Ch 8 Terms - Intellectual Property Rights

Intellectual Property

Property resulting from intellectual, creative processes — the products of the mind. Four forms: trademark, patent, copyright, trade secret.

Trademark

A distinctive mark affixed to goods so they can be identified and their origin known — a SOURCE INDICATOR. Lasts as long as it is in use.

Lanham Act

The 1946 federal trademark statute; protects against confusingly similar marks and codifies the common law, with remedies in federal court.

Trademark Dilution

TDRA: a famous, distinctive mark; defendant's use in commerce; similarity creates an association; likely to impair distinctiveness or reputation. No confusion or competition needed.

Trademark Registration

File with the USPTO if in commerce or intended within 6 months (extendable to 3 years). Renew at years 5–6, then every 10. Allows the ® symbol.

Trademark Infringement

A mark copied substantially or entirely, intentionally or not. Owner must show LIKELIHOOD OF CONFUSION — not intent, not registration. Injunction is the usual remedy.

Distinctiveness of the Mark

Strongest and automatically protected: fanciful (Xerox), arbitrary (Dutch Boy), suggestive (Dairy Queen). Descriptive marks need secondary meaning.

Secondary Meaning

Descriptive terms, geographic terms and personal names get protection only once consumers associate them with one company's goods (Calvin Klein). Even a color can qualify.

Generic Terms

Names an entire class of products (bicycle, computer) — NEVER protected. A mark can become generic (aspirin, thermos), but common use alone doesn't do it (Google).

Service Mark

A trademark for SERVICES rather than products. Must function as a source identifier — .SUCKS was refused as just another gTLD (Vox Populi).

Certification and Collective Marks

Certification: used by others than the owner to certify quality or origin (UL Tested). Collective: a certification mark used by members of an organization (union marks).

Trade Dress

The image and overall appearance of a product or packaging — decor, layout, shape. Same protection as trademarks; the test is likely consumer confusion.

Counterfeit Goods

Imitations of trademarked goods. SCMGA makes trafficking a crime even for UNATTACHED labels — up to $2M and 10 years, forfeiture, restitution of actual loss.

Trade Name

Part or all of a BUSINESS's name, tied to its goodwill. Federally registrable only if also a trademark; otherwise common-law protection if unusual or fanciful (Safeway).

Licensing (IP)

An agreement letting a licensee use IP for set purposes, usually paying ROYALTIES to the licensor. Grants only the rights expressly described.

Patent

Government grant of the exclusive right to make, use or sell an invention for 20 years (design patents 15). First to FILE wins (America Invents Act, 2011).

Patentability

Must be NOVEL, USEFUL and NOT OBVIOUS. Almost anything qualifies EXCEPT laws of nature, natural phenomena and abstract ideas (including algorithms).

Patent Infringement

Making, using or selling a patented invention without permission — even if not all features are copied. PROCESS patents require copying ALL steps. No infringement for goods made and sold abroad.

Remedies for Patent Infringement

Injunction plus royalties and lost profits; TREBLE damages if willful. Permanent injunctions require irreparable injury and no harm to the public interest.

Copyright

Federal right of an author in a literary or artistic work. Life + 70 years; publishers 95 from publication or 120 from creation. Automatic — no registration or © needed.

Protected Expression (Copyright)

Must be fixed in a durable medium. Protects the particular EXPRESSION of an idea, never the idea itself. Facts aren't protected, but original compilations are.

Copyright Infringement

Copying the form or expression of an idea — a substantial part suffices. Inferred from access plus substantial similarity in total concept and feel (LEGO v. ZURU). Statutory damages up to $150,000.

Fair Use

Criticism, comment, news, teaching, scholarship, research. Four factors: purpose, nature, amount used, and MARKET EFFECT — usually the most important.

First Sale Doctrine

The owner of a particular copy may sell or dispose of it without the copyright owner's permission — even if bought abroad (Kirtsaeng).

Copyright Protection for Software

Covers source code, object code, and structure, sequence and organization — NOT the 'look and feel,' though that may be trade dress.

Trade Secret

Valuable business information that can't be patented, copyrighted or trademarked — customer lists, pricing, processes. Covers ideas AND expression; lasts until revealed.

Misappropriation of Trade Secrets

Liable if the secret was obtained by IMPROPER MEANS or used in BREACH OF A DUTY. Uniform Trade Secrets Act; Economic Espionage Act makes it a federal crime. General knowledge isn't a secret.

Berne Convention

Signatory countries must recognize an author's copyright from other signatories; no copyright notice needed for works published after March 1, 1989.

TRIPS Agreement

1994, the most significant international IP agreement — sets standards for patents, trademarks and copyrights for WTO members and BANS discrimination against foreign owners.

Madrid Protocol

Cuts the cost of international trademark registration — one application designating multiple member countries.

Anti-Counterfeiting Trade Agreement

ACTA (2011) — combats counterfeiting and online piracy beyond TRIPS; officials may search commercial shipments and hold suspect goods unless proven authentic.