Chapter 7 - Intellectual Property Notes

The key points in this chapter include:

1. Patents and patent infringement.

2. Copyright law.

3. Trademarks and related property.

4. Trade secrets and the applicable law.

5. International protection for intellectual property
rights.

Intellectual property consists of the products of intellectual, creative processes. Many of these products (such as inventions, books, software, movies, and songs) are protected by the law of trademarks, patents, copyrights, and related concepts. The first parts of this chapter outlines the laws that protect these products. The last part of this chapter covers the protection of intellectual property in cyberspace.


I. TRADEMARKS AND RELATED
PROPERTY

A. TRADEMARKS
Trademarks are protected at the federal level
by the Lanham Act. Many states also have
statutes that protect trademarks.

1. What a Trademark Is
A distinctive mark, motto, device, or emblem
that a manufacturer stamps, prints, or

otherwise affixes to the goods it produces to
distinguish them from the goods of other
manufacturers.

2. Trademark Registration
A trademark may be registered with a state or
the federal government. Trademarks do not
need to be registered to be protected.

a. Requirements for Federal Registration
A trademark may be filed with the U.S. Patent
and Trademark Office on the basis of (1) use
or (2) the intent to use the mark within six
months (which may be extended to thirty
months).

b. Renewal of Federal Registration
Between the fifth and sixth years and then
every ten years (twenty years for marks
registered before 1990).

3. Requirements for Trademark Protection
The extent to which the law protects a
trademark is normally determined by how
distinctive the mark is.

a. Fanciful, Arbitrary, or Suggestive Trademarks
Generally considered to be the most distinctive
trademarks.

b. Descriptive Terms, Geographic Terms, and
Personal Names
Not inherently distinctive and not protected
until they acquire a secondary meaning
(which means that customers associate the
mark with the source of a product).

c. Generic Terms
Terms such as bicycle or computer receive no
protection, even if they acquire secondary
meaning.

4. Trademark Infringement
When a trademark is copied to a substantial
degree or used in its entirety by another, the
trademark is infringed.

5. The Federal Trademark Dilution Act of 1995
Prohibits unauthorized use of marks on goods
or services, whether or not they compete
directly with goods or services whose marks
are copied.

6. Trade Dress
Trade dress is the image and appearance of a
product, and is subject to the same protection
as trademarks.

B. SERVICE, CERTIFICATION, AND COLLECTIVE
MARKS
The same policies and restrictions that apply to
trademarks normally apply to service,
certification, and collective marks.

1. Service Marks
Used to distinguish the services of one person
or company from those of another. Registered
in the same manner as trademarks.

2. Certification Marks
Used by one or more persons, other than the
owner, to certify the region, materials, mode of
manufacture, quality, or accuracy of the
owner’s goods or services.

3. Collective Marks
Certification marks used by members of a
cooperative, association, or other organization.

C. TRADE NAMES
Used to indicate part or all of a business’s
name. Trade names cannot be registered with
the federal government but may be protected
under the common law if they are used as
trademarks or service marks.

II. PATENTS

A. WHAT A PATENT IS
A grant from the federal government that
conveys and secures to an inventor the
exclusive right to make, use, and sell an
invention for a period of twenty years (fourteen
years for a design).

B. REQUIREMENTS FOR A PATENT
An invention, discovery, or design must be
genuine, novel, useful, and not obvious in light
of the technology of the time. A patent is given
to the first person to invent a product, not to the
first person to file for a patent.

C. PATENT INFRINGEMENT
Making, using, or selling another’s patented
design, product, or process without the patent
owner’s permission. The owner may obtain an
injunction, damages, destruction of all infringing
copies, attorneys’ fees, and court costs.

D. PATENTS FOR SOFTWARE
The basis for software is often a mathematical
equation or formula, which is not patentable,
but a patent can be obtained for a process that
incorporates a computer program.

III. COPYRIGHTS

A. WHAT A COPYRIGHT IS
An intangible right granted by statute to the
author or originator of certain literary or artistic
productions. Protection is automatic;
registration is not required.

B. COPYRIGHT PROTECTION
Automatic for the life of the author plus fifty
years. Copyrights owned by publishing houses
expire seventy-five years from the date of
publication or a hundred years from the date of
creation, whichever is first. For works by
more than one author, copyright expires fifty
years after the death of the last surviving
author.

C. WHAT IS PROTECTED EXPRESSION?
To be protected, a work must meet these
requirements—

1. Fit a Certain Category
It must be a (1) literary work; (2) musical
work; (3) dramatic work; (4) pantomime or
choreographic work; (5) pictorial, graphic, or
sculptural work; (6) film or other audiovisual
work; or (7) a sound recording. The Copyright
Act also protects computer software and
architectural plans.

2. Be Fixed in a Durable Medium
From which it can be perceived, reproduced, or
communicated.

3. Be Original
A compilation of facts (formed by the
collection and assembling of preexisting
materials of data) is copyrightable if it is
original.

D. WHAT IS NOT PROTECTED
Ideas, facts, and related concepts. If an idea
and an expression cannot be separated, the
expression cannot be copyrighted.

E. COPYRIGHT INFRINGEMENT
A copyright is infringed if a work is copied
without the copyright holder’s permission. A
copy does not have to be exactly the same as
the original—copying a substantial part of the
original is enough.

1. Penalties
Actual damages (based on the harm to the
copyright holder); damages under the
Copyright Act, not to exceed $100,000; and criminal proceedings (which may result in fines
or imprisonment).

2. Exception—Fair Use Doctrine
The Copyright Act permits the fair use of a
work for purposes such as criticism, comment,
news reporting, teaching (including multiple
copies for classroom use), scholarship, or
research.

F. COPYRIGHT PROTECTION FOR SOFTWARE
The Computer Software Copyright Act of 1980
provides protection.

1. What Is Protected
The binary object code (the part of a software
program readable only by computer); the
source code (the part of a program readable by
people); and the program structure, sequence,
and organization.

2. What May or May Not Be Protected
The “look and feel”—the general appearance,
command structure, video images, menus,
windows, and other displays—of a program.

IV. TRADE SECRETS

A. WHAT A TRADE SECRET IS
Customer lists, formulas, plans, research and
development, pricing information, marketing
techniques, production techniques, and
generally anything that provides an opportunity
to obtain an advantage over competitors who
do not know or use it.

B. TRADE SECRET PROTECTION
Protection of trade secrets extends both to
ideas and their expression. Liability extends to
those who misappropriate trade secrets by any
means (breach of contract, industrial
espionage). Trade secret theft is a crime.

V. INTELLECTUAL PROPERTY
CYBERSPACE
Computer crime is any act that is directed
against computers or computer parts, that uses
computers as instruments of crime, or that
involves computers and constitutes abuse.

A. TRADEMARK PROTECTION ON THE
INTERNET— DOMAIN NAMES

1. What a Domain Name Is
An address on the Internet, located by type of
organization (such as .com) and the
organization’s name .

2. Domain Name Registration
Names are registered with Network Solutions,
Inc. (a private firm), which requires a name to
be used on the Internet on a regular basis, and
its use must not infringe on another’s
intellectual property rights.

3. Unauthorized Use of a Trademark as a Domain
Name
Unauthorized use of mark as a domain name is
trademark infringement; unauthorized
commercial use violates Federal Trademark
Dilution Act.

B. PATENT PROTECTION FOR CYBERPRODUCTS

1. Cyberproducts
Cyberproducts include data-compression
software, encryption programs, and software
facilitating information linking and retrieval
systems.

2. Licensing
In the context of a patent, a license is
permission granted by a patent owner to
another to make, sell, or use the patented item.
A license can be limited to certain purposes
and to the licensee only.

C. COYPRIGHTS IN CYBERSPACE

1. Online Issues
How copyright law applies in cyberspace is still
being debated. Some courts have held that
software stored in a computer constitutes a
copy, as does digital storage of photographs,
music, and other works.

2. Online Liability
Online providers (Internet access services,
etc.) directly involved in the unauthorized
copying, distribution, and performance or
display of copyrighted work can be held liable
for unauthorized use.

VI. INTERNATIONAL PROTECTION

A. THE BERNE CONVENTION
The Berne Convention is an international
copyright treaty.

1. For Citizens of Countries That Have Signed the
Berne Convention
If, for example, an American writes a book, the
copyright in the book is recognized by every
country that has signed the convention.

2. For Citizens of Other Countries
If a citizen of a country that has not signed the
convention publishes a book first in a country
that has signed, all other countries that have
signed the convention recognize that author’s
copyright.

B. THE TRIPS AGREEMENT
Trade-Related Aspects of Intellectual Property
Rights (TRIPS) Agreement is part of the
agreement creating the World Trade
Organization (WTO). Each member nation
must not discriminate (in administration,
regulation, or adjudication of intellectual
property rights) against owners of such rights.

C. CYBERSPACE ISSUES
The laws of many countries and international
laws are being updated to reflect changes in
technology and the spread of the Internet.

*notes are provided from West Business Law 8th Edition