copyright © 2009 by pearson prentice-hall. all rights reserved. powerpoint slides to accompany...

Copyright © 2009 by Pearson Prentice-Hall. All rights reserved.

PowerPoint Slides to AccompanyCONTEMPORARY BUSINESS

ANDONLINE COMMERCE LAW

6th Editionby Henry R. Cheeseman

Chapter 7Intellectual Property and Piracy

Copyright © 2009 by Pearson Prentice-Hall. All rights reserved. 7 - 2

Intellectual Property Rights Intellectual property

rights include: Patents Copyrights Trademarks Trade Secrets Trade Names Domain Names

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

These are very valuable business assets

Protected by federal and state laws from misappropriation and infringement


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 Uniform Trade Secrets ActTrade Secrets Act to give statutory protection to trade secrets.



State unfair competition laws allow the owner of a trade secret to bring a lawsuit for misappropriationmisappropriation against anyone who steals a trade secret.

To be actionable, the defendant must have obtained the trade secret through unlawful means.



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.


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


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


Changes in U.S. Patent Law (1995) The General Agreement on Tariffs and General Agreement on Tariffs and

Trade (GATT)Trade (GATT) caused the following changes in U.S. patent law: Patents are valid for 20 years20 years, instead of the

previous term of 17 years The patent term begins to run from the date

the patent application is filedfiled instead of when the patent is issued, as was previously the case.


Patenting an Invention

To be patented, an invention must be: Novel Useful Nonobvious

Only certain subject matters can be patented.


Patentable Subject Matter Includes:

Machines Processes Compositions of

matter Improvements to:

Existing machines Processes Compositions of

matter

Machines Processes Compositions of

matter Improvements to:

Existing machines Processes Compositions of

matter

Designs for an article of manufacture

Asexually reproduced plants

Living material invented by a person

Designs for an article of manufacture

Asexually reproduced plants

Living material invented by a person


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.


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.


The American Inventors Protection Act Federal statute that permits inventors to

file a provisional applicationprovisional application with the PTO

Requires the PTO to issue a patent within three years in most circumstances

Provides for contested reexaminations within the PTO


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 writingstangible writings are subject to copyright registration and protection.


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.


Copyright Terms

Individual Copyright Holder –Individual Copyright Holder – life of author plus 70 years.

Corporate Copyright Holder –Corporate Copyright Holder – 95 years from the year of first publication or 120 years from the year of creation, whichever is shorter.


Copyrighting Software

Key legislation to afford protection to software and computer chips: Computer Software Copyright Act of 1980

Semiconductor Chip Protection Act of 1984


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.


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.



The following are protected under this doctrine:

1. Quotation of the copyrighted work for review or criticism or in a scholarly or technical work

2. Use in a parody or satire

3. Brief quotation in a news report



4. Reproduction by a teacher or student of a small part of the work to illustrate a lesson

5. Incidental reproduction of a work in a newsreel or broadcast of an event being reported

6. Reproduction of a work in a legislative or judicial proceeding


Online Commerce and Internet Law: No Electronic Theft Act (NET Act) of 1997

Digital Millennium Copyright Act (DMCA) of 1998


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)


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.


Distinctiveness of a Mark

To qualify for federal protection, A mark must be distinctivedistinctive – i.e., a brand

name that is unique and fabricated; or Have acquired a “secondary meaning”“secondary meaning”

– i.e., when an ordinary term has become a brand name.


Marks That Can Be Trademarked(1 of 2) TrademarkTrademark – a distinctive mark, symbol,

name, word, motto, or device that identifies the goods of a particular business. e.g., IBM, Coca-Cola

Service MarkService Mark – used to distinguish the services of the holder from those of its competitors. e.g., United Airlines, Weight Watchers, Marriott Hotels


Marks That Can Be Trademarked (2 of 2)

Certification MarkCertification 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 MarkCollective Mark – used by cooperatives, associations, and fraternal organizations. e.g., Boy Scouts of America


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


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.


Generic Names

Generic nameGeneric 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 descriptivedescriptive rather than distinctive.distinctive.


Federal Dilution Act of 1995 (1 of 2)

Protects famous marks from dilutiondilution The act provides that owners of marks

have a valuable property right in their marks that should not be eroded, blurred, eroded, blurred, tarnished, or dilutedtarnished, 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.


Federal Dilution Act of 1995 (2 of 2)

The act has three fundamental requirements:

1. The mark must be famous

2. The use by the other party must be commercial

3. The use must cause dilution of the distinctive quality of the mark


1. Paris Convention 2. Berne Convention

3. WIPO CopyrightTreaty

4. WIPO PhonogramTreaty

International Protection of Intellectual Property Rights

copyright © 2009 by pearson prentice-hall. all rights reserved. powerpoint slides to accompany...

Documents

trade secret slide

trade gatt

anothers trade secrets

state patent laws

infringement slide

state laws

federal patent statute

patent term