Intellectual Property Midterm
What are moral rights?
Personal rights retained by authors in their works (often works of fine arts) to protect their honor and reputation even after they no longer own the copyright in the work
What are companion applications?
Related trademark applications by the same applicant
How long does copyright protection generally last?
70 years from the author's death
What is the Anicybersquatting Consumer Protection Act (ACPA)?
Federal law intended to deter the practice of cybersquatting; enacted in 1999 by Congress; brought uniformity to the problems associated with domain name registration and cybersquatting; world's first law on domain names; a plaintiff must show that the domain name registrant acted with bad faith to prevail in an action under the ACPA
What are composite marks?
Marks consisting of both wording and design elements
What are collections and are they copyrightable?
included within the term compilation, a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting spate and independent works in themselves, are assembled into a collective whole; both what makes up the collection and the collection itself with copyrightable
What is Scenes a Faire and is it copyrightable?
literally, "scenes which must be done"; typically refer to stock characters, standard literary devices, common expressions, and common incidents; not copyrightable
What three types of property can people own?
1. Real Property 2. Personal Property 3. Intellectual Property (IP)
What are the three types of Patents?
1. Utility Patent (covers useful inventions and discoveries such as the typewriter, automobile, and genetically altered mice) 2. Design Patent (covers new, original, and ornamental designs for articles such as furniture) 3. Plant Patents (covers new and distinct asexually reproduced plant varieties such as hybrid flowers and trees)
What is an Affidavit of Use?
A document filed by a trademark registrant between fifth and sixth years and every 10 years after registration verifying the mark is still in use; also called a Declaration of use or Section 8 Affidavit
What are the five categories of marks in existence?
1. Generic Marks 2 Descriptive Marks 3. Suggestive Marks 4. Arbitrary Marks 5. Fanciful, or coined, Marks
What is Intellectual Property?
A field of law that aims to protect the knowledge created through human effort in order to stimulate and promote further creativity.
What is reverse domain hijacking?
a violation of the UDRP; the practice of a usually larger company threatening a smaller company to give up its legitimate domain name
What are the rules regarding durations of a copyright?
-If the work was created on or after 1/1/1978, the copyright lasts the length of the author's life plus 70 years; if work is a "work made for hire", copyright lasts for 95 years from publication or 120 years from creation (whichever is shorter) -If the work was created before 1/1/1978 but not published or registered, the work lasts the author's life plus 70 years or until 12/31/2002 (whichever is longer -if the work was secured under 1909 act and in first or renewal term on 1/1/1978, the term automatically extended to give a total length of copyright of 95 years form the year copyright was secured -for a work published before 1923, the work is now in pubic domain
What are the remedies available for infringement?
-Injunction (preventing the defendant from further use of a confusingly similar mark, ordering an infringer to disable an offending website, or ordering the defendant to print a notice (called a disclaimer) on its goods that it is not affiliated with the plaintiff -Monetary damages -Trible damages (punitive damages that are tripled if able to show bad faith on behalf of defendant) -Seizure or destruction of infringing articles and related marketing materials -costs of action (including attorney's fees in exceptional cases)
What advantages are given to authors of works who secure a copyright registration form the Copyright Office?
-Registration establishes a public record of the copyright claim -Before an infringement suit may be filed in court, registration is necessary for works of U.S origin -If made before or within five years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate -If registration is made within three months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions -Registration allows the owner of the copyright to record the registration with the U.S Customs and Border Protection for protection against the importation of infringing copies
What are the standards courts use for determining whether a trademark infringement exists?
-The similarity of marks in regard to appearance, sound, connotation, and commercial impression -the similarity of the goods or services offered under the marks -the similarity in the channels of trade in which the goods or services are offered -the conditions under which sales are made, namely, whether the purchases are made on impulse or after careful consideration by sophisticated purchasers -the strength or fame of the prior mark -whether actual confusion exists -the number and nature of similar marks or goods -and the length of time during which there has been concurrent use with no confusion
What defenses to infringement may be raised?
-abandonment of a mark (through non-use or genericide) -that a mark is merely descriptive -that the mark was procured (obtained) through fraud -estoppel (the plaintiff was estopped or precluded from asserting trademark infringement because it led the defendant to believe it could use the mark; states that other side did something wrong so the court will not hear it, even if they have a valid argument) -acquiescence (a defense that alleges that words or conduct on the plaintiff's part amounted to an assurance to the defendant-infringer that plaintiff would not assert its trademark rights against the defendant -unclean hands (plaintiff has committed such a serious wrongful act that relief should not be awarded to it -Laches (when the plaintiff delayed an unreasonable time to bring the action and this delay has prejudiced the defendant; "poor man's statute of limitations" argument) -use of mark is functional and thus, unprotectable -use of mark is a mere parody and protected by first amendment -fair use (used ame or mark to describe its own goods in a general fashion; ex. when a newspaper asks its readers which band member of the New Kids on the Block was their favorite or when a headphone company states its products work with apple iphones)
What steps may one take when a conflict between marks arises?
1) file an opposition (if on Principal Register) 2) file a cancellation (for both principal or supplemental) 3) appeal to TTAB 4) file a lawsuit in federal district court (which will review the issues de novo-giving no weight to any previous ruling)
What three basic requirements must be met for copyrightability?
1. A work must be original 2. A work must be fixed in a tangible form of expression 3. A work must be a work of authorship
What are the five bases for use of a mark that may be specified on an application?
1. Actual Use: the applicant claims actual use of the mark in commerce, specifying a date of first use in commerce 2. Intent-t0-use: the applicant claims a bona fide intent to use the mark in commerce 3. Foreign application: the applicant claims a bona fide intent to use the mark in commerce and that the mark is the subject of a prior foreign application 4. Foreign Registration: the applicant claims a bona fide intent to use the mark in commerce and that the mark is the subject of a prior foreign registration 5. Extension of Protection: the applicant, a foreign entity, files an application (or has a registration) in its home country and then files a request for an extension of protection to the United States under the Madrid Protocol (and claims a bona fide intent to use the mark in commerce)
What are the two primary moral rights for authors of works?
1. Attribution: The right of an author to be known as the author of a work (also called the right of paternity); allows author to claim authorship of a work, prevent the use of his or her name as the author of any work of visual art that he or she did not create, and prevents the sue of his or her name as the author of a work of visual art in the event of distortion, mutilation, or other modification of a work that would be prejudicial to his or her honor or reputation. 2. Right of Integrity: A personal right of a copyright author to ensure that his or her work not be distorted, mutilated, or used in a way that would injure the author's reputation; prevents intentional distortion, mutilation, or other modification that would be prejudicial to his or her honor or reputation; prevents any destructions o a work of recognized stature, whether through intentional or gross negligence
What two types of dilution exist?
1. Blurring- A form of trademark dilution that whittles away the value of a famous trademark through its unauthorized use on a dissimilar product or with a dissimilar service. Ex. STARBUCKS pens, SHELL coffee, and PEPSI video. 2. Tarnishment- A form of dilution in which a famous trademark is portrayed in an unsavory or embarrassing manner
What three common approaches to remedies do victims of cybersquatting usually use?
1. Bring an action under the federal dilution statutes 2. Bring a civil suit under the 1999 Anticybersquating Consumer Protection Act 3. Or bring an administrative quasi-arbitration proceeding through ICANN's dispute resolution process
In what two ways does the federal government regulate copyrights?
1. By providing a method of registration of copyright 2. And by allowing access to the federal courts for copyright infringement claims
What are the steps in selecting a mark?
1. Choose a mark you want 2. screen and evaluate for registerability 3. Make sure it fits requirements of Lanham Act 4. conduct a trademark search
What are the 8 categories of protectable works?
1. Literary works 2. Musical works (including accompanying words) 3. Dramatic works (including 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
Which four (4) search strategies does the TESS system offer?
1. New User Form Search (Basic): can find marks made up solely of words or by searching by a trademark owner's name; searching may also be done by trademark serial or registration number 2. Structured Form Search (Boolean): allows a searcher to narrow a search by locating marks relating to certain goods or services or to locate all marks owned by a certain party, assignments or renewals of marks, or marks applied for by a certain attorney; the use of Boolean connectors help narrow results; users can also use pseudo marks (such as 4U) to search "for you" 3. Free Form Search (Advanced Search): used for more complicated searches and is generally most successful when Boolean connectors are used 4. Browse Dictionary (View Indexes): allows one to review about 10 items in the USPTO's database around the search term; thus, a search for NIKE would disclose NICKO and NIKEA
What are the two types of drawings?
1. Standard Character Drawings: simply a typewritten display of a mark (not really a mark at all; ex. the word KRAFT); used when the mark consists solely of words, letters, or numbers with no pictorial or graphical element; must include the following statement, "The mark consists of standard characters without claim to any particular font, style, size, or color;" may be used in any font, in bold or italicized letters, or in uppercase or lowercase letters 2. Special Form Drawings: used when applicants seek to register a mark that includes a two or three dimensional design, color, and/or words, letters, or numbers or a combination thereof in a particular style or size
What are the four types of status's the USPTO website will show once a mark is displayed on a computer screen?
1. TARR Status: provides information about an application or registration, including a list of the various actions taken by the USPTO and information on the mark's current status, such as whether it has expired 2. Assignment Status: shows the names of the assignor and assignee of a mark, plus the date the assignment was recorded with the USPTO, if assigned 3. Trademark Document Retrieval (TDR): allows views of actual images of documents in the USPTO's files, such as drawing of marks, images of specimens, USPTO objections to registrations and applicants' responses thereto, notices of publication, and certificates of registration 4. TTAB Status: if the mark is involved in proceedings at the Trademark Trial and Appeal Board (TTAB), the website will link the searcher to documents pertaining to the proceedings
What must a plaintiff show to prevail on a dilution claim?
1. That the mark is famous (either inherently or through acquired distinctiveness) 2. The defendant is making a commercial use of its mark in commerce 3. The defendant's use began after the plaintiff's mark became famous 4. The defendant's use of the mark is likely to cause dilution by blurring or tarnishing the famous mark, whether or not there is actual confusion or actual economic injury to the plaintiff
What must a trademark owner establish to prevail under the UDRP?
1. The allegedly wrongful domain name is identical or confusingly similar to the complainant's trademark 2. The domain name registrant has no legitimate interest in the domain name 3. and the domain name was registered and is being used in bad faith
To prevail in a civil action under ACPA, what must a plaintiff prove?
1. The defendant had a bad faith intent to profit from the mark 2. The defendant has registered, used, or trafficked in a mark that is identical or confusingly similar to a distinctive or famous mark
What two competing interests does copyright law strive to balance?
1. The interests of authors in protecting their works from unauthorized copying 2. The interest of the public in having the greatest possible access to works of authorship
What comprises the two (2) step process of trademark searching?
1. The preliminary (or knockout) search: a preliminary search of the USPTO records designed to disclose identical or nearly identical marks; eliminates identical or nearly identical marks; if the knockout search discloses a "direct hit," there is no need to conduct a further search; the client would then consider a new mark, which itself would then be searched 2. The comprehensive search: a search of trademarks registered or applied for at the USPTO, state trademark registrations, and common law sources such as periodicals, directories, and the internet; conducted by professional trademark search firms; can be expensive
What two (2) critical functions do trademarks perform in the marketplace?
1. They provide insurance that goods are of a certain quality and consistency 2. They assist consumers in making decisions about the purchase of goods
What are the four different types of marks?
1. Trademark 2. Service Mark 3. Certification Mark 4. Collective Mark
What four overlapping, but separate, fields does Intellectual Property cover?
1. Trademarks (and service marks) 2. Copyrights 3. Patents 4. Trade Secrets
What are the two categories of tangible expression in which works can be fixed?
1. copies-a material object form which a work can be perceived, reproduced, or communicated, either directly by human perceptioin or with the help of a machine (ex. a photograph by Ansel Adams that appears on a book cover) 2. phonorecords-a material object in which sounds (other than those accompanying a motion picture or other audiovisual work) are fixed and from which the sounds can be perceived, reproduced, or communicated, either directly by human perception or with the help of a machine (ex. a CD recording of a song by the Rolling Stones)
What two novel issues have come from the explosion of the Internet?
1. how domain names should be registered for use on the internet 2. how disputes over domain names should be resolved
What Primary (4) functions do trademarks serve?
1.They identify one maker's goods or services and distinguishes them from those offered by others 2. They indicate that all goods or services offered under the mark come from a single producer, manufacturer, or "source" 3. They indicate that all goods or services offered under the mark are of consistent quality 4. They serve as an advertising device so that consumers link a product or service being offered with a mark (e.g., when consumers see or hear the phrase JUST DO IT, they immediately think of Nike products)
How long is a Trademark registration good for?
10 years (and may be renewed for additional 10-year periods thereafter as long as the mark is in use in interstate commerce)
How long does Patent protection last?
20 years form the date of filing of an application for utility patents and plant patents and 14 years from the date of grant for design patents.
What are some of the resources that can be commonly used for conducting a preliminary search?
A . The USPTO trademark search engine B. Google (or other internet search engines) C. TRADEMARKSCAN online databases (owned by Thomson CompuMark; provides information on all active registered trademarks and service marks and applications for registration filed at the USPTO; primarily used as a quick screening tool to determine the availability of a new mark) D. DIALOG (database offered by ProQuest; includes trademarks from the U.S. plus numerous foreign countries as well as patent and copyright information; offers free online training and practice) E. SAEGIS (a trademark database that is part of Serion, an entire suit of trademark services and tools provided by Thompson Rueters; allows users to perform federal or online worldwide trademark searching as well as searching of domain name registries and websites to locate common law uses of proposed marks) F. LEXIS and WESTLAW (computer assisted research systems offering access to vast trademark databases that may disclose potentially conflicting marks) G. Patent and Trademark Depository Libraries (public libraries throughout the U.S. that maintain selected trademark and patent records)
What is an Arbitrary Mark?
A commonly known word that is applied to an unfamiliar product; Example: CAMEL for cigarettes, BLUE DIAMOND for nuts, and BLACKBERRY for electronic handheld units; although terms in a dictionary, the words have no relevance when applied to the goods in question and are thus arbitrary; are registerable without proof of secondary meaning
What is the Droit de suite doctrine?
A doctrine in foreign countries (and only partially in California in the U.S.) that allows the authors of fine works to share in the appreciation of those works, even after they have parted with ownership of those works
What is a Notice of Allowance?
A document issued by the USPTO informing a trademark applicant that an intent-to-use application has been allowed and granting the applicant a specified time period within which to begin use of the mark in order to secure registration for it; document issued by the USPTO informing a patent applicant that a patent application has been allowed and granting the applicant a specified time period within which to pay an issue fee so a patent will be issued
What is a Patent?
A grant from the U.S Government that permits its owner to prevent others from making, using , importing, or selling an invention.
What is a trademark compliance policy?
A guide to use of a trademark to ensure the mark is not misused or does not become generic or abandoned
What is the licensing of a mark?
A limited transfer of rights, such as permission to another to use a trademark, copyright, patent, or trade secret subject to some conditions, rather than an outright transfer of all rights.
What is a Collective Mark?
A mark used by a collective membership organization, such as a labor union, fraternity, or professional society, to identify that the person displaying the mark is a member of the organization.
What is the International Trademark Association (INTA)?
A not-for-profit international association composed chiefly of trademark owners and practitioners; offers a wide variety of educational seminars and publications, as well as materials on its website. Has more than 5,500 trademark owners and professionals in more than 190 countries as members
What is are the exceptions to the rule that copyright owner's have exclusive rights to display their works publicly?
A owner of a lawful copy of a work (other than a sound recording) can display the work publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located -displays in face-t0-face teaching activities of nonprofit educational institutions and certain transmissions that are part of systematic instructional activities of a governmental body or nonprofit education institution are allowed -displays in the course of religious worship and services -"home-style" type displays
What is Pantomime?
A performance using gestures as expression to communicate with no accompanying sound; only protected when in a fixed, tangible medium of expression; thus, an impromptu street performance of a mime would not be protected, but a filmed performance of the famous mime Marcel Marceau or a precise description of the pantomime in text would be protected
What is the Uniform Domain Name Dispute Resolution Policy (UDRP)?
A policy adopted in 1999 by all ICANN registrars, allowing a streamlined and inexpensive dispute resolution procedure for domain name disputes; remedies are limited to cancelling a wrongful domain name or transferring it to its rightful owner; neither money damages nor injunctive relief can be obtained under the UDRP
What is the rule of doubt?
A policy followed by the Copyright Office or USPTO to resolve doubts about copyrightability or trademark applications in favor of copyright applicant or exiting trademark registrant, respectively
What is cybersquatting?
A practice in which a person, without permission, registers another's name or mark as a domain name and then attempts to sell the domain name to its true owner
What is an interference?
A proceeding before the Trademark Trial and Appeal Board when marks in two pending trademark applications are confusingly similar or when a mark in a pending application may be confusingly similar to a registered mark that is not yet incontestable
What is a cancellation?
A proceeding initiated after registration of a trademark seeking to cancel registration of a mark registered on the Principal or Supplemental Register; a petition to cancel may be filed at any time if the mark is on the supplemental register and within 5 years if the mark is on the principal register
What is a concurrent use proceeding?
A proceeding initiated at the Trademark Trial and Appeal Board to determine specific geographic areas in which parties with conflicting marks can use the mark
What is a Request to Divide?
A request by an applicant to create a new trademark application, usually in intent-to-use applications, when applicant can proceed to registration for some goods or services and whishes to retain a separate application for goods or services not yet in use
What is the "Zippo Spectrum"?
A sliding scale approach to determining whether jurisdiction can be asserted over a nonresident defendant. If a party merely posts information or advertises its products and services on a passive website, jurisdiction cannot be exercised over a nonresident defendant; at the other end, if the defendant is actively conducting business or entering into contracts, jurisdiction can likely be exercised. The middle ground, in which a website owner engages only in some limited interaction with users, is closely scrutinized by courts to determine the specific nature of the interactions
What is the Declaration?
A statement placed at the end of the application whereby the signatory acknowledges that the statements in the application are true and the signatory understands that willful false statements are punishable by fine or imprisonment and may jeopardize the validity of the application or any registration resulting from the application.
What classify as substantive refusals for an application?
A substantive refusal is a signification or substantive defect or due to a statutory provision that would preclude registration, such as if the mark is immoral or scandalous, deceptive, disparaging, displays a portrait of a living person without his or her consent, is primarily a surname, is geographically deceptively misdescriptive, primarily merely descriptive, or confusingly similar to another registered or applied-for-mark at the USPTO
What is an affidavit?
A sworn statement as good as testimony; has to be notarized; in context to trademarks, an affidavit swears that the mark is in commerce
What is a dramatic work?
A theatrical performance or play performed for stage, movies, television, or radio; usually include spoken text, plot, and directions for action, such as screenplays or scripts
What is the difference between a Trademark and Service mark?
A trademark is used in the marketing of a product (such as REEBOK for shoes) while a service mark typically identifies a service (such as STARBUCKS).
What is the Trademark Electronic Search System (TESS)?
A trademark search database offered by the USPTO which allows searching of more than 4 million pending, registered, abandoned, canceled, or expired trademark records
What does a trademark search set out to do?
A trademark search will reveal if the selected mark would be confusingly similar to a mark that is the subject of a registration or pending application at the USPTO or that is in use on a common law basis, and will provide some indication of the relative weakness or strength of the mark)
What is an incontestable trademark?
A trademark that is registered on the Principal Register and is protected from certain challenges after its registrant files a Section 15 Affidavit alleging continuous use for five years; the affidavit of incontestability is filed; also called a Section 15 Affidavit
What is the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS)?
A treaty or convention negotiated from 1986-1994 and administered by the WTO; establishes minimum levels of protection that member countries must give to fellow WTO members; imposed that computer programs may be protected as copyrightable literary works and that countries must prevent misuse of geographical names such as Roquefort or Champagne; signed by the U.S. in 1994 and bars registration of a mark for wine or liquor if the mark identifies a place other than the origin of the goods and was first used after 1996; also increased period of time of nonuse of a mark that would result in abandonment from two years to three years
What is the North American Free Trade Agreement (NAFTA)?
A treaty or convention that came into effect on January 1, 1994 and is adhered to by the U.S., Canada, and Mexico; resulted in some changes to U.S trademark law, primarily with regard to marks that include geographical terms
What is trademark infringement?
A violation of a party's trademark rights; when there is a likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled or confused about the source, affiliation, or sponsorship of goods or services.
What is a Trademark?
A word, name, symbol, or device used to distinguish one's goods or services and to indicate their source
What is a derivative work and is it copyrightable?
A work based on (or derived from) one or more already existing works, such as a translation, dramatization, fictionalization, or any other form in which a work may be recast, transformed, or adapted; the resulting work is copyrightable if it includes the original work of authorship and if the original material was not used unlawfully; to be copyrightable, they must be different enough from the original to be regarded as a new work or must contain a substantial amount of new material
What is a literary work?
A work expressed in words, numbers, or other verbal or numerical symbols, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, discs, or cards, in which they are embodied; includes works of fiction and nonfiction, poetry, catalogs, reports, written speeches, pamphlets, manuscripts, computer programs, databases, and websites (if text dominate), directories, employee handbooks, instruction manuals, or advertisements; if the material is original, in fixed form, and can be expressed in letters or numbers, it is "literary" even though it may be entirely lacking in artistic merit to most people.
What is a compilation and is it copyrightable?
A work formed by the collection of preexisting material arranged in such a way that the resulting work is original; are copyrightable if there is original authorship in the selection or arrangement of the material
What is a work made for hire?
A work made when the author is considered to be the employer or commissioning party and not the employee or actual person who created the work
What is a joint work?
A work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole; only one copyright exists in the created work; merely making suggestions or giving directions to one creating a work is not sufficient to make one a joint author, however, coauthors need not be equal in either quality or quantity (each collaborator's contribution must be separately capable of copyright); in regards to dividing profits arising out of joint works, courts presume the parties contributed equally unless they provide otherwise
What is a public domain work?
A work that is free for all members of the public to use; usually arise from expired copyrights and U.S. government works (such as federal laws and cases)
What is an Examiner's Amendment?
A written communication from the USPTO setting forth an agreed-upon clarification or correction to a trademark application
When factors determine whether a person is an employee or independent contractor (and thus a person who owns all his or her creations)?
A. Control by the employer over the work B. Control by the employer over the worker C. Status of Employer
What works are not protected by copyright?
A. Ideas, methods, or systems (including ideas or procedures for doing, making or building things; scientific or technical methods or discoveries; business operations or procedures; mathematical principles; formulas and algorithms; business operations or procedures; or any other concept, process, or method of operation) B. Blank forms, titles, short phrases, slogans, clauses (such as column headings), or simple checklists, or works consisting entirely of information that is common property containing no original authorship (such as standard calendars, height and weight charts, tape measures and rulers, schedules of sporting events, and lists or tables taken from public documents or other sources) C. Public Domain Works (usually arising from expired and forfeited copyrights and U.S. Government Works) D. Facts E. Computing and Measuring Devices (such as slide rules, wheel dials, and perpetual calendar systems)
What exceptions exist in terms of the copyright owner's right to perform being limited to public performances?
A. It does not extend to sound records (the owner of a sound recording copyright has no right to control performance or display of the work and no right to receive performance royalties from airplay on conventional radio B. Face-to Face Teaching C. Religious services (performances of a nondramatic literary or musical work in the course of services at a place of worship or other religious assembly are permissible) D. Promotion of Records (allows performances of nondramatic musical works at retail stores, such as record stores that sell CDs and CD players, to promote sales) E. Nonprofit and charitable performances (live -not transmitted-performances of non0dramatic literary or musical works for non-commercial purposes are permissible if there are no fees paid to the performers or organizers and no admission charges or, if there are charges, the net proceeds are used for charitable purposes and the author is notified so he or she can object prior to the performance F. Veterans and fraternal organizations (allows performances of non-dramatic literary or musical works at social functions organized by a nonprofit veterans' organization or a nonprofit fraternal organization to which the public is not invited and the proceeds of which are used exclusively for charitable purposes and not for financial gain G. Agricultural and horticultural fairs (performances of a nondramatic musical work by a governmental body or nonprofit agricultural or horticultural association in the course of an annual agricultural or horticultural fair or exhibition are permissible H. Small commercial establishments and the home-style exemption (allows transmissions of radio and television broadcasts in small businesses, restaurants, and bars; cannot set up a CD player or DVD's) I. Transmissions for handicapped persons: (allows certain transmissions for the benefit of blind and deaf persons, if the performance is for nonprofit) -each exception generally accommodates a particular public interest type of use, or they otherwise cause minimal economic impact on the copyright owner.
What other limitations exist on a copyright owner's exclusive rights to his or her works?
A. Libraries or archives may reproduce or distribute one copy of a copyrighted work and maintain three copies for replacement or preservation if no commercial advantage exists, the library is open to the public, and a copyright notice is placed on the work B. Libraries and archives are not liable for infringement for unauthorized photocopying of copyrighted works by their patrons as long as a notice is placed on the equipment warning that the making of copies may be subject to copyright law C. Cases have held that secondary transmissions whereby hotels and other similar establishments relay radio and television transmissions to private guest rooms without charge are acceptable because these are not "public" performances and are analogous to the viewing of a rented videotape in a private home D. Radio and television stations have entered into lawful arrangements to perform works may make one temporary or "ephemeral" recording of works (other than motion pictures and audiovisual works) for a limited time so that it is easier for them to transmit them and may preserve them for archival purposes E. An owner of a computer program may load or install the program onto his computer or make a copy of it for archival or backup purposes without infringing copyright
What exclusive rights does an owner of a copyright have?
A. To reproduce the copyrighted work in copies or phonorecords B. To prepare derivate works based on the copyrighted work C. To distribute copies or phonorecords of the copyrighted work to the public D. To perform the copyrighted work publicly (in the case of certain works) E. To display the copyrighted work publicly (in the case of literary, musical, dramatic and choreographic works, pantomimes, and pictorial, graphic, or sculptural works) F. To perform the copyrighted work publicly by means of a digital audio transmission (in the case of sound recordings)
When reporting the results of a search to a client, a firm will typically draft a formal written report explaining what?
A. a description of the mark that was the subject of the search (or a copy of the image of the mark if it includes a design) B. a description of the method of the search, the databases that were checked, and the dates applicable to the search parameters C. A section describing limitations of the search report with a disclaimer or statement that the results of the search cannot be guaranteed and that, due to errors in cataloging records and files and time delays in entering marks into databases, some marks might not be disclosed in the search D. A discussion of potentially conflicting marks E. The opinion in regard to availability of the mark for use and registration F. Recommendations for further action or investigation, if needed
What protections does the Supplemental Register afford?
A. an action for infringement of the mark can be brought in federal court B. the registration will be on file with USPTO and can be cited by the USPTO against another's subsequent application to register a confusingly similar mark C. The registration will be located through standard searches of USPTO records, thus possibly deterring others from using or applying for a similar mark D. The registrant is entitled to use the registration symbol
When a conflict between marks appears after a search is conducted, what options does a client (and its firm) have?
A. to conduct further investigation using other databases B. Request a consent to use and register a mark (perhaps with payment) C. Obtain a license from another to use a mark or acquire the mark through an assignment for a certain sum of money D. Revise the Mark: If none of the alternatives are fruitful, the client may revise its mark, in which case a new search must be conducted for the new mark
What is the Visual Artists Rights Act and what does it cover?
An act enacted by Congress in 1990; quite limited in scope and applies only to works of visual arts, namely paintings, drawings, prints, photographs, or sculptures that exists in a single copy or in a limited edition of 200 or fewer copies (if signed and consecutively numbered);
What is a nondisclosure agreement?
An agreement requiring a party to maintain information in confidence.
What is a Nunc Pro Tunc Assignment?
An assignment prepared on a later date to reflect an earlier transfer
What is a domain name?
An internet address used by a company or individual; serves as a locator for a company but also may function as a designation of origin and a symbol of goodwill--a trademark.
What is a performing rights society?
An organization of copyright owners (such as ASCAP, BMI, or Sound Exchange) that licenses the rights to use copyrighted music to third parties, collect fees or royalties therefor, and remits those fees to its members, the authors of the works
What is a Trade Secret?
Any valuable business information that, if known by a competitor, would afford the competitor some benefit or advantage.
What did the case, Intermatic v. Toeppen, deal with?
As one of the most famous cybersquatting cases, the case dealt with an individual who had registered a domain name with a well-known mark and intended to "arbitrage" the name (sell them to their owners for a profit); the court ruled that the act of arbitrage constituted a "use in commerce" and was covered by the Federal Trademark Dilution Act
Are characters copyrightable?
Basic character types are not copyrightable but characters that are uniquely developed and display some level of novelty are (such as Rocky Balboa or Mickey Mouse)
When must a continued use affidavit for a mark be filed with the USPTO?
Between the fifth and sixth years after registration and within the year before the end of every 10 year period after the registration date
How does the abandonment of a trademark differ from cancellation of a trademark?
Cancellation of a trademark means that the owner loses federal protection of the mark but keeps common law rights; abandonment is more serious-it is the forfeiting of all rights
What is a chain of title?
Documentation of continuity of ownership or title to a trademark, copyright, patent, or other property right.
How does ownership of joint works work?
Each owner has the right to use the work, prepare derivative works from it, perform it, display it, and so forth (without seeking the coauthor's permission); if profits arise out of such uses, an accounting must be made so that each author shares in the benefits or proceeds; both co-owners must approve of an exclusive license (one in which rights are granted solely to one party with no other party having any rights to use the work); the copyright lasts 70 years after the last surviving co-author's death;
What law are copyright rights governed by?
Exclusively by Federal Law
What is an example of a Collective Mark?
FUTURE FARMERS OF AMERICA or AMERICAN BAR ASSOCIATION 1878
What is an example of a certification mark?
Good Housekeeping Seal of Approval or UNION MADE
What is a naked license?
Granting permission to another to use a trademark and retaining no control over the nature or quality of the goods or services offered under the mark; a naked license results in a loss of the licensor's rights in a mark
When may a specially commissioned work be deemed a work for hire?
If 1) it is specially ordered or commissioned, 2) the parties agree in writing that the work is one made for hire, and 3) it falls into one of the nine specially enumerated categories (I. a contribution to a collective work, II. part of a motion picture or audiovisual work, III. A translation, IV. A supplementary work-a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, illustrating, or explaining the work, such as forewords, pictorial illustrations, tables, editorial notes, bibliographies, appendices, and indexes-, V. A compilation, VI. An instruction text-a literary, pictorial, or graphic work prepared for publication with the purpose of use in systematic instructional activities-, VII. A test, VIII. Answer material for a test, IV. An atlas)
How does ownership rights apply to derivative or collective works?
If a work (such as a book) is created by one person who intends it to be complete at the time and illustrations are later added to it by another, the work cannot be a joint work because there was no intention of the parties to create a unitary whole at the time of creation; the author of the original book has rights only to his or her work and cannot reproduce or perform the derivative work without permission (similarly, the author of the derivative work cannot create further works based on the original book without permission and cannot reproduce the original work without permission); in a collective or derivative work, the parts that compose it remain separate and independent
When may a trademark be assigned to another?
If the goodwill symbolized by the mark is assigned with it; an assignment in gross-when a mark is assigned without the business goodwill-is ineffective to transfer trademark rights
What is originality (in terms of copyrights)?
In copyright law, a work that is independently created (not copied) and that exhibits a minimal amount of creativity
What is contributory infringement?
In the intellectual property context, causing, inducing, or assisting in infringement of another's trademark, copyright, or patent
What is a disclaimer and what is its purpose?
In trademark law, an acknowledgment by an applicant that exclusive rights in certain wording in a mark, usually descriptive or generic wording, are not claimed; a notice placed on trademarked goods or advertising that the owner of the goods is not affiliated with another; in patent law, the cancellation of invalid claims in an issued patent
What did the Trademark Law Revision Act of 1998 change?
It allowed for a trademark application based on the applicant's bona fide intent to use a mark in the future and reduced the period of protection for federally registered marks from 20 years to 10 years.
What are the requirements regarding an application for federal registration of a mark?
It must be in English; "Self-Created" forms are strongly discouraged; electronic application is preferred; photocopies are generally allowed to be submitted in place of original documents, all requirements relating to filing and prosecution of trademark applications are governed by the Trademark Manual of Examining Procedure (TMEP)
What are the exceptions to the first sale doctrine?
It only applies to lawfully made copies and phonorecords, and does not apply to commercial rentals of phonorecrods and certain computer programs (these works cannot be commercially rented)
What is an Inter Partes Proceeding?
Literally, "between parties"; proceedings handled by the Trademark Trial and Appeal Board; may be oppositions, cancellations, interferences, or concurrent use proceedings; effective September 15, 2002, inter partes patent reexamination proceedings to challenge the validity of issued patents will be replaced with inter partes review proceedings
What is the stance on immoral works?
No prohibition exists in the Copyright Act; generally, congress has been reluctant to place restrictions on the copyrightability of certain matter believing it would chill first amendment rights; thus, even offensive and immoral books, plays, and songs are copyrightable
Are useful articles protected under copyright law?
No; a useful article is one having an intrinsic utilitarian function (such as furniture, clothing, machinery, dinnerware, and lighting fixtures); they are entitled to copyright protection only to the extent that their artwork or creative design is separable form the utilitarian aspects of the work
How long do registrations for domain names (in the U.S) typically last?
One (1) year; they may be renewed or they will expire
What is the Paris Convention?
One of the first treaties or conventions designed to address trademark protection; adopted in 1883 to facilitate international patent and trademark protection; based on principle of reciprocity, so that foreign trademark and patent owners can obtain in a member country the same legal protection for their marks and patents as can citizens of those member countries; administered by the WIPO; offers benefit of priority-an applicant for trademark has six months after filing an application in any of the 170+ member nations to file a corresponding application in any of the other member countries of the Paris Convention and obtains the benefits of the first filing date (utility patent applications get a full year).
What is a musical work?
Original musical compositions or arrangements, including lyrics; may be in the form of a notated copy (such as sheet music) or in the form of a phonorecord (such as a record, cassette tape, or CD)
What is mousetrapping?
Practice of trapping an internet consumer into viewing a series of advertisements
What do Trademarks do?
Provide guarantees of quality and consistency of the product or service they identify.
What is the first sale doctrine?
Provides that once the author has parted with the ownership of a copy or phonorecord, the new owner of a lawfully made copy can treat the object as his or her own and can then freely use, sell, lease, or lend the work to another; the doctrine rests on the principle that once the copyright owner sells the initial physical copy, he or she has received full economic value for the work and should not be able to restrict future sales; there is no digital first sale doctrine
What are specimens?
Samples of tags, labels, packaging, or advertising materials showing how a trademark or service mark is used in commerce; required when an application is made under 15 USC 1051(a) and when applicant alleges the mark has been used in commerce; one specimen must be filed for each class of goods named in the application; advertising material generally is not accepted as a specimen for goods but may be used, in some cases, for services.
What is the rule regarding termination of transfers of copyright rights?
Section 203 of the Copyright Act generally provides that transfers of certain copyright rights can be terminated or revoked after 35 years so that the original author (or his or her successors) can recapture his or her works and exploit them; there are 2 types of transfers of rights that may be set aside: transfers made after Jan 1, 1978 and those made after that date
What is a watch service?
Service provided by a private company, usually a trademark search firm, to review the Official Gazette and USPTO records for potentially conflicting marks
What can a trademark consist of?
Slogans (such as "King of the Beers" for BUDWEISER), designs (Nike "Swoosh"), or sounds (the giggle of the Pillsbury Doughboy).
What is the Library of Congress?
The agency charged with examining copyright applications, issuing regulations, and maintaining copyright deposits; established in 1800's and is America's oldest, national cultural institution and the largest library in the world. Thomas Jefferson is considered its founder.
What is the U.S Patent and Trademark Office (USPTO)?
The agency within the Department of Commerce charged with registering trademarks and granting patents
What are International Classes?
The categorization of goods and services into 45 separate topics for trademark purposes; class(es) of goods or services must be identified in a trademark application; each class costs $325 filing fee; if an applicant's mark is used for more than one class of goods or services, the applicant may file either a combined (or multiple-class) application listing all the goods and services in the same application, or file entirely separate (single class) applications for each class of goods/services.
What does copyright law protect?
The creators of books, music, and art by providing them with the exclusive right to reproduce their works and derive income from them; musical compositions, dramatic compositions, photographs, paintings, and sculptures were eventually included within the definition of copyrightable material (in U.S. copyright law)
What is an architectural work?
The design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings; includes overall form and arrangement and composition of spaces, but not individual standard features (such as windows, doors, etc.); includes not only permanent and stationary structures for human occupancy, but also gazebos, churches, and garden pavilions
What is the idea-expression dichotomy?
The doctrine that ideas are not protectable by copyright although the expression of those ideas is copyrightable
What is a Certificate of Registration for a mark?
The document issued by the USPTO confirming registration of a trademark; lasts 10 years from date mark is registered
What is Recordation?
The filing of certain documents with the USPTO, Library of Congress, or other official body to provide public notice of the contents of a document or a transaction, such as an assignment or transfer of intellectual property, a grant of a security interest in intellectual property, or a change of the chain of title of intellectual property; it clarifies the records and affords notice to all of the identify of the owner of the mark; it allows the new owner to commence and defend actions at the USPTO in its name; it ensures documents and notices will be sent to and identify the right owner; simplifies the post-registration procedures; provides public notice of the fact of assignment
What are the two portions to a domain name?
The generic top-level domain (gTLD) which is he portion of the name to the right of a period (such as .gov or .com) and the secondary level domain, which is the portion of the name to the left of the period (such as "kraft" in "kraft.com")
What is a compulsory license?
The imposition of a statutorily set fee for use of a copyrighted work; allows certain copyright works to be used by others, provided that the fixed fees were paid, eliminating the need for the user to contact each and every copyright owner for permission to use works; extend to nondramatic musical works but are not available for phonorecords intended for use in background music systems, jukeboxes, broadcasting, or any other public use; also available for secondary transmissions by cable television systems, public performances of sound recordings by means of a digital audio transmission (such as music played on SIRIUS XM), noncommercial broadcasting, and secondary transmissions of superstations and network stations for private home viewing
What is abandonment of a mark and what two ways can it happen?
The loss of all rights attributed to a trademark. Can occur through 1) non-use and 2) genericide?
What is genericide?
The loss of rights in a trademark occurring when consumers begin calling a product or service offered under a mark by the mark itself; ex. ROLLERBLADE for in-line skates or KLEENEX for tissues.
What is the Principal Register?
The most preferred role or register for registration of trademarks conferring wide protection for a mark and indicating that the mark distinguishes the registrant's goods and services from those of others
What is a file wrapper?
The official USPTO file containing all papers relating to a trademark or patent application; created when the USPTO receives a TEAS application; can be viewed and downloaded using the USPTO's system called Trademark Document Retrieval (TDR)
What effects exist when a work is classified as one made for hire?
The owner/author of a work made for hire is the employer or commissioning party, copyright in works made for hire endure for 95 years from publication or 120 years from creation (whichever is shorter), no moral rights exist for works made for hire because they are not defined as works of "visual arts", and cannot be recaptured by author
What is the merger doctrine?
The principle that if there are few alternative ways of expressing something, only literal copying will infringe because the expression merges with the idea and ideas are uncopyrightable;
What is Prosecution?
The process of moving an application through the USPTO
What is the Supplemental Register?
The roll or register for marks not qualifying for registration on the USPTO Principal Register; registration is an indication that the mark does not yet distinguish the registrant's goods or services from those of others; once the mark has acquired distinctiveness, a new application can be filed seeking registration on the Principal Register; after five years of substantially continuous and exclusive use of a mark, there is a presumption that it has acquired the necessary distinctiveness to allow for registration on the Principal Register, and the registrant may file a new application for registration of the mark on the Principal Register
What happens if a material change to a mark occurs before an affidavit is filed?
The section 8 affidavit will be refused and the owner will have to file a new application for the trademark of the mark with the material change; hence, the owner will now have two trademarks (as long as both are still used)
What requirements exist of a transfer of exclusive rights of ownership?
The transfer must be in writing and signed by the owner of the rights conveyed; a law can require a transfer; copyrights can serve as secure property
What is progressive encroachment?
The use of a trademark that becomes infringement although earlier it may have been permissible; often used by plaintiff to defeat a claim of laches that is asserted by a defendant
What is goodwill?
The value inherent in achieving consumer loyalty to a particular product or service through the maintenance of consistent quality of the products or services offered under a mark.
How can companies fight against genericide?
They can display the mark prominently (keep using it), use the registration symbol, not use it in plural or possessive form, and not use as a noun-instead, use as an adjective
Where did copyright rights come from?
They evolved from the first copyright act enacted by parliament in 1710, the statute of Anne, which limited formerly perpetual rights publishers enjoyed to 14 years; damages for infringement were set at one penny for every sheet found in infringer's custody, one-half to go to the author and one-half to go to the Crown; author's were granted the right to control copying of their books; this grant of rights was called a copyright.
What do pictorial, graphic, and sculptural works consist of (in terms of copyrightability)?
They include two-dimensional and three-dimensional works of fine, graphic, and applied art; extremely broad and includes photographs, prints, posters, and maps, globes, charts diagrams, bumper stickers, dolls, toys, fabric, games, puzzles, sculptures, architectural plans, etc.; a minimal threshold of creativity is required
What are some of the professional, better-known, search firms?
Thomson CompuMakr, Government Liaison Services, INC., CSC COrporation Service Company, and CT Corsearch
A state registration for a trademark is usually valid for 5 to 10 years and confers benefits only within the boundaries of the state
True
True or false: Any trademark issued after the Trademark Law Revision Act (November 16, 1989) has a duration of 10 years.
True. Trademarks before that date were valid for 20 years.
True or False: copyright rights arise from the creation of a work in fixed form and not from the publication or registration or other action in the United States
True; no permission or application with the U.S Copyright Office is required to secure copyright protection
What is dilution of trademarks?
Unauthorized acts that tend to blur the distinctiveness of a famous mark or tarnish it; used when you cannot win a trademark case; used as a second resort; ex. a well-known famous company who cannot win a trademark case because consumers would not be confused with products could still file for dilution.
What is fan fiction?
Unauthorized fiction created about preexisting book and movie characters by those other than the original authors, likely infringing the owners' copyright rights and possibly trademark rights
What is typosquatting?
Variation of cybersquatting in which one registers misspelled versions of others' domain names to attract visitors for profit
What does it mean for a work to be "fixed"?
When a work is embodied in a copy or phonorecord and is sufficiently permanent or stable to permit it to be perceived, reproduced, or communicated for a period of more than transitory duration; occurs when a work is reduced to words, numbers, sounds, or shapes and placed on some permanent or stable medium
When does a Trademark go into effect?
When it is first used; must be a bona fide business transaction; generally the use is based on interstate commerce, although it could be based on commerce between the U.S. and a foreign country (a purely intastate use does not provide a basis for federal registration of a mark)
What are the differences between being registered on the Principal Register and on the Supplemental Register?
While a registration on the principal register is prima facie (literally, "at first sight" or "on its face") evidence of the registrant's exclusive right to use the mark, registration on the Supplemental register has no such effect; a registration on the principal register is constructive notice of a claim of ownership so as to eliminate a defense of good faith in an infringement suit, but a Supplemental Registration has no such effect; while a registration on the Principal Register may become incontestable after five years of registration, a supplemental registration may never achieve that status; registration on the supplemental register cannot be used to stop importations of infringing goods into the United States, while a principal register can.
What is an office action?
Written communication from the USPTO refusing registration of a trademark or issuance of a patent specifying reasons for the issuance of a refusal
Does copyright protection exist automatically from the time a work is created in fixed form?
Yes
What is the Berne Convention (for the Protection of Literary and Artistic Works)?
a convention (treaty?) created in 1886 under the leadership of Victor Hugo to protect literary and artistic works; has more than 160 member nations; the U.S became a party in 1989; administered by the WIPO and based on precept that each member nation must treat nationals of other member countries like its own nationals for purposes of copyright.
What is a Copyright?
a form of protection governed exclusively by federal law granted to the authors of original works of authorship, including literary, dramatic, musical, artistic, and other works.
What is a Descriptive Mark?
a mark or term that immediately tells something about the product or service offered under a mark by describing some characteristic, quality, ingredient, function, feature, purpose, or use of the product or service; not registerable until the consumer links mark with a single source (thus, obtaining a secondary meaning or acquired distinctiveness); example: OATNUT or QUIK-PRINT or BED & BREAKFAST REGISTRY
What is a Fanciful, or coined, mark?
a mark or term that is invented and has no dictionary meaning; examples include KODAK, PEPSI, ACURA, HONDA, and XEROX.
What is a Generic Mark?
a mark or term that is not truly a mark at all but merely a common name of a product such as "car," "soap," or "beverage;" not protectable and cannot be exclusively appropriated by one party inasmuch as they are needed by competitors to describe their goods
What is a Suggestive Mark?
a mark or term that suggests something about the goods or services offered under the mark but does not immediately describe them; requires some imagination or thought to reach a conclusion about the goods or services offered under the mark; for example "ORANGE CRUSH" for an orange-flavored beverage, GREYHOUND BUS" for transportation services, or "IVORY' for soap; registerable without proof of secondary meaning or distinctiveness.
What is a House Mark?
a mark sometimes used by companies to establish recognition in a wide range of products or services, for example GENERAL MILLS for numerous food products, including cereal, biscuit mixes, and mashed potatoes
What is a common law trademark?
a mark without governmental registration; can be enforced in any geographical area the mark is used in
What is a Trade name?
a name, also referred to as a commercial name, used to identify a business or company and its goodwill; a symbol or name used only as a business name cannot be registered as a trademark or service mark. However, if the name also services to identify and distinguish goods and services, it may be registerable under the Lanham Act.
What is the Internet Corporation for Assigned Names and Numbers (ICANN)?
a non-profit corporation created by the U.S government in 1998 to oversee the domain name system in the United States and to coordinate naming policies.
What is an opposition?
a proceeding initiated by a person who believes that he or she would be damaged by registration of a mark on the Principal Register; the person files a notice of opposition; must be filed prior to the expiration of the 30-day period after publication of the mark, but time may be extended up to 180 days
What is the Trademark Manual of Examining Procedure?
a publication usually referred to as the "TMEP," which is published by the USPTO and provides trademark examining attorneys, trademark applicants, and trademark attorneys with a reference work on the practices and procedures relating to the prosecution of trademark applications
What should an application for federal registration of a mark include?
a request for registration, information about the applicant (such as the name, address, citizenship, and domicile), an identification of the goods and/or services offered under the mark, a drawing of the mark, a verification or declaration signed by the applicant or agent or attorney, the basis for filing the application, a specimen showing the use of the mark, and a filing fee
What is the World Intellectual Property Organization (WIPO)?
a specialized agency of the United Nations founded in 1970 with the purpose of promoting intellectual property throughout the world and administering 24 treaties dealing with intellectual property (including the Paris Convention, Madrid Protocol, the Trademark Law Treaty, the Patent Cooperation Treaty, and the Berne Convention); more than 180 nations are members; it is headquartered in Geneva, Switzerland.
What is the Madrid Protocol?
a treaty that came into existence in 1996 and allows trademark protection for more than 80 countries, including all 27 of the European Union, by means of a centralized, trademark filing procedure; U.S implemented the terms of the Protocol in 2003; facilitates a one-stop, low-cost, efficient system for the international registration of trademarks by permitting a U.S. Trademark owner to file for international registration in any number of member countries by filing a single, standardized application form with the USPTO, in English, with a single set of fees;
What is a Service Mark?
a word, name, symbol, device, or combination thereof, used by a person or business entity (or a person that has a bona fide intention to use in commerce) to identify and distinguish the services of one person from those of others and to indicate the source of those services
What is a Certification Mark?
a word, name, symbol, device, or combination thereof, used by a person other than its owner to indicate one of three things: that goods or services have certain features in regard to quality, accuracy, material, mode of manufacture, or some other characteristic; to certify regional or other origin; or that the work done on the goods or services was performed by members of a union or other organization
What is an audiovisual work?
a work that consists of a series of related images intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds
What is a sound recording?
a work that results from the fixation of a series of musical, spoken, or other sounds, regardless of the nature of the material objects, such as discs, tapes, or other phonorecords in which they are embodied; a song is the notes and words while a sound recording is what you hear when you play the radio or a CD;
What is the Lanham Act?
an act (also called the U.S Trademark Act) that was enacted in 1946 and was name for Congressman Fritz Garland Lanham; provides for federal trademark protection and includes statutes prohibiting unfair competition
What is the Anti-cybersquatting Consumer Protection Act?
an act signed into law in late 1999 intended to protect the public from acts of internet cybersquatting, a term used to describe the bad faith, abusive registration of internet domain names
What is the Prioritizing Resources and Organization for Intellectual Property Act ("Pro-IP" Act")?
an act that created a new White House Intellectual Property Enforcement Coordinator or "Czar" to oversee and coordinate domestic and international IP enforcement activities, increased the range of penalties available in counterfeiting cases, and provides money so state and local governments can train law enforcement and educate the public about counterfeiting.
What is the Federal Trademark Dilution Revision Act?
an act that protects famous marks by preventing others from using marks (even on unrelated goods) if they are likely to cause dilution of the famous mark either by "blurring (causing the famous mark to lose its distinctiveness) or "tarnishment" (harming the reputation of the famous mark)
What is the Trademark Law Treaty Implementation Act (TLTIA)?
an act, which implemented in the 1994 Trademark Law Treaty, effective in late 1999, which simplified several requirements relating to trademark registration and maintenance; for example, requiring an applicant to only need to submit one specimen showing how the mark is used, rather than three; established a six-month grace period for filing a renewal for a trademark registration; no longer required an application to state the manner in which the mark is used
What is a motion picture?
an audiovisual work consisting of a series of related images that, when shown in succession, impart an impression of motion, together with accompanying sounds; typically embodied in film, videotape, or videodisc
What is a specimen of a trademark?
an example of a trademark in use
What is an intent-to-use application?
an exception to the general rule that acquisition of trademark rights stems from use
What is an alternative to suing for trademark infringement in the U.S?
bringing a proceeding before the International Trade Commission (ITC) to block entry of the infringing goods into the U.S; the exclusion order is the order issued by the ITC to exclude items that infringe trademarks into the country; section 337 order
What types of marks are unprotectable?
disparaging or falsely suggestive marks, insignia (flags, coasts of arms, or other insignia), immoral or scandalous matter, names and portraits of living persons, deceptive matter, mere surnames (such as "smith"), geographical terms, descriptive and confusingly similar marks (such as CHEESE BITS for cheese-flavored snacks), functional devices, and statutory protected marks (such as the Olympic rings)
What is a drawing?
one of the most critical parts of the application; the display of the mark applied for in a trademark application or the display of an invention in a patent application
What types of things can be protected as marks?
slogans (as long as distinctive); letters (as long as not merely descriptive); numbers (as long as they do not describe something about the product or service offered under the mark, unless proof of secondary meaning is shown); logos and symbols (as long as not merely ornamental or mere background material); names of performing artists (if the owner of the mark has controlled the quality of the goods or services, or if the name of the artist or group has been used numerous times on different recordings or works; domain names (only if they function as an identification of the source of goods and services); foreign terms (as long as they comply with the requirements of the Lanham act); shapes and containers (if they are distinctive rather than functional); trade dress (the total image of a product, such as size, shape, color, texture, packaging, and graphics, may be protected through a trademark registration; must be nonfunctional and distinctive to be protected); color (may be trademarkable as long as the color is not functional, is shown to have acquired distinctiveness either through long use or a high level of consumer recognition, and there is no need for competitors to have the color available to them, for example Owens-Corning pink insulation); fragrances (if it has an acquired distinctive and is not functional); sounds and moving images; designs and ornamentation (as long as distinctive rather than merely functional or ornamental); and serialized literary and movie titles (such as REAL HOUSEWIVES or NEWSWEEK)
What are the requirements regarding the applicant of a trademark?
the applicant must be the owner of the mark, or in the case of intent-to-use application, the person who has a bona fide intent to use the mark in commerce; applicants may be natural persons or business entities such as corporations, partnerships, associations, unions, or other organizations; government entities such as nations, states, municipalities, and other governmental bodies may also apply to register marks that they own; the applicant's name must be in correct legal form; must specify the applicant's citizenship; and the address of the applicant
What is a choreographic work?
the composition and arrangement of dance movements and patterns; simple dance routines and social dance steps such as the waltz, fox trot, and classical ballet are not copyrightable in of themselves, however, they are once incorporated into an otherwise chorographic work (much like words are protected once they are incorporated into a work of fiction or nonfiction); they don't need to tell a story in order to be protectable, but they must be fixed in a tangible medium of expression from which the work can be performed, such as a recorded or notated chorographic work in a text or in dance notation system.
What is publication?
the distribution of copies or phonorecords of a work to the public for sale or other transfer of ownership, by rental, lease, or lending.
How long are Copyrights protected for?
the life of the author plus an additional 70 years after the author's death
What happens if a trademark owner fails to submit an affidavit of use by the deadline (or within the 6 month grace period)?
the registration will be cancelled
What is not protectable by copyright?
titles, names, short phrases, lists of ingredients, ideas, methods, and processes.
What are conflicting application?
trademark applications filed by different parties for conflicting or confusingly similar marks
