Intellectual Property and Unfair Competition in a Nutshell
Authors:
McManis, Charles R. / Friedman, David J.
Edition:
7th
Copyright Date:
2013
14 chapters
have results for intellectual property
Chapter 1. Introduction to the Law of Intellectual Property and Unfair Competition 37 results (showing 5 best matches)
- For an introduction to federal intellectual property law, see A. Miller & M. Davis, Intellectual Property–Patents, Trademarks and Copyrights in a Nutshell (5th ed. 2012).
- Trade regulation law not only supplements the private remedies of the common law but also provides for public (i.e., government) regulation of trade practices and at points actually merges with the larger law of antitrust and consumer protection. Likewise, some of the judge-made law of unfair competition, namely that involving trademarks and trade secrets, is frequently described, together with the federal statutory law of patents and copyrights, as comprising a separate and distinct law of intellectual property. As we shall see, however, the term “intellectual property” is just as misleading as the term “unfair competition,” as it falsely suggests that similarities among the various forms of intellectual property are more pronounced than the differences, when in reality the opposite is the case.
- I); product, service and business misidentification (Part II); appropriation of intangible business assets (Part III); and injurious promotional and pricing practices (Part IV). The underlying premise of this book is that to understand why the law creates specific intellectual property Both historically and conceptually, intellectual property law is an outgrowth of the law of unfair competition. Thus, the two parts of this book predominantly concerned with the law of intellectual property (Parts II and III) are bracketed by the two parts of the book concerned with the law of unfair competition (Parts I and IV).
- Finally, the United States is a member of the World Trade Organization, which lays down rules for the conduct of international trade. Created in 1994 as an outgrowth of the Uruguay Round of multilateral trade negotiations, the WTO is the successor to the stop-gap international agency that administered the General Agreement on Tariffs and Trade (GATT). The bundle of international agreements administered under the GATT/WTO regime not only provides a mechanism for reciprocal lowering of tariffs and other non-tariff trade barriers, but also establishes international standards for the protection of intellectual property rights and the regulation of discriminatory pricing practices. Of particular importance to the law of intellectual property and unfair competition is the Agreement on Trade–Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods, better known as the TRIPS Agreement. TRIPS establishes a detailed set of substantive minimum standards governing...
- If it is useful to speak of a law of intellectual property and unfair competition at all, it must be described as a creature, not merely of the judicial and legislative branches of state and federal government, but of the Constitution that binds those governments together and the international agreements that govern U.S. relations with other nations. The very diversity of the sources of the law of intellectual property and unfair competition compels a consideration of their underlying objectives.
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Preface 7 results (showing 5 best matches)
- Students of intellectual property and unfair competition law must thus understand how these two conceptually distinct bodies of law nevertheless operate interdependently. The organization of this Nutshell is designed to assist in that understanding, as the two parts of the book predominantly concerned with the protection of intellectual property (namely Parts II and III) are bracketed by the two parts of the book predominantly concerned with the law of unfair competition (namely Parts I and IV). The goal throughout is to help law students understand both the distinctive policies underlying, and the linkages between, the law of intellectual property and unfair competition.
- edition of Intellectual Property & Unfair Competition in a Nutshell is made necessary by a number of recent developments in intellectual property and unfair competition law—most notably, the Leahy-Smith America Invents Act (AIA) of 2011 (P.L. 112-29, 125 Stat. 284-341), which has substantially revised U.S. patent law. The preface to this new edition offers a fitting opportunity to recall that the first edition of this volume was first published (albeit under a different title) exactly thirty years ago. The number of editions required since 1982, as well as a title change after the third edition, both hint of the dynamism in the law of intellectual property and unfair competition over past thirty years.
- acknowledge that both the law of intellectual property and the law of unfair competition have come into their own. As emphasized in Chapter One of this Nutshell, however, the underlying premise of this book continues to be that to understand why the law creates specific intellectual property . Both historically and conceptually, the development of intellectual property rights can be seen as an outgrowth of the law governing fair and unfair competition, and both bodies of law seek to distinguish between fair and unfair trade practices.
- Two particularly important developments in international intellectual property (IP) law came to the fore in the 1990s—the first being the adoption of the Agreement on Trade Related Aspects of Intellectual Property Rights—commonly called the TRIPS Agreement--which is part of a larger bundle of agreements, collectively referred to as the Marrakesh Treaty. This bundle of agreements also amended the General Agreement on Tariffs and Trade (GATT) and created the World Trade Organization (WTO). TRIPS entered into force on January 1, 1995, becoming the first international agreement to establish minimum standards for the protection of all seven of the categories of “intellectual property” enumerated in the TRIPS Agreement—i.e. 1) copyrights & related rights; 2) trademarks; 3) geographical indications; 4) industrial designs; 5) patents; 6) designs of integrated circuits; and 7) undisclosed information. Article 39 of TRIPS specified that the protection of undisclosed information was henceforth...
- In 1996 the World Intellectual Property Organization (WIPO), the international agency long responsible for administering the Paris Convention and the Berne Convention for the Protection for Literary and Artistic Works (1886), reasserted its authority to guide international intellectual property policymaking, promulgating the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), which sought to adjust the law of copyrights and related rights in the new digital age.
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Chapter 6. Appropriation of Publicly Disclosed Intangible Assets 32 results (showing 5 best matches)
- The intangible assets of a business may include not only its trademarks, trade names and business goodwill but also any legally protectable intellectual property, such as inventions, literary or artistic works, or any other commercially valuable ideas or information. What all of these intangible assets have in common is that they are the product of intellectual effort—and often entail a substantial investment of time and money as well.
- forms of intellectual property protection for such intangible assets as new plant varieties, semiconductor chip designs, and most recently, vessel hull designs. Likewise, subject to specific federal requirements, state contract law continues to govern the assignment and licensing of intellectual property. However, the AIA has amended various provision of the federal judicial code to deny state courts jurisdiction over legal actions relating to patents, plant variety protection, or copyrights. See, e.g., 28 U.S.C. § 1338(a).
- addition the existing copyright laws of the United Kingdom, Australia, and perhaps the Netherlands and Sweden could presently be found to protect mask works on substantially the same basis as the U.S. Chip Act does. The World Intellectual Property Organization (WIPO) prepared a draft treaty on the Protection of Intellectual Property in Respect of Integrated Circuits (IPIC) in 1985. The TRIPS Agreement requires WTO member countries to comply with most provisions of the (still unratified) IPIC, but also specifies additional minimum standards for the protection of integrated circuit designs. As a domestic matter, however, the Chip Act may have been responding to a non-existent problem. To date, only two reported cases have been brought under the Act since 1984. See Part B.3, infra.
- As with other forms of intellectual property, patent rights may be assigned or licensed. An assignment transfers ownership of all or some of the patentee’s rights in the invention, while a license merely grants the licensee permission to make, use or sell the invention. Although the patent rights themselves are federally created rights, infringement of which must be litigated in federal courts, the assignment or licensing of patents is largely governed by state contract and property law. Thus, where no diversity of citizenship or federal question exists, patent assignments and licensing agreements will be enforced in state courts.
- Infringement is an act that violates the exclusive intangible intellectual property rights of another. A prima facie case of direct violation of the patent rights of another does not depend on proof that the actor knew of the owner’s rights. For example, plant patent infringement occurs whenever unauthorized asexual reproduction (e.g. a cutting) of the patented plant (and any subsequent use, offer for sale, actual sale, or importation of the plant of a part of it) takes place.
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Index 5 results
Outline 5 results
- Chapter 1. Introduction to the Law of Intellectual Property and Unfair Competition
- A. Sources of the Law of Intellectual Property and Unfair Competition
- B. Objectives of the Law of Intellectual Property and Unfair Competition
- C. A Suggested Approach: The Law of Intellectual Property and Unfair Competition in Functional Context
- 4. Other Investments of Intellectual Effort: News, Data, Ephemeral Performances Publicity
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Chapter 4. Use of Similar Trademarks and Trade Names 12 results (showing 5 best matches)
- A party may also petition the U.S. Trade Representative to impose sanctions on foreign countries that give inadequate or ineffective protection to the intellectual property of U.S. nationals. See Chapter 1, supra.
- the trade symbol. Thus, what began as an off-shoot of the law of deceit has emerged to become part of the law of intellectual property. In the course of that transformation, the terms “trademark” and “trade name” took on two distinct meanings—an older, common-law meaning and a more modern statutory meaning.
- As a practical matter, many domain name ownership disputes may be quickly and relatively inexpensively resolved outside of the legal system through private arbitration proceedings, such as those conducted by the WIPO pursuant to ICANN’s Uniform Dispute Resolution Policy (UDRP). Registration or renewal of a domain name contractually subjects the applicant to the ICANN UDRP in specified circumstances. See UDRP, § 4(a), adopted Aug. 26, 1999. Litigation will be preferred in cases where a business seeks to recover compensation in addition to domain name ownership. Courts have construed the ACPA’s protections against overreaching trademark owners to provide a cause of action for domain name registrants to challenge adverse decisions by World Intellectual Property Organization (WIPO) dispute panels pursuant to the Uniform Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers. See, e.g.,
- The Trademark Act of 1905, by contrast, stated the test both for denying registration and finding an infringement as being the use of confusingly similar marks on goods having the “same descriptive properties.” The Lanham Act, by dropping the “same descriptive properties” language of the 1905 Act, ultimately broadened the scope of protection for federally registered marks still further.
- In today’s increasingly complex and impersonal economy, it is not enough that a business be free to enter into individual trade relations with particular employees, suppliers and customers and enjoy a degree of stability in such relations once they are established. Businesses must normally invest considerable time, money, and intellectual labor in the effort to establish an identity for their product, service or business so that the public at large will become and remain aware of them amid the din of the marketplace. Even if a business does not engage in a deliberate effort to develop distinctive marks and names to identify itself or its product or service it has an interest in preventing other businesses from diverting its trade by confusing the public as to the identity of their own product, service or business.
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- As with employment relations themselves, employment contracts may consist of both management and labor contracts. Similarly, commercial contracts include contracts between parties at the same and at different levels in the chain of distribution of goods and services. Contracts among businesses of the same general type are likely to involve joint ventures, trade association activities or the sale of business assets, including intangible assets such as business goodwill or intellectual property. Contracts between businesses of different types or at different levels of the distributive chain are likely to involve financial transactions, the sale or lease of business premises or goods, the sale or licensing of some form of intellectual property, the performance of services, or some combination of all of these—as is the case, for example, in franchise operations.
- Different considerations apply where the interference complained of creates an unreasonable risk of harm to the person or property of one of the contracting parties and does in fact result in such injuries. Both of the parties to the contractual relation may be blameless and their contractual relation perfectly foreseeable to the interfering party. If both conditions are met, the interfering party would in any event be liable for any physical injuries caused. It is thus not surprising that courts have allowed recovery of pecuniary loss resulting from negligent interference with contractual relations where it accompanies a negligent infliction of injury to the plaintiff’s person or property. One court has even awarded consequential damages for economic loss where the underlying basis for liability for the physical injury was strict liability rather than negligence. See
- Contracts of all types may range from elaborate written contracts to contracts whose terms are entirely implied from a course of dealing between the parties. Contracts may remain in force for a definite or indefinite term or may be terminable at the will of one or both parties. They may also contain post-contractual covenants, such as warranties of title or merchantability and covenants not to compete or disclose confidential information. Contracts which by their terms cannot be performed within one year, or involve the sale or mortgaging of real property or
- While the requirement of malice has thus either been fictionalized to some extent or altogether displaced by a balancing approach to the question of what intentional interference with contractual relations is actionable and what is privileged, courts have generally refused to extend liability beyond intentional or reckless interference to purely negligent interference with contractual relations. That refusal reflects a broad judicial concern with containing tort liability within definite borders and a corresponding reluctance to extend liability for negligence beyond conduct causing physical injury to person or property. As with most general rules of law, however, the rule limiting actions for interference with contractual relations to intentional misconduct is subject to a number of exceptions designed to avoid unjust results.
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Chapter 7. Appropriation of Trade Secrets and Ideas 10 results (showing 5 best matches)
- Trade secrets and ideas, like distinctive trade symbols, patents, copyrights and other investments of intellectual effort, may be assigned or licensed. Unlike other forms of intellectual property, however, it is essential that the confidentiality of the secret or idea be maintained. Loss of secrecy, whether due to the neglect of the owner of the secret or idea or to independent discovery or reverse engineering and publication by another business, will result in a loss of rights, except as against those who have expressly agreed to pay royalties for so long as an invention, idea or information is used. See, e.g.
- A number of theories for granting legal protection to trade secrets have subsequently been advanced. Some courts, influenced no doubt by the law of patents, copyrights and trademarks, emphasize that trade secrets are a protectable form of intellectual property. See, e.g., , 467 U.S. 986 (1984) (holding that disclosure or use by a government agency of trade secret information submitted by a private company could constitute a taking of property requiring compensation under the Fifth Amendment of the U.S. Constitution). For most courts, however, the starting point for the law of trade secrets has been the breach of a confidential relation. As Mr. Justice Holmes noted in
- The subject matter of state trade secret protection, however, is not limited to inventions; nor is state trade secret law the only body of state law protecting trade values that have not been publicly disclosed. At the same time the law of trade secrets was developing, there emerged a parallel body of law known as the law of ideas, which provided a degree of protection to those who, whether in business themselves or not, submitted ideas to a business for its consideration. As with trade secrets, courts have on occasion characterized such ideas as a protectable form of intellectual property. See, e.g., ...F.2d 706 (D.C.Cir.1953) (holding that a person has such a property right in his own idea as enables him to recover damages for its appropriation or use when the idea is original, concrete, useful and is disclosed in circumstances which, reasonably construed, clearly indicate compensation is contemplated if it is accepted and used). Most courts, however, have tended to echo the view...
- Some intangible products of intellectual effort may be exploited without being publicly disclosed. Whether publicly disclosed or not, they may be entitled to legal protection. An inventor, for example, may have an option between obtaining federal patent protection or relying on common-law trade secret protection for an invention. Whereas a patent protects an invention for a limited time after public disclosure, state trade secret law offers protection for so long as the invention remains a secret.
- The word property as applied to trademarks and trade secrets is an unanalyzed expression of certain secondary consequences of the primary fact that the law makes some rudimentary requirements of good faith. Whether the plaintiffs have any valuable secret or not the defendant knows the facts, whatever they are, through a special confidence he accepted. The property may be denied but the confidence cannot be.
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- the requisite injury, including destruction of or substantial injury to or prevention of the establishment of an efficiently and economically operated industry in the U.S., or antitrust injury, can be shown. The Omnibus Trade and Competitiveness Act eliminated the injury requirement where a practice involves infringement of a federal statutory intellectual property right. The ITC’s authority to prohibit unfair methods of competition in imports has been broadly construed to include not only infringement of statutory intellectual property rights and antitrust violations but also a variety of common law acts of unfair competition, such as passing off and trade secret misappropriation, as well as any Lanham Act § 43(a) violations. Although ITC determinations are subject to review by the U.S. Trade Representative and the President as well as by the Court of Appeals for the Federal Circuit (CAFC), presidential rejection of ITC determinations are rare. In
- , 103 F. 281 (6th Cir.1900) (“It is doubtlessly morally wrong and improper to impose upon the public by the sale of spurious goods, but this does not give rise to a private right of action unless the property rights of the plaintiff are involved. There are many wrongs which can only be righted through public prosecution, and for which the legislature, and not the courts, must provide a remedy.”)
- A third federal statute to which victims of deceptive promotional practices once turned is the Racketeer Influenced and Corrupt Organizations Act (RICO), 18 U.S.C. §§ 1961–1968, which allows the recovery of treble damages by any person injured in his business or property as a result of certain activities constituting “
- , 129 F.2d 227 (3rd Cir.1941) (the action of disparagement of property has a place of its own in the law and is not a mere branch or special variety of the action for defamation of personal reputation or of the action for deceit). See also
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Chapter 9. Injurious Pricing Practices 2 results
- of this provision has been to prevent the importation of articles that infringe U.S. intellectual property rights, the ITC has also used this provision to assert jurisdiction over various types of antitrust claims, including predatory pricing. Where such conduct threatens or prevents the establishment of a U.S. business, the ITC excludes the article from this country or issues a cease and desist order. Either action by the ITC may be overturned by the President within 60 days. However, the ITC may not use its authority under § 1337 to address dumping or countervailing duty cases as such.
- The civil provisions of the RPA (§§ 2(a)–2(f)) may be enforced either by the federal government or by private parties injured in their business or property as a result of violations of the Act. Although the Federal Trade Commission and the Department of Justice have concurrent power to enforce the civil provisions of the RPA, the Department of Justice has in practice largely deferred to the Federal Trade Commission, which enforces the Act through judicially enforceable administrative cease and desist orders. The Justice Department retains exclusive
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Chapter 2. Interference with Precontractual and Noncontractual Relations 6 results (showing 5 best matches)
- , 130 S.Ct. 2201, 560 US ___ (2010) (single licensing entity created by separately-owned teams violated §1 as vehicle for concerted activity since teams compete with each other for entertainment revenue and the joint entity restrained the teams’ ability to individually market their intellectual property rights).
- The ancient law of trespass also began to entertain claims for pecuniary harm resulting from direct physical injury to or detention of the merchant’s person or property. That simple extension of the common law was profound, for at that point the common law departed from its narrow concern with protecting the physical security of persons and property and began to concern itself, albeit unconsciously, with relational security as well.
- The law of defamation, which protects as an incident of personality one’s reputation in the community, was from the first particularly solicitous of the reputation of merchants and tradespeople, perceiving the danger of harm for defamatory remarks about another’s trade or business to be sufficiently clear as to obviate the need for proof of actual pecuniary harm. At the same time the courts recognized, as an incident of the ownership of real, personal or intangible property, the right to be free from false statements casting aspersions on one’s title to the property (slander of title) or the quality of the property. Gradually, liability was extended to any injurious statement maliciously made about another’s business. That form of injurious falsehood came to be referred to as trade disparagement. See, e.g.,
- Just as it is unlawful to defame a merchant or disparage his title to property or the quality of his merchandise, so it became unlawful to palm off inferior quality goods as those of another, more reputable merchant. Together, these three prohibitions contain the seed of much of the modern common law of unfair competition, which protects the public relations as well as the prospective contractual relations of businesses. For that reason, the common law’s protection of those likely to be economically injured by communications made to third persons will be deferred for consideration in Parts II and IV.
- The common law from an early date protected merchants and others from unauthorized direct physical trespass to their persons or property. In recent years, the ancient law of trespass has been put to a new use combating various activities in cyberspace, such as bulk unsolicited commercial email messages (“spam”) advertising products or services. See, e.g.,
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- , 372 N.E.2d 817 (Ohio App. 10 Dist.1977) (where a president of a research laboratory, without authorization presented an unpublished article, written by a biochemist during the course of his employment with the laboratory in such a way as to indicate that it was the work of the president, the biochemist had a cause of action—be it classified as a claim for relief for plagiarism, invasion of a right of publicity or prima facie tort—as the president violated the employee’s right to be recognized for his work product, even though he claimed no common-law copyright interest in the article and the discovery revealed in the article was the property of the employer).
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- Publication Date: November 13th, 2012
- ISBN: 9780314280640
- Subject: Intellectual Property
- Series: Nutshells
- Type: Overviews
- Description: This guide offers a broad summary of the law of intellectual property (patents, copyrights trademarks, trade secrets, and a variety of other sui generis forms of protection for innovations and creativity) and the law of unfair competition (trademark infringement, passing off, trade disparagement, and deceptive advertising).It also touches on related fields of law, such as antitrust, consumer protection, regulated industries, and the law governing interference with contractual and noncontractual relations.