Principles of Intellectual Property Law
Author:
Myers, Gary
Edition:
3rd
Copyright Date:
2017
31 chapters
have results for Patent Law
Chapter 13. Patentable Subject Matter 205 results (showing 5 best matches)
- Finally, with regard to the treatment of design patents under patent law generally, section 171 of the Patent Act provides that “[t]he provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” Thus, the analysis of the requirements for patent protection, infringement, defenses, remedies, and other aspects of design patent law is generally the same as that used in the case of utility patents.
- The first patent statute was the Patent Act of 1790.
- Once a patent is issued, its contents become public information. This disclosure serves a fundamental purpose of patent law—allowing widespread dissemination of information regarding new and useful inventions. In order to make its patent claims known to its competitors and others in the marketplace, the applicant can state on its product that it has a “patent pending.” Once the patent is granted, patent law’s “marking” requirement encourages the patent holder to place a notice of the existence of the patent on the product
- case. The Federal Circuit held that because Kathawala had filed and obtained Greek and Spanish patent applications on his invention more than one year before he filed his United States patent application, section 102(d) barred his United States patent. The court rejected the inventor’s three arguments against this result. First, the court found that it was irrelevant whether the Greek patent was actually invalid under Greek law. The important fact is that the patent application was filed and granted, and the court rejected the idea that the PTO should delve into the actual validity of patents under foreign law. Second, Kathawala contended that the Spanish patent was not publicly available until after he had filed his United States patent application. Once again, the court held that the key question is whether the foreign patent had in fact been granted. Finally, the inventor argued that the Spanish patent did not claim all features sought to be patented in the United States (...
- Patents offer the strongest possible form of intellectual property protection—an exclusive right to make, use, sell, offer to sell, or import the patented invention anywhere in the United States for the duration of the patent. Foreign patents offer similarly broad protections. Unlike trade secret law, there is no defense of reverse engineering or independent creation. This exclusive right is sometimes called a “legal monopoly”—which does not necessarily mean that a patent holder possesses real economic power, though such power may exist if a patent covers a unique and highly desirable new product. Historically, United States patent law owes much to
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Chapter 18. Trade Secret Law 31 results (showing 5 best matches)
- Despite its emphasis on secrecy, state trade secret law has been found to not be preempted by federal patent law.
- Therefore, a company might make use of trade secret law during preliminary stages of product development, while eventually seeking patent protection for some or all aspects of its proprietary information. Subject to the requirements of patent law (for example, requiring patent applications to be filed within one year of public use or of placing a product on sale), both fields of intellectual property law can be invoked when appropriate. Of course, to the extent material is disclosed or claimed in a patent, it ceases to be eligible for trade secret protection. Nonetheless, a company might seek to claim patent protection for aspects of its product that will be apparent or easily reverse engineered upon marketing and sale of the product, while retaining trade secret protection on aspects of the manufacturing process that are not readily reverse engineered. Unlike patent law, which provides exclusive rights against any party that makes, uses, sells, offers to sell, or imports the...
- Consequently, there is a certain degree of conflict between the patent law policy of requiring disclosure and the trade secret policy
- Thus, defenses based on reverse engineering or independent development can be asserted, as the scope of rights under trade secret law is limited to cases in which the information is somehow improperly obtained, unlike patent law—which provides “rights
- secret aspects related to the manufacturing process necessary to develop the product, but the product itself can be freely imitated. Of course, if a trade secret owner has successfully obtained patent protection for a particular innovation, it can proceed to market that product under the protection of the patent. At that point, trade secret protection will cease and the manufacturer’s remedy is under patent law (as to the subject matter of the patent). In some circumstances, the manufacturer might retain trade secret protection for a secret manufacturing process while having concurrent patent protection for the final product.
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Chapter 14. Patent Ownership 49 results (showing 5 best matches)
- The current term for utility and plant patents is twenty years from the patent application date. Section 154(a)(2) of the Patent Act states: “Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121,
- Subject to the provisions of this title, patents shall have the attributes of personal property. Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for
- Unlike utility and plant patents, design patents have a different term. In light of the Patent Law Treaties Implementation Act of 2012,
- Patent holders sometimes attempt to obtain contractual agreements from licensees for the payment of patent royalties after the expiration of the licensed patent. In a 1964 decision,
- Traditionally United States patent law gave the first inventor the exclusive rights to the invention. In contrast, many foreign countries grant patent rights to the first to file a patent application in the relevant patent office. In 2011, however, Congress passed the Leahy-Smith America Invents Act (“AIA”).
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Chapter 10. Trademark Defenses 4 results
- The question of reconditioned goods also arises in the patent law context, where the issue is whether the sale of a reconditioned product infringes on the patent holder’s exclusive right to make, use, sell, offer to sell, or import the product. In patent law, the answer to this question depends on the extent of the reconditioning.
- There are two ways in which a firm can exceed the bounds of the comparative advertising safe harbor. First, if the comparative advertising reference creates a likelihood of confusion, for example by making reference to the plaintiff’s trademark in larger and bolder letters than that of the defendant advertiser or by otherwise suggesting affiliation or sponsorship. Second, if the statement is not true, the plaintiff can obtain relief under section 43(a) of the Lanham Act—as well as perhaps state law—for false advertising.
- These doctrines vindicate the trademark law policy protecting consumers against confusion and deception. For trademark lawyers, this doctrine highlights the importance of being certain that the proper contractual language is used in all documentation of transfers of trademark rights. Finally, as in other areas of Intellectual Property, courts will entertain a variety of equitable defenses, such as acquiescence and laches.
- One of the fundamental purposes of trademark law is to promote legitimate competition in the marketplace. In order for a new or small competitor to sell its product in competition with large well-known branded products, it is often helpful to mention the famous brand name. Consequently, the ability of competitors to make reference to the trademarks of others for purposes of comparative advertising is helpful to competition and consumers. Competition in the marketplace requires that a firm be able to make truthful statements about its competitor’s product, including claims of equivalence. In
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Chapter 16. Patent Defenses 36 results (showing 5 best matches)
- One point that appears to be settled is the proposition that patent owners are not categorically exempt from standard antitrust analysis. As the Federal Circuit succinctly stated: “Intellectual property rights do not confer a privilege to violate the antitrust
- The authorized sale of an article that substantially embodies a patent exhausts the patent holder’s rights and
- No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement; (4) refused to license or use any rights to the patent; or (5) conditioned the license of any
- As discussed with regard to the duration of patent protection, patent holders sometimes attempt to obtain contractual agreements from licensees for the payment of patent royalties after the expiration of the licensed patent. In a 1964 decision,
- The misuse doctrine in patent law plays a fundamental role in delineating the boundaries of Intellectual Property rights. Often Intellectual Property owners seek to obtain rights or otherwise seek benefits that are not within the scope of the rights granted to them by Congress. The misuse doctrine covers behavior in which a patent owner attempts to extend its power beyond the boundaries of the lawful rights under the patent.
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Chapter 17. Patent Remedies 15 results (showing 5 best matches)
- Another AIA change in patent law is new section 298 of the Patent Act (AIA § 17(a)), effective for patents issued on or after September 16, 2012:
- With regard to compensatory damages in design patent cases, the Supreme Court heard a design patent case this term, a rarity in its history. The case is the battle between Apple and Samsung, and the issue to be considered was: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?” The case is
- Injunctive relief is ordinarily the most important patent remedy because it permits the patent holder to maintain its exclusivity in the marketplace, which is the essence of the patent reward. Section 283 states: “The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”
- The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.
- makes it clear that injunctions are only granted when the four-part showing is made. In practical effect, the patent owner is likely to be able to make this showing in most, though not all, cases. The Federal Circuit made this point in its post-
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Chapter 15. Patent Infringement 25 results (showing 5 best matches)
- The Supreme Court has recognized the importance of claim construction in the development of a uniform national patent system. In
- The file wrapper contains the entire record of the proceedings in the Patent Office from the first application papers to the issued patent. Since all express representations of the patent applicant made to induce a patent grant are in the file wrapper, this material provides an accurate charting of the patent’s pre-issuance history. One use of the file wrapper is file wrapper estoppel, which is the application of familiar estoppel principles to Patent Office prosecution and patent infringement litigation.
- Patent infringement occurs when a party makes, uses, sells, offers to sell, or imports the product into the United States. Section 271(a) of the Patent Act states: “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” This provision governs utility and design patents. Plant patents, in contrast, are infringed when the plant is asexually reproduced, or if the resulting plant is used, sold, offered to be sold, or imported. Section 163 states: “In the case of a plant patent, the grant shall include the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United...
- What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.
- The PTO does not enforce patents. Instead, the patent holder must enforce the patent through litigation in federal court, which has exclusive jurisdiction over patent suits. The patent holder may also seek relief from the International Trade Commission, which can preclude the importation of infringing goods.
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Chapter 7. Trademark Validity 33 results (showing 5 best matches)
- These cases illustrate some of the issues that arise at the intersection between patent and trademark law and suggest that a patent holder cannot have two bites at the apple—broad utility patent protection followed by potentially perpetual trademark protection upon expiration of the patent. Consider the extent to which this rule would apply if the functional features of a product are distinct from its source-indicating features.
- The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained
- The scope of trademark protection for product designs/configurations continues to be an important issue for a variety of business competitors. Recent litigation between Apple and Samsung regarding smartphone technologies has focused not only on innovations protected by patent law—the patented functional and
- The plaintiff was unable, however, to obtain an injunction barring the defendant from selling the product at all. Trademark law does not prevent competitors from advertising and competing honestly.
- (“For almost one hundred years, it has been well established that in the case of an expired patent, federal patent laws do create a federal right to ‘copy and use.’ ”).
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Chapter 19. Idea Protection & Misappropriation 8 results (showing 5 best matches)
- The law of “shop right,” discussed in the patent law discussion in Chapter 14, ¶ 14.02, has some relevance to an understanding of the
- Ideas might be called the “poor stepchild” of Intellectual Property law. Copyright law specifically disavows any protection for ideas in the express language of section 102 of the Copyright Act. Clear patent law precedent also establishes that an abstract idea or concept is not eligible for patent protection. Trademark law protects branding ideas but only if they have been used in commerce or for a limited time in an intent-to-use trademark application; once again, abstract marketing or branding ideas do not receive trademark protection. Trade secret law might protect an idea, but only if it provides a business advantage over competitors, it is the subject of reasonable secrecy measures, and it is not generally known or used in the industry. So the question becomes how does a party protect an idea and how can that idea be conveyed or transferred to the party who has the greatest willingness to pay for it. Contract law provides the principal avenue for protection of ideas.
- The rule stated in this Section limits common law tort liability for appropriations of intangible trade values to cases involving an appropriation of trade secrets, an appropriation of the commercial value of another’s identity, or an appropriation of a work of authorship that is not fixed in a tangible medium of expression and thus protectable under common law copyright. Although courts have occasionally invoked the
- David Lange & H. Jefferson Powell, No Law: Intellectual Property in the Image of an Absolute First Amendment
- origins, and its potential for conflict with the Intellectual Property Clause or federal doctrinal law. Yet the case is far from dead.”
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Introduction 11 results (showing 5 best matches)
- Congress also made significant amendments to the patent laws in the 2011 Leahy-Smith America Invents Act (or AIA). The main and most widely publicized change made by the AIA was to move patent law in the United States from a first-to-invent to a first-to-file (or first-to-publish) rule for determining ownership of an invention (which took effect in March 2013). In light of this change, delays in filing patent applications take on much greater significance than under prior law.
- Intellectual property has helped define our culture, our economy, and our lifestyle. Every new and innovative product—from the latest iPhone to the newest pharmaceutical product or medical device—is protected by patent law. The massive and pervasive technology firms that have defined our culture and altered how we interact with each other and with society in this century—Apple, Facebook, Google (Alphabet), Amazon, and Microsoft—all depend to varying degrees on their intellectual property. Each of these companies possesses proprietary technology protected by a portfolio mix of patent, copyright, and trade secret law, and each draws considerable value from the value of their brands, which are protected by trademark law. Our lifestyles are transformed by innovations that are secured by the protections of intellectual property law. As we approach a time when virtual reality technology, self-driving cars, and vast libraries of streaming content become a normal part of our lives,... ...law...
- Important developments have taken place not only in Congress, but also in the courts. The Supreme Court has issued important rulings a wide array of issues in patent law, such as
- Intellectual property is, in my opinion, the most fascinating, rapidly changing, and analytically complex area of the law that you will encounter today. Intellectual property protections—which include the law of copyright, patents, and trademarks—come into play in fields as diverse as entertainment, sports, aviation, automobiles, biotechnology, and retail franchising. Every new movie, song, pharmaceutical product, brand-name product, and video game presents material that is protectable under one or more Intellectual Property paradigms. As the 2012 edition of this book went to press, for example, Apple had just won a $1 billion verdict against Samsung for infringement of Apple’s patents. As this 2017 edition goes to press, the Supreme Court just reviewed this verdict and decision, which continues to make its way through the federal court system.
- patent disputes among Silicon Valley companies
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Chapter 1. Overview 20 results (showing 5 best matches)
- A key tenet of Intellectual Property is the idea that information should fall into the public domain upon expiration of the patent or copyright. This concept is consistent with the constitutional dictate that copyrights and patents can exist for “limited times.” The policy remains ingrained in both copyright and patent law, even though copyright and patent terms have been the subject of rather recent extensions. In
- The most important state law claim has, until 2016, been the law of trade secrets, which protects proprietary innovations and is therefore the state law counterpart to patent protection. In 2016, Congress enacted a new federal trade secret statute, the Defend Trade Secrets Act, which creates a new federal cause of action for trade secret infringement, an area historically addressed mainly by state law. As will be seen, trade secret protection plays an important role in protecting various forms of confidential business information, including a variety of subject matter that would not qualify for federal patent protection. Finally, with regard to trademarks, state law provides protection through a variety of state trademark laws, as well as the law of unfair competition. In addition, the state law right of publicity provides an important form of protection, particularly as to product endorsements and other uses of a person’s name, image, or other identifying characteristics in the...
- the Court “held that a person licensed to use a patent may challenge the validity of the patent, and that a licensee who establishes that the patent is invalid need not pay the royalties accrued under the licensing agreement subsequent to the issuance of the patent. Both holdings relied on the desirability of encouraging licensees to challenge the validity of patents, to further the strong federal policy that only inventions that meet the rigorous requirements of patentability shall be withdrawn from the public domain.”
- Intellectual Property law is designed to accommodate these conflicting aspects of the public good problem. On the one hand, Intellectual Property law provides property rights to encourage invention and creativity. On the other hand, the Intellectual Property Clause, which is found in Article I, Section 8, Clause 8 of the Constitution, mandates that copyright and patent rights cannot be perpetual, so that upon expiration the Intellectual Property can be freely used at no cost: “to Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Thus once a copyright or patent has expired, the information protected by these IP rights will fall into the public domain, as discussed below.
- Intellectual property is one of the most heavily debated areas of the law, particularly as to the scope of rights that inhere to owners of patents and copyrights. Intellectual property has grown in importance, particularly as the economy has grown to be more service-and information-based. Music file-sharing, biotechnology, prescription drugs, and software are leading topics of the day. The growing importance of these rights has only heightened the importance of Intellectual Property policy. Fundamentally, Intellectual Property rights offer exclusivity—a kind of monopoly in some instances (though the patent or copyright does not necessarily confer market power in an economic sense, because there may be substitute products available to give consumers an alternative to the patented or copyrighted item).
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Chapter 5. Copyright Defenses 28 results (showing 5 best matches)
- The misuse doctrine, which is an important part of both patent and copyright law, plays a fundamental role in delineating the boundaries of Intellectual Property rights. Often Intellectual Property owners seek to obtain rights or otherwise seek benefits that are not within the scope of the rights granted to them by Congress. The misuse doctrine covers behavior in which a patent or copyright owner attempts to extend its power beyond the boundaries of the lawful rights under the patent or copyright.
- One of the most significant features of misuse law is the rule that defendants in Intellectual Property cases can raise the misuse defense even though they were not bound by the contractual provisions found to constitute copyright or patent misuse. The rationale, which originates in patent law, is that the courts should not enforce patent rights which are being exercised in violation of public policy.
- The overarching theme of the misuse doctrine is that appropriate limits should be placed on Intellectual Property rights. The misuse doctrine is an integral part of both patent and copyright law, offering an affirmative defense to infringers when the Intellectual Property owner has allegedly overstepped its rights. Similarly, the antitrust laws place limits on the exercise of Intellectual Property rights. These issues have been the subject of public debate, for example, in studies and hearings about competition in Intellectual Property conducted by the Federal Trade Commission and Justice Department. Strikingly, despite the importance of the interaction between antitrust and Intellectual Property policy, there is no general framework or paradigm to analyze potential conflicts between these two fields. The balance between Intellectual Property and antitrust policy must be struck by reference to the policies and analytical framework inherent in patent and copyright law, and from the...
- One point that appears to be settled is the proposition that patent and copyright owners are not categorically exempt from standard antitrust analysis. As the Federal Circuit succinctly stated in
- The balance between these two fields can lead to varying results. For example, if it is found that Intellectual Property law expressly or implicitly permits or reserves certain rights to owners of patents or copyrights, then the exercise of those rights is likely to raise fewer antitrust concerns. On the other hand, when Intellectual Property doctrine is expressly designed to constrain the exercise of particular rights, then there is likely to be heightened scrutiny of conduct that is designed to circumvent these limits. Finally, if Intellectual Property law is silent on the particular practice in question, then the standard analytical methods of antitrust law and economics are most likely to be applied. These at least are my overall conclusions about
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Chapter 3. Copyright Ownership 46 results (showing 5 best matches)
- By failing to protect the public interest in free access to the products of inventive and artistic genius-indeed, by virtually ignoring the central purpose of the Copyright/Patent Clause-the Court has quitclaimed to Congress its principal responsibility in this area of the law. Fairly read, the Court has stated that Congress’ actions under the Copyright/Patent Clause are, for all intents and purposes, judicially unreviewable. That result cannot be squared with the basic tenets of our constitutional structure. It is not hyperbole to recall the trenchant words of Chief Justice John Marshall: “It is emphatically the province and duty of the judicial department to say what the law is.”
- works that had been left previously unprotected under prior state copyright law. Justice Ginsburg also noted prior restorations of protection under patent law, suggesting by analogy that the Intellectual Property Clause was not a bar to such actions. Next, the Court noted that
- Justice Ginsburg authored the 6–2 majority opinion (Justice Kagan recused herself), upholding the copyright restoration in foreign works. Three categories of foreign works were restored under section 104A: (1) works from countries in which United States law did not offer protection at the time of publication; (2) sound recordings fixed before 1972 (the year U.S. sound recordings were finally given protection); or (3) works for which the author had failed to comply with U. S. statutory formalities applicable at the time. The Court’s fundamental holding can be easily summarized: “Neither the Copyright and Patent Clause nor the First Amendment, we hold, makes the public domain, in any and all cases, a territory that works may never exit.”
- The Sonny Bono law also delays preemption of state copyright laws protecting pre-February 15, 1972 sound recordings for an additional 20 years, until February 15, 2067: “With respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this title until February 15, 2067. The preemptive provisions of subsection (a) shall apply to any such rights and remedies pertaining to any cause of action arising from undertakings commenced on and after February 15, 2067. Notwithstanding the provisions of section 303, no sound recording fixed before February 15, 1972, shall be subject to copyright under this title before, on, or after February 15, 2067.”
- Probably the most persuasive ground for upholding the Sonny Bono law is the long history of prior term extensions, each of which applied retroactively to copyrights still in force. Although the latest term extension was perhaps not the best policy from the standpoint of United States consumers, it was not wholly unjustified. It allowed United States copyright owners to benefit from the life plus seventy term provided under many foreign laws when reciprocally provided under United States law. As the Court noted in
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Summary of Contents 7 results (showing 5 best matches)
Table of Contents 23 results (showing 5 best matches)
Chapter 6. Copyright Remedies 4 results
- which addressed the standard for issuing injunctions in patent cases. The Court held that a patent holder must make the traditional showing in order to receive equitable relief: “(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
- Often damages in copyright cases are difficult to prove or to quantify, and Congress has provided for a relatively unique alternative method for allowing copyright owners to obtain monetary relief—the statutory damage claim. This remedy is not found in most other areas of Intellectual Property law, and indeed is quite unusual in the law more generally. Section 504(c) establishes the general range for statutory damage awards: “the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just.” Accordingly, the factfinder can award statutory damages in an amount ranging from $750 to $30,000 per copyrighted work. For...
- Section 504 sets forth monetary remedies for copyright infringement. In general, an infringer of copyright is liable for either (1) the copyright owner’s actual damages and any additional profits of the infringer or (2) statutory damages, as provided in section 504(c). The first of these options is a typical remedy in the Intellectual Property field, and indeed in many other areas of the law as well. In essence, this option allows the copyright owner to recover compensatory damages for the loss it suffered or the gain the defendant obtained. The second option, statutory damages, is a much more unusual provision, as discussed below.
- law, “to stimulate the creation and publication of edifying matter,” are not always best served by automatically granting injunctive relief when parodists are found to have gone beyond the bounds of fair use.
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Chapter 4. Copyright Infringement 39 results (showing 5 best matches)
- The Trans-Pacific Partnership (TPP) is a wide-ranging international trade deal negotiated by twelve Pacific-rim nations, including the United States. It was a topic of debate in the 2016 presidential election. The U.S. has signed this treaty, but it has not yet been ratified by the Senate as of November 2016, and approval seems unlikely since the 2016 election. The TPP includes provisions for stronger enforcement of copyright, patent, and trademark law. In
- Before that date, state law copyright was still the basis for copyright protection for this type of work. Indeed, state law is ordinarily still the avenue for protecting sound recordings that were fixed before the effective date of the Sound Recording Amendment to the 1909 Copyright Act—February 15, 1972.
- Basic constitutional law provides the general rule that federal law preempts conflicting state and local laws under the Supremacy Clause, which states: “This Constitution, and the Laws of the United States which shall be made in Pursuance thereof; and all Treaties made, or which shall be made, under the Authority of the United States, shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.”
- : ‘The copyright of the book, if not pirated from other works, would be valid without regard to the novelty, or want of novelty, of its subject-matter. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright.’ ”
- United States law did not expressly recognize any of these four broad rights, at least not within the confines of federal copyright law. Instead, the focus of United States law has always been on the economic rights of authors as an incentive for creativity, rather than on concerns for the personal or reputational nature of creative efforts. The Berne Convention for the Protection of Literary & Artistic Works Article, in Article 6bis, mandates that all nations adhering to the treaty offer two types of moral rights protections:
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Chapter 20. Sui Generis Intellectual Property Rights 13 results (showing 5 best matches)
- In that 1989 case, the Court applied Intellectual Property preemption principles and held that state misappropriation-based unfair competition laws are preempted when they purport to forbid copying or misappropriation of patentable subject matter. At issue was a Florida law that provided patent-like protection for boat hull designs. Congress then enacted specific legislation to protect boat hull designs under federal law. The
- the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c); and
- would imply that the Intellectual Property Clause would not provide Article I authority to Congress for a database protection law. The alternative, of course, is for Congress to anchor the protection database law in its Commerce Power. The development, marketing, and sale of databases would be activity in interstate and foreign commerce, and thus is arguably within Congress’ power to regulate. It would appear the High Court would uphold such a law as long as it was not deemed to be an attempt to take an end-run around the limitations on congressional power in the Intellectual Property Clause.
- The controversy surrounding SOPA and PIPA highlights the central challenge of Intellectual Property law—how to protect the legitimate interests of creators and of society by rewarding innovation and creativity, while at the same time allowing for the development of a robust competitive economy and a free and open society, particularly on the Internet. Technology has posed a challenge to Intellectual Property law since the days of the first printing presses. Today, those challenges are even more pressing and potentially devastating, as demonstrated by the severe contraction of the music industry. Yet, these changes can provide opportunities for new forms of creativity and of commerce. As IP law develops, it is important to maintain an awareness of the balance, avoiding both extreme overprotection of rights-holders and blatant free riding on the creative efforts of others.
- Laws Currently in Effect.
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Chapter 2. Copyrightable Subject Matter 54 results (showing 5 best matches)
- is a good example of this type of situation. The plaintiff developed a ribbon-rack style bicycle rack. It was inspired by an abstract sculptural work—a jagged-edged ribbon-like metal piece. Someone suggested that the work could serve as a model for a useful bicycle rack, but of course the final version of the bicycle rack incorporated a number of design changes that made it much more useful as a bike rack. For example, the bicycle rack included smooth round surfaces and symmetrical spacing to enable as many bicycles as possible to be stored and easily removed from the rack. Not surprisingly, the court held that the design of the bicycle rack was driven by its function, and thus it was not copyrightable. (Of course, the functional design could theoretically be protected by a utility patent, but only if the requirements of patent law are satisfied, a subject addressed in Chapter 12.)
- The protectability of computer software presents challenging issues for copyright lawyers because of the blurred line between what constitutes a functional aspect of the code and what constitutes creative expression. The former is not copyrightable, while the latter would be. In 2015, the Federal Circuit, applying Ninth Circuit law, addressed this important question for the computer industry as it relates to 37 packages of computer source code owned by Oracle.
- As the Copyright Act expressly states, this listing is not an exclusive cataloguing of the types of works protected under copyright law. Instead, it is clear that any original work of authorship is eligible for copyright law’s benefits once it is fixed in a tangible medium of expression.
- Does an unfixed work have any Intellectual Property protection? The answer is that it does not under federal copyright law, but state law may offer protection for it. Since the enactment of the 1976 Copyright Act, there has been hardly any reported litigation involving state copyright law. Probably the best known state law copyright case is
- “[S]ection 301(b) explicitly preserves common law copyright protection for one important class of works: works that have not been ‘fixed in any tangible medium of expression.’ . . . [Unfixed works] would continue to be subject to protection under State statute or common law until fixed in tangible form.”
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Chapter 11. Trademark Remedies 7 results (showing 5 best matches)
- Trademark owners often wish to bring infringement actions not only against those who directly infringed their trademarks, but also against others involved in or assisting in the distribution of those counterfeit products to consumers. This type of secondary liability for the actions of others can be based on theories of contributory infringement or inducement. No provision of the Lanham Act expressly provides for contributory infringement or secondary liability. The Patent Act, in contrast, contains an express provision.
- Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title.”
- ...of a mark registered in the Patent and Trademark Office, or a violation under section 1125(a) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive...
- states in part: “When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, or a violation under section 1125(a) of this title, shall have been established in any civil action arising under this
- Injunctive relief is not the norm in most areas of the law, and the showing typically required to obtain such relief is difficult to make outside of Intellectual Property and a few other fields. Injunctions are frequently granted in the Intellectual Property field, although the decision whether to issue an injunction is always decided on a case-by-case basis. In trademark law, the injunctive relief enables the trademark owner to maintain control over its marks and prevents consumer confusion or deception. The payment of a license fee—a type of compulsory license, in effect—would prevent the trademark owner from retaining control over its brand name and good will. A disclaimer may be helpful in some instances, but is often inadequate to dispel confusion, particularly if the disclaimer is commonly (and easily) removed, or is not very prominent. Thus, courts frequently issue injunctive remedies in trademark cases, as long as the plaintiff satisfies the standard requisites under...
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Chapter 8. Trademark Ownership 24 results (showing 5 best matches)
- Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063 (b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be
- there is no proceeding involving said rights pending in the Patent and Trademark Office or in a court and not finally disposed of; and
- before the Subcommittee of the Senate Committee on Patents, 78th Cong., 2d Sess., 21 (1944) (remarks of Rep. Lanham);
- A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
- Enterprises that successfully register and maintain their trademarks with the U.S. Patent & Trademark Office receive significant benefits. The most important of these rights are constructive notice under section 22
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Table of Cases 2 results
Index 16 results (showing 5 best matches)
West Academic Publishing’s Law School Advisory Board 10 results (showing 5 best matches)
- Distinguished University Professor, Frank R. Strong Chair in LawMichael E. Moritz College of Law, The Ohio State University
- Professor of Law Emeritus, University of San Diego Professor of Law Emeritus, University of Michigan
- Professor of Law, Chancellor and Dean Emeritus, University of California, Hastings College of the Law
- Professor of Law, Yale Law School
- Professor of Law, Pepperdine University Professor of Law Emeritus, University of California, Los Angeles
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Chapter 12. The Right of Publicity 9 results (showing 5 best matches)
- Because of its variation from state to state, some commentators have endorsed the concept of a uniform federal statute addressing the right of publicity. There are a number of reasons why such a statute might be desirable, such as national uniformity, predictability, and simplification of the law, as well accommodation of First Amendment concerns. But it can be questioned whether the right of publicity is much different from any number of other areas of tort law in which widely varying state laws are tolerated. Finally, it should be noted that in some instances the right of publicity can be preempted by federal copyright law.
- the court held that Elvis Presley’s right of publicity survives death under Tennessee law. In
- a suit by a representative of the Tennessee Williams estate sought to prevent naming a theater after the deceased playwright, the court held that right of publicity does not survive death under Florida law. Finally, in
- (publicity rights survive under California law).
- Ginger Rogers brought suit against the makers of the movie “Ginger and Fred.” The court found that Rogers did not prove a violation of the right of publicity under Oregon law.
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Chapter 9. Trademark Infringement 27 results (showing 5 best matches)
- In short, the likelihood of confusion showing establishes that the owner of a valid trademark has demonstrated that its trademark rights have been infringed by the defendant. Despite its central role in trademark law, there is no agreement on precisely how a court should define the factors relevant to the test for a likelihood of confusion. The specific formulation of the likelihood of confusion test therefore varies from circuit to circuit under federal law, and indeed each state may have its own delineation of the factors relevant to the likelihood of confusion for purposes of state law claims. The Supreme Court has not definitively addressed the factors that are relevant to proof of a likelihood of confusion.
- The development of dilution law begins with state law, given the lack of a federal dilution statute until 1995. The most frequently discussed state law dilution claim was litigated in
- Dilution claims are, of course, even more important now in light of Congress’s enactment of a federal dilution statute; about half the states also have dilution statutes, which are generally similar to the New York statute quoted above. Even after enactment of the federal dilution statute, a number of significant dilution cases have been decided under state law.
- question of law and fact, then the final determination of confusing similarity would be resolved by the judge. Moreover, the standard of review for appeals of likelihood of confusion determinations is also affected by this issue. If it is an entirely factual issue, then the district court’s determination will be entitled to considerable weight and will be overturned only if it is clearly erroneous. On the other hand, if it is a mixed question of law and fact, then the appellate court would review the legal determination de novo, with no deference given to the lower court’s judgment of the ultimate issue of law. Regardless of the standard of review, it is clear that a careful weighing of the likelihood of confusion factors is both necessary and desirable.
- To accomplish this task [of balancing conflicting interests] in trademark law, a careful assessment of the likelihood of confusion test is required. The analysis must be attuned to the realities of parody cases. If mechanically applied, some factors in the likelihood of confusion test are likely always to favor the plaintiff because of the parodist’s need to conjure up the original and the need to parody a strong mark. If these factors are nearly always weighed in the plaintiff’s favor, the deck will be stacked against parody. It was this approach that the Supreme Court repudiated in copyright law when it decided
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Part 2 1 result
- Publication Date: January 27th, 2017
- ISBN: 9781634607599
- Subject: Intellectual Property
- Series: Concise Hornbook Series
- Type: Hornbook Treatises
- Description: Intellectual property has helped define our culture, our economy, and our lifestyle. This book provides a comprehensive survey of the entire field of intellectual property, including copyrights, patents, trademarks, trade secrets, unfair competition, and the right of publicity. It is designed to be reader-friendly and is up-to-date through October 2016, including many new important Supreme Court decisions in copyright, patent, and trademark law. It can be a study guide for an intellectual property survey course or used as a useful introduction or refresher for anyone interested in the field. The book focuses primarily on three main federal intellectual property rights – copyrights, patents, and trademarks – along with the new federal trade secret law and important areas of state law protection (such as the right of publicity).
