
Famous-mark holders often employ watch services and other methods to identify potential infringers of their marks, have a system set up that includes sending a cease and desist letter and, if necessary, litigating in support of their policing efforts. In order to be protected, a trademark must be in use and stay distinctly tied to a product in the consuming public's mind.
Not Distinctive
Generic trademarks are the weakest trademarks and will often fail to be approved. "Bicycle Inc." Similar to an existing mark Personal names Deceptive marks Immoral marks
Genericization
If a trademark stops being used in commerce, the USPTO may find that it has been abandoned This falls into the public domainOwner can re-register, and that re-establishes exclusive and active use and is associated with the original owner If a trademark becomes sufficiently genericized (think of Aspirin, Cellophane, Corn Flakes, Dry Ice, Thermos, Jungle Gym, etc), it may lose its protection as well Some marks are still protected but only because of aggressive efforts by the marks' owners: Jeep, Astroturf, Xerox, Taser, TiVo, Dumpster, etc.
Anticybersquatting Consumer Protection Act (ACPA)
In order for a plaintiff to recover under the ACPA, the defendant must have acted in bad faith. 24.2
Trade Dress
Increasingly, the U.S. Patent and Trademark Office (USPTO) and courts have granted trademark protection for such trade dress-related characteristics as product shapes, colors, and scents,
Indirect or Contributory Infringement
Indirect infringement involves three parties: the copyright owner, the direct infringer, and the facilitator of the infringement. The facilitator must have knowledge (direct or imputed) of the infringement and/or contribute to the infringement in some material way. This was the theory asserted against Sony in the Betamax case
25.5
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.
Certification Mark
Mark that is used to certify that goods and services are of a certain quality, e.g., wines from Napa Valley, UL rated, etc.
Collective Marks
Mark used by cooperatives, associations, and fraternal organizations, e.g., Boy Scouts of America Cyber marks Are really trademarks used in cyberspace24-7
Service Mark
Mark used to distinguish the services of the holder from those of its competitors, e.g., Delta Airlines
Registration and Symbols
Not required ... but must register prior to filing suit in federal court Registration within 3 months of creation of work entitles creator to additional statutory remedies (statutory damages, attorney's fees, presumption of validity) Court can overturn registration if invalidly granted Registration takes time, but retroactive to date of application Split in circuits as to when suit can be files Symbols - can be used with or without registration Can use © or Copyright or Copr. - (C) invalid! Not required, but posting notice eliminates infringer's good faith defense
First Sale Doctrine
Once a copyright owner places a copyrighted item in the stream of commerce by selling it, the owner has exhausted his or her exclusive statutory right to control its distribution. Supreme Court expands this right to students reselling textbooks
Lanham Act
Prohibits the use in commerce, without the mark holder's consent, of any protected trademark in a way likely to cause consumer confusion.
Economic Espionage Act
Providing criminal penalties for domestic and foreign theft of trade secrets.
Defense to Infringement
Purpose and Nature of the Use Nature of the Work Amount and Substantiality Used Market Effect
Fair Use?
Quotation of the copyrighted work for review or criticism in a scholarly review or technical work, Use in a parody or satire, Brief quotation in a news report, Reproduction of work by a teacher of a small portion of the work to illustrate a lesson, Incidental reproduction of an event in a news reel or broadcast of an event being reported, Reproduction of a work in a legislative or judicial proceedings
Literal Patent Infringement
Rule of exactness Infringer makes, uses, or sells an invention that is exactly the same as the patent holder's claims in the patent application Rule of addition Applies if infringing product does more than the patented product Rule of omission If the infringing invention lacks essential element of patent holder's claims in invention ≠ infringement Doctrine of equivalence Substantially same function in substantially same way = infringement
Copyright Protection Period
Sole author or originator—70 years from death More than one author or originator—70 years from the death of the last surviving author Publisher or work-for-hire-first of: (1) 120 years from the date of creation, or (2) 95 years from the date of publication.
TDRA
The TDRA specifies six non-exhaustive factors for courts to consider in determining whether there is dilution by blurring: The degree of similarity between the mark and the famous mark. The degree of inherent or acquired distinctiveness of the mark. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. The degree of recognition (fame) of the mark.
Trademark Infringement
The defendant infringed on the plaintiff's mark in an unauthorized manner Such use is likely to cause confusion, mistake or deception of the public as to the origin of the goods or services or Lulu vs. Hulu Such use is likely to cause dilution of a famous mark because it creates confusion as to the origin of the related goods and reduces the value of the famous mark or lessens its capacity to identify goods and services Likelihood of confusion: In order for a trademark holder to prevent another from using the holder's mark, the holder must prove that the use of the mark by another will be likely to cause consumer confusion as to the source of the goods. Courts use the eight-factor Polaroid test to assess likelihood of confusion.
Sample test
The extent to which the information is known outside the business The extent to which measures are taken to protect the information The value of the information The amount of money or time spent to develop the information The ease of duplicating the information
Subject Matter Standard
The patentable subject matter standard bars laws of nature, natural phenomena, and abstract ideas from being patentable.
Presumption of Validity
The validity of an ordinance is presumed and the burden rests in a party challenging the ordinance
Copyright Law
Three-part test: originality, some degree of creativity, and fixed in a durable medium
Trade Secret Protections
Trade secret protections are provided by state statutes and/or state common law. A formula, device, pattern compilation, program, device, method, technique process Independent economic value Subject to efforts to maintain secrecy
Patent Infringement
Unauthorized use of another's patent Direct Patent Infringement: the making, use, or sale of any patented invention within the United States during the term of the patent. Indirect Patent Infringement: active inducement of a 3rd party to infringe a patent. Contributory Patent Infringement: when a party knowingly sells a product that will result in infringement.
Acquiring Rights for Trademark Protection
by being the first to use the mark in commerce (common law protection - can utilize ™), or by being the first to register the mark with the U.S. Patent and Trademark Office (USPTO or simply PTO) - can utilize ®.(R) has no effect - can use "Registered, U.S. Patent and Trademark Office," which may be abbreviated to "Reg U.S. Pat & TM Off ." ey point: not necessary to register, but registration provides nationwide protection vs. regional protection, access to federal court, and additional statutory remedies (e.g., presumption of validity)
Fundamentals of Patent Law
novel, nonobvious proper subject matter for protection.
