1. Chapter 7 Intellectual Property and Piracy
PowerPoint Slides to Accompany CONTEMPORARY BUSINESS AND ONLINE COMMERCE LAW 6th Edition by Henry R. Cheeseman
Chapter 7
Intellectual Property and Piracy
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2. Intellectual Property Rights
Intellectual property rights include:
Patents
Copyrights
Trademarks
Trade Secrets
Trade Names
Domain Names
These are very valuable business assets
Protected by federal and state laws from misappropriation and infringement
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3. Trade Secrets (1 of 3)
A product formula, pattern, design, compilation of data, customer list, or other business secret
Many states have adopted the Uniform Trade Secrets Act to give statutory protection to trade secrets.
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4. Trade Secrets (2 of 3)
State unfair competition laws allow the owner of a trade secret to bring a lawsuit for misappropriation against anyone who steals a trade secret.
To be actionable, the defendant must have obtained the trade secret through unlawful means.
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5. Trade Secrets (3 of 3)
The owner of a trade secret is obliged to take all reasonable precautions to prevent those secrets from being discovered by others.
If the owner fails to take precautions, the secret is no longer subject to protection under state unfair competition laws.
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6. Online Commerce and Internet Law: Economic Espionage Act of 1996
Makes it a federal crime to steal another’s trade secrets
It is a federal crime for any person:
To convert a trade secret to his or her benefit or for the benefit of others,
Knowing or intending that the act would cause injury to the owner of the trade secret
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7. Landmark Law: Federal Patent Statute of 1952
This law is intended:
To provide an incentive for inventors to invent and to make their inventions public; and
To protect patented inventions from infringement
Federal patent law is exclusive
There are no state patent laws
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8. Changes in U.S. Patent Law (1995)
The General Agreement on Tariffs and Trade (GATT) caused the following changes in U.S. patent law:
Patents are valid for 20 years, instead of the previous term of 17 years
The patent term begins to run from the date the patent application is filed instead of when the patent is issued, as was previously the case.
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9. Patenting an Invention
To be patented, an invention must be:
Novel
Useful
Nonobvious
Only certain subject matters can be patented.
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10. Patentable Subject Matter Includes:
Machines
Processes
Compositions of matter
Improvements to:
Existing machines
Designs for an article of manufacture
Asexually reproduced plants
Living material invented by a person
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11. Patent Infringement Unauthorized use of another’s patent
A patent holder may recover damages and other remedies against a patent infringer.
Patent holders own exclusive rights to use and exploit their patent.
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12. One-Year “On Sale” Doctrine
A patent may not be granted if the invention was used by the public for more than one year prior to filing of the patent application.
This doctrine forces inventors to file their patent applications at the proper time.
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13. The American Inventors Protection Act
Federal statute that permits inventors to file a provisional application with the PTO
Requires the PTO to issue a patent within three years in most circumstances
Provides for contested reexaminations within the PTO
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14. Copyrights and Internet Law: Copyright Revision Act of 1976
Establishes the requirements for obtaining a copyright
Protects copyrighted works from infringement
To be protected under federal copyright law, the work must be the original work of the author.
Only tangible writings are subject to copyright registration and protection.
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15. Registration of Copyrights
To be protected under federal copyright law:
The work must be the original work of the author
A copyright is created when an author produces her work.
Published and unpublished works may be registered with the U.S. Copyright Office.
Registration is permissive and voluntary and can be effected at any time during the term of the copyright.
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16. Copyright Terms
Individual Copyright Holder – life of author plus 70 years.
Corporate Copyright Holder – 95 years from the year of first publication or 120 years from the year of creation, whichever is shorter.
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17. Copyrighting Software
Key legislation to afford protection to software and computer chips:
Computer Software Copyright Act of 1980
Semiconductor Chip Protection Act of 1984
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18. Copyright Infringement
Occurs when a party copies a substantial and material part of the plaintiff’s copyrighted work without permission.
A copyright holder may recover damages and other remedies against the infringer.
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19. The Fair Use Doctrine (1 of 3)
The copyright holder’s rights in the work are not absolute.
The law permits certain limited unauthorized use of copyrighted materials.
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20. The Fair Use Doctrine (2 of 3)
The following are protected under this doctrine:
Quotation of the copyrighted work for review or criticism or in a scholarly or technical work
Use in a parody or satire
Brief quotation in a news report
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21. The Fair Use Doctrine (3 of 3)
Reproduction by a teacher or student of a small part of the work to illustrate a lesson
Incidental reproduction of a work in a newsreel or broadcast of an event being reported
Reproduction of a work in a legislative or judicial proceeding
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22. Online Commerce and Internet Law:
No Electronic Theft Act (NET Act) of 1997
Digital Millennium Copyright Act (DMCA) of 1998
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23. Landmark Law: Lanham Trademark Act of 1946 (as amended)
Establishes the requirements for obtaining a federal mark
Protects marks from infringement
Trademarks are registered with the U.S. Patent and Trademark Office (PTO)
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24. Trademark Law
The original registration of a mark is valid for 10 years.
It can be renewed for an unlimited number of 10-year periods.
The registrant is entitled to use the registered trademark symbol ® in connection with a registered trademark or service mark.
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25. Distinctiveness of a Mark
To qualify for federal protection,
A mark must be distinctive – i.e., a brand name that is unique and fabricated; or
Have acquired a “secondary meaning” – i.e., when an ordinary term has become a brand name.
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26. Marks That Can Be Trademarked (1 of 2)
Trademark – a distinctive mark, symbol, name, word, motto, or device that identifies the goods of a particular business.
e.g., IBM, Coca-Cola
Service Mark – used to distinguish the services of the holder from those of its competitors.
e.g., United Airlines, Weight Watchers, Marriott Hotels
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27. Marks That Can Be Trademarked (2 of 2)
Certification Mark – used to certify that goods and services are of a certain quality or originate from particular geographical areas.
e.g., “Florida” oranges, “Napa Valley” wines
Collective Mark – used by cooperatives, associations, and fraternal organizations.
e.g., Boy Scouts of America
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28. Marks That Cannot Be Registered
The flag or coat of arms of the United States, any state, municipality, or foreign nation
Marks that are immoral or scandalous
Geographical names standing alone
Surnames standing alone
Any mark that resembles a mark already registered with the federal PTO
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29. Trademark Infringement
The owner of a mark can sue a third party for the unauthorized use of a mark
The owner must prove that:
The defendant infringed the plaintiff’s mark by using it in an unauthorized manner, and
Such use is likely to cause confusion, mistake, or deception of the public as to the origin of the goods or services.
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30. Generic Names
Generic name – a trademark that that becomes a common term for a product line or type of service.
Once a trademark becomes a generic name, the term loses its protection under federal trademark law because it has become descriptive rather than distinctive.
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31. Federal Dilution Act of 1995 (1 of 2)
Protects famous marks from dilution
The act provides that owners of marks have a valuable property right in their marks that should not be eroded, blurred, tarnished, or diluted in any way by another.
The act is designed to stop those who attempt to benefit from the time and money spent by a company to develop and promote its famous marks.
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32. Federal Dilution Act of 1995 (2 of 2)
The act has three fundamental requirements:
The mark must be famous
The use by the other party must be commercial
The use must cause dilution of the distinctive quality of the mark
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33. International Protection of Intellectual Property Rights
1. Paris Convention
2. Berne Convention
3. WIPO Copyright
Treaty
4. WIPO Phonogram
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