INTRODUCTION TO INTELLECTUAL PROPERTY

LAWProfessor Fischer

Class 1: Introduction

August 20, 2009

About this Course

• See http://faculty.cua.edu/fischer (click on Introduction to Intellectual Property Law 2009)

• TWEN site

Trademarks

• What is a trademark?

Trademarks

• What is a trademark? A trademark is a distinctive word, phrase, logo, domain name, graphic symbol, slogan, or other device that is used to identify the source of a product and to distinguish a manufacturer's or merchant's products from others.

Example of a trademark

• For sports apparel

Policy rationale

• What is the policy rationale for trademark law?

Policy rationale

• What is the policy rationale for trademark law?

• 1. prevent consumer confusion and reduce consumer search costs

• 2. encourage trademark owners to maintain quality

• 3. prevent free riding on goodwill

Rights

• What are the rights of the trademark owner?

Rights

• What are the rights of the trademark owner?

• Prevent trademark infringement (use of mark in commerce where use is likely to cause confusion or deceive)

• Prevent trademark dilution (use of mark in a disparaging way – tarnishment- or overuse of mark – blurring)

Duration

• How long do trademark rights last?

Duration• How long do trademark rights last?• Forever, as long as mark is being used in a source-

identifying manner for goods or services. • Federal trademarks must be renewed every ten years. For

a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration.  The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee.

• The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.

Sources of trademark law

• What are they?

Sources of trademark law

• What are they?

• U.S. Constitution art. I, § 8, cl. 3

• Lanham Act, 15 U.S.C. § 1114 et seq.

• State trademark statutes

• Common law

Registration

• Must trademark rights be registered to obtain trademark protection?

Registration

• Must trademark rights be registered to obtain trademark protection?

• No, but federal registration has several advantages, including:

• 1. Constructive notice nationwide of the trademark owner's claim. 2. Evidence of ownership of the trademark. 3. Jurisdiction of federal courts may be invoked. 4. Registration can be used as a basis for obtaining registration in foreign countries. 5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Markings

• Do you have to mark your goods with ® to get trademark protection?

Markings

• Do you have to mark your goods with ® to get trademark protection?

• No. In fact, you can only use ® once the mark has been registered, not even while it is pending.

The problem of counterfeiting, e.g. Canal Street in New York

City

Copyright

• What is a copyright?

Policy Rationale

• What is the policy rationale for copyright law?

Policy Rationale

• What is the policy rationale for copyright law?

• Utilitarian theories: maximize social welfare, create limited monopoly rights to incent creative works

• Personal autonomy theories: grant author control over creations

• Labor-desert theories: grant property rights in works created by labor of individuals

Rights

• What are the rights of the copyright owner?

Rights

• What are the rights of the copyright owner?• Rights of reproduction, adaption, distribution, public

performance, public display, public performance of sound recordings by digital audio transmission 17 U.S.C. § 106

• Moral rights for certain works of visual art 17 U.S.C. § 106A

• New anti-circumvention and anti-trafficking rights in DMCA 17 U.S.C. § 1201

• New protections for copyright management information in DCMA 17 U.S.C. § 1202

• Defenses, Exemptions, Compulsory Licenses

Duration

• How long do copyright rights last?

Duration

• How long do copyright rights last?• Basic copyright term for works created on

or after January 1, 1978 is life of the author plus 70 years.

• If work is created “for hire” and copyright owned by a corporate entity (otherwise than by transfer), 95 years from publication or 120 years from creation, whichever expires first

Sources

• What are they for copyright law?

Sources

• What are they for copyright law?

• U.S. Constitution art. I, § 8, cl. 8

• Copyright Act, 17 U.S.C. § 101 et seq.

Registration

• Must copyright rights be registered to obtain protection?

Registration

• Must copyright rights be registered to obtain protection?

• No – (for works created on or after January 1, 1978), but you must register to sue for infringement.

Notice

• Do you have to mark your work with © to get copyright protection?

Notice

• Do you have to mark your work with © to get copyright protection? No, but it’s generally a good idea.

The Problem of P2P Technology

Patent

• What is a patent?

Patent

• What is a patent? A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office.

• Utility patents are granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

• There are also design patents and plant patents

Policy Rationale

• What is the policy rationale for patent law?

Policy Rationale

• What is the policy rationale for patent law?

• Utilitarian theories: maximize social welfare, create limited monopoly rights to incent inventions and disclose them to the public after a period of time

Rights

• What are the rights of the patent holder?

Rights

• What are the rights of the patent holder?

• The patent statute does not grant the right to make, use, offer for sale, or sell the invention in the United States or import the invention into the United States, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

Duration

• How long do patent rights last?

Duration

• How long do patent rights last?

• Generally, 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees

Sources

• What are they for patent law?

Sources

• What are they for copyright law?

• U.S. Constitution art. I, § 8, cl. 8

• Patent Act, 35 U.S.C. § 1 et seq.

Registration

• Must patent rights be registered to obtain protection?

Registration

• Must patent rights be registered to obtain protection?

• You must obtain a patent from the United States Patent and Trademark Office. This requires a lengthy and expensive examination process.

Markings

• Do you have to mark your invention to get patent protection?

• If you are selling a patented product, you should mark each item with the word “patent” (or the abbreviation “pat.”), together with the applicable patent number(s), e.g. Patent No. 1,234,567

• If you fail to mark patented products, you can’t recover damages for any patent infringement that occurs before the infringer has been actually notified of the patent.

Standing on the Shoulders of Giants

• Do patents really induce invention and innovation?

• Do patents properly reward the real innovators?

• Should Thomas Edison have received a patent for the phonograph if a Parisian tinkerer used a phonoautograph to make a visual recording of a woman singing 17 years earlier?