What is intellectual property? What is intellectual property? Why does the law protect trademarks...

• What is intellectual property?What is intellectual property?• Why does the law protect trademarks Why does the law protect trademarks

and patents?and patents?• What laws protect authors’ rights in the What laws protect authors’ rights in the

works they generate?works they generate?• What are trade secrets, and what laws What are trade secrets, and what laws

offer protection for this form of offer protection for this form of intellectual property? intellectual property?

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• What steps have been taken to What steps have been taken to protect intellectual property rights in protect intellectual property rights in today’s digital age?today’s digital age?

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• Intellectual property (or “I.P.”) is Intellectual property (or “I.P.”) is becoming more important because becoming more important because of the significant value of I.P. to many of the significant value of I.P. to many corporations, which in some cases corporations, which in some cases may exceed the value of physical, may exceed the value of physical, tangible assets.tangible assets.

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• Founders of America understood the Founders of America understood the value of I.P.:value of I.P.:–Article I § 8 authorizes Congress to

“secur[e] for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

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• DistinDistincctive mark, motto or device or tive mark, motto or device or emblem that a manufacturer stamps, emblem that a manufacturer stamps, prints or otheprints or otherrwise affixes to the goods wise affixes to the goods it producesit produces..• Distinguish Distinguish product/service from product/service from

goods of other manufacturers and goods of other manufacturers and merchants.merchants.

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• Trademarks helps avoid Trademarks helps avoid consumer consumer confusion.confusion.–CASE 5.1 The Coca Cola Co. v. The The Coca Cola Co. v. The

Koke Co. of AmericaKoke Co. of America (1920). Defendants argued that Coca-Cola was not entitled to trademark protection. Why?

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• Statutory Protection of Trademarks.Statutory Protection of Trademarks.–Lanham Trademark Act (1946) creates

incentives for companies to invest; prevents unjust enrichment of infringers.–Creates federal cause of action even

when unlikely to confuse consumers.–Protects “distinctive” or “famous” marks

such as McDonalds, Dell, Apple).© 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part, except for use as permitted in a license distributed with a certain product or service or otherwise on a password-protected website for classroom use. 8

• Statutory Protection of Trademarks Statutory Protection of Trademarks (cont’d).(cont’d).–Trademark Dilution.• Congress amended Lanham Act with

Federal Trademark Dilution Act (1995).• Use of Similar Mark May Constitute

Trademark Infringement.

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• Trademark Registration.Trademark Registration.–Register at U.S. Patent Trademark Office

(www.uspto.gov) if:•Mark is currently in commerce; or• Applicant intends to put it into commerce

within 6 months.• Registration allows use of “®” symbol.

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• Trademark Infringement.Trademark Infringement.–Registration with USPTO gives national

notice. –Whenever mark is substantially copied

(intentionally or unintentionally), owner has action for infringement.

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• Trademark Infringement.Trademark Infringement.–Remedies: owner can seek injunction

against further infringement. • Under Lanham Act, owner can recover

damages, plus profits wrongfully received from unauthorized use of trademark.• Court can also order destruction of goods.

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• Distinctiveness of the Mark.Distinctiveness of the Mark.–Trademark must be sufficiently distinct.–‘Strong’ Marks:• Fanciful and Arbitrary Marks: fanciful

(Xerox and Kodak) and arbitrary (Dutch Boy paint).

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• Distinctiveness of the Mark (cont’d).Distinctiveness of the Mark (cont’d).–Secondary Meaning.• Descriptive, geographical terms are

usually not protected, unless there is a secondary meaning, e.g., “London Fog” coats.

–Generic Terms: receive no protection (e.g., bicycle, aspirin, and computer).

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• Service, Certification, and Collective Service, Certification, and Collective Marks.Marks.–Service Mark: similar to trademark but

used to distinguish services of one person/company from another.• Titles and character names used in media

are frequently registered as service marks.

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• Service, Certification, and Collective Service, Certification, and Collective Marks (cont’d).Marks (cont’d).–Certification Mark: used to certify the

region, materials, mode of manufacture, quality of specific goods or services.–Collective Mark: used by an organization

or association (Good Housekeeping, union marks).

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• Trade Dress.Trade Dress.–Refers to the image and overall

appearance of the product or service: distinctive décor at a restaurant product names, or packaging. • Same protection as trademark.• Issue is consumer confusion.

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• Counterfeit Goods.Counterfeit Goods.–Importation of goods that bear a fake

(counterfeit) trademark damages U.S. businesses and may present serious health risks (nutritional supplements and drugs).–Stop Counterfeiting in Manufactured

Goods Act (2006). © 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part, except for use as permitted in a license distributed with a certain product or service or otherwise on a password-protected website for classroom use. 18

• Trade Names.Trade Names.–Trademarks apply to products: e.g.,

Pepsi-Cola®.–Trade name applies to companies and

are protected by federal law as well.• Example: Safeway®.

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• Domain Names: an internet address, Domain Names: an internet address, consisting ofconsisting of–A “top level domain” to the right of the

“dot” (.com, .org, .edu) and –A “second level domain” to the left of

the “dot” chosen by entity creating the domain name, e.g.,: www.westlaw.com.

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• Domain Names (cont’d).Domain Names (cont’d).–Internet Corporation for Assigned

Names and Numbers (ICANN) overseas distribution of top-level domain names.–Overhauled its system to attempt to

stop cybersquatting.

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• Anticybersquatting Legislation.Anticybersquatting Legislation.–Anticybersquatting Consumer

Protection Act (1999) amended the Lanham Act.–Ongoing Problem of Cybersquatting.–Applicability of the ACPA and Sanctions

of Act.

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• Meta Tags.Meta Tags.–Playboy Enterprises v. Welles (2002).

• Dilution in the Online World.Dilution in the Online World.–Candyland.com.

• Licensing: allows use of trademark.Licensing: allows use of trademark.–CASE 5.2 George V. Restauration S.A. v.

Little Rest Twelve, Inc. (2009). Use of the Buddha Bar brand was infringement.

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• Exclusive federal grant from U.S. Exclusive federal grant from U.S. Patent and Trademark Office to make, Patent and Trademark Office to make, use, and sell an invention for 14 years use, and sell an invention for 14 years (20 years for design).(20 years for design).–Must be “novel, useful, and not obvious”

in light of current technology.• Searchable Patent Databases.Searchable Patent Databases.

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–First person to invent, not file, gets protection.

• What is patentable? Almost anything What is patentable? Almost anything except: (1) laws of nature, (2) natural except: (1) laws of nature, (2) natural phenomenon, (3) abstract ideas. phenomenon, (3) abstract ideas. –Patents for Software .–Patents for Business Processes.

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• Patent Infringement: may occur even Patent Infringement: may occur even though product is not identical.though product is not identical.• Remedies for Infringement.• Patent holder can seek an injunction,

damages, and attorneys fees and costs.

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• Remedies (cont’d).Remedies (cont’d).–In 2006, U.S. Supreme Court held that

patent holders are not automatically entitled to an injunction against future infringing activities (eBay, Inc. v. MercExchange, LLC).

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• Intangible property right granted by Intangible property right granted by federal statute to creator of a literary federal statute to creator of a literary or artistic production of a specified or artistic production of a specified type. type. • Works created after 1978 have Works created after 1978 have

automatic protection for life of the automatic protection for life of the author, plus 70 years. author, plus 70 years.

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• For publishing houses, copyright For publishing houses, copyright expires 95 years from publication or expires 95 years from publication or 120 years from creation, whichever is 120 years from creation, whichever is first.first.

• Works can be registered at U.S. Works can be registered at U.S. Copyright Office Copyright Office ((www.loc.gov/copyrightwww.loc.gov/copyright/)./).

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• What is Protected Expression?What is Protected Expression?–Only the expression of an idea can be

copyrighted -- not the idea itself (Section 102).–To be protected, a work must be “fixed

in a durable medium.”–Protection is automatic, registration is

not required. © 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part, except for use as permitted in a license distributed with a certain product or service or otherwise on a password-protected website for classroom use. 30

• What is Protected Expression (cont’d)What is Protected Expression (cont’d)–Must fall into one of the following

categories: • Literary Works,•Musical Works, • Dramatic Works and Accompanying Music,• Pantomimes and Choreographic Works.

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• What is Protected Expression (cont’d)What is Protected Expression (cont’d)–Pictoral, Graphic and Sculptural Works

(including cartoons, maps, posters and stuffed animals).–Motion Pictures and other Audiovisual

Works (including multimedia).–Sound Recordings.–Architectural Works.

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• What is Protected Expression (cont’d).What is Protected Expression (cont’d).–Section 102 Exclusions.• “any idea, procedure, process, system,

method of operation, concept, principle, or discovery….”•What is copyrightable is the expression of

the idea. Thus, anyone can use the underlying ideas in a copyrighted work.

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• What is Protected Expression?What is Protected Expression?–Compilations of Facts are copyrightable,

but the compilation must be “original.”• Copyright Infringement. Copyright Infringement. –Whenever unauthorized copying

occurs.–Damages: actual to criminal

prosecution. © 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part, except for use as permitted in a license distributed with a certain product or service or otherwise on a password-protected website for classroom use. 34

• Copyright Infringement (cont’d).Copyright Infringement (cont’d).–The “Fair Use” exception: Section 107 of

the Copyright Act provides for exception to liability from reproduction of copyright under the “fair use” doctrine when material is used for criticism, comment, news, criticism, teaching, research.

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• Copyright Protection for Software.Copyright Protection for Software.–Computer Software Copyright Act

(1980).• Classifies computer software as a “literary

work.” • Courts generally do not apply copyright

protection to the “look and feel” of a computer program.

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• Copyrights in Digital Information.Copyrights in Digital Information.–Computer Software Copyright Act

(1980).• Classifies computer software as a “literary

work.” • Courts generally do not apply copyright

protection to the “look and feel” of a computer program.

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• Copyrights in Digital Information Copyrights in Digital Information (cont’d).(cont’d).–Based on the Copyright Act of 1976.–Infringement may occur when a song

(or any part of it) is copied or downloaded into a computer.

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• Copyrights in Digital Information Copyrights in Digital Information (cont’d).(cont’d).–MP3 and File Sharing Technology.• Peer to Peer (P2P) Networking.•Music sharing (Napster, Kazaa, Gnutella).•Music storage and vicarious liability.• “Cloud Computing” (Google, Amazon.com,

Facebook).

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• Copyrights in Digital Information Copyrights in Digital Information (cont’d).(cont’d).–MP3 and File Sharing Technology

(cont’d).• Sharing Stored Music Files.–CASE 5.3 Maverick Recording Co. v. Maverick Recording Co. v.

HarperHarper (2010). Was this user an “innocent infringer”?

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• Copyrights in Digital Information Copyrights in Digital Information (cont’d).(cont’d).–MP3 and File Sharing Technology

(cont’d).• Evolution of File Sharing Technologies. –The U.S. Supreme Court has held that

companies are vicariously liable when they distribute file-sharing software intending that it be used to violate copyright laws.

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• Business process or information that Business process or information that cannot or should not be patented, cannot or should not be patented, copyrighted or trademarked.copyrighted or trademarked.• Can include: customer lists, plans, Can include: customer lists, plans,

research, formulae, pricing research, formulae, pricing information, marketing techniques.information, marketing techniques.

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• Protection extends to ideas and Protection extends to ideas and expression.expression.• State and Federal Law on Trade State and Federal Law on Trade

Secrets. Secrets. –Uniform Trade Secrets Act and

Economic Espionage Act (1996).• Trade Secrets in Cyberspace.Trade Secrets in Cyberspace.

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• Berne Convention (WIPO).Berne Convention (WIPO).–Every country who signed must

recognize the author’s copyright. No notice required. –More safeguards against infringement on

the web. –World Intellectual Property Organization

(WIPO) Copyright Treaty 1996.

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• TRIPS Agreement of 1994.TRIPS Agreement of 1994.–Created the World Trade Organization.–Each member country must include in

its domestic laws broad I.P. protection and enforcement measures.

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• Madrid Protocol.Madrid Protocol.–Signed by sixty-one countries,

including U.S. in 2003.–Allows a single country can apply for

simultaneous trademark protection in all member countries.

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