Chapter 10 Intellectual Property and Internet Law

Trademarks and Related Property Distinctive mark or emblem affixed to a product that easily identifies, or distinguishes, the product in the marketplace. Case 10.1 Coca-Cola Co. v. Koke Co. of America (1920).

Trademarks and Related Property Statutory Protection of Trademarks. Lanham Trade Mark Act (1946). Federal Trademark Dilution Act (1995): federal cause of action for “dilution” (confusion of similar marks on goods or services).

Trademarks and Related Property Trademark Registration. Federal protection requires registration with U.S. Patent Trademark Office (www.uspto.gov) Mark can be registered if: In current use, or Applicant intends to put the mark into commerce within 6 months.

Trademark Infringement Strong Marks (e.g., Xerox). Fanciful, arbitrary or suggestive. Normally outside the context of the product. Secondary Meaning. Descriptive, geographic terms and personal names. Generic Terms. Bicycle, computer. What about Escalator?

Service, Certification, and Collective Marks Service Mark. Similar to trademark but for services. Certification Mark. Used by other than the owner. Collective Mark. Certification used by members of cooperative or association. “Good Housekeeping” Seal of Approval.

Trade Names / Trade Dress Trade Names applies to all or part of business’s name; directly related to goodwill. Trade Dress refers to the image and appearance of the product.

Cyber Marks Cyber Marks are Trademarks on the internet. What rights does a trademark owner have? Domain Names. ICANN. Anticybersquatting Legislation. Case 10.2 Schmidheiny v. Weber (2003). Meta Tags. Dilution in the Online World Hasbro v. Internet Entertainment Group.

Patents Patent is a grant from government gives inventor exclusive right to make, use and sell invention for 20 years from filing the application. Software patents are now available. Infringement. Business Process Patents (State Street Bank v. Signature Financial Group).

Copyrights Copyright: Intangible property right to author for her life plus 70 years. Automatic protection after 1978. Works can be protected by registration at U.S. Copyright Office.

What is Protected Expression? Can only copyright the expression of an idea, not the idea itself. Work must be original and fixed in a durable medium. Compilation of facts must be original.

Copyright Infringement Whenever form or expression of idea is copied. “Fair Use”: exception to infringement if educational, news reporting, scholarship or research.

Software Copyright 1980 Congress passed Computer Software Copyright Act. Computer language is a “literary work.” Courts disagree over the ‘look and feel’ of computer.

Copyrights in Digital Information Copyright Act of 1976. When is a copy made? What about collective works (newspaper and electronic databases)? Case 10.3 NY Times v. Tasini (2001).

Copyrights in Digital Information The Digital Millennium Copyright Act of 1998. Provides ‘safe harbors’ from immunity for ISP’s. Provides for flexible ‘fair use’ online.

Copyrights in Digital Information MP3 and File-Sharing Technology. Software allows P2P sharing of files over a distributed network. Is the software maker liable? Case 10.4 A&M Records v. Napster (2001). Napster was vicariously liable for copyright infringement. But today KAZAA operates on similar technology.

Trade Secrets Trade Secrets: business process or information that cannot or should not be patented, copyrighted or trademarked. Protected from competitors. Uniform Trade Secrets Act. Case 10.5 Ed Nowogroski, Inc. v. Rucker (1999). Economic Espionage Act of 1996.

Trade Secrets Can include: customer lists, plans, research, formulae, pricing information, marketing techniques. Hacking into a competitor’s computer may be criminal.

Trade Secrets in Cyberspace Internet facilitates illegal copying and distribution of confidential information. Sometimes mistakes can transfer information.

Licensing Allows a third party to legally use another’s intellectual property, e.g., trademark or patent. Licensing contracts usually allow for royalties based on sales or profits. Win-Win for all.

International Protection Berne Convention (WIPO). Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 (WTO). World Intellectual Property Organization (WIPO) Copyright Treaty 1996.