CH.8 Bus Law - intellectual property rights

Intellectual Property

Any property resulting from intellectual, creative processes—the product of one or more individual’s minds.

3 types:

Patent

Trade

Copyright

Trademark

A distinctive mark, motto,  device, or emblem that identifies your goods.

a manufacturer stamps, prints, or otherwise affixes to the goods it produces.

§Distinguish product/service from goods of other manufacturers and merchants. 

purpose is to help avoid consumer confusion.: Coca Cola vs. Koke Co.

Statutory Protection of Trademarks

Lanham Trademark Act 1946: first federal cause of action, can sue someone in federal court for trademark violation… was enacted to protect manufactures from losing business to rival companies that used confusingly similar trademarks.

Trademark Dilution

gives automatic protection to famous or distinctive trademarks.

Lanham Act amended with Federal Trademark Dilution Act (1995). à

•Creates federal cause of action even when unlikely to confuse consumers.

•Protects “distinctive” or “famous” marks such as McDonald’s, Dell, Apple.

• Dont have to be identical, just substantially similar

Trademark Registration

uRegister with U.S. Patent Trademark Office (www.uspto.gov) to receive federal protection.

§Mark can be registered if

•it is currently in commerce; or

•applicant intends to put it into commerce within six months.

§Registration allows use of ® symbol. which tells the world that your logo is trademarked and you are fined if you put it on without approval

Trademark Infringement

Use of a protected trademark—or copying it to a substantial degree—without permission. CAN SUE

§Registration with USPTO gives national notice.

Whenever mark is substantially copied (intentionally or unintentionally), owner has action for infringement.

Remedies for Trademark Infringement

Most common remedy is an injunction against further infringement.

§However, The Lanham Act also allows a trademark owner who proves infringement to

recover damages plus profits wrongfully received from unauthorized use.

The court can also order the destruction of goods.

Distinctiveness of the Mark

Has to be original. Has to be Fanciful, arbitrary, or suggestive trademarks are usually considered to be the most distinctive (strongest) trademarks.

§Fanciful marks use invented words (Google).

§Arbitrary marks use common words in an uncommon way (“Dutch Boy” for paint).

§Suggestive trademarks suggest something about product’s nature or quality (Burger King). says king of burgers, or dairy queen; says royalty in fast food

Secondary Meaning: sometimes gets protection. Descriptive, geographical terms are usually not protected, unless there is a secondary meaning, e.g., “London Fog” coats. BUT think of Northface?

§Generic terms receive no protection.

•Examples: Bicycle, Aspirin, and Computer.

Service Mark

used to distinguish services of one person/company from another.

§Each airline has a particular mark or symbol associated with its name. save as differnt delivery trucks like fed ex and amazon

Certification Mark

A mark used by outside party to signify quality of your product and to identify your product.

certify the region, materials, mode of manufacture, quality, or accuracy of the owner’s goods or services

(e.g., “The Good Housekeeping Seal of Approval”).

Collective Mark

Used by an organization or association (e.g., union marks).

§Labor unions will often have a service mark for their work (e.g. The Screen Actors Guild).

ZTA

Trade Dress

The image and overall appearance of the product or service (e.g., distinctive shop décor or packaging, like Bojangles Restaurant).

§Trade dress is given the same protection as trademark.

Mcdonalds Happy Meal

Counterfeit Goods

are those that copy or otherwise imitate trademarked goods.

Such goods damage value of the trademark and trademark holder’s reputation and may present serious public health or safety risks (e.g., nutritional supplements and drugs).

Stop Counterfeiting in Manufactured Goods Act 2006

made it a 2 million dollar violation and up to 10 yr prison sentence for producing and selling counterfeit goods

But, this usually happens international so…

Trade Names

The name of your product, substantially similar:

A term used to indicate part or all of a business’s name and that is directly related to the business’s reputation and goodwill. à

Pepsi-Cola®.

§Apply to companies and are protected by federal law as well.

License

Agreement or contract permitting the use of a trademark, copyright, patent, or trade secret for certain purposes.

Licensor: Party that owns the intellectual property rights.

§Licensee: Party obtaining the license who generally pays fees (royalties) for the use of the intellectual property.

Patent

Your Invention.

uA grant from the government giving an inventor the exclusive right or privilege to make, use, or sell thier invention for a set period of time.

§Usually 20 years for an invention and  14 years for a design.

A patent may protect an invention, product, process, or design.

§The product, process, or design must be genuine, novel, useful, and not obvious in light of current technology.

§First person to file, not invent, gets protection.

What is Patentable

Not obvious

artistic methods,

certain business processes,

and genetically engineered microorganisms and animals.

Patent Infringement

Making, using, or selling another person’s patented product, process, or design without permission. à

§May occur even though product is not identical or put into commerce.

Remedies for Patent Infringement

§Patent holder can seek an injunction, monetary damages, and perhaps attorneys fees and costs.

•The court can triple the amount of damages awarded (treble damages) if it determines that the infringement was willful.

Treble Damages

Remedy for patent infringement: If the court finds you are willingly infringing, court can award other party 3x damages

Copyright

Anything you come up with out of your creative mind.

An intangible property right granted by federal law to the author or originator of a literary or artistic production of a specified type.

•Protection usually extends for the life of the author, plus 70 years. when it ends, public domain

** Regiestration is not required, protection is automoatic the minute you put it into a tangible medium:

copyright owners are usually protected against

§Reproduction of the work.

§Development of derivative works.

§Distribution of the work.

§Public display of the work.- disney sued a school

Section 102 Exclusions

§Only the expression of an idea can be copyrighted—not the idea itself. Anyone can use the underlying ideas in a copyrighted work.

§Compilations of facts are copyrightable, but the compilation must be “original.”

•E.g. History Books. are copyrightable as long as they original

cant copyright justice… you can copyright expression of justice

Copyright Infringement

uUse of a copyrighted form or expression of an idea—even with slight variations—without permission.

Substantially similar

Remedies range from actual damages to criminal prosecution. but criminal is rare.

The “Fair Use” Exception 107

§No infringement if reproduced material is used for criticism, comment, news, teaching, or research.

broad, so the courts determine it on a case-by-case basis.

The First Sale Doctrine 109

§No infringement occurs when a person who lawfully owns a copyrighted work resells the work, because the original copyright holder no longer has control of content.

can sell book you bought to someone else,

Used booksotres: if you have bought it for the first time and lawfully own it, you can sell it

Trade Secret

Info that gives you a commercial advantage over your competitors

uInformation of commercial value such as customer lists, plans, research and development, pricing information, marketing methods, and production techniques.

§Trade secret protection extends both to ideas and to their expression.

Berne Convention

International protection for intellectual property:

Adopted American copyright standard, life of author + 70 yrs.

Every country that signed this treaty must recognize that copyright protection.

The TRIPS Agreement of 1994

International protection for intellectual property:

says that every member country must give broad intellectual property protections.

** treat nonresidents the same as residents of the country, if someone in australia sues me here for infringement, the court has to give them same treatment

The Madrid Protocol

International protection for intellectual property:

says you can get trademark protection in a number of countries through one application.

The Anti Counterfeiting Trade Agreement (ACTA)

International protection for intellectual property:

Allows cooperation between different international investigatory agencies to work with others to investigate copyright, patent and trademark infringement.

Border searches: also allows them to search your goods coming in and out of orders.