Chapter 12 - Intellectual Property

Question 1

Intellectual Property

Answer 1

1) fruits of someone’s mind

2) protected by copyrights, trademarks, trade secret protection and patents

Question 2

Trademarks

Answer 2

1) a distinctive mark, picture, design, word or arrangement used with a product that helps a consumer identify the product with the producer - a nonfunctional design, shape, color, symbol, or word that has come to identify the product with its producer
2) trademark used intrastate is protected by state common law
3) trademark used interstate must be registered with US Patent and Trademark Office (USPTO) under Lanham Act of 1947
4) if mark is registered owner can charge damages against infringer and get cease and desist order
5) if mark is not registered, owner can only get cease and desist order
5) must re-register after five years (first renewal) and then every ten years
6) color can be trademarked

Question 3

service mark

Answer 3

a mark used in conjuction with a service - name painted on vehicle

Question 4

product trademark

Answer 4

a mark affixed to a good, its packaging, or its labeling. ex. nike swoosh

Question 5

collective mark

Answer 5

a mark identifying the producer as belonging to a larger group, like a trade union

Question 6

certification mark

Answer 6

a mark licensed by a group that has established certain criterion for use of the mark i.e. jd power award

Question 7

trade dress

Answer 7

1) Entitle to same protection as a trademark
2) to succeed on charging infringement must prove:
- a) trade dress is primarily nonfunctional
- b) trade dress is inherently distinctive or has acquired a secondary meaning
- c) alleged infringement creates a likelihood of consumer confusion (main focus)
3) trade dress, the overall appearance and image of a product that have acquired secondary meaning, is entitled to the same legal protection as a trademark

Question 8

Federal Trademark Dilution Act of 1995

Answer 8

federal statute granting protection of trademarks from dilution

1) prohibits using famous or distinctive marks, even without showing a sign of consumer confusion
2) two key differences between trademark dilution and infringement
- dilution requires (usually) that the mark be famous
- dilution does not require that consumer confusion be proven

Question 9

Copyrights

Answer 9

1) protect the expression of ideas
Criterion for copyright
-must be fixed -set out in a tangible medium of expression
-must be original
-must be creative
2) automatically arises under common law when idea is expressed in tangible form
3) if freely distributed without form of copyright into public domain
4) protected for life of creator + 70 years after their death after that = public domain
5) to recover damages copyright must be filed with register of copyrights and copies sent to LOC
6) once registered, creator can sue for an infringer for damages caused by the infringer’s use of it and recover any profits made from its use

Question 10

Fair-use Doctrine

Answer 10

1) provides others may reproduce portion of copyrighted work for purpose of “criticism, comment, new reporting, teaching, scholarship, and research”
2) section 107 copyright act req court to weight four factors in determining fair-use:
- purpose of use (commercial vs educational(
- nature of work
- amount used in relation to work as a whole
- effect on the marker
3) parodies included in fair-use

Question 11

No electronic theft act

Answer 11

1) 1997 –> illegal for person not only to infringe on copyrights but also to reproduce or distribute copyrighted materials for no financial gain

Question 12

Digital Millennium Copyright Act (DMCA)

Answer 12

1) 1998 –> to protect owners of digital intellectual property
2) main provisions of act make it illegal to circumvent the encryption and antipiracy tech that protects commercial software and outlaws encryption-breaking devices used to get material

Question 13

Patents

Answer 13

A) Protects a product, process, invention, machine, or plant produced by asexual reproduction
B) Four criterion
1) must be patentable
2) must be novel (new)
3) must be useful (unless design)
4) must be nonobvious - invention must be beyond ordinary skill
C) After patent issued, holder has exclusive right to produce, sell, and use the object of the patent for 20 years after application
D) holder may licencse others to use the patent , most often in royalties (sum of money ppaid for each use of the patent)
E) Restrictions against trying agreements and cross-licensing

Question 14

Tying agreement

Answer 14

1) occurs when patent holder issued a license to use a patent only if licensee agrees to buy some nonpatented product from the holder
2) restriction on patent holder (illegal) – reduces competition

Question 15

Cross-licensing

Answer 15

1) two patent holders license each other to use their patents only on the condition that neither licenses anyone else to use the patent without consent of the other
2) restriction on patent holder – reduces competition

Question 16

Obtaining a patent

Answer 16

1) patent search done by attorney and filed with USPTO
2) inventor has duty to disclose any prior art related to their patent
3) patent issued in two years

Question 17

Challenging a patent

Answer 17

1) if infringer shows patent should not have been issued
2) infringer shows patent holder sold or offered for sell a product that performed patent a year or more before the patent was filed
3) infiringer calls for reexmaniation of patent (may slow down litigation)

Question 18

America Invents Act (2011)

Answer 18

Changed patent process

1) first to file the invention to patented will have rights in product (not nec inventor)
2) expands types of prior art, makes it mmore difficult to get a patent
3) makes reexamination process more like litigation
4) prohibits plaintiff from filing a suit against many unrelated defendants
5) makes it more affordable for small businesses and sole entrepeneurs tot applu

Question 19

Trade Secrets

Answer 19

1) a process, product, or method of operation, or compilation of information that fives a businessperson an advantage over his or her competitors
2) no registration
3) lawful discovery (reverse engineering, observation in public) ends the trade secret
4) to recover damages from unlawful use must prove:
- trade secret existed
- defendant acquired it through unlawful means
- used the r=trade secret without permission
5) protection perpetually

Question 20

International Protection of Intellectual Property

Answer 20

1) protected primarily through treaties

2) include Universal Copyright Convention, The Berne Convention, Paris Convention of 1883, TRIPS agreement