LEGL TEST 3 - CH 17
right to use and conditions to use
the licensor often agrees to provide services to facilitate the anticipated activities, such as assistance in setting up assembly line or training in technical support
IP transfer arrangements
the most rapidly growing method of doing business abroad. exchange IP rights for a fee or other form of remuneration
Notification Registration Schemes
- Open to technological transfer - Japanese system transformed over time as it became an innovator in technology - Danger is that some provisions of a registered contract might not be enforceable in that country's laws
franchising
an arrangement in which the licensor permits the licensee to sell certain goods under the licensors trademark or service mark
Where is trademark prosecution based?
based on the law of the country where registration is sought, unlike patent law
cybersquatting
the registering of a domain name with the intent to profit from the goodwill of a trademark belonging to another. typically try to sell domain at an inflated price.
Output of Customer Restrictions
if the licensor plans to use the licensee as a source of products for the licensor's own distribution requirements
When do trademarks have a right to priority?
if the registrations are made within 6 months of original registration
Patent Cooperation Treaty (PCT)
in 1970s supplemented the Paris Convention by establishing a centralized utility patent application process. filed by WIPO
Berne Convention
international treaty that protects copyrights. each signatory must afford foreigners the same treatment as its own citizens
Syngenta and DuPont - (expand operations)
entered into a technology licensing agreement that expanded each of the companies' crop protection product portfolios. Syngenta obtained license from DuPont to develop products containing DuPont's fungicide. In exchange, DuPont received exclusive access to Syngenta's product mix
Geneva Act
establishes a single standard application and single design patent filing process. the US has signed but not ratified
Paris Convention
first international property treaty originally prepared in 1883 and since revised. Guarantees that in each signatory country, foreign trademark and patent applications from other signatory countries will receive the same treatment. gives signatories the right of priority.
First to file
first person to file a patent gets the patent, even if he was not first to invent (so long as he independently developed the patent)
IPR aggregation funds
for open source software
Firms that identify and acquire patents
for the purpose of prevention violations and litigation costs
international IPR brokers
handle IPR auctions and brokerages
counterfeit goods
identical reproductions to legitimate products in appearance, including packaging, trademarks, and labeling. US businesses lose over $250 billion per year
Priority Claim with PCT
if at least one of the applicants named in PCT is national or resident of a PCT signatory, they receive priority on that invention in all signatory states
New Zealand Comite Interprofessional Du Vin de Champagne v. Wineworths Group
- Australian company sought to sell sparkling wine in NZ - Wine made in Australia but was packaged with Champagne - CIVC sued because of use of name Champagne DECISION: the court enjoined the Australian defendants from using the word champagne in NZ
Prior Approval Schemes (IPR transfer regulations)
- Requiring substantive prior approval from a government agency is a more intrusive type of regulatory scheme - Gives governmental officials broad range to of reasons for disapproving a transfer of IPR
Diamond v. Chakrabarty
-Genetically engineered bacterium capable of breaking down crude oil, Ananda Chakrabarty sought to patent his creation - The US PTO rejected a claim to the bacterium on the grounds that living things are not patentable under Section 101 - The Court of Customs and Patent Appeals reversed the decision and SCOTUS agreed to hear the appeal - The court was faced with question of whether the creation of a live, human-made organism was patentable under Title 35 -DECISION: Agreed with Court of Customs and Patent Appeals and allowed for the patenting of living organisms in the US
Internet Corporation for Assigned Names and Numbers (ICANN)
-adopted the Uniform Domain Name Dispute resolution Policy (UDRP) -set forth general "first to file" rules for domain names but excepted bad faith filings
Mobile Communication service v. webreg
-complaint was filed from Mobile Comm -Mobilcom.com was in question -Mobilcom argued that the domain was covered under their trademark and that WebReg did not have the rights (bad faith) -Mobilcom selling domain for $35,000 -Decision: domain transferred to Mobilcom
Nokia (share initial costs)
-entered into license with Ericsson and Huawei to cross-license agreement for multivendor network management and to jointly utilize the operation support systems (OSS)
Doha Declaration on TRIPS
-has been debated in the pharmaceutical industry -increased protection on drug patents -availability of generic drugs has been disputed -connection between declining health and cost of drugs
ways a license could fail
-lack of commitment, inability to secure financing, marketing -new technologies may enter the market -licensor's patent may expire
Two main issues with Paris Convention Scheme
1. Convention doesn't require any minimum substantive standard of patent protection 2. Paris convention has a lack of an enforcement mechanism
Issues with geographical indications under DOHA
1. creating a multiregister for wines and spirits (US, Argentina, Australia, Japan) 2. Extending the higher or enhanced level of protection accorded to wines and spirits under TRIPS to other products (EU, China, Thailand, Pakistan)
WIPO (World Intellectual Property Organization)
A specialized agency of the United Nations and attempts to resolve international commercial disputes about intellectual property between private parties.
Trademarks
Designs and names, often officially registered, by which merchants or manufacturers designate and differentiate their products
biopiracy
Extracting plants and animals indigenous to the emerging nation for research , alter the plant or animal, and then obtain patents related to this research without providing the host country with compensation
Who hears cases over patent cases in the US?
Federal District courts and appeals heard by the federal circuit in DC
The Gray Market
Importation of merchandise produced and sold abroad and then imported back into the US for sale with US trademark
Kodak IP
Kodak was bankrupt and sold their IP for $525 which was more than it's company's worth
Who are design patents determined by?
The Hague
geographical limitation
a common type of restriction placed on a licensee
license
a limited permission to use the US firm's trademarks, copyrights, or know-how in making products for sale in the vicinity of the foreign company's country
European Patent Convention
a patentee can obtain protection in all EU nations with one application.
Royalty
a payment for a license
Geographical Indications
a product, usually wine or liquor, is marketed by reference to a geographic location
Fair, Reasonable, and Nondiscriminatory (FRAND)
can significantly reduce the risk of patent hold-up and the perceived advantages of litigation. FRAND licensing applies only in limited circumstances and has not curbed litigation in a meaningful way
European Patent Office
common system for EU
Copyright Term Extension Act (CTEA)
delayed the date at which all copyrighted works would enter the public domain - Mickey Mouse Act
Confidentiality of license
key provision of licensee's obligation to keep the licensed technology confidential so that third parties cannot exploit it
bad faith
means intentional wrongful behavior and it includes negligence without finding intent
trade secrets
methods of production kept secret by the producing firm
Patent Protection
now available for any new inventions in all fields of technology, provided that they are new, involve an inventive step (nonobvious), and are capable of industrial application
Apple, Inc. v. Samsung Electronics Co. Ltd.
o Apple obtained a US design patent on a computer int eh shape of a rectangle with rounded corners No other computer manufacturer can make a computer with similar shape unless Apple consents o In 2015, US Patent & Trademark office stated that Apple did not have a patent on the rounded rectangle in mobile phones, after Apple was awarded almost half a billion dollars for Samsung's patent infringement o Apple's request for an increase in the jury's damages is DENIED
DOHA Declaration of 2001
o Attempt to support public health especially in developing countries o Developed country patent holders were supposed to license their patents to generic drug companies that would sell them to disease-stricken countries at great discount DIDN'T WORK
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
o Effective on January 1, 2000 o Requires signatories to enact minimum substantive standards of protection and create a viable enforcement mechanism · All WTO members must recognize the patent holders' right to assign or license their patents and the term of patent protection must be at least 20 years
· A. BOURJOIS AND CO. V. KATZEL
o French cosmetic company with a business in the US and sold it to a US company o Reregistered the trademark and continued the face powder business o Katzel bought a quantity of the powder and sold it in US but French company sued for copyright infringement o Decision: SCOTUS reversed the decision not to grant the plaintiff a preliminary injunction
KIRKSAENG V. JOHN WILEY AND SONS
o International versions made in other countries o Many textbook companies will create a more expensive version for developed countries and a less expensive version for developing countries o Cornell student from Thailand noticed that the same textbooks were more expensive in US than at home, so he bought a bunch at home and started selling them in the US o SCOTUS says that's fine— "first sale" rule - Can't control the market after first sale
Lacoste v. Crocodile International
o Rene Lacoste was a famous tennis player who had a jacket made for him that had alligator, so then they started a clothing company o Crocodile International was out of Singapore and they also had crocodiles on their clothing o Not sure if they competed back then, but since, the world is more globalized they have been in lawsuits for years o Important to not that just because you have crocodiles on your shirts doesn't mean no one else can do this
TVBO Production Limited v. Australia Sky Net PTY Limited
o TV broadcasts based in Hong Kong owned a Chinese language miniseries called Twin of Brothers o Its subsidiary TVBO owned the copyright in each episode in all countries except Hong Kong o TVBO filed complaint against 4 companies in Australian court o 1st respondent was Australia Sky Net o 4th was Chinese Satellite Comm o TVB claimed that 4 respondents worked together to intercept and rebroadcast Twin of Brothers in Australia o DECISION: the court found the defendants guilty of copyright infringement and granted TVBO its requested relief
drawbacks of TRIPS
o There is an escape clause to minimum standards in Article 8 o Signatory nations may exclude from patentability inventios as necessary to protect ordre public or morality o Some articles Protect human, animal, or plantlife or health
What do licensors do when they are worried about risk?
o they will sometimes grant rights to two or more licensees who are willing to compete to develop the target market o A licensee in this situation would try to negotiate some compensating advantage, such as reduced royalties
Utility Patent
one that has a broad range of applications. might use this when there is a lack of management capabilities
WIPO Copyright Treaty (WCT)
protected computer programs as protected literary works. required signatory countries to provide security protection
international IPR clearinghouses
provide IPR strategy advice, valuation, and infringement analysis
Madrid Protocol
provides a centralized filing system on standard form and a designation of the countries in which trademark registration is sought 98 members covering 114 countries
field of use limitations
restrict the applications for which the licensee may employ the IPR
intellectual property rights
rights to which creators are entitled for their work. have become increasingly more important.
· K MART CORP V. CARTIER
scouts allowed the entry of gray market imports as long as the foreign manufacturer and the domestic trademark owner were subject to common control
right of priority
the date of an applicant's foreign application is deemed to be the same as the date of the applicant's original application in the same invention. gives signatories of the paris convention priority
grant back
when negotiating over ownership and use rights if the licensee develops improvements in the licensed tech or creates new inventions based on that tech, the licensor may seek a grant back to itself of ownership in or at least the right to use-often without compensation-such new tech,
Bikram Yoga Case
· Bikram Cloudhury claimed to have copyright on 26 yoga postures, sued competitors · US copyright office said yoga postures cannot be copyrighted, upheld by courts Cultural property
Henrietta Lacks
· Cancerous cells removed during treatment at Johns Hopkins · Used to create an immortal cell line for medical research · 11,000 patents filed · Lacks never informed or compensated · More interesting since we have new genetic modifications
