1. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law 6 th Edition Chapter 5 Intellectual Property and Internet Law

2. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 2 Trademarks Distinctive mark or emblem affixed to a product that easily identifies, or distinguishes, the product in the marketplace. Case 5.1 Coca-Cola Co. v. Koke Co. of America (1920). Distinctive mark or emblem affixed to a product that easily identifies, or distinguishes, the product in the marketplace. Case 5.1 Coca-Cola Co. v. Koke Co. of America (1920).

3. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 3 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) 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

4. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 4 Trademark Registration. –Federal protection requires registration with U.S. Patent Trademark Office (www.uspto.gov)www.uspto.gov –Mark can be registered if: In current use, or Applicant intends to put the mark into commerce within 6 months. Trademark Registration. –Federal protection requires registration with U.S. Patent Trademark Office (www.uspto.gov)www.uspto.gov –Mark can be registered if: In current use, or Applicant intends to put the mark into commerce within 6 months. Trademarks

5. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 5 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? 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?

6. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 6 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. 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.

7. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 7 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. 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.

8. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 8 Cyber Marks Cyber Marks are Trademarks on the internet. What rights does a trademark owner have? Domain Names. ICANN. Anticybersquatting Legislation. –Case 5.2 Schmidheiny v. Weber (2003). Meta Tags. Online Dilution. Cyber Marks are Trademarks on the internet. What rights does a trademark owner have? Domain Names. ICANN. Anticybersquatting Legislation. –Case 5.2 Schmidheiny v. Weber (2003). Meta Tags. Online Dilution.

9. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 9 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). 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). Patents

10. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 10 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. 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. Copyrights

11. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 11 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. 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. What is Protected Expression?

12. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 12 Whenever form or expression of idea is copied “Fair Use”: exception to infringement if educational, news reporting, scholarship or research. Whenever form or expression of idea is copied “Fair Use”: exception to infringement if educational, news reporting, scholarship or research. Copyright Infringement

13. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 13 Software Copyright 1980 Congress passed Computer Software Copyright Act. Computer language is a “literary work.” Courts disagree over the ‘look and feel’ of computer. 1980 Congress passed Computer Software Copyright Act. Computer language is a “literary work.” Courts disagree over the ‘look and feel’ of computer.

14. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 14 Copyrights in Digital Information Copyright Act of 1976. When is a copy made? What about collective works (newspaper and electronic databases)? –Case 5.3 NY Times v. Tasini (2001). Copyright Act of 1976. When is a copy made? What about collective works (newspaper and electronic databases)? –Case 5.3 NY Times v. Tasini (2001).

15. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 15 The Digital Millenium Copyright Act of 1998. –Provides ‘safe harbors’ from immunity for ISP’s. –Provides for flexible ‘fair use’ online. The Digital Millenium Copyright Act of 1998. –Provides ‘safe harbors’ from immunity for ISP’s. –Provides for flexible ‘fair use’ online. Copyrights in Digital Information

16. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 16 MP3 and File-Sharing Technology. –Software allows P2P sharing of files over a distributed network. –Is the software maker liable? –Case 5.4 A&M Records v. Napster (2001). Napster was vicariously liable for copyright infringement. But today KAZAA operates on similar technology. MP3 and File-Sharing Technology. –Software allows P2P sharing of files over a distributed network. –Is the software maker liable? –Case 5.4 A&M Records v. Napster (2001). Napster was vicariously liable for copyright infringement. But today KAZAA operates on similar technology. Copyrights in Digital Information

17. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 17 Trade Secrets: business process or information that cannot or should not be patented, copyrighted or trademarked. Protected from competitors. Uniform Trade Secrets Act. Economic Espionage Act of 1996. Trade Secrets: business process or information that cannot or should not be patented, copyrighted or trademarked. Protected from competitors. Uniform Trade Secrets Act. Economic Espionage Act of 1996. Trade Secrets

18. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 18 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 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

19. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 19 Trade Secrets in Cyberspace Internet facilitates illegal copying and distribution of confidential information. Sometimes mistakes can transfer information. Internet facilitates illegal copying and distribution of confidential information. Sometimes mistakes can transfer information.

20. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 20 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. 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.

21. ©2005 by West Legal Studies in Business A Division of Thomson Learning Fundamentals of Business Law Miller Jentz 6 th Ed. 21 International Protection Berne Convention (WIPO). Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 (WTO). World Intellectual Property Organization (WIPO) Copyright Treaty 1996. Berne Convention (WIPO). Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 (WTO). World Intellectual Property Organization (WIPO) Copyright Treaty 1996.