Chpt 8: Intellectual Property Rights

Trademarks

is a distinctive mark, motto, device, or implement that a manufacturer stamps, prints, or otherwise affixes to the goods so that they can be identified.

– It is a source indicator

– Coke case

-- must be registered with either a state or with the federal to be eligible for protections.

The Lanham Act of 1946

- provided statutory protection federal protection for trademarks.

– The statute provided remedies for owners of trademarks seeking to enforce their trademarks

• Many states have adopted state laws to protect trademarks

Trademark Dilution Revision Act (TDRA)

Congress passed in 1995, to state a claim the plaintiff must show

– They own a famous mark that is distinctive

– Defendant has begun using a mark in commerce that is diluting the famous mark

– The similarity between the marks give rise to an association between the marks; and

– The association is likely to impair the distinctiveness of the famous mark and harms its reputation.

• Marks need not be identical, just similar

• Ex. Rolex with three x’s; Rolexxx

To register trademark with Feds, an application must show:

• the mark is used in commerce; or

• Will be in w/in 6 months

Registration of a trademark with US

gives notice nationwide that the trademark belongs exclusively to the registrant.

– The Registrant is allowed to use “Circled R” to indicate that the mark has been registered.

– If the mark is used or copied by another, the trademark has been infringed upon.

To sue for infringement, the plantiff must show:

– The defendant’s use of the mark created a likelihood of confusion about the origins of the defendant goods and services

– Does not need to show intent

– Most common remedies

Most common remedies

injunctions

Under the Lanham Act

plaintiff could recover actual damages plus profits from the defendant for its use.

• Ct can order destruction of infringed goods and/or attorney fees

Victor’s Little Secret v. Victoria’s Secret

– Dilution v. Infringement • Dilution laws protect trademark owners; Infringement protect consumers

– Must Show actual proof of dilution

– What constitutes “sufficient proof” of dilution- actual or indirect

Distinctiveness of the Mark

They must be distinctive enough to enable consumers to identify the product and competing products

Strong Marks

are fanciful, arbitrary, or suggestive and generally receive automatic protection

– They identify the product not type of product

• Examples Bud as opposed American Beer

Fanciful Trademarks

use invented words • Pepsi; Nike; Rolex; Clorox

Arbitrary

- use common words in uncommon ways • Apple Computers; Camel; Target; Dove; Shell gas;

Suggestive Trademarks

- use common words in uncommon ways

• Apple Computers; Camel; Target; Dove; Shell gas;

Secondary Meaning

descriptive terms, geographic terms, and personal names are not inherently distinctive and do not receive protection until they have acquired secondary meaning.

– Acquired distinctiveness • I’m love it; 12th Man; Chanel; Pizza Hut; Red Lobster; Lite

Generic Terms

refer to an entire class of products- bicycle, phone, computer- they receive no protections

– Trademarks must be careful not to be generic terms, they will lose their protection.

• Cornflakes, escalator, linoleum

• Xerox and Kleenex- are very guarded that they are brand of photocopiers and tissues.

Service Mark

- is a trademark that is used to distinguish services – “Golden Archs” or “Fly the Friendly Skies”

Trade Dress

refers to the image and overall appearance of the product.

– Packaging; labeling; product configuration, color scheme; layout

– Coca-Cola bottles; Tiffany’s blue box; Pizza Hut’s stores;

Counterfeit goods

copy or imitate trademarked goods but are not the real thing. – Bad for legit business and potentially dangerous for consumers

SCMGA Stop Counterfeit Manufacturing Goods Act

was enacted to stop counterfeiting goods. It is a crime to:

– Traffic in or attempt to traffic in counterfeit goods or services; or

– Knowing use a counterfeit mark on or in connection with goods and services

• Closed the loop-hole; could create and ship counterfeit labels or packaging bearing another’s trademark

Penalties of Counterfeit Goods

10 years in prison and up to 2 Million fine

– Counterfeit property destroyed; property used to make the counterfeit is forfeited; pay restitution to trademark holder (actual loss)

Combating Foreign Counterfeits

cannot prosecute, but have been able to shutdown their websites

Trade Name

-indicates part of the business’ name, is directly related to a business and its goodwill.

Unless it is also trademark or service mark, it cannot be registered with the federal government.

• Coca-Cola; Nike; H-E-B

Licensing

- is an agreement permitting the use of a trademark, copyright, patent, for certain purposes. The licensee pays fees or royalties for the privilege of using the intellectual property

– TAMU arrangement with the Seattle Seahawks for the use “12”

– The rights of the licensee are spelled out in the agreement

Patent

grant from the government that gives an inventor the exclusive right to make, use, or sell their invention for a period of 20 years (inventions).

– Designs

– US law was first person to invent not file received the patent.

• Changed in 2011 to first to file and 9-month challenge period on any ground

Designs is

14 years

Patent lasts

20 years

Searchable Patent Database

-US Patent Office has an online database covering all US patents back to 1976.

What is Patentable?

The applicant must prove that the invention, discovery, process or design is novel, useful and not obvious considering current technology. (VERY BROAD)

Patent Infringement

- Is when another makes, uses, or sells another’s patent without the owner’s permission- Tort of

Patent owners must be vigilant or stand to lose a lot of money

– General rule no violation of US law when a patented product is made and sold outside of the US.

• Foreign companies may apply for US Patent protections and vice versa

Remedies for Patent Infringement

- include injunction, royalties, lost profits, potentially attorney’s fees

– If willful (extreme) the court could issue triple damages

Copyright

is an intangible property right granted by Federal Statute (Copyright Act of 1976) to the author or creator of a literary or artistic production.

– Works Created after 1977 are automatically given statutory protection for life of the author plus 70 years.

– Copyrights owned by a publishing house expiration is 95 years from publication or 120 years from the date of creation, whichever comes first.

– After expiration, they enter the public domain and belong to everyone. Beethoven; Sherlock Holmes; Good Night Moon; Ice Cream (song)

Registration

copyrights can be registered with the US Copyright Office

Once copyrighted they are protected against:

– Reproduction of the work

– Development of derivative works

– Distribution of the work

– Public display of the work

Copyrighted material

include books, records, film, artwork, architectural plans, menus music, videos, software, photography

Once “fixed in a durable medium” under section 102 any of the following are copyrighted

-Literary works

– Musical works (including jiggles) (On CD, pen on paper, fixed durable media) *on exam

– Dramatic works and accompanying music

– Choreographic works (ballets; dances)

– Pictorial, graphic, and sculptural works

– Motion pictures (multimedia works)

– Sounds recording;

– Architectural works

-Code (depending)

Section 102 exclusions

generally anything that is not an original expression will not qualify for copyright protection. Examples facts or mathematical calculations commonly known will not be copyrightable

Complication of facts are copyrightable

Guinness book of world records

Cannot copyright an idea, but can the wat the idea is expressed

The idea and expression must be separable

– Formulas and algorithms

The reproduction of the copyright does not

have to be the same as the original, nor does it have to reproduce the original in full

Not copyrightable

ideas in head before put on paper etc, mathematical equations

Remedies for Copyright Infringement

criminal penalties (fines and/or imprisonment)

– Actual damages- based upon harm caused

– Statutory Damages- up to 150 K

– Permanent injunction

Fair Use Exception under Section 107

The purpose & character of the use (commercial/nonprofit use)

– The nature of the copyright

– Amount of the copyrighted material used

– Effect of the use upon potential market value of the copyrighted work

Section 107 is very broad; issues are decided on a case-by-case basis

– Anyone using copyright material maybe committing a violation

– Court generally hold the 4th factor as the most important

• Is the use causing harm to the copyright- loss of royalties or other harm

First Sale Doctrine

Section 109 provides that the owner of a particular item that is copyrighted can w/out the authority of the copyright owner sell or dispose of it.

-A person who buys a copyrighted book can sell it anyone without permission • Ok to buy and resell

Copyright protection for software

-Computer Software Act amended the Copyright Act to include computer programs.

– Copyright protection extends to high level source codes and binary language object code

Trade Secrets

are basically information of commercial value, such as customers lists, plans, and R&D.

– May also include pricing info; marketing mythology/strategy; production techniques

– extend to ideas and expressions

– No filing or registration for trade secrets

Companies must protect trade secrets

– Need to know basis

– Kept under lock and key

– Confidentiality agreement

• Coca-Cola formula; KFC 11 blends of herbs and spices;

Disclosing trade secrets w/out authorization are liable if either of the following are true:

-Discovered the secret by improper means; or

– Disclosure or use constitutes a breach of a duty owed to the other party • Corporate espionage is violation by itself- B&E; Wiretapping

Trade Secrets in Cyberspace

Computer technology is making it very difficult to protect trade secrets

Berne Convention

176 Countries have recognized and agree to enforce copyrights-after 3/1/89

TRIPS Agreement

- 100 nations signed 1994

– Established international standard protections for IP rights covering patents, trademarks, and copyrights.

– Also forbids nations from discriminating against foreign owners of IP rights in the administration, regulation, or adjudication of rights

• Cannot favor own nationals

Madrid Protocol

- is an international treaty designed to reduce the cost of international trademark protections

– US Companies can submit a single application to register a trademark aboard

• One filing instead of hundreds

Anti-Counterfeiting Trade Agreement

an international treaty to combat global counterfeiting and piracy.

– Goals are to increase international cooperation, facilitate best law enforcement practices, and provide a legal framework to combat counterfeiting.

– Border searches

Border Searches

member nations are required to establish border measures that allow officials to search for counterfeit goods

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