Ch.11 Intellectual Property Outline Part 2.docx

Ch. 11 Intellectual Property Outline Part 2

Types of Intellectual Property (continued)
1. Trademarks
  1. Marks on what is produced to represent the origin of goods and services
  2. Recognizability or distinctiveness is the function of trademarks
  3. Protects consumers against confusion
  4. Types of Trademarks
    1. Trademark - mark, word, picture, or design that attaches to goods to indicate their source.
    2. Service Mark - A mark associated with a service
    3. Certification Mark – a mark used by someone other than the owner to certify the quality of goods or service.
    4. Collective Mark - mark represents membership in a certain organization or association.
    5. Trade dress - the look or design of a product or service. I.e. the color or shape of a product
  5. Trademark Registration
    1. Register with US Patent & Trademark Office
    2. PTO places the mark in the Official Gazette
    3. If existing owners raise objections, there is a hearing.
    4. If mark is acceptable, PTO registers mark in Principal Register.
    5. ***Note: Trademarks enjoy potentially unlimited projection but you must notify the PTO that trademark is still in use every 6 years and renew the trademark registration every 10 years
    6. When can the PTO deny Registration?
      1. The mark is the same or similar to another mark
      2. If it contains certain prohibited or reserved names or designs
      3. If it merely describes a product or service
      4. If it is generic and represents a product or service
    7. What happens if your trademark registration is denied?
      1. You can still use your mark, however it would be considered an unregistered trademark
      2. trademark rights are derived from USE not registration
      3. Can still sue for trademark infringement of an unregistered trademark, but only in the state where the owner does business

if your trademark is registered, you have rights in all 50 states and all US territories

- - 1. Can You Register Descriptive Terms or a Person’s Name as a Trademark?
      1. Generally, the PTO will NOT accept a person’s name or descriptive term for protection on the Principal Register.
      2. Exception: If the descriptive term is listed on the PTO’s Supplemental Register for 5 years AND acquires a secondary meaning
      3. Secondary refers to a public meaning that is different from its meaning as a person’s name or as a descriptive term, a public meaning that makes the name or term distinctive.

Examples:

Ford

Levi’s

Disney

- 1. Trademark Enforcement:
    1. Law protects the owner from unauthorized use of the mark
      1. Establishes civil and criminal violation
    2. Civil Violation:
      1. Infringement

Remedies include damages and injunctions and orders to destroy infringing products

- - - 1. Generic marks cannot be protected
      2. Criminal Violations:

manufacturing and trafficking counterfeit trademarked products (I.e. imitation Rolex watches)

- 1. Trademark Infringement
    1. Plaintiff must prove that Defendant’s use has created a likelihood of confusion with the plaintiff’s trademark.
    2. Courts use a multifactored test that considers elements such as:
      1. the Defendant’s Intent
      2. Proof of Actual Consumer confusion
  2. Trademark Confusion
    1. Case
      1. Kraft Foods Group Brands LLC v Cracker Barrel Old Country Store Inc
      2. Plaintiff filed a suit against the defendant claiming that consumers will be confused by the similarity of the logos and Kraft will be blamed for any dissatisfaction with CBOCS products
  3. What can a Defendant argue?
    1. The mark is not distinctive
    2. There is little chance of the public being confused
    3. The use is a fair use
  4. Federal Trademark Dilution Act
    1. Prohibits the usage of a mark that is the same as or similar to another’s “famous” trademark to dilute its significance, reputation, and goodwill
    2. TYPES OF DILUTION:
      1. Blurring - when usage of a mark blurs distinctiveness of a famous mark
      2. Tarnishment - When usage of a mark creates a negative impression about the famous company
1. Copyrights
  1. Property right in creative expression that protects creators.
  2. Property rights in a copyright afford an author, artist, or other creator a monopoly in the right to copy and market their creative expression for a limited time
    1. Work must be original
    2. Must be fixed in a tangible medium of expression
    3. Must show creative expression
    4. if you are an individual it will last the author's lifetime plus 70 years
    5. if you are a company it will last 95 years from publication, or 120 years from creation, whichever one expires first
  3. Copyright Enforcement
    1. Civil – copyright infringement
    2. The author must:
      1. register with the Copyright Office AND
      2. establish that defendant violated one of his or her exclusive rights of:

Reproduction

Creation of Derivative Works

Distribution

Performance

Display

- - 1. Criminal penalties are applicable for wilful infringement
      1. Piracy: Large Scale Copyright Infringement
      2. you are trying to prove that this person had access to the material that you are now claiming they copied
    2. Case:
      1. Skidmore v Led Zeppelin

Skidmore (trustee of Randy California’s Estate) claimed the band Led Zeppelin copied part of his Randy California’s song, Taurus, in creating the song Stairway to Heaven

- 1. Fair Use Defense
    1. Copyright Act
      1. Specifies that fair use of copyrighted materials is not an infringement of the owner’s property

Fair use includes copying for:

Criticism

Comment

News Reporting

Teaching

Scholarship

Research

Factors considered by the courts:

Purpose and character of the use

Nature of the copyrighted work

Amount and substantiality of the portion used in relation to the copyrighted work as a whole

Effect of the use upon the potential market for the copyrighted work

- 1. Copyright in the Music Industry
    1. music copyright is made up of two different parts
      1. composition

generally song lyrics

- - - 1. master

recorded sound (what we listen to on spotify)

- - - 1. Taylor Swift, only owns the composition of her earlier albums, she does not have the rights to her masters
      2. this means she is unable to sing her old songs without the permission of the owner of her masters
      3. she is now rerecording all of her old albums to gain access to both the composition and the masters
  1. Copyright in the Digital Age
    1. Illegal to produce or assist in the production/distribution of copies that _______________________.
    2. Person is held liable for:
      1. Contributing to another’s infringement (Metro-Goldwyn-Mayer Studios v. Grokster)
      2. Obtaining _____________________
      3. Supervising the _______________________
    3. Criminal and civil lawsuits for file sharing copyrighted material persist in the ________________.
  2. Digital Millennium Copyright Act
    1. Prevents the __________ or ___________ of a product or service designed to circumvent ____________ protections
    2. Protects Internet Service Providers (ISPs) from liability
      1. Exception:

ISPs must act if asked to remove the offending material upon request of a copyright owner OR if they have ___________ of infringing works posted by users

- - 1. Violations of the act permit civil remedies
      1. Actual and statutory _____________
      2. Up to ___________ imprisonment for circumventing for financial gain
  1. International Intellectual Property Rights
    1. Once you have Intellectual Property Right Protection, is that protection automatic internationally as well?
    2. World Trade Organization (WTO)
      1. Administers Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)

Requires member countries to provide protection for all forms of intellectual property

- - 1. World Intellectual Property Organization (WIPO) administers:
      1. Patent Cooperation Treaty (PCT)
      2. Madrid System for International Registration of Marks