Chapter 8

Remedies for Patent Infringement

1) Injunction and request damages for royalties and lost profits 2) Reimbursement for court and attorney's costs 3) If the infringement was willful, the court can triple the damages (treble damages)

Things that can be Copyrighted

1) Literary works (including musicals and plays) 2) Music and sound recordings 3) Choreographic work (dances) 4) Pictures/graphs/sculptures 5) Movies/tv shows 6) Architectural designs *cannot copyright an idea, but you can copyright the way an idea is "expressed".

Plaintiff Requirements Under Trademark Dilution Revision Act (2006)

1) 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.

Copyright Owners are Protected From (4 things)

1) Reproduction of the work 2) Development of derivative works 3) Distribution of the work 4) Public display of the work RDDP

Levels of Distinctive Marks (3)

1) Strong Mark 2) Secondary Meaning 3) Generic Terms

Trademark

A distinctive word, symbol, or design that identifies the manufacturer as the source of particular goods and distinguishes its products from the those made or sold by others.

Trade Secret

A formula, devise, or idea, process, or other information used in a business that gives the owner a competitive advantage in the market place. Basically it's information of commercial value. It is a violation if... 1) discovered the secret by improper means 2) the disclosure or use constitutes a breach of a duty owed to the other party (confidentiality agreements)

Collective Mark

A mark used by members of a cooperative, association, union, or other organization to certify the region, materials, mode of manufacture, quality, or other characteristic of the product/service. ex. A labor union's mark on certain products.

Certification Mark

A mark used by one or more persons, other than the owner, to certify the region, materials, mode of manufacture, quality, or other characteristic of specific goods or services. ex. Better Business Bureau (BBB). or Good Housekeeping Seal of Approval.

Trade Name

A name that a business uses to identify itself and its brand. A trade name that is the same as the company's trademarked product is protected as a trademark, and unique trade names are protected under the common law. Trade names cannot be registered with the government, (unless it's also a service mark or trademark). They are protected under common law.

Patents

A property right granted by the federal government that gives an invention an exclusive right to make, use, sell, or offer to sell an invention in the US for a limited time. (20 years) *Patents for designs only last for 14 years. First person to file for a patent receives protection, not first person to create it. Protection starts when it's filed (not when it's approved).

Service Mark

A trademark that is used to distinguish the services (rather than the products) of one person or company from those of another. ex. Titles and character names used in radio and television are frequently registered as service marks. "Bob and the Showgram".

Berne Convention (1866)

All countries who signed on have to recognize the copyright of a book that is protected in one of the member countries.

Real Property

All land, buildings, and equipment that is firmly attached. Real property should be thought of as a group of rights like a bundle of sticks which can be divided.

License

An agreement by the owner of intellectual property to permit another to use a trademark, copyright, patent, or trade secret for certain limited purposes. *owner of property = licensor *person buying license = licensee

What Can Be Patented?

Any process, machine, manufacture, composition of matter, or any new/useful improvement on thereof. Basically everything is patentable except laws of nature, natural phenomena and abstract ideas (including algorithms).

Anti-Counterfeiting Trade Agreement

Australia, Canada, Japan, Korea, Morocco, New Zealand, Singapore, and USA. Designed to prevent counterfeit good and to go even further in protecting intellectual property. Member countries may empower their border officials to search people for counterfeit items.

The Madrid Protocol

Basically it makes it easier to register a trademark in many different countries. A person/company can submit 1 application to receive protection in 60 member countries.

Fair Use Exception

Copyrighted material can be used for criticism, comment, news reporting, teaching, scholarship or research. *Courts evaluate the effect of the use upon the potential market for or value of the copyrighted work when determining if a violation was present.

Penalties for Counterfeiting

Fines up to 2 million or imprisonment for up to 10 years. Includes forfeiture any property that was used in the practice of counterfeiting. Payment of restitution to the holder of the trademarks.

Trademark Infringement

If a person substantially copies the trademark then it is considered infringement. The owner must show that the defendant's use of the mark created a likelihood for confusion. The most common remedy is an injunction which prevents further use. The owner can also recover damages plus the profits generated by the illegal use. A court can order the destruction of the violating mark.

Strong Mark

Marks that are fanciful, arbitrary, or suggestive trademarks are generally considered to the most distinctive and protected the most. ex. Google, Xerox, or ESPN

Intellectual Property

Property resulting from intellectual and creative processes. The need to protect creative works was first recognized in Article I, Section 8, of the US Constitution.

The TRIPS Agreement (1994)

Provides international protection for all citizens of the members of the WTO. Also, requires member nations to have laws addressing intellectual property rights. The TRIPS agreement forbids member nations from discriminating against foreign owners of intellectual property.

Federal Trademark Dilution Act (1995) and Trademark Dilution Revision Act (2006)

The FTDA allowed trademark owners to bring a suit in federal court for trademark dilution. The TDRA furthered the FTDA. It protects "distinctive" or "famous" trademarks from certain unauthorized uses even when the use is on noncompeting/unrelated or is unlikely to confuse.

Copyright

The exclusive right of an author or originator of a literary or artistic production to publish, print, sell, or otherwise use that production for a statutory period of time. Typically equals the author's life + 70 years.

Trade Dress

The image and overall appearance ("look and feel") of a product that is protected by trademark law. ex. A cracker in the shape of a fish, a style of service provided by a restaurant (roller blades). Trade Dress receives the protections of a trademark. A major consideration in these cases is whether consumers are likely to be confused by the allegedly infringing use.

First Sale Doctrine

The owner of any particular copy of a copyrighted material can dispose of that copy anyway they want if they hold legal possession of it. ex. Bob buys a book and then decides to sell it to Josh.

Generic Terms

These are terms that refer to an entire class of products such as bicycle, computer, and noodles. These terms don't receive any protection even if they have secondary meanings. Trademarks that were once arbitrary or distinctive can overtime become generic and lose their protections. ex. Aspirin, trampoline, and cornflakes.

Suggestive Trademark

These are trademarks that bring to mind something about a product without describing the product directly. ex. Blu-ray brings to mind high quality disk even though it doesn't say that in it's name.

Chattel

This is personal property that is moveable. ex. phone, car, etc.

Lanham Act of 1946

This is the statutory protection of trademarks and related property is provided at the FEDERAL level by the Lanham Act. (the first law protecting trademarks, other than the ideas from the constitution)

Stop Counterfeiting in Manufactured Goods Act (2006)

This law closed a major loop hole by making it illegal to traffic in counterfeit label, stickers, packaging, and the like, whether or not they are attached to goods.

Trademark Registration

Trademarks must be registered with the state or federal government. For federal protection it must be registered with the US Patent & Trademark Office (USPTO). It must be used in commerce at the time of registration or WILL be used within 6 months of registration. 10 year renewals must filed between 5th and 6th year after initial registration, and every 10 years after that. *or every 20 years if it was registered before 1990)

Remedies for Copyright Infringement

Violator can face -statutory damages (not including fines) of up to 150,000 -criminal fines and imprisonment at the discretion of the court

Secondary Meaning

Descriptive, geographic, and personal names/terms are not inherently distinctive till they take up a secondary meaning. ex. London Fog (coats). To prove secondary meaning, a company has to show that the public recognizes its trademark and associates it with a single source.

Patent Infringement

It may occur if a company copies not all features or parts of an invention. However, all the steps of a process must be copied to infringe on its patent. Patents held in the US are only protected in the US. They can be violated in other countries.