CH. 17 Protection & Licensing of Intellectual Property Flashcards
a license fee (usually granted by the government in exchange for a license)
royalty
a limited permission to use a firm’s trademarks, copyrights, or know-how in making products for sale in the vicinity of the foreign company’s country.
license
registering your trademark and actually putting it into the traffic of commerce or plan to within 6 months
first to file
the registering of a domain name with the intent to profit from the goodwill of a trademark belonging to another.
cybersquatting
intentional wrongful behavior with some negligence without a finding of intent.
bad faith
the importation of merchandise produced and sold abroad and then imported back into the U.S. for sale in competition with the U.S. trademark owner.
gray market
contractual arrangement in which the licensor’s patents, service marks, copyrights or know-hows are sold or otherwise made available to a licensee for compensation.
licensing of intellectual property
requires a licensee to purchase supplied from the licensor or certified supplier
tying provisions
regulate where licensee may sell good or service; may violate anti-trust laws of host nation
territorial restrictions
designate the law of licensor or licensee as country to resolve dispute
choice of law
describes the rights of licensee, along with restrictions
grant provisions
includes identification of contracting parties and nature of agreement
preamble
list of rights that are being trasnferred
recitals
clarification of terms used throughout agreement
definitional terms
licensor defines the appropriate avenues for sales for the licensed product.
channels of distribution
licensee not to compete with licensor-heavily scrutinized provision of agreement by governments
covenant not to compete
licensor reserves all rights not expressly transferred to licensee
reservation of rights of licensor
licensor attempts to reserve future rights to improvements of goods
grant back provisions
generate maximum sales
“best effort” clause
indemnified for any liability stemming from licensor’s title or product
indemnification clause
prohibit licensee from challenging the validity or exclusiveness of licensor’s intellectual property
validity or no challenge clause
specific grounds upon which agreement can be terminated
termination clause
grants trademark and patent rights to 3rd parties if they aren’t being used by the current holder
compulsory licenses
refers to imports bearing a genuine trademark but imported by a party not authorized to import
gray market goods
without authority.. makes, uses, offers to sell or sells a patented invention or an imports patented invention.
infingement
need not be exact copying of an invention
doctrine of equivalents
How long are patents generally protected?
20 years from date of application
a secret information (or device) used in business to give a competitive advantage
trade secret
employer employs a person to create copyright work
work for hire
materials include government publication, generic terms, and materials whose copyright has expired
public domain
small amount of work can be used for research, education, criticism and news reporting
fair use doctrine
copyright owner’s rights terminate once copyright work is legally sold or a license sold
first sale
can only copyright the expression of an idea, no the idea itself
copyright protection
used to distinguish services of one person/company from another
service marks
applies to companies and are protected by federal law as well
trade names
refers to the image and overall appearance of the product
trade dress
diminishing the selling power and value by unauthorized use
blurring
trademark linked to shoddy quality or is portrayed in unsavory context
tarnishment
lessening of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of the famous mark and other parties or the liklihood of confusion
trademark dilution
