25-1 chapter 7 intellectual property and cyber piracy

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Chapter 7Intellectual Property and Cyber Piracy

Introduction to Intellectual Propertyand Cyber Piracy

Federal law provides protections for intellectual property rights by means of: Patents Copyrights Trademarks

Copyright © 2013 Pearson Education, Inc. Publishing as Prentice Hall. 7-2

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


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


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


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


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


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


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


Case 7.1: U.S. Supreme Court Patent

Case 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?


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


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


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


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


Copyright

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


Copyright

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”


Copyright

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


Copyright

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


Copyright

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


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


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


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


Trademark

Types of marks Trademark Service Mark Certification mark Collective membership mark


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


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


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


Case 7.2: Trademark Infringement

Case Intel Corporation v. Intelsys Software, LLC Web 2009 U.S. Dist. Lexis 14761 (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?


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


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


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


Case 7.3: Dilution of a Trademark

Case V Secret Catalogue, Inc. and Victoria’s Secret

Stores, Inc. v. Moseley 605 F.3d 382, Web 2010 U.S. App. Lexis 10150

(2010) United States Court of Appeals for the Sixth

Circuit


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?


25-1 chapter 7 intellectual property and cyber piracy

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