Chapter 14: Intellectual Property

Chapter 14: Intellectual Property

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Introduction Introduction

• Article I § 8 authorizes Congress to “secur[e] for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

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What is Intellectual PropertyWhat is Intellectual Property

• 1. Trademarks.

• 2. Patents.

• 3. Copyrights

• 4. Cyberspace I.P.

What do you think of? What do you think of?

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1. Trademarks1. Trademarks

• A trademark is a word, phrase, symbol or design, or a combination thereof, that make consumers think of a specific product or service and the originator of such a product or service.

• Examples

• Johnny Manziel leads the league in trademarks.

• Manziel has filed for a trademark to the term “Johnny Cleveland”. That makes 10 trademarks that Manziel’s company, JMan2 Enterprises LLC, has filed with the U.S. Patent & Trademark Office.

• Manziel’s other trademarks include “Johnny Football,” “JFF,” “ManzIIiel” and “The House That Johnny Built,” the latter a reference to the renovated stadium at Texas A&M.

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Taylor Swift applied for the following trademarks and is awaiting approval by the U.S. Patent and Trademark Office:

“This Sick Beat,” “Nice to Meet You. Where You Been?,” and “Party Like It’s 1989,” among others.

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The trademark "Nike," along with the Nike "swoosh," identify the shoes made by Nike and distinguish them from shoes made by other companies

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How to be a TRADEMARKHow to be a TRADEMARK

• Must be Distinct –

• For example, the words "Exxon," "Kodak," and "Apple" bear no inherent relationship to their underlying products.

• Nike “swoosh” symbol.

• Just as the word Apple is arbitrary when applied to a laptop, Taylor Swifts lyrics are equally arbitrary when placed on a Christmas stocking or a “non-medicated preparation for the care of skin” (two products T-Swift has applied for trademark on).

• ‘This Sick Beat’ is NOT descriptive of Christmas stocking,'”

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A. SERVICE MARKA. SERVICE MARK

• When such marks are used to identify services rather than products, they are called service marks.

• Examples:

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B. – SUGGESTIVE MARK B. – SUGGESTIVE MARK

Suggestive Marks—words that suggest meaning or relation but that do not describe the goods themselves

Coppertone (suntan lotion)

Greyhound (bus lines)

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C. DESCRIPTIVE MARK C. DESCRIPTIVE MARK

• A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions, or ingredients).

• For example, "Holiday Inn," and "Vision Center"

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Generic - examplesGeneric - examples

• You no longer think of a particular company when you hear these names

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GENERIC – NO PROTECTIONGENERIC – NO PROTECTION

• Marks - originally legally protected trademarks, but lost legal protection as used both by the consumers.

• Examples?

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Still have trademark protectionStill have trademark protection

Close to being generic but not generic:

•Coke – Xerox – Crock pot – Jeep – Jetski-

•Jumbotron- Jello- Kool Aid- Bandaid-Frisbee – Mace -

•

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TRADEMARK PROTECTIONTRADEMARK PROTECTION

• Assuming that a trademark qualifies for protection (distinct etc), how to get trademark rights:

• (1) by being the first to use the mark in commerce; or

• (2) by being the first to register the mark with the U.S. Patent and Trademark

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What is first to use it: What is first to use it:

• ACTUAL SALE OF THE PRODUCT WITH TRADEMARK ON PRODUCT

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• First to sell “Chewy" brand bubble-gum to the public in Murfreesboro, TN

• RIGHT IS GEOGRAPHIC - where sell and expect to expand

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Trademark RegistrationTrademark Registration

• OR Register with U.S. Patent Trademark Office

• RIGHT IS NATIONWIDE BUT MAY BE LIMITED IF OTHERS ALREADY USING MARK.

• Example -if I register the mark "Broadway" in connection with the sale of pizza, the existing "Broadway Pizza" in Boston retains the right to use the name in Boston, but I get the right to use it everywhere else.

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How Long? How Long?

• Forever or until becomes generic–

• Must keep up with filings with government• So long as not generic/diluted

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Trademark InfringementTrademark Infringement

• When can you sue: the standard is "likelihood of confusion.

• Whether intentional or unintentional- doesn’t matter

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Generic or NotGeneric or Not• PODS moving and storage was awarded $62

million in damages in a lawsuit against U-Haul over its use of the word "pods.''

• The ruling marked a win over “generic'' — the death of a trademarked word.

• PODS remains a legally protected trademark brand, even if people use the word frequently to describe a container used for moving.

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• LAWSUIT - In the PODS case, the jury ruled U-Haul infringed on PODS' trademarks, causing confusion and hurting business for PODS.

• U-Haul used the word pod to describe its U-Box product. U-Haul used the term on its marketing and advertising materials and started using the word only after PODS became famous.

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• The Hershey Co. filed a federal trademark infringement lawsuit against TinctureBelle Marijuanka LLC. The lawsuit alleged that TinctureBelle's products too closely resembled Hershey's.

• A settlement reached in September requires TinctureBelle to stop using those names and Hersey's brown, yellow and orange coloring for its products.

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• Plaintiff Toys "R" Us sued defendant Guns are We for use of the domain name gunsareus.com.

• The court granted the defendant's motion for summary judgment after concluding that the plaintiff had not demonstrated any evidence of likelihood of confusion or dilution.

• In determining that there is no likelihood of confusion the court indicated that it is unlikely that a prudent consumer would be misled into thinking that Toys "R" Us had sponsored a small gun shop web site targeting primarily gun dealers.

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Trade DressTrade Dress• image and overall appearance

– Example:

The U.S. Supreme Court found that a Mexican restaurant chain’s decor could be considered inherently distinctive because, in addition to murals and bright colored pottery, the chain also uses a specific indoor and outdoor decor based upon neon colored border stripes (primarily pink), distinctive outdoor umbrellas, and a novel buffet style of service.

(Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).

• Same protection as trademark.

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Counterfeit GoodsCounterfeit Goods

• This is a growing problem for U.S. companies.

• In 2006 Congress passed the Stop Counterfeiting in Manufactured Goods Act, regardless of whether they are attached to a product.– Criminal Penalties: up to $2 million and 10 years.

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Cyber MarksCyber Marks

• Online trademarks.

• Domain Names.

• Anti-Cybersquatting Consumer Protection Act (1999) amended the Lanham Act.

•PATENTS

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Patents – for inventorsPatents – for inventors

• Patent –anyone who invents any new, useful, and non-obvious invention, process.

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RightsRights

• Right for Inventor “to exclude others from making, using, or selling their invention throughout the United States or importing their invention into the United States”

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How Long: How Long:

• How long: for a limited time. (up to 20 years)

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What does "patent pending" mean? What does "patent pending" mean?

• It serves as a warning that a patent may issue that would cover the item and that copiers should be careful because they might infringe if the patent issues.

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Patent Infringement CasePatent Infringement Case

• Flash of Genius

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•COPYRIGHT

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COPYRIGHTCOPYRIGHT

• Original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.

• EX: Music – Photographs-Writings – Poems, Plays - Dance - Paintings

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CopyrightsCopyrights

• Copyright protection exists from the moment a work is created in a fixed, tangible form of expression.

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HOW LONG: HOW LONG:

• Right given to author for life plus 70 years.

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• Have to by registration at U.S. Copyright Office if going to sue for copyright violations/infringement

• The use of a copyright notice is no longer required under U.S. law, although it is recommended to give notice.

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To Qualify - CopyrightsTo Qualify - Copyrights

• Must be ORIGINAL

• and fixed in a durable medium

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Copyrights – Who Owns itCopyrights – Who Owns it

• Not necessarily for the author – but employer can own copyright if “Work Made For Hire”

• If you create original piece as part of employment – employer owns

Example Cases: Example Cases:

• Men at Work - "Down Under." The band was accused of stealing the catchy riff from the children's campfire song "Kookaburra Sits in the Old Gum Tree."

• The publisher of "Kookaburra" sued Men at Work, and in 2010 a judge ruled the band had copied the melody.

• The group was ordered to hand over a portion of its royalties. Ham later said the controversy had left him devastated, and he worried it would tarnish his legacy.

• The Los Angeles jury found Thicke's "Blurred Lines" unintentionally plagiarized Gaye's "Got to Give It Up".

• The Gaye estate’s copyright covers only the notes of his song (the composition), and not the way it was played (the sound recording). These copyrights are separate. Gaye submitted sheet music for “Got to Give It Up” to the U.S. Copyright Office in 1977, thus registering his copyright of the composition.

• In this case, the Gayes couldn’t play “Got To Give It Up” in court because the family only held rights to the sheet music but, in the end, the jury heard a stripped-down version of the piece and brought in musicologists who deemed elements of the songs similar.

• Blurred Lines

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Titles of SongsTitles of Songs

• According to THE BELLAMY BROTHERS, the title of the new single is a rip-off of one of their old hits

• It’s not the SONG that sounds similar . . . it’s the TITLE. Britney’s new single is called “Hold It Against Me“, while the Bellamy Brothers had a hit in 1979 called “If I Said You Had a Beautiful Body, Would You Hold It Against Me“.

Example Cases: Example Cases:

• "A title is not copyrightable," said lawyer Brian Caplan, who has more than 20 years of experience in intellectual property and entertainment law.

CopyrightCopyright

• A copyright notice should contain all the following three elements:

• The symbol © (the letter C in a circle), the word "Copyright" or the abbreviation "Copr."

• The year when the work was first created.

• The name of the owner of the copyright.

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InfringementInfringement

• Copyright Infringement: whenever unauthorized copying occurs.

• Damages: actual to criminal prosecution.

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When can use copyrightWhen can use copyright

• In the United States, the fair use doctrine, Copyright Act of 1976 as 17 U.S.C. Section 107, permits some copying and distribution without permission of the copyright holder

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Fair Use ExamplesFair Use Examples

• “quotation of excerpts in a review or criticism for purposes of illustration or comment;

• reproduction by a teacher or student of a small part of a work to illustrate a lesson;

• reproduction of a work in legislative or judicial proceedings or reports; in a newsreel or broadcast

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Copyright Protection for SoftwareCopyright Protection for Software

• Computer Software Copyright Act (1980).– Classifies computer software or computer

programs as a “literary work.”

• Who has ever burned a copy of Music CD or Movie for a friend?

• Ever get music off Lime Wire?

• Put “on hold” music without paying

• Music for customer in retail store

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• Public places that play CDs or hire live musicians (that play cover songs or copy songs) are still subject to being licensed for fees.

• BMI, ASCAP, and SESAC.

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On Hold MusicOn Hold Music

• On-hold music: All on-hold music (even if a radio station is being played on hold) must be licensed. If you use an on-hold service, it is still the responsibility of the business to make sure that service is licensed.

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Rules Playing Music etc. Rules Playing Music etc.

• General - Restaurants and bars under 3,750 square feet or retail establishments under 2,000 square feet are exempt from paying fees for playing radio or TV broadcasts for their customers.

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ASCAP AND SESACASCAP AND SESAC

• ASCAP (www.ascap.com) charges based on the number of speakers: $190 for three or less; each additional speaker is $39 up to a maximum of around $1600. BMI (www.bmi.com)

• SESAC’s (www.sesac.com) fees are based on square footage:

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BMIBMI

• BMI’s annual fee starts at $182 for 2,000-sq.-ft.or less, $570 for 5,000-7,500-sq.-ft., $1,600 for over 17,500-sq.-ft. SESAC charges approx. $160 for anything under 10,000-sq.-ft.

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Unauthorized Music in StoreUnauthorized Music in Store

• Larry Leigh, owner of Leigh’s and Mettie’s women’s clothing stores in Grand Rapids, found out the hard way about penalties for unlicensed music use.

• Several years ago, he received a letter from licensing organization ASCAP stating that he was violating copyright regulations by playing tapes and CDs in his stores. Unfortunately, Leigh got some bad advice from the business that installed his store stereo system, having assured assured him he didn’t need to worry. Two years later, he was sued by ASCAP for $400,000. His attorney informed him that his chances of winning the suit were not good, he settled out of court for a $5,000 fine.

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Copyrights in Digital InformationCopyrights in Digital Information

• MP3 and File Sharing Technology.– DVDs and File Sharing.

• The U.S. Supreme Court has held that companies are vicariously liable when they distribute file-sharing software intending that it be used to violate copyright laws.

67© 2015 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part, except for use as permitted in a license distributed with a certain product or service or otherwise on a password-protected website for classroom use.

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MP3 (File Sharing Technology)MP3 (File Sharing Technology)

• Peer to Peer (P2P) Networking.

• Lime Wire -The recording industry and LimeWire have reached a $105 million settlement that puts an end to five years of

heated litigation - • Napster Case – held copyright infringement

because helped other get unauthorized copies of music.

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IV Trade SecretsIV Trade Secrets

• Trade secrets may include customer lists, plan, pricing, marketing –

• secret formula- Coca Cola, KFC

• No registration or filing requirements