Unit 1 Seminar Introduction to Intellectual Property & Trademarks

Unit 1 Seminar

Introduction to Intellectual Property & Trademarks

Welcome!• Welcome to PA328 – Intellectual

Property (IP)• This evening we will spend a few

minutes discussing the various assignments/activities you will need to complete for this course and also begin to discuss Unit 1.

• Units begin on Wednesday and end on Tuesday evenings (11:59PM)

Textbook• Textbook for the course: – Deborah A. Bouchoux, Intellectual

Property, 2nd ed., Thomson Delmar Learning

• You can download the chapters via Doc Sharing.

• Rules for Writers, 6th Edition is also available through Doc Sharing.

Seminars • Our weekly seminars are scheduled for

Thursdays at 9PM (ET) • We are scheduled to have a seminar in

every unit except in Units 5 & 10. • You must participate in our seminars in

order to receive credit (each seminar worth 4 points)

• If you are unable to attend a seminar, you can still earn credit by submitting (via email) a one page summary of what was discussed by accessing the seminar transcript.

Discussion Boards (DBs)• It is important you participate in our weekly

DBs. • Some of our DBs may have more than one topic

so make sure to use the participate in both topics.

• We will have a DB in every Unit except in Unit 5.

• Each DB will be worth 16 points. • PLEASE: – Do not post early or late to a DB. – Do not post all of your comments on the last day of

the Unit.

Written Assignments• We will have a written assignments due

in Units 4, 5, 6, 7, & 9. • Unit Written Assignment points will vary

depending on the amount of work required to complete the assignment.

• In Seminar, we will discuss the Unit Written Assignment instructions and should you have any further questions, please contact me.

Unit Quizzes • We will have Quizzes in every Unit except

Units 5, 9, & 10. • Each Unit Quiz will be worth 20 points. • You can only take the Quiz once. • You will have 30 minutes to complete the

Quiz. • PLEASE make sure to complete the Unit Quiz

during the Unit timeframe. • I will not re-open Quizzes. • We will review for the Unit Quiz during

Seminar.

Mid Term Exam & Essays• In Unit 5 you will complete two (2)

items: – Mid Term Exam (105 points)

• You will be given two (2) hours to complete 35 True/False Questions. You will only be allowed to take the exam once.

– Mid Term Exam Essays (85 points)• You will respond to two (2) essay questions.

• We will discuss and review these items during our Unit 4 Seminar (please make plans to attend).

Final Exam & Essays• In Unit 9 you will complete: – Final Exam (105 points)

• You will be given two (2) hours to complete 35 True/False Questions. You will only be allowed to take the exam once.

– Final Exam Essays (85 points)• You will respond to three (3) essay questions.

• We will discuss and review these items during our Unit 9 Seminar (please make plans to attend).

Unit 1: Introduction to your Research Paper (Final Draft Due in

Unit 9)• In Unit 1 you will be introduced to your

Research Paper. • Using LexisNexis, you are to retrieve the

case: – Wal-Mart Stores, Inc. v. Samara Brothers,

Inc., 529 U.S. 205 (2000)– Wal-Mart stores contracted with a clothing

manufacturer, Judy-Philippine, Inc., to copy designs by another well-known company, Samara Brothers, Inc., and to manufacture clothes for Wal-Mart. Samara Brothers learned of this copying and sued for Trademark infringement.

Unit 1: Introduction to your Research Paper

• The question that this case focuses on is whether the design of the garment itself is protected under Trademark law when it has not been registered.

• In general, a trademark does not have to be registered to be awarded protection under trademark law. However, whether the design of a garment, including familiar objects such as flowers, can also be protected under this law.

Unit 1: Introduction to your Research Paper

• In your Research Paper, you are to address the following questions:– How were prior cases on the question of trademark

protection addressed by the Court? – Did any federal statute play a substantial role in the

decision of the Court? – Explain the Wal-Mart decision. What was the

holding and what did the Court base this holding on? – Was the holding of the court broad or narrow? What

do you perceive the impact of this case will be on the industry?

• In Unit 6, you will turn in an ungraded draft, with your final draft being due by the end of Unit 9 (Feb. 15th).

Questions?

Does anyone have any questions on what we have discussed so far or class in

general?

Unit 1 – Introduction to Intellectual Property & Trademarks

• Unit 1 discusses Chapters 1 & 2 of our IP book.

• Three (3) items to complete in Unit 1. They are: – Attend Unit 1 Seminar (4 points)– Unit 1 Quiz (20 points) – Unit 1 DB (16 points)

• Let’s discuss are assigned readings.


• Before we begin discussing IP, we need to understand the three (3) distinct types of property.

• Class: What are the three (3) distinct types of property?


• The three (3) distinct types of property? 1. Real Property: refers to land or real estate

2. Personal Property: refers to specific items and things that can be identified (jewelry, cars, furniture, stock, etc.)

3. Intellectual Property (IP): any property that is the product of an individual’s mind.

• Class: What are some examples of IP?


• Examples of IP: – Books– Software– Movies– Music / Songs – Advertising slogans– New inventions

• Many of the rights of ownership common to real and personal property are also common to IP. For example: IP can be bought, sold and licensed. It can also be protected against theft or infringement by others.

• Class: What is the rationale for protecting IP?


• The rationale for protecting IP:– To simulate and promote further creativity. – It provides an incentive to create further works. – However, if the owner is given complete and

perpetual rights, the owner would have a monopoly.

– As a result, IP law attempts to resolve these conflicting goals so that owners’ rights to reap the rewards are balanced against the public need for a competitive marketplace.

• Class: IP is comprised of four (4) separate fields of law. What are they?


• IP is comprised of four (4) separate fields of law. They are: 1. Trademarks (and Service Marks)2. Copyrights3. Patents 4. Trade secrets

• Let’s discuss each one.

1) Trademark / Service Mark

What is the difference between a trademark and a service mark?

1) Trademark / Service Mark• Trademark: Distinctive motto, mark, design or emblem;

stamped or affixed to a product so that it can be identified in the market. – Also includes slogans (The King of Beers for Budweiser beer,

“Swoosh”)

• Service mark: Similar to trademark but used for services. Includes characters in TV and radio.– Typically identifies a service (Starbucks, American

Airlines) • Statutory Protection of Trademarks– United States Trademark Act (Also called Federal

Lanham Act of 1946)– Federal Trademark Dilution Act of 1995– Trademarks are generally protected from their date

of first public use.

1) Trademark / Service Mark• Trademark Registration

– May be registered with the state or with the federal government. • If not used in interstate commerce trademark can be

registered with the state in which they are used. – Under Federal Trademark Law – a person should (but not

required) file an application with the U.S. Patent & Trademark Office (PTO) in Washington, DC (www.uspto.gov)• Lengthy process (take anywhere from 12 to 24 months or even longer) • Filing fee: $335 per mark per class of goods or services covered by the

mark • Valid for 10 years and may be renewed for additional 10 year periods as

long as the mark is in use in interstate commerce

– Mark can be registered if:• It is currently in commerce, or • If the applicant intends to put the mark into commerce

within six months.

2) Copyright

What is a copyright? What is protectable?

2) Copyright• Form of protection governed exclusively by federal law

granted to the authors of original words of authorship. • Copyright includes: books, songs, plays, jewelry, movies,

sculptures, paintings, choreographic works, computer software, advertising copy, cartoons, marketing materials

• Right granted by federal statute to the author for life plus 70 years.

• Automatic protection after 1978.• Works can be protected by registration at U.S. Copyright

Office. – Inexpensive; $30 filing fee; fast process within 4 – 5 months

• Ideas are not protected, but the expression of an idea is.

3) Patents

What is a Patent? What is protectable?

3) Patents• A grant from the government which gives an inventor

exclusive right to make, use and sell his/her invention• There are 3 types of patents:

1. Utility patents: cover useful inventions and discoveries (i.e. typewriter, the automobile, etc.)

2. Design patents: cover new, original, and ornamental designs for articles (such as furniture)

3. Plant patents: cover new and distinct plant varieties (such as hybrid flowers or trees)

• Patent Protection: • 20 years from filing the application for utility and plant patents • 14 years from filing the application for design patents • After period of time, the invention falls into the “public domain”

and may be used by any person without permission

3) Patents• Patent Registration: • An inventor must file an application with the U.S.

Patent & Trademark Office (PTO) in Washington, DC (www.uspto.gov)

• Must fully describe the invention. • Expensive• Time consuming and complex• Costs can run into the thousands of dollars and

it generally takes over two years for the PTO to issue a patent.

4) Trade Secrets

What is a trade secret? What is protectable?

4) Trade Secrets

• Any valuable business information that, if known by a competitor, would afford the competitor some benefit or advantage.

• Trade secrets can be: recipes, marketing plans, financial projections, customer lists, formulas, pricing, methods of conducting business, etc.

4) Trade Secrets

• Trade Secrets Protection: – There is no federal law relating to trade secrets

and no formalities are required to obtain rights to trade secrets.

– Theft of trade secrets is now a federal crime under the Economic Espionage Act of 1996.

• How to properly protect your trade secrets: – Nondisclosure agreements– Not to compete agreements– Limit trade secrets to those with a “need to know”

Other IP Rights• 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.

• Certification marks: a word, name, symbol, device, or combination used by one person to certify that the goods or services of others have certain feature sin regard to quality, material, mode of manufacture, or some other characteristic. For example: Good Housekeeping seal of approval

• Collective marks: used by a collective membership organization, such as a labor union, fraternity, or professional society. For example: Future Farmers of America, American Bar Association indicate membership in certain organizations.

IP TRIVIA

• The value of Microsoft Corporation’s trademarks is estimated to be $65.1 billion.

• For businesses in the food or luxury goods sector, the value of their brands and related intellectual property is estimated at between 70% and 90% of the total value of their businesses.

• The Department of Commerce has stated that the combined copyright and trademark industries represent the second fastest growing sector of the U.S. economy.

• The Business Software Alliance concluded that software piracy cost the United States 109,000 jobs and $91 million in lost tax revenue in 1998.

Unit 1 Seminar Wrap Up

A copy of the PowerPoint presentation will be located in Doc Sharing.

Be sure to participate in the Unit 1 DB (two topics)

If you have not posted in Meet Your Classmates, be sure to do so.

Office Hours: Thursdays 7 – 9PM (ET) via Chat Room.

Let’s review for the Unit 1 Quiz

See you next week

Documents

Unit 1 Seminar Introduction to Intellectual Property & Trademarks