CHAPTER 7
Intellectual Property
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Trademarks and
Related Property
• Distinctive mark or emblem affixed to
a product that easily identifies, or
distinguishes, the product in the
marketplace.
• Case 7.1 Coca-Cola Co. v. Koke Co. of
America (1920).
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Trademarks and
Related Property
• 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).
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Trademarks and
Related Property
• Trademark Registration.
– Federal protection requires registration with
U.S. Patent Trademark Office
(www.uspto.gov)
– Mark can be registered if:
• In current use, or
• Applicant intends to put the mark into commerce
within 6 months.
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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.
– Case 7.2 Menashe v. Secret Catalogue, Inc.
(2006).
• Generic Terms.
– Bicycle, computer. What about Escalator?
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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.
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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.
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Cyber Marks
• Cyber Marks are Trademarks on the
internet.
• What rights does a trademark owner
have?
• Domain Names.
• ICANN.
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Cyber Marks
• Anticybersquatting Legislation.
• Meta Tags.
– Case 7.3 Playboy Enterprises, Inc. v.
Welles (2002).
• Dilution in the Online World.
– Hasbro v. Internet Entertainment Group.
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Patents
• 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.
• Patent Infringement.
• Business Process Patents (State Street
Bank v. Signature Financial Group).
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Copyrights
• 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.
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What is Protected
Expression?
• 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.
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Copyright Infringement
• Whenever form or expression of idea
is copied.
• “Fair Use”: exception to infringement
if educational, news reporting,
scholarship or research.
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Software Copyright
• 1980 Congress passed Computer
Software Copyright Act.
• Computer language is a “literary
work.”
• Courts disagree over the ‘look and
feel’ of computer.
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Copyrights in Digital
Information
• Copyright Act of 1976.
• When is a copy made?
• What about collective works
(newspaper and electronic databases)?
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Copyrights in Digital
Information
• The Digital Millennium Copyright
Act of 1998.
– Provides ‘safe harbors’ from immunity
for ISP’s.
– Provides for flexible ‘fair use’ online.
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Copyrights in Digital
Information
• MP3 and File-Sharing Technology.
– Software allows P2P sharing of files
over a distributed network.
– Is the software maker liable?
– Napster was found vicariously liable for
copyright infringement.
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Trade Secrets
• 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.
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Trade Secrets
• Can include: customer lists, plans,
research, formulae, pricing
information, marketing techniques.
• Hacking into a competitor’s computer
may be criminal.
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Trade Secrets in
Cyberspace
• Internet facilitates illegal copying and
distribution of confidential
information.
• Sometimes mistakes can transfer
information.
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International Protection
• Berne Convention (WIPO).
• Trade-Related Aspects of
Intellectual Property (TRIPS) of
1994 (WTO).
• World Intellectual Property
Organization (WIPO) Copyright
Treaty 1996.
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