Intellectual Property, Copyright, and Trademark Law

Starbucks Corp. v. Lundberg, 2005 WL 3183858 (D. Or. 2005)

). Coffee shop owner in Oregon operated a business called "Sambuck's Coffeehouse." Starbucks Corporation filed a lawsuit against the owner of Sambuck's alleging trademark dilution. The Federal District Court for the District of Oregon held in favor of Starbuck's because it created confusion for consumers. To be protected under federal trademark law, a trademark must be registered with the United States Patent and Trademark Office. The trademark can be registered 1) if it is currently in commerce or 2) if the applicant intends to put it into commerce within six months.

What Can be Copyrighted

1. Literary works; 2. Musical works and accompanying music; 3. Dramatic works and accompanying music; 4. Pantomimes and choreographic works; 5. Pictorial, graphic, and sculptural works; 6. Motion pictures and other audiovisual works; 7. Sound recordings; 8. Architectural works

4 part test (Fair Use)

1. The purpose and character of the use; 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; and 4. The effect of the use upon the potential market for or value of the copyrighted work.

Transfer

A copyright ownership may be transferred, but it must be in writing and signed by the transferor. In some cases, one may transfer non-exclusive rights to a work, which would not be a transfer of copyright ownership, but rather the granting of a license. The granting of a license can be either through writing or verbal.

Stop Counterfeiting in Manufactured Goods Act (SCMGA)

Act makes it a crime to traffic intentionally in or attempt to traffic in counterfeit goods or services, or to knowingly use a counterfeit mark on or in connection with goods or services. Penalties: Individuals found guilty of violations may be fined of up to $2 million or imprisoned for up to 10 years (or more for repeat violations). The court must also order the defendant to forfeit the counterfeit products (which are then destroyed), as well as any property used in the commission of the crime. The defendant must also pay restitution to the trademark holder or victim in an amount equal to the victim's actual loss. It is not a federal crime

What cannot be copyrighted?

Any "idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied." -if you found an equation for time travel you could copyright that

Trademark?

Fanciful, Arbitrary, and Suggestive Trademarks: Are inherently distinctive. 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. Generic Terms: Generally do not receive trademark protection. (escalator) Colors? What about green for a tractor? Green is not protected; green &yellow would be protected (John Deer Trackers)

Parodies

Generally protected by "fair use" doctrine.

Trade Dress

Image and overall appearance of a product. It can include either all or part of the total image or overall impression created by a product or its packaging. Trade dress is subject to the same protection as trademarks. G in GUCCI (how it is shaped) Examples: The distinctive decor, menu, layout, and style of service of a particular 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. Rainforest café (appearance) -how the menu is set up Box of tiffany & co is trade dress but the color is trademark

Fair Use Exception

In some cases, individuals or organizations can produce copyrighted works without paying royalties to the copyright holder. "[T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by [Section 106 of the Copyright Act], for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright."

Collective Mark

Mark used by members of a cooperative, association, or other organization

Federal Trademark Dilution Act of 1995

Protects "distinctive" or "famous" trademarks and allows trademark owners to bring suit in federal court against unauthorized use of an identical or similar mark. In 2006, Congress further amended the law by passage of the Trademark Dilution Revision Act (TDRA).

Copyright

Protects the property rights of authors and originators of original work that is "fixed" in a durable medium of expression

Lanham Act

Protects trademarks at the federal statutory level. Things that cant people trademark is something is immoral ( "red skins" "chef who" offensive to cultural)

How to Obtain Copyright

Registering copyright with U.S. copyright office, mailing the item to one's own address. What about placing the copyright symbol on the work? N., this is not a proper way to obtain a copyright.

First Sale Doctrine

Section 109(a) of the Copyright Act provides that the owner of a particular item that is copyrighted can, without the authority of the copyright owner, sell or otherwise dispose of it. This is known as the "first sale" doctrine. Under this doctrine, 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. Thus, for instance, a person who buys a copyrighted book can sell it to someone else

Example - Kirtsaeng v. John Wiley & Sons, 133 S. Ct. 1351 (U.S. 2013)

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.

Who owns copyrights?

The author of a work owns the copyright in it, but can transfer some or all of the rights associated in it. If it is a "joint work," both authors own a single copyright in the work. Exception - "Work for hire"

Service Marks

Trademark that is used to distinguish the services (rather than the products) of one person or company from those of another. ex: the hartford, delta

In 2006, Congress further amended the law by passage of the Trademark Dilution Revision Act (TDRA).

Under the TDRA, 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.

Certification Marks

Used by one or more persons, other than the owner, to certify the region, materials, mode of manufacture, quality, or other characteristics of specific goods or services. Example: "Good Housekeeping Seal of Approval"

Collective Works

Where a work consists of separate, independent, individual works of authorship. Each of the authors in a collective work enjoy copyright in their individual work.

Duration of Copyright

Works created after January 1, 1978, are given protection for the life of the author plus 70 years. After this time expires, the work enters the public domain.

Intellectual Property and Ethics

Custom Copies, Inc., prepares and sells coursepacks, which contain compilations of readings for college courses. A teacher selects the readings and delivers a syllabus to the copy shop, which obtains the materials from a library, copies them, and binds the copies. Blackwell Publishing, Inc., which owns the copyright to some of the materials, filed a suit, alleging copyright infringement. Custom Copies filed a motion to dismiss for failure to state a claim. Question: Does a copy shop violate copyright law if it only copies materials for coursepacks? Does the copying fall under the "fair use" exception? Should the court grant the defendant's motion to dismiss? 1.Under the copyright act, it is unlawful to copy or reproduce copyrighted work. Coursepacks are put together for sale to students in conjunction with courses offered at education facilities. Therefore, copying a course-pack is a direct infringement of copyright. The copying does not fall under the fair use exclusion because Custom resold the copied materials for commercial gain that negatively impacted the author and seller of the course-pack materials. The judge denied Custom's motion to dismiss. There was sufficient evidence for the case to proceed to trial for copyright infringement 2.The Copyright Act was established to encourage literary or artistic productions by promoting the progress of science and useful arts with time-limited protection.without protection against losses, it is less likely that many original works would be produces, thereby reducing the overall body of knowledge available to the public. A loss of information due to lack of protection would negatively impact everyone because there would be a lack of inspirational and influential knowledge that the copyright laws cover.Without the incentive of protection, there is little to encourage the sharing of ideas and science.

Intellectual Property and Ethics

Custom Copies, Inc., prepares and sells coursepacks, which contain compilations of readings for college courses. A teacher selects the readings and delivers a syllabus to the copy shop, which obtains the materials from a library, copies them, and binds the copies. Blackwell Publishing, Inc., which owns the copyright to some of the materials, filed a suit, alleging copyright infringement. Custom Copies filed a motion to dismiss for failure to state a claim. Question: Does a copy shop violate copyright law if it only copies materials for coursepacks? Does the copying fall under the "fair use" exception? Should the court grant the defendant's motion to dismiss? 1.

Trademark

Distinctive mark, motto, device, or implement that a manufacturer stamps, prints, or otherwise affixes to the goods it produces so that they can be identified on the market and their origins made known. Essentially, a trademark is a source indicator and must be distinctive. -FSU symbol , Apple computers