OBE 118- Legal Environment
of Business
INTELLECTUAL PROPERTY
Intellectual Property
An intangible personal property
resulting from mental processes
Protection of the owners right to
protect or profit from the use of his or
her property
Intellectual Property
Patent
Copyright
Trademarks
Trade Names
Trade Dress
Intellectual Property
Federal rights
International protections
Common law rights
Patent
A legal Monopoly granted by government.
Allows the inventor an exclusive right to
make, use, and sell an invention for twenty
(20) years.
Patent applicant must demonstrate to the
patent office that an invention, discovery, or
design is non-obvious, novel, and useful. It
cannot be obvious considering current
technology.
Patent
Utility
Utilityor
orfunction
functionpatent
patentprotects
protects
“the
“theway
wayananarticle
articleisisused
usedoror
works.”
works.”Must
Mustbebereduced
reducedto totangible
tangible
form.
form.
Plant
Plantpatent
patentprotects
protectsnew new”asexually
”asexually
reproduced
reproduced distinct
distinctvariety
varietyof
ofplant,
plant,
other
otherthan
thanaatuber
tuberpropagated
propagatedplant
plant
or
oraaplant
plantfound
foundininan
anuncultivated
uncultivated
state.”
state.”
Patent
Design patents protects the way an
article looks.
Lesser term protection - 14 years.
“consists of the visual ornamental
characteristics embodied in, or applied
to, an article of manufacture.”
Patent
A patent holder gives notice that an article
or design is patented by placing on it the
word ``patent'' or ``pat.,'' plus the patent
number.
If a firm make, uses or sells another's
patented design, product, or process
without the patent owner's permission, the
tort of patent infringement exists.
Requirements for a Patent
To obtain a patent, the new invention must
be:
Novel – not known or used in this country and
not published anywhere.
Nonobvious – cannot be an obvious way to do
something.
Useful – must have some application, even if not
commercially practical.
Patent Application & Issuance
Priority Between Two Inventors – generally, the
person first to invent and use the product is given
the patent, even over an earlier filer.
Prior Sale –must apply for a patent within one year
of selling the product.
Provisional Patent Application – a shorter, cheaper
way to file for a patent temporarily, to determine if
the invention is commercially practical.
Patent
Patent office grant of the patent is
subject to judicial review in a patent
infringement case.
Amazon.com v Barnes & Noble
http://www.techlawjournal.com/courts199
9/amazon_bn/20010214op.asp
Patent
Major Patent issues
Human Genome and gene patents
Pharmaceutical
Agro-chemical products
Copyright
An intangible right given to the author or
originator of certain literary or artistic
productions.
Works created after January 1, 1978, are
automatically given statutory copyright
protection for the life of the author plus
seventy years.
Copyrights owned by publishing houses expire
ninety‑five years after publication or a one
hundred-twenty-years from the date of
creation, whichever is first.
Copyright
If multiple authors, expiration is seventy
years after the death of the last surviving
author
Facts are not copyrightable
The employer is the owner of works for hire-
work created within the scope of
employment unless otherwise agreed
The Berne convention provides international
protection for copyright for citizens of the 96
signatory countries http://www.cerebalaw.com/Berne.htm
Copyright
Exists automatically upon creation of
an original work but
Placement of copyright symbol ©
gives notice and to
judicially enforce copyright requires
Registration with the US Copyright
Office
Copyright Fair Use Doctrine
Reproductions of copyrighted works
for, "criticism, comment, news
reporting, teaching (including multiple
copies for classroom use),
scholarship, or research."
Infringement
To prove a violation, the plaintiff must show
that the work was original, and that either:
The infringer actually copied the work, or
The infringer had access to the original and the
two works are substantially similar.
Infringement
A court may:
Prohibit further use of the material
Order destruction of infringing material
Require infringer to pay damages
Copyright
Fair use determination
1. the purpose and character of use, including
whether such use is of a commercial nature
or for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion
used in relation to the copyrighted work as a
whole; and
4. the effect of the use upon the potential
market for or value of the copyrighted work.
Computers
Software – copyrightable aspects:
Codes – both source and object codes
Structure – how a program accomplishes a task
Look and Feel – the way a program looks and
uses symbols
Internet
Digital Millennium Copyright Act
Makes it illegal to delete copyright information,
such as the author’s name, and then distribute the
work via the internet.
It is also illegal to circumvent encryption or
scrambling devices.
Copyright Remedies
Registration with the US Copyright Office is
a condition precedent to judicial
enforcement of copyright.
Actual damages – including profits
Statutory damages (ranging from $250 to
$10,000) imposed at the court's discretion
Attorney fees
Injunctions
Criminal proceedings for willful violations
(may result in fines and/or imprisonment).
Need not profit from invasion
Copyright Examples
Writings (novels, textbooks etc.)
Computer Software
Song writing
Song recordings
My PPT slides (although some parts
included fair use copyrighted
material from textbook authors).
Trade Names
Identifies a company, partnerships or
business.
Cannot be registered under federal law unless
they are also used as trademarks or service
marks (used to identify services).
Common law protection.
Trade Name
Trademark
Any word, phrase, symbol, design, sound,
smell, color, product configuration, group of
letters or numbers, or combination of these,
adopted and used by a company to identify
its products or services, and distinguish
them from products and services made,
sold, or provided by others
A distinctive mark, motto, device, or
implement that a manufacturer stamps, or
prints on its goods.
Trademark
Assists customer in identifying a
product without confusion.
If a business uses the trademark of
another, consumers are misled as to
who made the goods.
Trademarks
Types of Marks
Trademarks—affixed to goods
Service marks—identify services, not goods
Certification marks—marks used by an organization to
attest that products meet certain standards
Collective marks—marks that identify members of an
organization
Trademark
What can be trademarked
Words that are used as part of a design or device
or words that are uncommon or fanciful may be
trademarked.
What cannot be trademarked
Personal names, descriptive or generic words, or
place names
Books
Pencils
Carper
Hawaii
Trademark
Ownership and Registration
First person to use a mark in trade owns it.
Registration is not necessary, but does have some
advantages.
Protection becomes nationwide
Gives public notification of trademark protection
Damages under the Lanham Act are higher
Holders of registered marks have first priority to use the
mark as an Internet domain name
Requirement of Enforcement
An alleged infringer may claim that the Plaintiff's
mark was abandoned and thus the protection lost.
Non use of the mark in question.
Intent to discontinue the use of the mark.
Presumptive abandonment occurs after two
consecutive years of non use.
May be rebutted by proof of intent to resume use.
Requirement of Enforcement
Legal Abandonment occurs when a trademark
owner fails to protect a TM.
ESCALATOR, THERMOS, ASPIRIN,
CELLOPHANE
Use term as an adjective not a noun Kodak
Camera – not Kodak
Trademark
Federal registration
® ™ (SM) Demonstrates registration of
TM with U.S. Patent and Trademark
Office
State registration
symbol next to distinctive use of term
Service Mark
Any word, name, symbol,
device, or any combination,
used, or intended to be used, in
commerce, to identify and
distinguish the services of one
provider from services provided
by others, and to indicate the
source of the services.
Domain Names
Internet addresses, (domain names), were originally
assigned with no cost.
Now, domain names are bought and sold –
sometimes for enormous amounts of money, and
sometimes sold by people who originally registered
those names for free.
If a domain name infringes on a registered
trademark, the domain name will be suspended
immediately if the trademark owner challenges it.
Additional Concepts
Product disparagement or product
defamation (note Bose v Consumers Union)
1. False statement about a product or company
2. Publication
3. With malice (companies are considered public
figures)
4. Damages
International Protections
Registration in each foreign countries
Use of as variety of treaties
CTM – Community Trade Mark Registration for all
countries which are part of the European Union
Additional Terms & Concepts
Palming Off: One company sells its products by
leading buyers to believe it is the product of another
company.
Gray Goods: "A gray-market good is a foreign-
manufactured good, bearing a valid United States
trademark, that is imported without the consent of
the United States trademark holder."
Trade Secrets
A trade secret is a formula, device, process, method,
or compilation of information that, when used in
business, gives the owner an advantage over
competitors who do not know it.
The Economic Espionage Act of 1996.
This statute prohibits any attempt to steal trade
secrets for the benefit of someone other than the
owner, including for the benefit of any foreign
government.
Intellectual Property
Sources
Intellectual Property made simple by Nolo Press
Patent, Copyright & Trademark
by Attorney Stephen Elias
http://www.nolo.com/product/pct_sub62.html
Outstanding website on copyright law
http://www.benedict.com/
U.S. Patent and Trademark Office
http://www.uspto.gov/
U.S. Copyright Office
http://www.loc.gov/copyright/
