Sports Law Exam 3 - Intellectual Property

Three Kinds of Property

1. Personal Property

2. Real Property

3. Intellectual Property

Personal Property

Things that are movable

• Things like cars, phones, and pens

Real Property

Things that are stationary/ real estate

• things like your house

• Comes from royal estate which means immovable

Intellectual Property

Creations of the mind

Types of intellectual property

• Trademark

• Copyright

• Patents

• Rights of Publicity

What is the law going to do with Property that isn’t being used?

The law is going to put property/ land into the hands of someone who will put best use to the property/ land

Trademark - consumer protection law

Purpose:

• Protects the owner of the mark

• Prevents others from using the mark in a way that causes customer confusion

Trademark

any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured items

Trademark categorized by strength

1. Fanciful or Arbitrary

2. Suggestive

3. Descriptive

4. Generic

Fanciful Strength

Made up name that holds power

• i.e. adidas

Arbitrary Strength

Nike - something that actually exists

Suggestive Strength

Obvious, name/ logo suggests quality of product

Descriptive Strength

• Begins as generic, so well known that you only think of the product

  • i.e. sports illustrated

• Secondary meaning in the marketplace

Generic Strength

No Protection

What happens if a trademark become too strong?

Then it becomes generic

• Like popsicle and band aid

Creating ownership rights in trademark

• Use

or

• Federal Registration

Use - State registration

• Must be the first to use the mark in trade

• Make continuous, uninterrupted use from then on

Federal Registration

• Not required to establish common law right

• Not required to begin using a trademark

• Provides constructive notice that the registrant owns trademark and has rights to exclusively use the mark

Trademark Infringement

The reproduction, counterfeiting, or copying or imitation in commerce of a registered mark “in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or to cause mistake, or to deceive without consent of the registrant.”

Harm with Trademark Infringement

• Market demand is finite'; sales of unlicensed merchandise will reduce licensed sales

• If unlicensed merchandise is of a lesser quality, it will reflect negatively on the quality of the licensed merchandise and the rights holder’s organization

  • Assuming customer confusion

Trademark infringement confusion

• Counterfeiting or Piracy

• Dilution

Counterfeiting or Piracy

Latham Act: “a spurious mark that is identical with or substantially indistinguishable from, a registered mark.”

Dilution

Federal Trademark dilution act of 1995 and 2006 lessening of the capacity of a famous mark to identify and distinguish goods and services, regardless, of competition or likelihood of confusion, mistake or deception

Trademark infringement - Plaintiff

• Protectable property right in trademark

• Plaintiff owns the trademark

• Defendant used trademark without consent in a manner which is likely to cause confusion, mistake or deceive ordinary consumers

Factors for plaintiff - Trademark Infringement

• Strength/ Weakness of Mark

• Similarity in appearance, sound and meaning

• Class of goods/ marketing channels

• Evidence of actual confusion

• Defendant’s intention in adopting mark

• Quality of defendant’s product

• Sophistication of the consumer

Trademark infringement - Defendant

• Plaintiff has no protectable rights in trademark

• No consumer confusion

• Disclaimer (weak defense)

Loss of rights to the marks

• Abandonment - mark has fallen in public domain

• Laches defense

• Fair use or parody

Fair Use Defense to Trademark Infringement

• Descriptive Use

• Nominative Use

• Comparative Advertising

Descriptive Use

1. Make use of another’s trademark, other than as a mark

2. In a descriptive sense (giving details of quality, kind or condition),

3. In good faith

Nominative Use

Refer to the mark of another for the purposes of identification only

Comparative Advertising

As long as the advertising is not misrepresentation and does not create reasonable likelihood of confusion for consumers

Denial of trademark protection

• Immoral

• Scandalous

• Disparaging

Copyright

US copyright act of 1909 enacted to protect the work of authors and other creative persons from unauthorized use of their copyrighted materials and to provide a financial incentive for artists to produce, thereby increasing the number of creative works available to society

Creating copyright

Two fundamental criteria

1. The work must be original

2. Must be in some tangible form that can be reproduced

Copyright gives you exclusive rights to:

• copy

• derivative works

• distribute

• publish

• perform

• display

Copyright infringement - Plaintiff

1. Prove ownership (all or part) of a valid copyright

2. Copied constituent elements of the original work, even if accidentally, without permission

Copyright infringement - Defendant

1. Plaintiff has no protectable rights in copyright

2. Fair use or parody

Fair use as a defense to copyright infringement

Criticism, comment, news reporting, teaching, scholarship or research

Factors:

• Purpose and character of the use, commercial or non-profit educational purposes

• nature of the copyrighted work

• The amount and substantiality of the portion used in relation to the copyrighted

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

Digital Millennium Copyright Act (DMCA)

Ensure the holder of a copyright cannot have its copyrighted material posted on the internet without authorization

No Electronic Theft Act (NET Act)

Makes it illegal to willfully infringe upon copyrighted material on the internet for financial gain

Anti-Cybersquatting Consumer Protection Act (ACPA)

Prevent the deliberate and bad-faith registration of internet domain names in violation of trademark rights

Rights of Publicity

Individual persons have the right to control and profit from the commercial use of their name, likeness and persona

• grows out of privacy laws

Rights of Publicity Claims - Plaintiff

• Use of person’s identity

• Without consent

• To gain a commercial advantage

• Resulting injury

Rights of Publicity Claims - Defendant

• Expressive Speech

  • News

  • Entertainment, sport, politics

  • Creative works

    • for the purpose of communicating information or expressive ideas

• Used for non commercial purpose

• Exception for professional photographer

• Consent

• Statute of Limitations (usually 1-3 years)

Three tests used by the court for rights of publicity

• Relatedness test

• Transformative use test*

• Predominant Purpose test

Relatedness test

Is the use of of the Name, image, and likeness used to draw attention to things you are trying to sell

Transformative use test

You have added significant creative aspects to change the Name, image, and likeness enough

What is the threshold question?

Whether the persons name or identity is used in an expressive way or commercial way