Study Notes on Intellectual Property Rights

INTELLECTUAL PROPERTY RIGHTS

WHAT IS IP & WHY IS IT IMPORTANT?

  • Definition of Intellectual Property (IP): IP is any property that results from intellectual, creative processes – the products of an individual’s mind.
  • Importance in Business: The value of IP often exceeds the value of physical, tangible assets.

INTRODUCTION

  • Founding Principles: The American founders recognized the value of intellectual property (I.P.). Article I § 8 of the U.S. Constitution authorizes Congress to "secure for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

FORMS OF INTELLECTUAL PROPERTY

  • Overview of Various Forms: The following is a detailed explanation of the different forms of intellectual property, including their definitions, acquisition methods, durations, and remedies for infringement:
PATENT
  • Definition: A grant from the government that gives an inventor exclusive rights to an invention.
  • How Acquired: By filing a patent application with the U.S. Patent and Trademark Office (USPTO) and receiving its approval.
  • Duration: 20 years from the date of the application; for design patents, 14 years.
  • Remedy for Infringement: Monetary damages, including royalties and lost profits, plus attorneys’ fees. Damages may be tripled for intentional infringements.
  • Definition: The right of an author or originator of a literary or artistic work, or other production that falls within a specified category, to have the exclusive use of that work for a given period of time.
  • How Acquired: Automatically, once the work or creation is put in tangible form.
  • Duration: For authors: the life of the author, plus 70 years; for publishers: 95 years after the date of publication or 120 years after creation.
  • Remedy for Infringement: Actual damages plus profits received by the party who infringed or statutory damages under the Copyright Act, plus costs and attorneys’ fees in either situation.
TRADEMARK (INCLUDING SERVICE MARK AND TRADE DRESS)
  • Definition: Any distinctive word, name, symbol, device (image or appearance), or combination thereof that an entity uses to distinguish its goods or services from those of others.
  • How Acquired: 1. Ownership is created by use of the mark at common law. 2. Registration with the appropriate federal or state office gives public notice and is permitted if the mark is currently in use or will be within the next six months.
  • Duration: Unlimited, as long as it is in use. To maintain notice by registration, the owner must renew by filing between the fifth and sixth years, and thereafter, every ten years.
  • Remedy for Infringement: 1. Injunction prohibiting future use of the mark. 2. Actual damages plus profits received by the party who infringed (potentially increased under the Lanham Act). 3. Destruction of infringing articles. 4. Plus costs and attorneys’ fees.
TRADE SECRET
  • Definition: Any information that a business possesses and that gives it an advantage over competitors, including formulas, lists, patterns, plans, processes, and programs.
  • How Acquired: Through the originality and development of the information and processes that constitute the business secret and are unknown to others.
  • Duration: Unlimited, provided it is not revealed to others. Once revealed, it ceases to be a trade secret.
  • Remedy for Misappropriation: Monetary damages for misappropriation (the Uniform Trade Secrets Act permits punitive damages if willful), plus costs and attorneys’ fees.

TRADEMARKS AND RELATED PROPERTY

  • Definition of Trademarks: Distinctive marks, mottos, devices, or emblems that manufacturers affix to their goods to identify and distinguish them from those of others.
  • Purpose of Trademarks: Help avoid consumer confusion and indicate the source of goods/services.

TRADEMARK STATUTES

  • Key Legislation:
    • The Lanham Act of 1946
    • Federal Trademark Dilution Act (1995)
    • Trademark Dilution Revision Act (TDRA)

TRADEMARK DILUTION

  • Definition: A federal cause of action that protects “distinctive” or “famous” marks such as McDonald's, Dell, and Apple, even when unlikely to confuse consumers.
  • Conditions of Trademark Dilution:
    • Similar marks may constitute trademark dilution.
    • A famous mark can be diluted by an identical mark or a similar mark.
    • Similar marks can dilute, especially when competing in the same market.

TRADEMARK DILUTION - ELEMENTS

  • Elements Required for Claim:
    1. The plaintiff owns a famous mark that is distinctive.
    2. The defendant has begun using a mark in commerce that allegedly dilutes the famous mark.
    3. The similarity between the defendant's mark and the famous mark creates an association.
    4. The association is likely to impair the distinctiveness of the famous mark or harm its reputation.

TRADEMARK REGISTRATION

  • Requirement for Registration: Register with the USPTO if:
    • The mark is currently in commerce; or
    • The applicant intends to put it into commerce within 6 months.
  • Benefits of Registration: Allows the use of the “®” symbol and provides national notice.
  • Distinctiveness of the Mark:
    • Must be sufficiently distinct.
    • Strong Marks: Fanciful, arbitrary, or suggestive marks (e.g., Xerox, Kodak, Google).
    • Generic Terms: Receive no protection (e.g., bicycle, aspirin, thermos, computer).

TRADEMARK INFRINGEMENT

  • Definition: Occurs when a mark is copied to a substantial degree or used in its entirety by another, whether intentionally or unintentionally.
  • Burden of Proof: The trademark owner must show that the defendant’s use of the mark created a likelihood of confusion about the origin of the defendant’s goods or services.

OTHER RELATED TERMINOLOGY

  • Trade Name: Indicates part or all of a business’s name.
  • Trade Dress: Refers to the image and overall appearance of a product.
  • Service Mark: A trademark used to distinguish the services of one person/company from another; titles and character names in media are often registered as service marks.
  • Certification Mark: Used to certify the region, materials, manufacturing mode, or quality of specific goods or services (e.g., Good Housekeeping Seal of Approval).
  • Collective Mark: Used by an organization or association (e.g., union marks).

PATENTS

  • Definition: An exclusive federal grant from the USPTO allowing the making, using, and selling of an invention for 20 years (14 years for design).
  • Requirements for Patentability: Must be “novel, useful, and not obvious” in light of current technology.
  • First Invention Rule: The first person to file for a patent (not necessarily the first inventor) obtains protection.

PATENT INFRINGEMENT

  • Definition: Occurs when a firm makes, uses, or sells another’s patented design, product, or process without permission.
  • Scope of Infringement: May occur even if the product is not identical or has not been put into commerce.

COPYRIGHTS

  • Definition: An intangible property right granted by federal statute to creators of literary or artistic productions of specified types.
  • Protection Duration: Works created after 1978 have automatic protection for the life of the author plus 70 years. When copyright protection ends, works enter the public domain,
  • Registration: Works can be registered at the U.S. Copyright Office, but use of the © symbol is no longer necessary for protection.

COPYRIGHT OWNER PROTECTIONS

  • Copyright owners are protected from:
    • Reproduction of the work.
    • Development of derivative works.
    • Distribution of the work.
    • Public display of the work.
  • Protected Expressions Include:
    • Literary works
    • Motion pictures
    • Sound recordings
    • Musical works

COPYRIGHT INFRINGEMENT

  • Definition: Occurs whenever the form or expression of an idea is copied. The reproduction does not need to be identical or complete; substantial parts are sufficient.

FAIR USE EXCEPTION

  • Definition: An exception to liability for copyright infringement under the “fair use” doctrine allowing reproduction of copyrighted work without paying royalties.
  • Evaluation: Fair use is evaluated on a case-by-case basis, with specific factors referenced in the policy.

TRADE SECRETS

  • Definition: Business processes or information that cannot or should not be patented, copyrighted, or trademarked (includes customer lists, plans, research, pricing info, marketing techniques).
  • Protection: Extends to both ideas and their expression; unlimited as long as the information is not revealed to others.
  • Misappropriation: Involves theft or disclosure of trade secrets and is subject to legal penalties.
TYPES OF MISAPPROPRIATION
  • Theft: Obtaining the secret through improper means.
  • Breach of Duty: Disclosure or use constitutes a breach of a duty owed to the other party.
  • Legislation: The Uniform Trade Secrets Act has been adopted in many states; the Economic Espionage Act makes the theft of trade secrets a federal crime.

LICENSING

  • Definition: A way to avoid litigation while utilizing another’s intellectual property, obtained through a license.
  • License Agreement: A contract allowing the use of a trademark, copyright, or patent.
  • Roles: The party owning the IP rights is the licensor; the party obtaining the license is the licensee.

INTERNATIONAL PROTECTION FOR INTELLECTUAL PROPERTY

  • Key Treaties and Agreements:
    • Paris Convention of 1883
    • Berne Convention (WIPO)
    • TRIPS Agreement of 1994
    • Madrid Protocol
    • Anti-Counterfeiting Trade Agreement