Chapter 9 Flashcards
Intangible property caused by mental effort rather than physical labor. Generally governed by federal laws.
Intellectual Property
Types of Intellectual Property
(1) Trademarks
(2) Copyrights
(3) Patents
(4) Trade secrets
Word, name, symbol, or combination that identifies the manufacturer of a product that is protected under the federal Lanham Act.
Trademark
Where do you register a trademark?
Patent and Trademark Office (entitles a party to exclusive use of the mark)
Price of a trademark?
Fee (starting about $300) + submit copy of mark (specimen) + description + declaration of no conflict
Length of time a trademark is good for?
10 years
Allows nationwide claim on the mark from the moment it is registered, so long there is intent to use in commerce.
Trademark Registration
True or False: Even a color can be trademarked.
True
Classifications of Trademarks
(1) Arbitrary and Fanciful
(2) Suggestive
(3) Descriptive
(4) Generic
(5) Descriptive
(6) Secondary
Most protected - Inherently distinctive and creative
Arbitrary and Fanciful Trademarks
Exon, Nike, Pepsi, Apple
Examples of Arbitrary and Fanciful Trademarks
Highly protected - Hint at what the product is, but requires a bit of a mental leap to figure it out.
Suggestive Trademarks
Coppertone sunscreen, Greyhound Bus
Examples of Suggestive Trademarks
Less protected - Describes a characteristic or quality of a particular good or service.
Descriptive Trademarks
Vision Center, Electronic Land
Examples of Descriptive Trademarks
Not protected - Words that are common and do not refer to products from a specific producer.
Generic Trademarks
Aspirin, Vacuum Cleaner, Clock
Generic Trademarks
Not ordinarily protected as trademarks. However, they can receive trademarks protection if they develop a secondary meaning for the consuming public.
Descriptive Terms
Words with an ordinary or descriptive meaning, but over long use are tied to a particular product known to the public as specifically designating that product.
Secondary Meaning
How to prove secondary meaning?
To prove a secondary meaning, the plaintiff must show that the primary significance of the term to the general public is not the product, but the actual producer.
Sports Illustrated Magazine
Example of Secondary Meaning
To remain protected, trademark owners must prove that they are using (or intending to use) the trademark for __________ purposes. If they fail to do so, even if they register the trademark, the trademark dies and others can begin using it.
Commercialized
Trademark laws apply to:
(1) Movie titles, advertising slogans, comic book titles, fictional characters, words, names, and symbols
When a seller causes confusion about the origins of a product by improper use of a trademark.
Trade Infringement
Trade Infringement Example
In 2016, Louis Vuitton lost a ™ infringement case against MOB (My Other Bag Inc.). MOB sells a line of handbags decorated with “imagery meant to evoke designer handbags from Louis Vuitton, Chanel and others” as a playful parody of those designer bags. The MOB handbags are made of canvas and display the mark “MY OTHER BAG” on one side and a drawing of the iconic Louis Vuitton designer bag on the other side.
Court held that MOB used enough of Louis Vuitton’s pattern, but not more than necessary, to communicate parody (not confusion) of Louis Vuitton’s bags
Trade Infringement Example
Christin Louboutin holds a valid trademark in the US for its red sole - just so long as that red sole contrasts with the shoe’s upper portion.
In other words, an all red pair of heels with a red sole (which were the subject of the YSL lawsuit) are not considered a violation of Louboutin’s trademark under US law. But contrast the colors, and Christian Louboutin holds the trademark.
Similar use of a famous mark or name by a 3rd party can cause dilution (watering down) of the distinctive quality of the actual famous mark.
Trademark Dilution
How does trademark dilution occur?
Dilution occurs when an unrelated product pseudo-copies (to some degree) a famous name or trademark as its own, so diminishes the value of the official ™ owner
To win trademark dilution cases, the original trademark must be proven to be ______.
Famous
Registering, selling or using an Internet domain name with the intent of profiting from goodwill or someone else’s trademark.
Trademark Cybersquatting
Trademark Cybersquatting Example: Mattel Inc. vs. Adventure Apparel
Facts: Mattel manufactures and sells Barbie. Mattel has many registered trademarks on different Barbie-related marks. Adventure Apparel (AA) registered two domain names: barbiesbeachwear.com and barbiesclothing.com. When a user went to either of these websites, they were automatically redirected to adventureapparel.com
Issue: Did AA violate federal law against cybersquatting when registering the domain name “barbiesbeachwear.com” and “barbiesclothing.com?”
Holding: Yes
Analysis: AA used the Barbie trademark improperly in a domain name. AA was required to terminate the domain name or give it to Mattel. They also had to pay damages for each domain name they had.
Fraudulent copying of a trademark without authority to do so
Counterfeiting
Entails a company’s intent to deceive consumers or others by presenting itself as the trademark holder by way of the fake logo, fake tag, etc.
Trademark Counterfeiting
Top Most Counterfeited Brands:
(1) Nike
(2) Apple
(3) Rolex
(4) Samsung
(5) Adidas
Trademark laws protect:
(1) Trade Dress
(2) Trade Name
The look and feel of a product (think the classic Coca-Cola bottle)
Trade Dress
The name of a business (again, think Coca-Cola)
Trade Name
Exclusive right to use an original expression that is preserved in a tangible form.
Copyright
Copyright applies to:
(1) Books
(2) Art
(3) Musical works, and
(4) Computer programs
Copyrights are protected under:
Copyright Act of 1976 (as amended)
Term of Copyright Protection:
Author’s Life plus 70 years
The Copyright Act gives copyright owners 5 exclusive rights over their work:
(1) Reproduce
(2) Publish and distribute
(3) Display in public
(4) Perform in public
(5) Prepare derivative works based on original
Copyright Infringement Example
Example: Vanilla Ice vs. Queen and David Bowie
In 1991, Vanilla Ice’s #1 hit, Ice Ice Baby, “sampled” but did not credit the song UNder Pressure by David Bowie and Queen, Facing a lawsuit for copyright infringement, Vanilla Ice confessed to the sampling.
Case was settled out of court with Vanilla Ice paying an undeclared sum of money and crediting Bowie/ Queen on the track
Copyright Infringement Example
Example: The Hangover Part II (2011)
S. Victor Whitmill vs. Warner Bros
Tattoo artist S. Whitmill sued Warner Bros. for copyright infringement in the film The Hangover Part II. In the film, Stu wakes up in a Bangkok hotel with a replica of Mike Tyson’s tribal face tattoo. The plaintiff designed the tattoo specifically for Mike Tyson and claimed it was copyrighted work. Whitmill claimed that Warner Bros had the right to put his work in the film or in any promotional materials attached to the Hangover Part II. Warner Bros settled Whitmill’s claim for an undisclosed amount.
Exclusive right to own and use an invention or design.
Patent
Term of Patent:
Good for 20 years after the filing of the patent application. Nonrenewable
How are patents granted?
Granted on a first to file rule
To patent an invention, it must be:
(1) A process for producing a useful, concrete, and tangible result.
(2) A machine (something with moving parts, like a cigarette lighter, a sewage treatment system, a laser or a photocopier).
(3) An article of manufacture (eraser, tire, chair, hand tool)
(4) A composition of matter (chemical, drug, soap, genetically altered lifeform)
(5) An improvement of an invention that fits within one of the first four categories
Patent Example: A company files a patent for a new method of frying chicken.
A process for producing a useful, concrete, and tangible result.
Patent Example: Reverse flow engine core having a ducted fan with integrated
A machine (something with moving parts, like a cigarette lighter, a sewage treatment system, a laser or a photocopier).
Formula, pattern, device or compilation of information that is used in one’s business, allowing an opportunity to obtain an advantage over competitors who do not know or use it.
Trade Secrets
Information is a trade secret if:
(1) Not known by the competitor
(2) Business would lose its advantage if the competition got hold of it, and
(3) Owner has taken reasonable steps to protect it from disclosure
True or False: Theft of trade secret can result in criminal and tort claims.
True
