© 2004 West Legal Studies in Business A Division of Thomson Learning 1 Chapter 7 Intellectual Property and Internet Law Chapter 7 Intellectual Property and Internet Law

© 2004 West Legal Studies in Business A Division of Thomson Learning 2 Introduction Intellectual property (or “I.P.”) is becoming more important because the value of many corporations (e.g., Microsoft) is based primarily on I.P. Founders of America understood the value of I.P. and its impact on interstate commerce. Article I § 8 authorizes Congress to “secur[e] for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Intellectual property (or “I.P.”) is becoming more important because the value of many corporations (e.g., Microsoft) is based primarily on I.P. Founders of America understood the value of I.P. and its impact on interstate commerce. Article I § 8 authorizes Congress to “secur[e] for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

© 2004 West Legal Studies in Business A Division of Thomson Learning 3 Types of Intellectual Property Trademarks.  Service Marks.  Trade Dress. Patents. Copyrights. Cyberspace I.P. Trademarks.  Service Marks.  Trade Dress. Patents. Copyrights. Cyberspace I.P.

© 2004 West Legal Studies in Business A Division of Thomson Learning 4 §1: Trademarks Distinctive mark, motto or device or emblem that a manufacturer stamps, prints or otherwise affixes to the goods it produces. Distinguish product/service from goods of other manufacturers and merchants. Avoids consumer confusion. Case 7.1: Coca Cola v. Koke Co. (1920).Coca Cola v. Koke Co. Distinctive mark, motto or device or emblem that a manufacturer stamps, prints or otherwise affixes to the goods it produces. Distinguish product/service from goods of other manufacturers and merchants. Avoids consumer confusion. Case 7.1: Coca Cola v. Koke Co. (1920).Coca Cola v. Koke Co.

© 2004 West Legal Studies in Business A Division of Thomson Learning 5 Trademarks-Statutory Protection Lanham Trademark Act (1946) creates incentives for companies to invest; prevents unjust enrichment of companies who infringe. Lanham Trademark Act (1946) Federal Trademark Dilution Act (1995) Cause of action regardless of competition or confusion based on a “similar” mark. Federal Trademark Dilution Act (1995) Lanham Trademark Act (1946) creates incentives for companies to invest; prevents unjust enrichment of companies who infringe. Lanham Trademark Act (1946) Federal Trademark Dilution Act (1995) Cause of action regardless of competition or confusion based on a “similar” mark. Federal Trademark Dilution Act (1995)

© 2004 West Legal Studies in Business A Division of Thomson Learning 6 Trademarks - Registration Register with U.S. Patent Trademark Office if:U.S. Patent Trademark Office  Mark is currently in commerce; or  Applicant intends to put it into commerce within 6 months.  Registration allows use of “®” symbol. Register with U.S. Patent Trademark Office if:U.S. Patent Trademark Office  Mark is currently in commerce; or  Applicant intends to put it into commerce within 6 months.  Registration allows use of “®” symbol.

© 2004 West Legal Studies in Business A Division of Thomson Learning 7 Trademark Infringement Whenever a trademark is copied or used, intentionally or unintentionally, there is infringement. Trademark owner has cause of action against infringer,unless trademark is a “generic” term. Lanham Act designed to prevent consumer confusion about similar marks. Whenever a trademark is copied or used, intentionally or unintentionally, there is infringement. Trademark owner has cause of action against infringer,unless trademark is a “generic” term. Lanham Act designed to prevent consumer confusion about similar marks.

© 2004 West Legal Studies in Business A Division of Thomson Learning 8 Trademark - Distinctiveness Trademark must be sufficiently distinct. ‘Strong’ Marks:  Fanciful.  Arbitrary.  Suggestive marks. Secondary Meaning. Generic Terms: escalator, aspirin. Trademark must be sufficiently distinct. ‘Strong’ Marks:  Fanciful.  Arbitrary.  Suggestive marks. Secondary Meaning. Generic Terms: escalator, aspirin.

© 2004 West Legal Studies in Business A Division of Thomson Learning 9 Trade Dress Refers to the image and overall appearance of the product. Same protection as trademark. Issue is consumer confusion.  Example: distinctive décor, product names, packaging of Starbucks coffee shops.Starbucks coffee shops Refers to the image and overall appearance of the product. Same protection as trademark. Issue is consumer confusion.  Example: distinctive décor, product names, packaging of Starbucks coffee shops.Starbucks coffee shops

© 2004 West Legal Studies in Business A Division of Thomson Learning 10 Service Marks Similar to trademark but used to distinguish services of one person/company from another. Titles and character names used in media are frequently registered as service marks. Similar to trademark but used to distinguish services of one person/company from another. Titles and character names used in media are frequently registered as service marks.

© 2004 West Legal Studies in Business A Division of Thomson Learning 11 Trade Names Trademarks apply to products. Trade name applies to companies and are protected by federal law as well.  Example: IBM, Coca-Cola, NBC. Trademarks apply to products. Trade name applies to companies and are protected by federal law as well.  Example: IBM, Coca-Cola, NBC.

© 2004 West Legal Studies in Business A Division of Thomson Learning 12 § 2: Cyber Marks Online trademarks. Domain Names:  Conflicts: ICANN, WIPO. Anti-Cyber squatting Consumer Protection Act (1999) amended the Lanham Act. Meta Tags. Case 7.2: Playboy Enterprises v. Welles (2002). Cyber Mark Dilution. Online trademarks. Domain Names:  Conflicts: ICANN, WIPO. Anti-Cyber squatting Consumer Protection Act (1999) amended the Lanham Act. Meta Tags. Case 7.2: Playboy Enterprises v. Welles (2002). Cyber Mark Dilution.

© 2004 West Legal Studies in Business A Division of Thomson Learning 13 §3: Patents Exclusive federal grant from U.S. Patent and Trademark Office to make, use and sell an invention for 20 years.U.S. Patent and Trademark Office Patent Infringement. Patents for Software are now available. Patents for Business Processes. Exclusive federal grant from U.S. Patent and Trademark Office to make, use and sell an invention for 20 years.U.S. Patent and Trademark Office Patent Infringement. Patents for Software are now available. Patents for Business Processes.

© 2004 West Legal Studies in Business A Division of Thomson Learning 14 §4: Copyrights Introduction to Copyright. Introduction to Copyright Intangible property right to author for her life plus 70 years. Automatic protection after Works can be protected by registration at U.S. Copyright Office.U.S. Copyright Office. Introduction to Copyright. Introduction to Copyright Intangible property right to author for her life plus 70 years. Automatic protection after Works can be protected by registration at U.S. Copyright Office.U.S. Copyright Office.

© 2004 West Legal Studies in Business A Division of Thomson Learning 15 Copyrights Can only copyright the expression of an idea, not the idea itself. Work must be original and fixed in a durable medium: literary, musical, choreographical and dramatic works, pictoral, graphic and sculptures, films/ audiovisual/ TV/ sounds, computer software and architectural plans. Can only copyright the expression of an idea, not the idea itself. Work must be original and fixed in a durable medium: literary, musical, choreographical and dramatic works, pictoral, graphic and sculptures, films/ audiovisual/ TV/ sounds, computer software and architectural plans.

© 2004 West Legal Studies in Business A Division of Thomson Learning 16 Copyrights Compilations of facts are copyrightable but the compilation must be “original.”  Bellsouth v. Donnelley (1993). “Work Made For Hire” for Employees.Work Made For Hire Copyright Infringement: whenever unauthorized copying occurs.  Damages: actual to criminal prosecution. Compilations of facts are copyrightable but the compilation must be “original.”  Bellsouth v. Donnelley (1993). “Work Made For Hire” for Employees.Work Made For Hire Copyright Infringement: whenever unauthorized copying occurs.  Damages: actual to criminal prosecution.

© 2004 West Legal Studies in Business A Division of Thomson Learning 17 ‘Fair Use’ Exception Section 107 of the Copyright Act provides for exception to liability from reproduction of copyright under the the “fair use” doctrine when material is used for criticism, comment, news, criticism, teaching, research.Section 107 of the Copyright Act Section 107 of the Copyright Act provides for exception to liability from reproduction of copyright under the the “fair use” doctrine when material is used for criticism, comment, news, criticism, teaching, research.Section 107 of the Copyright Act

© 2004 West Legal Studies in Business A Division of Thomson Learning 18 Software Copyrights Computer Software Copyright Act (1980).Computer Software Copyright Act  Classifies computer software as a “literary work.”  Does not apply to “look and feel.” Lotus v. Borland (1996).Lotus v. Borland Computer Software Copyright Act (1980).Computer Software Copyright Act  Classifies computer software as a “literary work.”  Does not apply to “look and feel.” Lotus v. Borland (1996).Lotus v. Borland

© 2004 West Legal Studies in Business A Division of Thomson Learning 19 § 5: Copyrights in Digital Information Much of the content on the internet consists of copyrighted I.P. Copyright Act of  Case 7.3: New York Times v. Tasini (2001). Further Developments:  No Electronic Theft Act (1997).  Much of the content on the internet consists of copyrighted I.P. Copyright Act of  Case 7.3: New York Times v. Tasini (2001). Further Developments:  No Electronic Theft Act (1997). 

© 2004 West Legal Studies in Business A Division of Thomson Learning 20 Copyrights in Digital Information Digital Millennium Copyright Act (1998).  Provides civil and criminal penalties to circumvent encryption software (like DVD).  Limits ISP liability for subscriber act.  ‘Fair Use’ Exceptions for Libraries, universities and others. Digital Millennium Copyright Act (1998).  Provides civil and criminal penalties to circumvent encryption software (like DVD).  Limits ISP liability for subscriber act.  ‘Fair Use’ Exceptions for Libraries, universities and others.

© 2004 West Legal Studies in Business A Division of Thomson Learning 21 Copyrights in Digital Information MP3 and File Sharing. Peer to Peer (P2P) Networking.  Music sharing (Napster, Kazaa, Gnutella).  Case 7.4: A & M Records v. Napster (2001) in which Court found Napster vicariously liable for copyright infringement of its users. MP3 and File Sharing. Peer to Peer (P2P) Networking.  Music sharing (Napster, Kazaa, Gnutella).  Case 7.4: A & M Records v. Napster (2001) in which Court found Napster vicariously liable for copyright infringement of its users.

© 2004 West Legal Studies in Business A Division of Thomson Learning 22 §6: Trade Secrets Business process or information that cannot or should not be patented, copyrighted or trademarked. Protection from competitors. Uniform Trade Secrets Act. Uniform Trade Secrets Act Case 7.5: Nowogroski v. Rucker (1999). Business process or information that cannot or should not be patented, copyrighted or trademarked. Protection from competitors. Uniform Trade Secrets Act. Uniform Trade Secrets Act Case 7.5: Nowogroski v. Rucker (1999).

© 2004 West Legal Studies in Business A Division of Thomson Learning 23 Trade Secrets Can include: customer lists, plans, research, formulae, pricing information, marketing techniques. Hacking into a competitor’s computer may be criminal. Economic Espionage Act (1996). Economic Espionage Act Trade Secrets in Cyberspace. Can include: customer lists, plans, research, formulae, pricing information, marketing techniques. Hacking into a competitor’s computer may be criminal. Economic Espionage Act (1996). Economic Espionage Act Trade Secrets in Cyberspace.

© 2004 West Legal Studies in Business A Division of Thomson Learning 24 §7: Licensing Make use of another’s trademark, copyright, patent or trade secret without incurring liability. Uniform Computer Information Transactions Act (UCITA). Make use of another’s trademark, copyright, patent or trade secret without incurring liability. Uniform Computer Information Transactions Act (UCITA).

© 2004 West Legal Studies in Business A Division of Thomson Learning 25 §8: International Protection Berne Convention (WIPO). Berne Convention Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 (WTO). Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 World Intellectual Property Organization (WIPO) Copyright Treaty World Intellectual Property Organization (WIPO) Copyright Treaty 1996 Berne Convention (WIPO). Berne Convention Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 (WTO). Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 World Intellectual Property Organization (WIPO) Copyright Treaty World Intellectual Property Organization (WIPO) Copyright Treaty 1996

© 2004 West Legal Studies in Business A Division of Thomson Learning 26 Law on the Web U.S. Patent and Trademark Office. U.S. Patent and Trademark Office Patent Searches. Patent Searches Copyright Info at the U.S. Copyright Office. Law.com I.P. Site Legal Research Exercises on the Web. U.S. Patent and Trademark Office. U.S. Patent and Trademark Office Patent Searches. Patent Searches Copyright Info at the U.S. Copyright Office. Law.com I.P. Site Legal Research Exercises on the Web.