Chapter 8 Notes

Flashcards covering key vocabulary and definitions related to intellectual property rights as outlined in the lecture notes.

Intellectual Property

Property resulting from intellectual, creative processes, such as patents, trademarks, and copyrights.

Trademark

A distinctive mark, motto, device, or implement that a manufacturer affixes to goods to identify them and indicate their origin. Once a trademark is established (under the common law or through registration), the owner is entitled to its exclusive use

Lanham Act of 1946

Federal legislation that provides statutory protection for trademarks and remedies for trademark owners in federal court. Enacted to protect manufacturers from losing business to rival companies that used confusingly similar trademarks

Trademark Dilution

A doctrine that protects distinctive or famous trademarks from unauthorized uses regardless of competition or likelihood of confusion.

Where do you register for protection for a trademark

United States Patent and Trademark Office (USPTO) in Washington D.C. Registration of a trademark with the U.S. Patent and Trademark Office gives notice on a nationwide basis that the trademark belongs exclusively to the registrant. The symbol ® indicates that a mark has been registered

Trademark Registration

The process of registering a trademark with the state or federal government to establish exclusive rights.

Under current law, a mark can be registered

if it us under commerce and if the applicant intends to put it into commerce within 6 months

When is registration for a trademark renewable?

between the fifth and sixth years after the initial registration and every ten years thereafter (every twenty years for trademarks registered before 1990)

Trademark Infringement

The unauthorized use of a trademark that causes confusion about the origin of goods or services. Whenever a trademark is copied to a substantial degree or used in its entirety by another, intentionally or unintentionally, the trademark has been infringed (used without authorization)

What cause of action does the owner do against the infringer?

To succeed in a trademark infringement case, the owner must prove that the defendant's use of the mark caused confusion about the origin of their goods or services. The typical remedy is an injunction, and the owner may recover actual damages, the infringer’s profits, and attorneys' fees.

Distinctiveness of the Mark

A requirement for trademarks to be sufficiently distinctive to identify the manufacturer and distinguish from competitors' goods.

Strong Marks

Fanciful, arbitrary, or suggestive trademarks considered to be the most distinctive and strongest categories of trademarks.

Fanciful trademarks use invented words (e.g., "Google," "Xerox"), while arbitrary trademarks use common words in an unusual way that doesn't describe the product (e.g., "Dutch Boy" for paint). Suggestive trademarks hint at a product’s qualities or characteristics without directly describing it (e.g., "Dairy Queen" suggests milk but doesn't describe ice cream).

Counterfeit Goods

Counterfeit goods imitate trademarked products but are not the genuine items, often causing financial harm to legitimate businesses. Some counterfeit goods, especially pharmaceuticals and nutritional supplements, can pose significant public health risks.

The Stop Counterfeiting in Manufactured Goods Act

Legislation making it a crime to traffic, or attempt to traffic, intentionally in counterfeit goods or services & knowingly use a counterfeit mark on or in connection with goods or services

Penalties for Counterfeiting

• May be fined up to $2 million or imprisoned for up to ten years

• Must forfeit the counterfeit products

• Must forfeit any property used in the commission of the crime

• Must pay restitution to the trademark holder or victim in an amount equal to the victim’s actual loss

Combating Foreign Counterfeiters

The United States cannot prosecute foreign counterfeiters due to the limitations of national laws. However, one effective method U.S. officials use to combat online sales of counterfeit goods is obtaining court orders to shut down the domain names of websites selling them.

Licensing

A contract permitting the use of intellectual property (trademark, copyright, patent, or trade secret) for specific purposes, where the licensor grants rights to the licensee (pays fees, or royalties, for the privilege of using the intellectual property). This is one way to avoid litigation and still make use of another’s trademark

Patent

A government grant that gives an inventor exclusive rights to make, use, or sell an invention for a limited time. Patents for inventions are granted for a twenty-year period, while patents for designs are granted for a fourteen-year period.

Who receives patent protection and when does it begin? What happens after the patent period ends?

The first person to file a patent application for a product or process receives patent protection. The protection period begins when the application is filed, not when the patent is issued.

After the patent expires (14 or 20 years), the product or process enters the public domain, allowing anyone to make, sell, or use the invention without paying.

How long is the patent for inventors?

20-year period

How long is the patent for designs?

14-year period

What remedies are available for patent infringement?

If a patent is infringed, the patent holder may sue in federal court and can:

• Seek an injunction against the infringer

• Request damages for royalties and lost profits

• If the infringement was willful, the court may award treble damages (triple the amount)

• Seek reimbursement for attorneys' fees and costs

Copyright

Exclusive rights of authors to publish, print, or sell their intellectual production for a statutory period of time.

How does a copyright differ from a patent or a trademark?

it applies exclusively to works of art, literature, and other works of authorship, including computer programs.

What does the Copyright Act of 1976 govern, and what are the copyright duration rules?

The Copyright Act of 1976 governs copyrights.

• Works created after January 1, 1978, are automatically protected for the life of the author plus 70 years.

• For works owned by publishing houses, the copyright lasts 95 years from publication or 120 years from creation, whichever is earlier.

• For works by multiple authors, the copyright expires 70 years after the death of the last surviving author.

• When copyright protection ends, works enter the public domain.

What are the key points about copyright registration and protection?

• Copyrights can be registered with the U.S. Copyright Office, but registration is not required.

• The © symbol or "Copyright" notice is no longer needed for protection against infringement.

• Copyright owners are protected against:

  • Reproduction of the work

  • Development of derivative works

  • Distribution of the work

What constitutes copyright infringement?

occurs whenever the form or expression of an idea is copied. The reproduction does not need to be identical to the original or reproduce it in its entirety.

What are the remedies for copyright infringement?

Those who infringe copyrights may face damages or criminal penalties.

• Actual damages are based on the harm caused to the copyright holder.

• Statutory damages can reach up to $150,000.

• Criminal penalties may include fines and/or imprisonment.

• A court can issue a permanent injunction to prevent future infringement.

Fair Use

An exception to copyright infringement that allows limited use of copyrighted works for purposes such as criticism, news reporting, teaching, scholarship, and research.

What factors are considered when determining fair use of a copyrighted work?

The factors to consider when determining fair use include:

• The purpose and character of the use (commercial vs. nonprofit educational)

• The nature of the copyrighted work

• The amount and substantiality of the portion used relative to the whole work

• The effect of the use on the potential market or value of the copyrighted work

What does copyright protection cover for software?

Copyright protection for software extends to:

• Human-readable parts, such as the source code in high-level language

• Binary-language object code readable by computers

• The overall structure, sequence, and organization of the program

What is excluded from copyright protection for software?

Copyright protection does not extend to the "look and feel" of computer programs, which includes:

• General appearance

• Command structure

• Video images

• Menus

• Windows

Trade Secret

Information or a process that gives a business an advantage over competitors, protected without registration requirements.

What are some examples of trade secrets?

Trade secrets include, but are not limited to:

• Customer lists

• Plans

• Research and development

• Pricing information

• Marketing methods

• Production techniques

How are trade secrets protected and what are the requirements?

Protection of trade secrets extends to both ideas and their expression. There are no registration or filing requirements. Businesses typically protect trade secrets by having employees agree in contracts or confidentiality agreements not to divulge them.

International Protection for Intellectual Property

Agreements such as the Paris Convention, Berne Convention, and TRIPS agreement aimed at protecting intellectual property rights across borders.