Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning Chapter 10 Intellectual Property and Internet Law

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 2 Trademarks and Related Property Distinctive mark or emblem affixed to a product that easily identifies, or distinguishes, the product in the marketplace.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).Case 10.1 Coca-Cola Co. v. Koke Co. of America (1920).

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 3 Statutory Protection of Trademarks.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

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

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 5 Trademark Infringement Strong Marks (e.g., Xerox).Strong Marks (e.g., Xerox). –Fanciful, arbitrary or suggestive. –Normally outside the context of the product. Secondary Meaning.Secondary Meaning. –Descriptive, geographic terms and personal names. Generic Terms.Generic Terms. –Bicycle, computer. What about Escalator?

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 6 Service, Certification, and Collective Marks Service Mark.Service Mark. –Similar to trademark but for services. Certification Mark.Certification Mark. –Used by other than the owner. Collective Mark.Collective Mark. –Certification used by members of cooperative or association. –“Good Housekeeping” Seal of Approval.

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 7 Trade Names / Trade Dress Trade Names applies to all or part of business’s name; directly related to goodwill.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 Dress refers to the image and appearance of the product.

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 8 Cyber Marks Cyber Marks are Trademarks on the internet.Cyber Marks are Trademarks on the internet. What rights does a trademark owner have?What rights does a trademark owner have? Domain Names.Domain Names. ICANN.ICANN. Anticybersquatting Legislation.Anticybersquatting Legislation. –Case 10.2 Schmidheiny v. Weber (2003). Meta Tags.Meta Tags. Dilution in the Online WorldDilution in the Online World –Hasbro v. Internet Entertainment Group.

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 9 Patent is a grant from government gives inventor exclusive right to make, use and sell invention for 20 years from filing the application.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.Software patents are now available. Infringement.Infringement. Business Process Patents (State Street Bank v. Signature Financial Group).Business Process Patents (State Street Bank v. Signature Financial Group). PatentsPatents

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 10 Copyright: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. CopyrightsCopyrights

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 11 Can only copyright the expression of an idea, not the idea itself.Can only copyright the expression of an idea, not the idea itself. Work must be original and fixed in a durable medium.Work must be original and fixed in a durable medium. Compilation of facts must be original.Compilation of facts must be original. What is Protected Expression?

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 12 Whenever form or expression of idea is copied.Whenever form or expression of idea is copied. “Fair Use”: exception to infringement if educational, news reporting, scholarship or research.“Fair Use”: exception to infringement if educational, news reporting, scholarship or research. Copyright Infringement

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 13 Software Copyright 1980 Congress passed Computer Software Copyright Act.1980 Congress passed Computer Software Copyright Act. Computer language is a “literary work.”Computer language is a “literary work.” Courts disagree over the ‘look and feel’ of computer.Courts disagree over the ‘look and feel’ of computer.

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 14 Copyrights in Digital Information Copyright Act of 1976.Copyright Act of When is a copy made?When is a copy made? What about collective works (newspaper and electronic databases)?What about collective works (newspaper and electronic databases)? –Case 10.3 NY Times v. Tasini (2001).

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 15 The Digital Millennium Copyright Act of 1998.The Digital Millennium Copyright Act of –Provides ‘safe harbors’ from immunity for ISP’s. –Provides for flexible ‘fair use’ online. Copyrights in Digital Information

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 16 MP3 and File-Sharing Technology.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). –Case 10.4 A&M Records v. Napster (2001). Napster was vicariously liable for copyright infringement. But today KAZAA operates on similar technology. Copyrights in Digital Information

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 17 Trade Secrets: business process or information that cannot or should not be patented, copyrighted or trademarked.Trade Secrets: business process or information that cannot or should not be patented, copyrighted or trademarked. Protected from competitors.Protected from competitors. Uniform Trade Secrets Act.Uniform Trade Secrets Act. –Case 10.5 Ed Nowogroski, Inc. v. Rucker (1999). Economic Espionage Act of 1996.Economic Espionage Act of Trade Secrets

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 18 Trade Secrets Can include: customer lists, plans, research, formulae, pricing information, marketing techniques.Can include: customer lists, plans, research, formulae, pricing information, marketing techniques. Hacking into a competitor’s computer may be criminal.Hacking into a competitor’s computer may be criminal.

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 19 Trade Secrets in Cyberspace Internet facilitates illegal copying and distribution of confidential information.Internet facilitates illegal copying and distribution of confidential information. Sometimes mistakes can transfer information.Sometimes mistakes can transfer information.

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 20 Licensing Allows a third party to legally use another’s intellectual property, e.g., trademark or patent.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.Licensing contracts usually allow for royalties based on sales or profits. Win-Win for all.Win-Win for all.

Miller Cross 4 th Ed. © 2005 by West Legal Studies in Business / A Division of Thomson Learning 21 International Protection Berne Convention (WIPO).Berne Convention (WIPO). Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 (WTO).Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 (WTO). World Intellectual Property Organization (WIPO) Copyright Treaty 1996.World Intellectual Property Organization (WIPO) Copyright Treaty 1996.