Chapter 7
Intellectual Property
and Internet Law
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Introduction
Intellectual property (or “I.P.”) is becoming more
important because the value of many corporations
(e.g., Microsoft) is based primarily on I.P.
Founders of America understood the value of I.P.
and its impact on interstate commerce.
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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Types of Intellectual Property
Trademarks.
 Service Marks.
 Trade Dress.
Patents.
Copyrights.
Cyberspace I.P.
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§1: Trademarks
Distinctive mark, motto or device or
emblem that a manufacturer stamps, prints
or othewise affixes to the goods it produces.
Distinguish product/service from goods of
other manufacturers and merchants.
Avoids consumer confusion.
Case 7.1: Coca Cola v. Koke Co. (1920).
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Trademarks-Statutory Protection
Lanham Trademark Act (1946) creates incentives
for companies to invest; prevents unjust
enrichment of companies who infringe.
Federal Trademark Dilution Act (1995) Cause of
action regardless of competition or confusion
based on a “similar” mark.
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Trademarks - Registration
Register with U.S. Patent Trademark Office
if:
 Mark is currently in commerce; or
 Applicant intends to put it into commerce
within 6 months.
 Registration allows use of “®” symbol.
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Trademark Infringement
Whenever a trademark is copied or use,
intentionally or unintentionally, there is
infringement.
Trademark owner has cause of action against
infringer,unless trademark is a “generic” term.
Lanham Act designed to prevent consumer
confusion about similar marks.
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Trademark - Distinctiveness
Trademark must be sufficiently distinct.
‘Strong’ Marks:
 Fanciful.
 Arbitrary.
 Suggestive marks.
Secondary Meaning.
Generic Terms: escalator, aspirin.
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Trade Dress
Refers to the image and overall appearance of the
product.
Same protection as trademark.
Issue is consumer confusion.
 Example: distinctive décor, product names, packaging
of Starbucks coffee shops.
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Service Marks
Similar to trademark but used to distinguish
services of one person/company from another.
Titles and character names used in media are
frequently registered as service marks.
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Trade Names
Trademarks apply to products.
Trade name applies to companies and are
protected by federal law as well.
 Example: IBM, Coca-Cola, NBC.
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§ 2: Cyber Marks
Online trademarks.
Domain Names: www.westlaw.com
 Conflicts: ICANN, WIPO.
Anti-Cybersquatting Consumer Protection Act
(1999) amended the Lanham Act.
Meta Tags.
Case 7.2: Playboy Enterprises v. Welles (2002).
Cyber Mark Dilution.
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§3: Patents
Exclusive federal grant from U.S. Patent and
Trademark Office to make, use and sell an
invention for 20 years.
Patent Infringement.
Patents for Software are now available.
Patents for Business Processes.
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§4: Copyrights
Introduction to 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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Copyrights
Can only copyright the expression of an idea,
not the idea itself.
Work must be original and fixed in a durable
medium: literary, musical, choreographical
and dramatic works, pictoral, graphic and
sculptures, films/ audiovisual/ TV/ sounds,
computer software and archtectural plans.
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Copyrights
Compilations of facts are copyrightable but the
compilation must be “original.”
 Bellsouth v. Donnelley (1993).
“Work Made For Hire” for Employees.
Copyright Infringement: whenever unauthorized
copying occurs.
 Damages: actual to criminal prosecution.
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‘Fair Use’ Exception
Section 107 of the Copyright Act provides for
exception to liability from reproduction of
copyright under the the “fair use” doctrine when
material is used for criticism, comment, news,
criticism, teaching, research.
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Software Copyrights
Computer Software Copyright Act (1980).
 Classifies computer software as a “literary work.”
 Does not apply to “look and feel.”
• Lotus v. Borland (1996).
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§ 5: Copyrights in
Digital Information
Much of the content on the internet consists of
copyrighted I.P.
Copyright Act of 1976.
 Case 7.3: New York Times v. Tasini (2001).
Further Developments:
 No Electronic Theft Act (1997). 
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Copyrights in
Digital Information
Digital Millennium Copyright Act (1998).
 Provides civil and criminal penalties to
circumvent encryption software (like DVD).
 Limits ISP liability for subscriber act.
 ‘Fair Use’ Exceptions for Libraries, universities and
others.
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Copyrights in
Digital Information
MP3 and File Sharing.
Peer to Peer (P2P) Networking.
 Music sharing (Napster, Kazaa, Gnutella).
 Case 7.4: A & M Records v. Napster (2001)
in which Court found Napster vicariously
liable for copyright infringement of its users.
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§6: Trade Secrets
Business process or information that cannot or
should not be patented, copyrighted or
trademarked.
Protection from competitors.
Uniform Trade Secrets Act.
Case 7.5: Nowogroski v. Rucker (1999).
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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.
Economic Espionage Act (1996).
Trade Secrets in Cyberspace.
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§7: Licensing
Make use of another’s trademark, copyright,
patent or trade secret without incurring liability.
Uniform Computer Information Transactions Act
(UCITA).
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§8: 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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Law on the Web
U.S. Patent and Trademark Office.
Patent Searches.
Copyright Info at the U.S. Copyright Office.
Law.com I.P. Site
Legal Research Exercises on the Web.
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