1. Chapter 7 Intellectual Property and Cyber Piracy

2. Introduction to Intellectual Property and Cyber Piracy
Federal law provides protections for intellectual property rights by means of:
Patents
Copyrights
Trademarks
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Trade Secret
Trade secrets
Product formula
Pattern
Design
Compilation of data
Customer list or other business secret
Uniform Trade Secrets Act: Gives statutory protection to trade secrets
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Trade Secret
Lawsuits for misappropriation – brought against anyone who steals a trade secret
Defendant must have obtained the trade secret through unlawful means
Discovery of trade secret by reverse engineering is lawful
A trade secret unprotected by the owner is not subject to legal protection
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Trade Secret
Civil Trade Secret Law: Misappropriation of a trade secret
A successful civil plaintiff can:
Recover profits made by offender
Recover damages
Obtain injunction prohibiting offender from divulging trade secret
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Trade Secret
Economic Espionage Act
Makes it a federal crime for any person:
To convert a trade secret to his or her benefit or for the benefit of others
Performing the above knowing or intending that the act would cause injury to the owner of the trade secret
Includes computer espionage
Severe criminal penalties
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Patent
A grant by the federal government upon the inventor of an invention for the exclusive right to use, sell, or license the invention for a limited amount of time
Intended to provide incentive for inventors to make their inventions public
Protects patented inventions from infringement
Federal patent law is exclusive; no state patent laws
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Patent
Subject matter that can be patented
Machines
Processes
Compositions of matter
Improvements to existing machines, processes, or compositions of matter
Designs for an article of manufacture
Asexually reproduced plants
Living material invented by a person
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Patent
Requirements for obtaining a patent
An invention must be:
Novel
Useful
Nonobvious
Abstractions and scientific principles cannot be patented unless they are part of the tangible environment
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10. Case 7.1: U.S. Supreme Court Patent
Bilski v. Kappos, Director, Patent and Trademark Office
130 S.Ct. 3218, 177 L.Ed.2d 792, Web 2010 U.S. Lexis 5521 (2010)
Supreme Court of the United States
Issue
Is the petitioners’ claimed invention patentable?
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Patent
Patent period
Utility patents – twenty years
Design patents – fourteen years
Patent term begins to run from the date the patent application is filed
The U.S. follows “first-to-invent” rule
The invention or design enters the public domain after patent period expires
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Patent
One-year “on sale” doctrine
Public use doctrine
Patents will not be granted if an invention was in the public domain for one year prior to application filing
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Patent
Provisional patent application
Filed by the inventor to obtain three months to prepare a final patent application
American Inventors Protection Act provides provisional patent application
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Patent
Patent infringement
Occurs when someone makes unauthorized use of a patent
Plaintiff may recover:
Money damages equal to royalty rate
Other damages caused by the infringement
Order for destruction of infringing items
Injunction against infringer
Treble damages for intentional infringement
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Copyright Revision Act of 1976
Establishes the requirements for obtaining a copyright
Protects copyrighted works from infringement
Only tangible writings are subject to copyright registration and protection
Federal copyright law is exclusive
Copyright can be sold or licensed to others
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Registration of copyrights
Must be an original work
Registered with U.S. Copyright Office
Registration
Permissive
Voluntary
Done at any time during term of copyright
Registration permits a holder to obtain statutory damages for copyright infringement
Not required to use © or word “copyright”
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Copyright period
Sonny Bono Copyright Term Extension Act
Individuals are granted copyright protection for their lifetime plus seventy years
Copyrights owned by businesses are protected for the shorter of either:
120 years from the year of creation
95 years from the year of first publication
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Copyright infringement
Occurs when a party copies a substantial and material part of the plaintiff’s copyrighted work without permission
Successful plaintiff may recover:
Profit made by the defendant from the infringement
Damages suffered by the plaintiff
Order requiring impoundment and destruction
Injunction preventing future infringement
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Fair use doctrine
Permits certain limited unauthorized use of copyrighted materials
No electronic theft act
Makes it a crime for a person to willfully infringe on a copyright
Digital Millennium Copyright Act
Makes it a crime to circumvent encryption technology
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Trademark
Used to identify and distinguish goods of a manufacturer or seller or services of a provider from others
Trade name
Symbol
Word
Logo
Design
Device
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Trademark
Lanham (Trademark) Act
Protects the owner’s investment and goodwill in a mark
Prevents consumers from being confused as to the origin of goods and services
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Trademark
Registration of a mark
Mark may be registered if it has been used in commerce
Can be registered six months prior to use
Mark is lost if not used within six months
Mark may be opposed by third parties
The use of the symbol ® is not mandatory
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Trademark
Types of marks
Trademark
Service Mark
Certification mark
Collective membership mark
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Trademark
Marks that cannot be registered
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 U.S. PTO
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Trademark
Distinctiveness or secondary meaning
A mark must be distinctive
A unique word or design
Have acquired a secondary meaning
An ordinary term becomes a brand name
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Trademark
Trademark infringement: Unauthorized use of a trademark
Owner must prove that:
Defendant infringed the plaintiff’s mark by using it in an unauthorized manner
Use is likely to cause confusion, mistake, or deception
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27. Case 7.2: Trademark Infringement
Intel Corporation v. Intelsys Software, LLC
Web 2009 U.S. Dist. Lexis (2009)
United States District Court for the Northern District of California
Issue
Is there trademark infringement that warrants the issuance of a permanent injunction against Intelsys?
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Trademark
Generic names
Term for a mark that has become a common term for a product line or type of service and therefore has lost its trademark protection
Name becomes descriptive rather than distinctive
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Trademark
Diluting, blurring, or tarnishing trademarks
Federal Dilution Act of 1995
Protects famous marks from dilution
Use by other party is actionable if:
It is commercial
It causes dilution of distinctive quality of mark
Types of dilution
Blurring
Tarnishment
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Trademark
Trademark Dilution Revision Act
A dilution plaintiff does not need to show that it has suffered actual harm
It only needs to show that there would be the likelihood of dilution
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31. Case 7.3: Dilution of a Trademark
V Secret Catalogue, Inc. and Victoria’s Secret Stores, Inc. v. Moseley
605 F.3d 382, Web 2010 U.S. App. Lexis (2010)
United States Court of Appeals for the Sixth Circuit
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32. Case 7.3: Dilution of a Trademark
Issue
Is there tarnishment of the Victoria’s Secret senior mark by the Moseleys’ use of the junior marks Victor’s Secret and Victor’s Little Secret?
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