Class 14 - 15 - Intellectual Property Flashcards
Any product or result of mental processes that is given legal protection against unauthorized use.
Intellectual Property
4 main types of Intellectual Property
Patents
Copyrights
Trademarks, Service Marks and Trade Dress
Trade Secrets
In the modern economy, these IP rights can form the majority of firm value.
Which type of IP?
Grant of a monopoly right from the federal government that gives an inventor the right to exclude others from making, using or selling her invention without permission, such as a license, for a limited period of time.
Patents
Patents may be issued for (3 things)
- Utility Patents: Products (inventions) & certain Processes (including software and some business processes)
- Design Patents: (appearance of an item; e.g., typeface)
- Certain Plants/Animals
Patents may NOT be issued for
NOT IDEAS (e.g., E=MC2)
How to get a Patent
- Inventor must file a patent application with the U.S. Patent and Trademark Office
-Description of how the invention works (Specification)
Drawings and Declarations of Inventor
Claims of patentability, explaining why it is:
1) Novel (New) in relation to “prior art;”
2) Useful;
3) Non-obvious; and
4) Patentable subject matter (i.e., not just idea or laws of nature, etc.).
Use ___’s to protect your invention while the application for patent is being processed!
NDAs
Utility Patents last __ years from the date of filing application.
20
Design Patents last __ years from the date of filing application.
14
Once the term expires, the invention/design enters the “public domain” meaning….
anyone else has the right to make, use or sell the invention/design, without a license.
_______ - The thing to be patented must be truly “new” – not known, used, patented or described in print anywhere in the world. Can’t be an obvious development either.
Novelty
______ - product/process must provide some identifiable practical real-world benefit
Utility (Usefulness)
________ - Can’t patent if “the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.”
Non-Obviousness
To determine obviousness, must analyze:
- Scope and content of prior art
- Difference between prior art and the claims at issue
- Level of ordinary skill in the art
- Objective evidence of non-obviousness, such as commercial success
_______ is a tort that occurs when someone makes, uses or sells another’s patented design, product or process without patent owner’s permission.
Patent Infringement
For inventions, infringement occurs even if not all of the features or product are copied (e.g., part of a software code).
True or False: Someone can NOT get sued if patent infringement was unintentional
FALSE
May be sued whether intentional or unintentional.
_______ Infringement - Making, using or selling any patented invention within US during term of patent, whether innocently or intentionally.
Direct Infringement
_______ Infringement - Inducing another to infringe (e.g., encouraging customers to play DVDs on infringing player)
Indirect infringement
_______ Infringement - One party knowingly sells an item with one specific use that will result in the infringement of another’s patent
Contributory
Defenses to Patent Infringement (4 things)
1) Noninfringement: Not within scope of patent; file-wrapper estoppel.
2) Invalidity of Plaintiff’s Patent: Doesn’t fulfill pre-requisites of novelty, usefulness and nonobviousness.
3) Plaintiffs Patent Misuse: Illegal licensing restrictions (e.g., royalties for use beyond patent term)
4) Innocent Infringement: Inadequate notice of patent status (e.g., no patent # on product) bars plaintiff from recovering damages during pre-notice period.
Remedies for Infringement (4Things)
1) Injunction (if irreparable injury will occur, money is insufficient, and its in the public interest)
2) Damages for licensing royalties or lost profits, or the infringers profits.
3) Attorneys’ fees and costs
4) Willful infringement can subject the infringer to “treble damages” (i.e., three times the damages)
______ is the legal right to prevent others from copying an original expression embodied in any original work of authorship fixed in a tangible media.
Copyright
Copyright is granted by federal statute (Copyright Act of 1976) to authors of certain _1__ works and __2__ works
literary works
artistic works
Term of copyright is the life of the author plus ____ years
70
In the case of a corporate work, Term of copyright is _____ years
95
Exclusive Rights of Copyright granted to the owner include: (5 things)
Reproduction (e.g., broadcasting of Pay-Per-View in a bar)
Preparation of derivative works (i.e., film rights based on book)
Distribution of copies (xeroxing and scanning)
Public performance the work
Public display the work
Legal requirements of copyright
2 things
1) Fixation
A work must be fixed in a tangible medium of expression (i.e., book, recording, film)
2) Originality
A work must be the result of independent creation
A work must exhibit at least a minimal amount of creativity.
Without fixation, a work is ____
unprotected
Performance of, for example, a speech, song or dance does not provide protection
The performance must be recorded in some manner
Oral/Verbal is not enough.
Copyright protection occurs immediately upon _______
fixation.
True or False: It is NOT necessary to display the © symbol on a work
TRUE
True or False: It is necessary to register a copyright
FALSE
True or False: Ideas, Processes, and Principles can be copyrighted
FALSE
Works created within the ______ are presumed to be owned by the company absent written agreement to contrary.
_______ generally means done (1) at work, (2) using company resources, (3) at employer’s direction or request
“scope of employment”
If two or more authors contribute copyrightable elements to a work with intent to create a interdependent work, a ______ is created
joint work
Elements of Infringement of Copyright: (2 things)
(1) Proof of copying: Direct evidence – a witness or an admission by the defendant Indirect evidence – Access – did defendant have opportunity Resemblance – are the works similar
(2) Copied Material Must Be Protected
Can’t be facts
Can’t be in public domain
_____ Infringement: The company or person that directly carries out the infringing activity of a Copyright.
Direct
______ Infringement: The tort of contributing to the direct infringement of another of a Copyright.
Contributory
________ Infringement: (pertaining to copyright) A person or company (1) has right or ability to control infringer’s acts and (2) receives financial benefit from the direct infringement of someone else; Does not require knowledge of infringement
Vicarious
Remedies of Copyright infringement
Actual damages (lost profits) Statutory damages (up to $150,000) Criminal fines / imprisonment
Allows reproduction of copyrighted material without royalties on a case-by-case basis
Fair Use Exception
Defenses to Copyright Infringement (2 things)
1) First Sale Doctrine -
Exhausts statutory right to control distribution of item once the owner sells it and it enters the stream of commerce
Applies when item is sold outside the U.S.
2) Copyright Misuse: if copyright owner conditions license on restrictions on use of competitors’ products or on product development
_______Act expanded copyright protection to owners of copyrights in digital information
Internet Services Providers (ISPs) cannot held liable for copyright infringement of a user, unless the ISP is aware of subscribers violation and fails to take action.
Digital Millennium Copyright Act
______ refers to any distinctive mark, word, phrase or symbol that a manufacturer puts on the goods it produces so their source can be identified on the market.
Trademark
Services can also be marked (e.g., Jiffy-Lube)
Sometimes “trade dress” (e.g., bottle design) is also protected.
Originally regulated by state common law claims, but regulated now by federal statute (Lanham Act) and by state statutes.
Purpose of Trademark
Allow consumers to reliably identify the source of goods (prevent “consumer confusion”)
Provides Benefits:
Consumers – can obtain the goods and services they want and avoid ones they don’t
Business – can create and protect “good will” (image and reputation of a company)
In order to get Trademark protection the Mark must be ____— capable of identifying the source.
distinctive
4 Categories of Marks Based on Relationship Between the Mark and the Product, in a Hierarchy of Distinctiveness:
Inherently Distinctive –
(1) Arbitrary and Fanciful marks
(2) Suggestive marks
Capable of Becoming Distinctive –
(3) Descriptive
Incapable of Becoming Distinctive
(4) Generic
Strongest Marks (Inherently Distinctive) include
___1___ marks such as newly coined words created by owner to be used as a mark (Kodak)
___2___marks such as
Word existed but meaning is unrelated to good or service and non descriptive (Apple)
1) Fanciful Marks
2) Arbitrary marks
(Inherently Distinctive,
Capable of Becoming Distinctive, and/or Incapable of Becoming Distinctive)
Mark that evokes or suggests a characteristic of the underlying good.
It indirectly describes something about a the nature, quality or characteristics of good or service, but require consumer imagination to draw the connection. (Coppertone)
Inherently Distinctive/Capable of Becoming Distinctive
Strong, Inherently Distinctive(Suggestive Trademarks) include
____ - A mark that directly describes (not just suggests) a quality of the underlying product (e.g., ingredients, color, function, etc.).
Descriptive Marks
Capable of Becoming Distinctive
In order to determine if trademark has secondary meaning courts will assess: (4 things)
Amount & manner of advertising
Volume of sales
Length and manner of use
Results of Consumer Surveys
True or False: Disparaging or deceptive marks can be denied trademark protection.
TRUE
____ - a mark used to distinguish services rather than goods.
Service Marks
_______ - Used by one or more persons, other than owner, to certify the region, materials, mode of manufacture, quality or other characteristic:
Certification Marks
_______ - Certification marks used by members of cooperative, association or organizations.
Collective Marks
________ - image and appearance of a product or service.
Trade Dress
Can be protected like a trademark, if it distinctive and likely to cause consumer confusion.
How to obtain trademark?
1) Be the First to Use the Mark in Commerce
- Only gives protection in the geographic area of use.
2) Be the First to Register the Mark with USPTO
Must file an application and show:
It is currently in commerce, or
Will be in commerce within 6 months.
® indicates that the mark has been registered.
Advantages of Registering a TM (5 things)
1) Right to use mark nationwide
2) Puts all on notice of your mark
3) Allows party to bring suit for TM infringement in federal court
4) Allows party to potentially recover 3x damages
5) After 5 years of registration, it becomes uncontestable
One can lose a TM by: (2 things)
Actual Abandonment: Presumption after two years of nonuse
Constructive Abandonment:
Misuse of trademark
Slipping into genericism
Failure to control companies licensed to use the mark
Transferring TM without transferring the underlying assets.
_____ Abandonment includes Misuse of trademark, Slipping into genericism, Failure to control companies licensed to use the mark, Transferring TM without transferring the underlying assets.
Constructive Abandonment
_____ Abandonment of a trademark is Presumed after two years of nonuse
Actual Abandonment
______ occurs whenever the trademark is used in its entirety or copied to a substantial degree without permission by another person.
Trademark Infringement
- In order to have an infringement claim the owner of the mark must bring suit and show: (2 things)
Defendant used the mark, and
Defendant’s use created a “likelihood of confusion about the origin of Defendant’s goods or services.”
To determine likelihood of confusion from Trademark Infringement, courts will assess, among other factors: (5 things)
Strength of mark
Similarity of Marks
Evidence of actual confusion
Proximity of the Goods (are both goods of same type?)
Remedies for Trademark Infringement
Actual Damages
Profits that infringer wrongfully received from unauthorized use of the mark.
Other remedies commonly sought include:
Injunction (to stop the unauthorized use)
Destruction of goods bearing unauthorized mark
Attorneys’ fees.
In the case of _____ ____ the Court can order
1) Criminal fines
2) Imprisonment
3) Restitution in the amount of TM owners loss
4) Forfeiture and destruction of counterfeits
Criminal Counterfeit
- ______ - unauthorized uses of famous (or, under state law, distinctive marks) even on noncompeting goods, particularly when in the same market, resulting in blurring or tarnishment
trademark dilution
Sambuck’s Coffee vs. Starbucks Coffee
Which defense to trademark dilution is this?
Deliberate __ does not seek to confuse consumers about source or sponsorship
Parody
Which defense to trademark dilution is this?
A descriptive mark is used in good faith for its primary, rather than secondary, meaning, and no consumer confusion is likely to result.
Fair Use
E.g., cereal manufacturer describing its cereal as consisting of “all bran” may not infringe on Kelloggs’ “All Bran.”
