Intellectual Property: The Law of Copyrights, Patents and Trademarks
Authors:
Schechter, Roger E. / Thomas, John R.
Edition:
1st
Copyright Date:
2003
44 chapters
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- Intellectual Property: The Law of Copyrights, Patents and Trademarks
- Learning how to use these materials effectively will enhance your legal research abilities. To help you coordinate the information in the book with your Westlaw research, this volume contains an appendix listing Westlaw databases, search techniques, and sample problems.
- The instructions and features described in this Westlaw overview are based on accessing Westlaw via westlaw.com® at
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Appendix: Researching the Law of Intellectual Property 169 results (showing 5 best matches)
- Intellectual Property: The Law of Copyrights, Patents and Trademarks
- For example, the topic Copyrights and Intellectual Property has the topic number 99. To retrieve federal cases that discuss the ownership of a copyright for a work made by an employee, access the Federal Intellectual Property–Cases database (FIP–CS) and type a query like the following:
- Federal Intellectual Property–Patent and Trademark Office Decisions
- BNA’s Patent, Trademark, and Copyright Journal
- • If you know the title of an article but not which journal it appeared in, access the Intellectual Property–Law Reviews, Texts, and Bar Journals database (IP–TP) and search for key terms using the title field. For example, to retrieve the article
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Chapter 13. Introduction to the Law of Patents 80 results (showing 5 best matches)
- The patent law often seems the most daunting and elusive of the intellectual property regimes. The patent statute has become an increasingly intricate work of legislation. As well, the proprietary rights extended by individual patents often concern complex subject matter. As a result, many students are drawn to the field less out of intellectual curiosity than from a desire to obtain a return on investment in earlier technical training. Others come to the patent law out of the recognition that it is important. Of all of the intellectual property systems, the patent law provides the most robust rights; has been most subject to sweeping domestic and international reforms; and, perhaps of most immediate significance, generates far more work for practitioners than copyright, trademark and related disciplines put together.
- Many of these criticisms are well taken, but they too suffer from the lack of a sound empirical foundation. Supporters and critics of the patent system alike agree that the nature of technological progress is at best poorly understood. The question of whether the patent system advances the interests of society is not yet within our abilities to answer precisely, and is perhaps unknowable. Most are content to recognize the realities that industry has become increasingly enthusiastic in its pursuit of patents, the number of patent professionals is at historically high levels, and the public interest in the patent system is virtually without precedent. The patent law has plainly risen from its obscure station to the status of mainstream legal discipline, and careful students of its often complex provisions should discover a rich source of both intellectual and material rewards.
- Although patent laws are most often considered in terms of their economic consequences, some commentators have stressed the grant of patents as a mechanism for recognizing the dignity and worth of individual inventors. Under this view, the patent system provides a legal mechanism recognizing that inventors enjoy inherent rights in the fruits of their labors. These themes tend to resonate far less deeply here than in the copyright law, perhaps due to our different sense of individual expression in works of authorship than in patentable inventions.
- The Agreement on Trade–Related Aspects of Intellectual Property Rights, a component of the international agreement establishing the World Trade Organization (WTO), has been joined by virtually every member of the world trading community. As the first treaty that extensively required signatory nations to maintain specified standards of substantive patent law, the so-called “TRIPS Agreement” was an impressive accomplishment. The TRIPS Agreement specifies that member states must observe certain requirements pertaining to patent-eligible subject matter, patent term, and standards of patentability such as novelty and nonobviousness. In order to comply with the TRIPS Agreement, the United States enacted the Uruguay Round Agreements Act in 1995. Among the changes worked by this legislation were the introduction of provisional patent applications, the change of patent term to twenty years measured from the date the patent application was filed, and the acceptance of evidence of dates of...
- The 1883 Paris Convention for the Protection of Industrial Property is the foundational international agreement concerning patents (and trademarks). The Paris Convention contains few provisions mandating particular legal requirements for the patent law, but it does provide for national treatment. As a result, signatory states must treat domiciles of Paris Convention signatory states in the same manner as their own domiciles.
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Chapter 1. Introduction to Intellectual Property 66 results (showing 5 best matches)
- The term “intellectual property” may sound pretentious, but it is an apt description for the subject matter of the laws that give rise to proprietary interests in creations of the mind. The principal legal intellectual property disciplines are copyright, which concerns artistic and literary works; patent, pertaining to pragmatic innovations; and trademark, relating to commercial symbols. These three core fields are complemented by a number of statutes and common law doctrines in fields ranging from trade secrets, to the right of publicity, to false advertising. Although copyright, patent, trademark and related disciplines share much in common, they arose from distinct traditions and often operate in different ways. A brief overview of the primary forms of intellectual property should assist the reader in tackling the remainder of this text.
- Ironically, although intellectual property law concerns abstract creations, it does insist that the intellectual creation be embodied in something tangible at least once. In copyright, works must be fixed in tangible form to be protected; the patent law requires the inventions be “reduced to practice”; trademarks must, sooner or later, be subject to actual use in the marketplace. These principles ensure that abstract ideas remain free from intellectual property rights. Intellectual property rights are instead allowed for the embodiment of that idea in a particular work of authorship, invention or commercial symbol. Put differently, intellectual property laws concern downstream products, not upstream ideas.
- The nations of the earth have yet to agree upon a unified legal regime governing intellectual property rights. There is no global copyright, patent or trademark. Innovators must secure and enforce these rights within the particular jurisdiction where they desire protection. Further, the reach of a particular intellectual property right extends only so far as the nation or region recognizing the right. A trademark recognized in the United States, for example, cannot be the basis of infringement litigation in Japan.
- The regime of intellectual property has been subject to criticism throughout its long history. These critiques have seemingly become more withering in recent years. As innovative industries continue to play a more significant role in the U.S. economy, awareness of intellectual property has grown, along with the diversity of perspectives troubled by the intellectual property law’s implications. In an era where information can be immediately disseminated in infinite quantities around the globe, the notion that an innovation can be an object of possession has been challenged. To such critics, the concept of property in information is little more than a bad metaphor. Others commentators are troubled that intellectual property extends the values of the marketplace to ideas, and, in their belief, ultimately to knowledge and thought. Some view intellectual property as a one-way ratchet ever favoring the expansion of rights. In recent years, for example, the term of copyright protection has...
- The requirement that protected works exhibit an “intellectual step” is among those promoting the public domain. This standard is most apparent in the patent law, where an invention must be new and beyond the ordinary abilities of the skilled artisan to quality for protection. A more lenient requirement applies to the copyright law, where the protected work of authorship must be original to the author and display a modicum of creative authorship. In trademark law this requirement is yet more relaxed: the mark must be capable of distinguishing the source of the goods or services with which it is associated, rather then identifying those goods or services themselves. These standards ensure that intellectual property rights do not extract subject matter from the public domain.
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Chapter 32. Trademark Assignments and Licensing 82 results (showing 5 best matches)
- Applying these principles to concrete fact patterns, a court might hold that a trademark assignment along with the sale of a secret formula to make the trademarked product was valid even though no physical assets changed hands. The same result would follow if the trademark assignor also conveyed relevant patents or copyrights as part of the transactions. After all, the transfer of formulas or other forms of intellectual property is the essential device that will permit the buyer to make products with the same attributes that consumers have historically associated with the trademark. Brief reflection suggests that in cases involving patented products, even the sale of physical assets as part of a trademark assignment should not be enough to validate that assignment unless the patent is also conveyed, because without the patent there could be no continuity in the qualities of the trademarked item before and after the sale.
- In the patent context, the Supreme Court rejected the licensee estoppel doctrine in There, the Supreme Court reasoned that the strong public interest in maximum access to non-patent-worthy technology warranted a rule that permitted licensees to challenge patents. Because the policy concerns differ in the trademark context, and because there is no similarly strong interest in invalidating trademarks, courts that have considered the issue after Lear have not applied its holding to trademark licensees. Thus, the licensee estoppel rule survives in the trademark context.
- As anyone who has studied the law of secured transactions is aware, in order to “perfect” a security interest, it is necessary to file documents detailing the transaction with the government. This provides notice to other potential lenders about the true financial situation of the borrower and advises them that they may not be able to rely on certain assets to satisfy a debt in the event of a default because those assets have been promised to another creditor. With regard to security interests in federally registered trademarks, one might wonder whether the necessary filing should be made at U.S. Patent and Trademark Office, under the Lanham Act, or whether it should be made in a state office, under the Uniform Commercial Code. The UCC has provisions that defer to federal filing schemes where such schemes are required. The relevant provision of the Lanham Act, however, only deals with recordation of actual assignments, not with the recordations of security interest. Thus, “[c]ase
- Trademarks are transferable. They can be bought and sold like other business assets. The outright sale of a trademark is known as an “assignment.” There is, however, a catch. The law is clear that a trademark can only be sold “with the accompanying goodwill” of the underlying business and that it not permissible to assign a trademark “in gross,” which means independently of the associated goodwill. An assignment in gross is null and void.
- The same logic obtains in the case of a trademark. If the company that owns and operates WESTIN brand hotels wants to get out of the hotel business, it can sell the various hotel buildings it owns along with the WESTIN trademark to any willing buyer. Subsequent to such a sale consumers who use the WESTIN trademark to pick a hotel for an upcoming trip will continue to encounter the same hotel buildings in the same locations with the same decor and facilities as they have come to associate with the mark. Consumer expectations will not in any way be thwarted. To consumers, it will be as if the sale never even occurred. On the other hand, if the original trademark owner attempted to sell merely the WESTIN trademark, the buyer might choose to affix it to hotels of an entirely different sort—perhaps smaller and with fewer amenities, perhaps with different and quirky decor, perhaps in only a few out of the way cities. Consumers booking a room at a WESTIN would, on arrival, be baffled and...of
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Preface 6 results (showing 5 best matches)
- While there are many common themes that pervade the different branches of intellectual property law, the law of copyrights, patents, and trademarks still remain fairly discrete fields. Each is governed by its own separate, and fairly elaborate federal statute, and the cases dealing with problems in one of the areas rarely cite cases from the others. Our organizational scheme reflects this segregation of topics. After an introductory chapter exploring some of the unifying themes in all intellectual property disputes, we have divided this work into three principal parts dealing respectively with the three branches of the law. We have tried, however, through cross-references in both text and notes, to alert the reader to overlap or even conflict between the various branches of intellectual property law.
- Even more significantly, we believe that thoughtful legal rules in these areas can facilitate amazing progress and much good for the citizens of the United States and the world, while rules crafted to advance special interests hold the potential of doing great harm to large numbers of people. Our hope is that this book will help a wide variety of actors in the legal system to gain the kind of introduction to copyright, patent and trademark issues that will enable them both to distinguish between sound and unsound legal regimes and to become champions of the former. A teaching book can aspire to no more and should aspire to no less.
- Intellectual property issues are unusually engaging and stimulating. The excitement of this area of the law reflects the excitement of living in a technologically advanced, culturally diverse, economically robust time and place. As more and more authors develop more and more ways to express themselves and to disseminate their work; as more and more technologists conjure more and more ways to make our lives longer, healthier, easier and more fun; and as more and more merchants conjure more and more varieties of goods and services to cater to our needs and wants along with appealing symbols to identify them; the law has been in a mad scramble to keep up. The Internet and globalization have thrown down extraordinary challenges to the legal system. For the student of intellectual property, there is never a dull moment.
- Writing a book about intellectual property at the dawn of the twenty-first century is like trying to hit a moving target while riding in the bow of a speedboat. Dizzying political, economic and technologic changes have prompted the Congress to undertake massive revisions to all three major branches of intellectual property law over and over again in the past few years. Those new enactments, along with problems not addressed by legislation, have led to a cascade of decisional law on a stunning range of highly complicated issues. That in turn leads to circuit splits, law review articles, more legislation, and still more cases. Anything that one endeavors to say on the subject runs the risk of being obsolete before the ink has dried or the toner has cooled on the page.
- We have sought to steer a middle ground with the citation of authority. In order to keep the book to a manageable size, we did not attempt to follow the law review practice of supporting every statement with a citation, nor did we attempt to gather complete lists of authorities for various propositions. That such a task would have been impossible in a single volume is evidenced by the existence of huge multi-volume works in all three branches of intellectual property law. On the other hand, we have tried to provide at least some support for most major points, and sufficient
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Chapter 20. Patent Infringement 198 results (showing 5 best matches)
- Before we take up the topics of literal and equivalent infringement, a preliminary word on claim interpretation is in order. Those new to the patent law may be pleased to learn that, unlike other intellectual property disciplines, individuals must define their patent interests expressly in a government-approved instrument before filing an infringement suit. Further, although patent claims employ notoriously stilted language, they are at bottom quite humble texts. Each claim is but a single sentence that verbally portrays a product or process. As compared to the ambiguous substantial similarity analysis found in copyrights, or vague likelihood of confusion standard of the trademark law, patent infringement analyses might appear at first blush to be entirely straightforward.
- Although both the copyright and trademark law have extensively considered parallel importation, this issue has arisen only infrequently in the patent law. The Federal Circuit has yet to speak definitively on this point, while the only relevant Supreme Court opinions are over a century old. Therefore, the question of whether the authorized sale of a patented product abroad exhausts the patent right covering the product in the United States, such that the importation of the product into the United States is not an infringement, is not entirely settled. However, recent district court opinions suggest that the first sale doctrine generally applies if the owner of both the U.S. and foreign patent makes an unrestricted sale abroad. But where the sale is restricted, or if the holders of the U.S. and foreign patent rights are distinct entities, the U.S. patent will likely not be exhausted by an overseas sale.
- merely extends a line of judicial opinions taking an ever more cabined view of the experimental use defense. On the other hand, few patent proprietors have been so bold to sue universities for their fundamental research activities. After , perhaps patentees will be less circumspect. We suppose this is a price that universities must pay in an era where these institutions have become increasingly sophisticated in developing and marketing sophisticated patent portfolios. The broader implications of are nonetheless troubling. Even philosophers must eat, and to the extent they form organized centers of research and education, they now possess the duty to account for the patent system. As our copyright and patent regimes increasingly overlap, most notably with regard to the protection of computer software, the patent law threatens to detract from freedoms long recognized within the copyright system. With society becoming increasingly embedded in technology, and the swift rate of...
- Experience has unfortunately taught us that infringement analyses in the patent law are as nettlesome as in any intellectual property discipline. Few claims prove so clear as to withstand the withering gaze of high stakes litigation without the exposure of an ambiguity or uncertainty. Claim interpretation issues recur so frequently because these texts are exceptionally difficult to draft. Patent practitioners must marshal considerable legal and technological skills to write claims that capture the inventor’s contribution, avoid subject matter known to the prior art, and anticipate future embodiments that others might employ. Yet financial limitations and marketplace demands for timely issuance weigh against comprehensive preparatory efforts. With each patent claim tied to a unique specification and prosecution history, the search for meaning becomes contextual and resort to the precedents unavailing. Claim drafters and interpreters have found certainty an elusive goal, but they have...
- The patent law has long considered persons who encourage the unauthorized practice of another’s patented invention to have engaged in culpable conduct. Such individuals face liability for patent infringement even if they never directly employ the patented invention themselves. The patent law terms this sort of conduct as “indirect” or “dependent” infringement.
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Chapter 30. Trademark Dilution 141 results (showing 5 best matches)
- H.R. Rep. 104–374 (Nov. 30. 1995) (“[T]he proposed federal dilution statute would not preempt state dilution laws. Unlike patent and copyright laws, federal trademark law coexists with state trademark law, and it is to be expected that the federal dilution statute should similarly coexist with state dilution statutes.”).
- Moreover, non-rigorous application of the fame requirement to trade dress runs the risk of exposing the dilution statute to constitutional challenge. Product design is arguably within the scope of the patent laws, and the Patent clause of the Constitution specifically grants Congress the power to protect such material only “for limited times.” Protection against dilution, however, is perpetual, lasting as long as the plaintiff continues to make use of the protected trademark (or trade dress). Moreover, because protection against dilution is available without any evidence of consumer confusion, it cannot be justified as a device to protect against “unfair competition.” Instead, it is simply the grant of a property-like protection to a trademark or trade dress. While Congress enacted the dilution statute in the exercise of its powers under the Commerce clause, its grant of perpetual protection to subject matter so close to the core of the patent laws might thus be held inappropriate...
- In 1927 an influential law review article, by an academically accomplished, prominent New York lawyer named Frank Schechter, suggested that the main purpose of trademark law ought not to be the prevention of consumer confusion, but rather the preservation of the uniqueness of merchants’ trademarks. He expressed the concern that even non-confusing uses of a firm’s trademark might cause “the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark.” Effectively Schechter was arguing that strong trademarks were entitled to a property-like protection that should prevent any other party from using the mark, even if the use was on non-competing and utterly unrelated goods. While he did not use the term, his idea became the stimulus for a new cause of action to protect trademarks known as “dilution.” As the name suggests, the doctrine is designed to provide relief when the acts of an unauthorized third party water down, erode or weaken the cachet and...of
- When Congress undertook a major revision of the Lanham Act in 1988, the Trademark Review Commission recommended that the time was ripe to adopt a federal dilution law. Although the Senate agreed, the dilution component of the bill failed to secure passage in the House of Representatives and consequently, when the President signed the Trademark Law Revision Act of 1988, it did not include any dilution provisions. Nonetheless, the International Trademark Association continued to push for a federal dilution law, and in 1995, Congress finally passed the Federal Trademark Dilution Act (or FTDA), codified as new section 43(c) of the Lanham Act.
- As early as 1932 Congress considered legislation that would have enacted the dilution doctrine as federal trademark law. Frank Schechter helped draft that legislation, and testified in its behalf, but the bill was not adopted. The dilution concept, however, did not fade away. Rather, proponents turned their attention to the state legislatures. In 1947, Massachusetts became the first state to enact a state trademark dilution statute. The dilution concept received further impetus in 1964 when the then United States Trademark Association (now the International Trademark Association or INTA) promulgated a model state trademark bill which included a dilution provision. By the early 1990’s dilution statutes had been adopted by about half of all American jurisdictions, including such populous and commercially important states as New York, California, Illinois, Florida and Texas. Nonetheless many courts gave these state dilution laws a narrow construction, for instance often requiring the...of
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Chapter 19. Patent Prosecution 207 results (showing 5 best matches)
- Unlike other sorts of intellectual property, patents come into existence only through the intervention of the government. The entity assigned the task of approving patent applications is an agency entitled the United States Patent and Trademark Office, or PTO. The administrative process through which an inventor acquires a patent from the PTO is known as prosecution. The most frequent professional duty of patent practitioners, prosecution is also the task assigned to most entry-level patent lawyers. Even those engaged exclusively in patent litigation need to be thoroughly apprized of the events at the PTO that lead to the grant of any patent to be sued upon or defended against. Attorneys who do not routinely practice in the patent law may also find themselves more frequently approached by inventors wishing to obtain a patent than by patent proprietors who wish to enforce their intellectual property rights. For all these reasons, a basic grasp of prosecution mechanisms is elemental...of
- The Patent and Trademark Office’s involvement in the United States patent system does not necessarily end when it formally grants a patent. The law has long recognized the numerous possibilities for mistakes, ranging from minor typesetting errors to significant substantive flaws, to make their way into the patent instrument. The patent statute thus provides the PTO with several different mechanisms for correcting the inevitable. The magnitude of the mistake largely determines which procedure will be employed.
- Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office
- Sometimes inventors seek more robust patent protection in some countries than in others. This step may be taken for business reasons or due to differences in the patent or competition laws in varying jurisdictions. The Act therefore contains a provision allowing applicants to “submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding application filed in a foreign country.” As a result, if an applicant seeks broader patent protection in the United States than in other countries, only the more limited version of the application will be published here.
- As a result, the courts have been left to develop the law of double patenting on their own. They have identified two sorts of double patenting. The first kind, which occurs when both patents have claims of identical scope, is known as “same-invention double patenting.” If the claims of the later patent could not be literally infringed without literally infringing the claims of the earlier patent, then a court will strike down the later patent for double patenting. Courts have sometimes based same invention doubling patenting on § 101, which allows an applicant to “obtain patent” on an invention. As a result, this doctrine is sometimes referred to as statutory double patenting.
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Chapter 25. Introduction to the Law of Trademarks 75 results (showing 5 best matches)
- The rationale for protecting trademarks differs somewhat from those which animate the other two major branches of intellectual property. A major justification for the protection of both technological innovation through patents, and artistic creativity through copyright, is the need to create an incentive for people to engage in such activities in the first place. The notion is that we would have too few inventors and artists if free riders could simply duplicate their work without fear of legal sanction, because there would be no way to make a living as an artist or an inventor.
- In broad outline, those legal rules are quite straightforward. Unlike patents and copyrights, trademarks are protected by both state and federal law. State law protection is almost always based on the common law, though, to be precise, quite a few states also have trademark statutes. For common law purposes the first party to adopt a mark and use it in connection with a particular category of goods or services is deemed to be the owner of that mark. No further formalities or governmental applications are required. Once a party has used a mark, it may also apply to the United States Patent and Trademark Office to federally register the mark. The relevant federal statute also provides a way for a firm to begin the application process even before it has used the desired mark, however no federal registration will be granted until after such use takes place. Federal registration confers a variety of additional legal protections and privileges, but it is not mandatory and many smaller...
- The law generally grants trademark protection to words and symbols only for a particular category of goods and services, not to the word or symbol in the abstract. Thus, while trademark protection resembles copyright and patent protection because it involves a government grant of exclusivity, the exclusivity is limited. Firms in unrelated lines of commerce can usually employ similar or even identical trademarks without infringing on each other’s rights. That is why we can have a DELTA airlines, a DELTA faucets, and a DELTA dental insurance at the same time. That is also why we can write books and articles referring to the Mississippi River delta, and use the Greek letter delta as part of the name of a fraternity or sorority.
- From the colonial era through the civil war, most economic activity in the United States was conducted on a local level. It was expensive to transport goods over long distances, and consumers rarely traveled far from home. Consequently, unlike the situation in copyright and patent law, where there was a perceived need for national uniformity from the earliest days of the republic, trademark law remained strictly a matter of local concern until after the Civil War.
- In 1870, the United States Congress passed the first federal trademark act, establishing for the first time a national scheme for the registration of trademarks. Unfortunately, Congress adopted this act as an exercise of its authority under the Copyright and Patent Clause of the The Court found that this clause of the Constitution simply did not provide a basis for federal trademark legislation, observing that “any attempt … to identify the essential characteristics of a trade-mark with inventions and discoveries in the arts and sciences, or with the writings of authors will show that the effort is surrounded with insurmountable difficulties.” Although the government argued that the 1870 statute should be upheld on the alternative ground that it was a valid exercise of Congress’s power to regulate interstate commerce, the Court rejected that argument as well, because nothing in the law of 1870 limited its provisions to marks that were used in connection with interstate transactions.
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Chapter 23. Patent Law in International Perspective 69 results (showing 5 best matches)
- The foundational patent harmonization treaty, the Paris Convention, was formed in 1884. As of April 15, 2002, 163 nations had signed the Paris Convention. The World Intellectual Property Organization (WIPO), a specialized agency located in Geneva, Switzerland, administers this international agreement (and a number of subsequent instruments addressing intellectual property). The Paris Convention commits its signatories to the principle of national treatment, the principle of patent independence, and a system of international priority. Through the national treatment principle, Paris Convention signatories agree to treat foreign inventors no worse than domestic inventors in their patent laws, so long as these foreign inventors are nationals of a Paris Convention signatory state.
- A principal difficulty of multinational patent acquisition is that no true global patent system exists. Inventors who seek intellectual property protection must file individual applications in each country or region where patent rights are sought. Fortunately, the patent regimes of the United States and its trading partners are linked through a handful of international agreements that, together, comprise the international patent system. These international agreements do not create a true global patent system, in that they do not provide for a single patent application and grant procedure that can lead to rights effective worldwide. However, they do provide inventors with mechanisms for expediting the acquisition of patent rights in many countries. This text discusses the most significant of these international agreements in the order that they were enacted.
- The North American Free Trade Agreement (NAFTA), currently joined by the United States, Canada and Mexico, includes a number of intellectual property provisions. More rigorous than the Paris Convention or the PCT, NAFTA requires its signatories to commit to substantive patent law measures, including term of protection, scope of rights accorded to patentees, and standards of patentability such as novelty and nonobviousness. At the time of its effective date of January 1, 1994, NAFTA was a premier intellectual property treaty. However, in terms of the extent of its obligations and the scope of signatories, NAFTA was quickly eclipsed by the World Trade Organization’s TRIPS Agreement. Rather than focus on the particulars of NAFTA, this report next discusses the TRIPS Agreement.
- One component of the international agreement forming the World Trade Organization (WTO) is the so-called TRIPS Agreement, or Agreement on Trade–Related Aspects of Intellectual Property Rights. The TRIPS Agreement is the most detailed and comprehensive multilateral agreement on intellectual property yet achieved. That every WTO member state has accepted the TRIPS Agreement standards makes this accomplishment even more impressive. As the most significant advances of the TRIPS Agreement occurred with respect to the patent law, a review of that agreement is especially apt here.
- Proponents of the TRIPS Agreement instead believe that the introduction of full-fledged patent systems around the globe will provide needed incentives for investment and innovation. Such efforts could promote solutions to problems that are particular to the developing world, including the provision of nutritional needs and cures for diseases not common in the developed world. Supporters also observe that the TRIPS Agreement was one component of a multi-faceted WTO agreement, and believe that the developing world obtained trade benefits in exchange for assuming obligations to protect intellectual property.
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Chapter 3. The Subject Matter of Copyright—Basic Requirements 83 results (showing 5 best matches)
- Second, there already exists a legal regime to reward innovation in the development of principles and procedures—namely patent law. Unlike the relatively easy criteria necessary for copyright protection, patent law has fairly rigorous prerequisites. The would-be patentee must show that his or her invention is both “novel” and “nonobvious” If copyright protection extended to ideas, concepts and the like, it would provide an alternative to patent law that would undermine the many significant policy objectives of patent.
- The anti-bootlegging statute is codified in 17 U.S.C.A. § 1101, near the Copyright Act but not formally a part of it. This choice of codification reflects the distinctions between this right and the traditional copyright law. Some have argued that the extent of these differences makes the anti-bootlegging law constitutionally suspect. The Intellectual Property Clause of the Constitution only authorizes Congress to protect , thereby connoting that protected works must take a tangible material form. The Constitution also calls for protection to endure only for “limited times.” The anti-bootlegging statute, however, does not stipulate any durational limits upon the rights provided. Nonetheless, at least one Court of Appeals has upheld the statute in the face of constitutional challenge, relying upon the Commerce Clause rather than the Intellectual Property Clause. It remains to be seen whether other courts will decide similarly, however, and also whether the anti-bootlegging law...
- There is an interesting theoretical consequence to this focus on independent creation. If two authors each were to conceive of, and fix, the exact same work without knowledge of the other’s activities, each would be entitled to an independent copyright on the resulting work. . Of course, the more elaborate the works in question, the more difficult it will be to believe that the second party actually created the work “from scratch” without referring to the first party’s efforts. As an evidentiary matter, the strong similarity between the two works may give rise to an inference that the second of the two was necessarily copied from the first. Nonetheless, the idea of parallel independent creation—and the consequence that two identical works could be copyrightable—is an important part of the structure of our copyright law. Moreover, this is one of the major distinctions between the scope of patent law and that of copyright. As we shall later on in this text, once a patent issues to an
- Copyright in a work does not protect the underlying ideas expressed in that work. This simple concept is a fundamental tenet of copyright law. It is embodied in the very structure of section 102 of the current copyright act. While the first subsection of that provision affirmatively sets out the prerequisites for protection—fixation and originality—section 102(b) negatively provides that,
- Article 1, Section 8, Clause 8 of the Constitution authorizes Congress “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.” Although the Intellectual Property Clause suggests some vague outlines about the kinds of material that may be protected by copyright, it operates like most constitutional clauses—reserving to Congress the power to define the limits with greater specificity. Congress exercised that power in the current copyright statute—the 1976 Act—by providing a general definition of the subject matter of copyright in section 102. Because that section is so fundamental to understanding the structure of the copyright act, its full text is worth a close look at the very outset. The first sentence of section 102 provides:
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Chapter 11. State Remedies Analogous to Copyright and Federal Preemption 98 results (showing 5 best matches)
- Not all judges were equally receptive to the misappropriation concept, however. One of the most skeptical was Learned Hand, who, in his role as a judge on the U.S. Court of Appeals for the Second Circuit was charged with applying New York law in common law diversity cases. He set out his concerns most fully in Both parties in the case manufactured silks. Every season the plaintiff would, at great effort, develop new designs, only some of which would achieve any measure of popularity and economic success. These designs were not protected by either patent or copyright. The defendant copied one of plaintiff’s patterns and the plaintiff filed suit under the misappropriation theory. Judge Hand rejected the claim. He was greatly troubled by the potential for conflict between the federal intellectual property statutes and a broad open-ended version of misappropriation law. He was inclined to limit the ...“[t]he difficulties of understanding it otherwise are insuperable. We are to... ...of...
- Much of this disagreement, and the state of the pre–1978 misappropriation case law generally, is no longer of much importance. On the one hand, with the modernization and expansion of the scope of copyright coverage, plaintiffs no longer need to invoke misappropriation in nearly so many cases, and state courts no longer have the incentive to expand the cause of action to do justice in what they may previously have seen as troublesome cases. On the other hand, the expansion of copyright has also expanded the range of state law causes of action that are pre-empted by federal law. While preemption is considered in depth at the end of this chapter, it is important to note at this point that many of the older state misappropriation cases would not be decided the same way today because the state claim would be held pre-empted, due to conflict with the letter or spirit of one of the federal intellectual property statutes.
- Competitive injury and theft of intellectual property have always been considered a branch of the law of Torts. Although both the first and second Restatement of Torts addressed some matters of unfair competition law, such as trade secrets, neither considered the status of the misappropriation doctrine at all. In the early 1990’s the America Law Institute began the preparation of a new restatement dealing directly and exclusively with law regulating competitive practices. The result of this effort was the publication, in 1995, of the Restatement (Third) of Unfair Competition, so named because of its roots in the two earlier Torts Restatements. We will encounter this new Restatement repeatedly and in some depth in the materials dealing with trademark issues a bit further on in this Hornbook.
- With the passage of the Copyright Act of 1976, Congress divested the states of the authority to provide for common law copyright in favor of a unified federal copyright system for both published and unpublished works. To further clarify the boundary between permissible state protections and federal law the 1976 Act also expressly addresses federal preemption of state laws in § 301. Section 301 calls for the preemption of state law claims that provide rights “equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103….” As restated by the Court of Appeals for the Second Circuit, § 301 preempts a state law claim if:
- This provision declares that there can be no common law remedies for theft of intangible assets other than trade secret law and the right of publicity. Under this approach, the misappropriation doctrine of no longer exists. If a defendant uses someone else’s information or formula or other intangible but is not guilty of transgressing a federal intellectual property statute such as the copyright laws, and if his conduct does not logically fit within the categories of trade secret theft or the right of publicity, the Restatement authors take the view that the conduct is a permissible form of competition. If there is any doubt about that interpretation from the text of the Restatement, the accompanying commentary makes the point explicit. That commentary points out
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Chapter 33. Trademarks on the Internet 161 results (showing 5 best matches)
- As part of its effort to manage any conflicts between trademark and domain name rights, ICANN requires all accredited registrars to adopt a uniform dispute resolution policy, and to secure the agreement of those registering domain names that they will abide by this policy. ICANN works closely with the World Intellectual Property Organization, or WIPO, and a variety of other entities interested in both Internet and trademark issues, with the goal of unifying domain name practices around the world and minimizing conflict with trademark law.
- case law has developed and now take the necessary precautions to insulate themselves from liability. For example, many cybersquatters are now careful to no longer offer the domain name for sale in any manner that could implicate liability under existing trademark dilution case law. And, in cases of warehousing and trafficking in domain names, courts have sometimes declined to provide assistance to trademark holders, leaving them without adequate and effective judicial remedies. This uncertainty as to the trademark law’s application to the Internet has produced inconsistent judicial decisions and created extensive monitoring obligations, unnecessary legal costs, and uncertainty for consumers and trademark owners alike.
- Perhaps the problem that received the greatest attention in the late 1990’s and in the early years of the new century has been the use of trademarks as “domain names”—the names by which a given site or page on the World Wide Web is identified. Other problems relate to the use by Web site owners of other’s trademarks as links on their web sites, and to the use of such marks in hidden computer code, not visible to a web surfer, but which can be read by a search engine. Where Web site owners have sold advertising to third parties in the form of banners or “pop-ups” on their site, they have sometimes keyed those advertising messages to the use of another party’s trademark word, to the displeasure of the trademark owner. In still other situations, the senders of bulk e-mail have made references to trademarks that they do not own either in the text of their messages or in the “header” of those messages. What follows is a whirlwind tour of these issues and a snapshot of the law that...
- Thus far, the legal authority on the validity of such a claim is sparse. One of the few cases addressing the situation is In that case, Netscape, which runs a search engine, keyed over 450 words, including the words “playboy” and “playmate” to advertising for various “adult entertainment” web sites. Plaintiff, the owner of the trademarks PLAYBOY and PLAYMATE for various publications and adult oriented entertainment services brought suit for both trademark infringement and dilution. The trial court denied relief on both grounds, reasoning that because the words “playboy” and “playmate” were ordinary words in the English language, there could be no showing that the defendant had actually used any trademarks belonging to the plaintiff. As it noted, “[a]lthough the trademark terms and the English language words are undisputedly identical, which, presumably, leads plaintiff to believe that the use of the English words is akin to use of the trademarks, the holder of a trademark may not...
- With commerce comes trademarks. As soon as firms began to offer goods or services over the Internet, they began to use trademarks. Not long thereafter, they began to fight with each over the use of those trademarks. Many of the issues that have come up—and that will come up in the future—involving the use of trademarks on the Internet are routine and familiar trademark disputes. Old wine in new bottles, if you will. For instance, if someone tries to sell cameras over the World Wide Web and calls those cameras KODUCK brand on its web page, when the owner of the KODAK mark brings suit for infringement and dilution, the analysis will be identical to any other trademark controversy.
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Chapter 2. Introduction to the Law of Copyright 59 results (showing 5 best matches)
- Copyright has been subject to increasingly vitriolic criticism during this era of the Internet. Some commentators assert that strenuous enforcement of copyright can result in the elimination of parody and satire, the curtailment of free speech and the suppression of creativity. Copyright law can indeed still voices, darken stages, and shut down presses; and as more individuals gain access to means for creating and disseminating sophisticated creative materials, the grasp of the copyright law seems to strengthen. Observers further note that Congress has recently augmented the scope of copyright in terms of such factors as the works subject to protection, the term of protection and the scope of exclusive rights, leading to perceived imbalances between the rights and responsibilities of content providers and consumers.
- The Statute of Anne inspired twelve of the individual colonies to enact copyright statutes following the American Revolution. Subsequently, the Framers of the Constitution recognized the need for a uniform federal law for both copyrights and patents. The result was Article 1, Section 8, Clause 8, which provides:
- There is no global copyright system. Property rights in works of authorship must be recognized and enforced in each jurisdiction where protection is sought. A number of international agreements nonetheless establish international copyright relations, allowing nonresident authors to enjoy intellectual property overseas. Although the international copyright landscape receives deeper coverage later in Chapter 12 of this volume, two of the more significant copyright treaties, the Berne Convention and TRIPS Agreement, are worthy of note at this early juncture.
- At some earlier time, a legal commentator could claim that although copyright was the most conceptually difficult of the intellectual property regimes, its governing legislation was relatively straightforward. At present the conceptual difficulties remain, but have been augmented by increasingly complex statutory provisions. The sophistication and economic importance of those U.S. industries for which copyright is a principal concern have caused the Copyright Act to become more intricate, more regulatory in character, and at times an extremely perplexing read. Understanding the “metaphysics of the law” presents many challenges. Yet it offers considerable rewards. Copyright necessarily is the study of the creative works it encompasses, ranging from humanity’s greatest artistic achievements to its most humble entertainments and petty imitations. Individual judicial opinions leave the reader sometimes elevated, sometimes amused or saddened, but ultimately immersion in this most humanist
- Copyright today is an exclusively federal, statutory subject. The governing law is the Copyright Act of 1976, effective for works created on or after January 1, 1978. Works created before this date may be governed in part by the predecessor statute—the Copyright Act of 1909 —in part by the common law of the various states, and in part by selected provisions of the 1976 law.
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Chapter 9. Copyright Infringement 189 results (showing 5 best matches)
- In administering this supplemental jurisdiction provision the courts have interpreted the concept of “unfair competition” broadly to include such matters as trade secret theft, conversion of intellectual property and various forms of passing off and common law trademark infringement. If plaintiff’s non-federal claims are not unfair competition claims, plaintiff can still ask the federal court to take jurisdiction over them under the general doctrine of supplemental jurisdiction, provided those non-federal claims “are so related to claims in the action within such original jurisdiction that they form part of the same case or controversy …” In the decided cases, the most difficult issue under section 1338(b) has proven to be whether the state law claim is genuinely “related” to the federal intellectual property claim. While there has been some disagreement among the courts, the emerging consensus seems to require that both the copyright claim and the non-federal claim arise from a...
- In those cases where a plaintiff alleges both a claim arising under the copyright laws and additional claims based on state law, the federal courts may have power to decide those additional claims under the doctrine of supplemental jurisdiction. 28 U.S.C.A. § 1338(b) provides that “the district courts shall have original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent, plant variety protection or trade-mark laws.” This provision gives the federal courts supplemental jurisdiction, but only over state claims that involve “unfair competition” and only when those claims are “related” to a federal intellectual property claim that is “substantial.” While the language of this section might suggest that federal jurisdiction is mandatory when the various statutory tests are satisfied, the Federal Circuit has held that trial courts
- Events subsequent to the 1990 legislation have rendered the continued vitality of § 511 extremely suspect, to the say the least. In 1999, the U.S. Supreme Court decided concerning an analogous provision in the patent statute, as well as addressing a similar provision in the trademark statute. In these decisions the Court held that Congress had not validly abrogated state immunity to charges of trademark and patent infringement in the federal courts. The virtually inescapable conclusion from these opinions is that the 1990 copyright legislation is similarly invalid.
- Courts were slow to embrace the idea of copyright misuse. While the Supreme Court articulated a concept of patent misuse in 1942 in the copyright cases in the decades that followed often explicitly declined to entertain the argument of copyright misuse. Only recently have defendants been able to prevail on claims of misuse. One of the first such cases sustaining the defense was the Fourth Circuit’s 1990 decision in Lasercomb owned the copyright in an industrial software program used in box and carton production. Lasercomb licensed various firms to use the software. One of the licensees made copies of the software not permitted by the license and Lasercomb sued for infringement. At trial, the defendant pointed out that Lasercomb’s license included a provision forbidding licensees from investigating or developing any competing software products for a period of 99 years. The court found this provision inconsistent with the policies underlying the copyright laws and harmful to the...
- , 64 Patent, Trademark & Copyright J. 32 (May 10, 2002).
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Chapter 24. Trade Secret Law 54 results (showing 5 best matches)
- Despite these apparent conflicts, the courts have ruled that trade secret protection may co-exist alongside the patent and other intellectual property laws. In the Supreme Court observed that trade secret laws also serve a principal purpose of the patent laws, the promotion of innovation. The Court also considered the patent law a far more attractive option for inventors of patentable subject matter and reasoned that most inventors would opt for the patent system. The Court also noted that, historically, the two bodies of law had been in place since the earliest days of the Republic.
- Judicial opinions evince two distinct conceptions of the trade secret law. Some courts focus on trade secrecy as an intellectual property discipline. Under this view, trade secret law creates a proprietary interest just like a copyright, patent or mark. In deciding whether to grant relief for misappropriation of trade secrets, these courts stress the value and secrecy of the subject matter for which trade secret status is claimed. Other courts have viewed trade secret law as less concerned with creating property than in ensuring proper conduct. In resolving trade secret cases, these courts stress whether the accused misappropriator acquired the information at issue in a fair and ethical manner.
- Trade secrets perform a valuable role in the U.S. intellectual property scheme, however. Although the patent law is an increasingly capacious regime, its subject matter does not extend to the full array of valuable information that may be the subject of a trade secret. Patent rights too must be affirmatively sought, and their acquisition usually entails significant costs and delays. Some inventors are not well schooled in the rather rarefied patent law regime and may wait overly long before filing a patent application. Even sophisticated enterprises may not recognize the value of an invention until they too have performed acts that defeat its patentability. The trade secret law fills these gaps by providing a modicum of protection for those who take prudent measures to protect valuable information.
- The tensions between the patent and trade secret laws have sometimes erupted into arguments that the patent statute preempts state trade secret laws. In addition to asserting that trade secrecy discourages disclosure of new inventions, commentators have also observed that the patent law reflects the policy that only new and nonobvious inventions merit proprietary patent rights. Although the requirement that a trade secret not be public knowledge has been equated to the patent law’s novelty requirement, the trade secret laws do not demand that the secret subject matter be nonobvious.
- Trade secrets and patents coexist in what can be described as an uneasy relationship. A principal purpose of the patent law is the dissemination of knowledge. This goal is realized through the publication of patent instruments that fully disclose the patented invention such that skilled artisans could practice it without undue experimentation. A law of trade secrets that encourages the withholding of patentable inventions appears fundamentally at odds with this precept.
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Chapter 4. The Subject Matter of Copyright—Specific Categories of Protectable Works 178 results (showing 5 best matches)
- Existing forms of intellectual property did not present a good fit with integrated circuit layouts. Because integrated circuit layouts are functional, utilitarian products, the copyright law was not a suitable form of protection. In addition, as will be discussed later in this hornbook, functional inventions must exceed the abilities of skilled artisans in order to be patented. Although integrated circuit layouts are sophisticated products that are difficult to design, they nonetheless may be considered obvious variations of known circuit layouts.
- The policy justification for denying protection to utilitarian works flows from the very nature of copyright. Copyright protection attaches automatically. Under the present statute, protection arises as soon as the work is fixed in a tangible medium of expression. Under the 1909 Act the protection generally arose upon publication with notice. There is no requirement of government examination of the “worth” of the creation before copyright protection becomes available. This is exactly opposite of the approach used in patent law, where no government protection is available until a patent examiner has determined if the proposed invention meets the statutory standards. If useful objects could be protected by copyright, technology might be withdrawn from the public domain, hindering the commercial activities of others without affording the public any benefit.
- It should be apparent from these loose standards that conceptual separability analysis remains rather muddled, and that much room for good lawyering exists when arguing such cases. It would seem that many of the close cases can and should be resolved by asking whether granting copyright protection would subvert core values of patent law. If there is any risk of such an outcome, we would think the better course would be to deny the sought-after copyright.
- With neither the copyright law nor the patent law applicable, Congress enacted the Semiconductor Chip Protection Act (SCPA) in 1984 to afford some legal protection to chip designs. The SCPA creates a 10–year term for protection of integrated circuit layouts, provides exclusive rights to proprietors to reproduce these layouts and manufacture chips embodying them, and allows others to reverse engineer the layouts to analyze or evaluate them. In order to obtain protection, chip designers must register the work with the Copyright Office, depositing four chips embodying the mask work, and submit drawings or plots of each layer of the mask work.
- The plaintiff in that case had obtained copyright protection for certain statuettes depicting male and female dancing figures. These figures were then used as bases for table lamps. The defendants in the case made copies of the figures to use in their own, competing lamps. In the resulting infringement suit, the defendants argued that where a work of art or artistic craftsmanship is ultimately incorporated into a useful object, the work should not be copyrightable because the exclusive form of protection should be a design patent. The Court rejected the argument, concluding “[w]e find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration.” In other words, the fact that an author intends to, and ultimately does, make a utilitarian use of a work of art does not deprive that work of copyright, assuming that it qualifies as a work of art in the first place. In reaching...
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Chapter 12. Copyright in the International Perspective 41 results (showing 5 best matches)
- A recognition of these failings, along with a growing perception of the strong connection between intellectual property and international trade, resulted in the shift of copyright treaty-making efforts into new fora. In 1993, the United States joined with Canada and Mexico in the North American Free Trade Agreement (NAFTA). NAFTA includes a number of provisions harmonizing its signatories’ intellectual property laws, including copyright.
- . Two treaties were completed under the auspices of the World Intellectual Property Organization (WIPO) in 1996. The WIPO Copyright Treaty includes a number of different provisions that build upon the Berne Convention. Article 2 of the WIPO Copyright Treaty calls for the protection of computer programs as literary works, while Article 5 provides for the copyright protection of data compilations that, by virtue of their selection or arrangement, constitute “intellectual creations.” Signatories to the WIPO Copyright Treaty also agree to confer distribution and rental rights to computer works, movies and works embodied in phonograms. The WIPO Copyright Treaty further obliged signatories to provide legal protection for technological protection measures and rights management information. The Digital Millennium Copyright Act of 1998, discussed previously at § 7.7 of this text, implemented these latter obligations domestically.
- The international dimension of copyright has never been so important. Movies, music, software and other works authored by U.S. citizens enjoy popularity around the world. In the era of the Internet, these works may be copied and distributed globally in a matter of moments. Yet, although copyrighted works observe few boundaries, copyright law itself remains strictly territorial. Each nation’s copyright laws extend only as far as its own borders.
- Although no true global copyright system exists, the copyright regimes of the United States and its trading partners are linked through a handful of international agreements. These agreements do not create a universal copyright law, in that they do not provide for a single source of rights effective worldwide. Yet they allow authors to claim a national copyright almost anywhere in the world. This Chapter discusses the most significant of the agreements that, together, comprise the international copyright system.
- Article 5(2) of the Berne Convention requires that, for works outside their country of origin, copyright protection be afforded without formalities. The term “formalities” includes several traditional features of U.S. copyright law, including Copyright Office registration and the placement of notice on copies of the work. Article 5(2) abolishes these requirements for works outside of their country of origin. Although formalities can be imposed in the country in which the work originated, if a work originates from a Berne signatory state, that work must be protected automatically in all other Berne countries.
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Chapter 7. The Exclusive Rights of a Copyright Holder 159 results (showing 5 best matches)
- Some works of authorship display a useful article as such. A blueprint may depict the design of an electric circuit, for example, or a model may portray an aircraft engine. For that matter, a pop art painting might depict a toaster or a blender. In such cases § 113(b) specifies that the copyright law provides authors with no “greater or lesser rights with respect to the making, distribution or display of the useful article so portrayed….” Stated more simply, a copyright in a pictorial, graphic or sculptural work depicting a useful object does not extend to embodiments of the useful object itself. If an engineer develops a blueprint depicting a electric circuit, for example, the engineer could use the copyright law to prevent reproductions of the blueprint itself. But others could actually build the circuit without violating the engineer’s copyright. If the engineer seeks intellectual property protection for the useful article itself, she must turn to the patent law.
- The Digital Millennium Copyright Act of 1998 (“DMCA”) attempts to respond to the opportunities and challenges of the digital information revolution. In enacting DMCA, Congress was also seeking to implement U.S. obligations under two international agreements concluded at the World Intellectual Property Organization (“WIPO”), the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. Title I of the DMCA added a new Chapter 12 to the Copyright Act with two principal provisions, one of which prohibits the circumvention of technological measures that protect copyrighted works and the other of which concerns the integrity of copyright management information. These two provisions are addressed in turn.
- The U.S. copyright law traditionally has had a utilitarian focus. Protection of authors has not been seen as the ultimate purpose of copyright, but rather as a means to achieve the broader social goal of promoting expression. One ramification of this focus is that the U.S. copyright statute provides rights that center upon the economic interest of authors.
- Each of the exclusive rights is independent from the others. An infringer need only violate one right to be subject to liability for copyright infringement. Still, the exclusive rights are related, and often one infringing act simultaneously violates multiple exclusive rights granted by the copyright law. If, for example, a publisher prepared a foreign-language translation of a protected novel without authorization from the copyright holder, both the reproduction and adaptation rights would be violated.
- Section 113—Pictorial, Graphic and Sculptural Works.
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Chapter 27. The Distinctiveness Requirement and Issues of Trademark Validity 153 results (showing 5 best matches)
- The notion of likelihood of confusion is central to much of trademark law and constitutes the key test for determining questions of infringement. It is explored in some depth in the chapter on trademark infringement later in this volume. At this point, it will suffice to note that there is much subjective judgment involved in determining when a proposed mark is so confusingly similar to one previously used as to warrant a denial of registration. In its 1973 decision, the Court of Customs and Patent Appeals, which at the time had jurisdiction to review the decisions of the U.S. Patent and Trademark Office, identified thirteen factors to guide the PTO in making “likelihood of confusion” determinations. The Court of Appeals for the Federal Circuit, the successor to the Court of Customs and Patent Appeals, has declared that “any doubts about likelihood of confusion under § 2(d) must be resolved against applicant as the newcomer.”
- which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive….
- Inherently distinctive marks—whether arbitrary, fanciful, or suggestive—used to be known as “technical trademarks.” In the first half of the 20th century, only technical trademarks could be protected via the common law cause of action for trademark infringement. Owners of all other types of trademarks had to resort to the more general claim for “unfair competition” in order to protect their marks. Moreover, only technical trademarks were eligible for protection under the Federal Trademark Law of 1905—the predecessor of the Lanham Act. This terminology is now no longer used, and the Reporter’s Notes to the Restatement (Third) of Unfair Competition refers to it as “obsolete.”
- Application of this principle has required courts and the Patent and Trademark Office to develop some rules about what terms should be considered “geographic” and when geographic terms will be considered “descriptive” of goods. As to the first question, courts have taken a broad approach, holding that the use of almost any recognizable place name on earth should be treated as geographic in nature. Thus the names of countries, states and cities, and their subdivisions such as counties or neighborhoods are “geographic” term. So are the names of geographic features like mountains, and rivers. Even the map of Canada that appears as a logo on the label of CANADA DRY brand soft drinks was held, logically enough, to be geographic in nature.
- A mark of this sort is entitled to trademark protection at common law from the time of first use, and will be eligible for immediate federal registration under the Lanham Act. Other examples of arbitrary usage of geographic terms include ATLANTIC for magazines and books, and PHILADELPHIA for cream cheese.
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Chapter 26. Acquiring Trademark Rights 107 results (showing 5 best matches)
- The first step in securing registration is filling out an application with the U.S. Patent and Trademark Office, or PTO. The federal trademark application form is a relatively short and simple one, as government forms go. The application must disclose the mark and the categories of goods on which the mark has been used. These categories are grouped in various “international classes” that have been established by the World Intellectual Property Organization (WIPO) in Geneva. For example, an applicant might seek registration for a mark in International Class 5—Pharmaceuticals, and then list specific types of goods on which the mark had been used, such as “pain relief cream for arthritis” or “anti-depressant medication.” The application must also include samples, such as labels, illustrating how the mark has been used and a declaration of when the mark was used for the first time. The applicant must swear that it knows of no one with a superior right to use the mark in question, and,...
- Regarding the scope or amount of use necessary to support a registration, the story is a bit complicated. Prior to 1989, a less extensive quantity of use was required to qualify for a federal trademark registration than was necessary to prevail in a common law priority dispute. In this era, sometimes the PTO and courts found even a single occasion of use to be sufficient for federal registration, under what was called the “token use” doctrine. As the Trademark Trials and Appeals Board of the PTO observed in 1974, “[i]t has been recognized and especially so in the last few years that, in view of the expenditures involved in introducing a new product on the market generally and the attendant risk involved therein prior to the screening process involved in resorting to the federal registration system …, a token sale or a single shipment in commerce may be sufficient to support an application to register a trademark in the Patent Office….”
- The United States has a “dual” system of trademark law. A firm can secure trademark protection under state law, usually under state common law, or it can seek federal rights, under the federal trademark statute known as the Lanham Act, or both. The two are independent of each other. A mark can be valid and protectable under state common law even though the owner has not taken any steps to secure federal rights. Conversely, a mark can be protected under federal law even though state common law rights have not accrued, though this would be somewhat less likely.
- The Lanham Act says that a mark is used on goods when “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale ….” This definition is a bit narrower than the modern approach to “affixation” and “use” recognized under the common law and discussed in the preceding section. For instance it does not include pre-sales advertising within its scope. Nonetheless, the courts and the agency that actually registers trademarks—the United States Patent and Trademark Office or PTO—tend to interpret the language broadly, thus minimizing the differences. For instance, use of the mark on an instruction manual accompanying a hang glider was found a sufficient basis for federal registration in and on trade show exhibit booths ...federal registration. In the case of services, the Lanham Act is a...
- All four types of symbols can be referred to as “marks,” and in most judicial and administrative opinions, any reference to trademarks is meant to encompass the other three varieties of marks as well. That is also true for the discussion that follows in this text. The Restatement (Third) of Unfair Competition tracks the Lanham Act by separately defining trademarks, service marks, certification marks, and collective marks but earlier state law opinions rarely used any terminology other than “trademark” regardless of the type of identifying symbol at issue.
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Chapter 31. Fair Use, Other Affirmative Defenses and Remedies 184 results (showing 5 best matches)
- When we turn to the question of “fraud” in trademark law, we are dealing with a rather specialized term of art. This label is usually reserved for situations where a trademark owner has obtained a federal Lanham Act registration based on false representations to the U.S. Patent and Trademark Office, or has made other false filings with the PTO. A party raising a claim of fraud must show that the registrant knowingly or deliberately made the alleged false statements to the PTO, and that the registration would not have issued, but for those false statements. Moreover, the fraud must be proved by clear and convincing evidence, and has been characterized as a “disfavored defense.” Given all these hurdles, allegations of fraud succeed in only a small fraction of the trademark cases where they are asserted.
- Laches is a traditional defense to any request for equitable or injunctive relief, applicable in many contexts besides intellectual property law. Since injunctions are the most commonly sought remedy in trademark infringement cases, it is not surprising that claims of laches have cropped up repeatedly in trademark litigation. Moreover, many courts have held that the laches defense can also be used to defeat a request for profits or damages arising from trademark infringement, even though most monetary remedies are traditionally classified as “legal” rather than equitable.
- itself was a trademark infringement case. U.S. trademark owners would presumably prefer that grey market goods never even enter the United States, rather than waiting for them to appear on retail shelves and then having to bring suit for infringement. There are two statutory provisions that permit the U.S. trademark owner to attempt such pre-emptive action. Section 42 of the Lanham Act, specifically declares that “no article of imported merchandise … which shall copy or simulate a trademark registered in accordance with the provisions of this chapter … shall be admitted to entry at any customhouse of the United States….” Interestingly, this provision is quite similar to section 27 of the 1905 Trademark Act, which was on the books at the time of the decision, but which was not cited or discussed by Justice Holmes. Because of that silence, in 1922 Congress adopted section 526 of the Tariff Act, which provides that “it shall be unlawful to import into the United States any merchandise
- The Lanham Act provides that a federal registration for a trademark may be cancelled at any time if it was obtained fraudulently. Elsewhere, the statute indicates that fraudulent procurement of registration is a defense to a claim of infringement of a registered mark, even if the registration in question has become incontestable. It is important to note, however, that even if a party’s registration is cancelled and its claim of infringement of the registered mark is dismissed based on a showing of fraud, that party will still have a valid common law trademark. It is still free to sue for infringement of that common law mark both under state law and under section 43(a) of the Lanham Act, and in such case, its fraud at the Patent Office will not bar relief. As one trial court noted, “[t]rademarks are created by use, not registration. Federal registration creates valuable substantive and procedural rights, but the common law creates the underlying right to exclude. Thus, even if a...
- In egregious cases, fraud on the PTO might also constitute misconduct rising to the level of “unclean hands,” and where that is the case a plaintiff should and will be denied relief even when purporting to assert common law rights. Such cases are rare, however, because the public interest in being freed from confusion usually outweighs any judicial interest in punishing the trademark owner for lying to the bureaucrats at the Patent Office. Moreover, the Lanham Act contains a separate provision granting a civil cause of action to anyone injured by another person’s fraudulent procurement of a federal trademark registration. Thus courts can refuse to treat fraud on the PTO as unclean hands and to enjoin an infringer, secure in the knowledge that anyone who was genuinely injured by the fraud can still have a separate and independent remedy.
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Chapter 14. Patent Eligibility 140 results (showing 5 best matches)
- Determining the appropriate subject matter for patenting is important because a paucity of constraining doctrines allay the proprietary rights associated with granted patents. As discussed in subsequent chapters of this book, the adjudicated infringer need not have derived the patented invention from the patentee, as liability rests solely upon a comparison of the text of the patent instrument with an accused infringement. The patent law as well lacks a robust experimental use exemption in the nature of copyright law’s fair use privilege. The decision to subject particular areas of endeavor to the patent system is therefore of great moment, in effect subjecting entire industries to a private regulatory environment with constantly shifting contours. As you make your way through this material, you might pause to think about the impact of the patent system upon traditionally patent-free industries such as services or finance, and to ponder whether every aspect of human endeavor is...
- A plant protected under the Plant Patent Act or PVPA may also be claimed in a utility patent. In the Supreme Court rejected arguments that congressional enactment of this more specialized legislation evidenced the congressional intent that living plants could not be the subject of utility patents. Justice Thomas observed that the PTO had a long history of granting utility patents towards plants and that the Court’s own precedent had interpreted § 101 quite broadly. The Court also observed that a particular legal or property interest is often the subject of multiple statutes. For example, computer software may qualify for protection under both the copyright and patent laws. The Supreme Court concluded that merely because these laws may be of different scope does not suggest that they are invalid.
- Presentations of information traditionally did not comprise patentable subject matter. Under the printed matter doctrine, information inscribed upon a substrate for purposes of presentation was held outside the scope of § 101. Courts viewed such inventions as no more than memorialized versions of abstract ideas and reasoned that the mere act of recording information should not impart patentability. This rule also performed a channeling function, diverting works of authorship from the patent law to the copyright law.
- The patentability of computer-related inventions proved extremely controversial. Dozens of reported cases, and hundreds of law review articles and other commentary, discussed and disputed the merits of extending patent protection to software and other computer technologies. Events at the PTO and Federal Circuit have now outstripped this debate. There is now no doubt that patent protection is broadly available for computer-related inventions. Still, a review of the high points of this long saga is a familiar waystation in the patent law. The past debate over the patent eligibility of computer-related inventions may provide clues as to the scope of protection accorded such patents in the future, and its teachings provide general guidance as to the responses of the patent system to new technologies.
- Before proceeding further, the reader should note that section 101 twice employs the phrase “new and useful.” Despite this wording, the courts have traditionally distinguished the requirement of patent eligibility from those of novelty and utility. Thus, the inquiry of whether a particular invention is of the kind the patent laws were intended to protect has traditionally been considered a different matter from whether the invention possess novelty, and is useful, within the meaning of the patent law. Utility and novelty are addressed in Chapters Fifteen and Sixteen of this text respectively.
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Chapter 28. Protection for Trade Dress and Other Unconventional Trademarks 135 results (showing 5 best matches)
- Second, protecting functional package or product features under trademark law would undermine the policies of the patent system. Under patent law, one is only entitled to exclusivity for a new technological development if the development meets the fairly exacting standards of novelty and non-obviousness. More pedestrian innovations are not considered worthy of an exclusive right. If such features could nonetheless be protected as trade dress, firms would be able to make an end run around the standards of patentability, and they would be able to claim this protection for an indefinite period, rather than for the limited term of years provided under patent law.
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (“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.”); Elmer v. ICC Fabricating, 67 F.3d 1571, 1580 (Fed.Cir.1995) (“Patent law, not trade dress law, is the principal means for providing exclusive rights in useful product features.”); Stormy Clime, Ltd. v. Pro-Group, Inc., 809 F.2d 971, 977–78 (2d Cir.1987) (“Courts must proceed with caution in assessing claims to unregistered trademark protection in the design of products so as not to undermine the objectives of the patent laws.”).
- While a few courts have even considered various procedural aspects of how a service is provided—such as the registration process for a trade show —to be trade dress, the decisions clearly indicate that general business themes are not within the definition of trade dress. For instance, a firm cannot secure exclusive rights in the marketing device of promoting domestic ice cream as having a Scandinavian flair under trademark or unfair competition principles. A concept such as this can be protected only under the patent laws, and only then if it meets the rigorous requirements for patents canvassed elsewhere in this volume.
- Color is a central attribute of many trademarks. One need only think of the red and white of the COCA–COLA logo, or the brown and gold combination associated with West Publications casebooks to appreciate this fact. Nonetheless, one of the more troublesome questions in trademark law has been whether a single overall color can, by itself and independent of any design or color scheme, function as a trademark. Those with an affinity for Latin refer to this issue as one involving the protectability of color “simpliciter.”
- In that case, a Florida statute prevented anyone from duplicating the design of a boat hull through a method known as “plug molding”—the most efficient and inexpensive way to duplicate a design. The statute was not predicated on trademark or trade dress notions of public confusion, but rather on more general concerns about the unfairness—and negative effects on incentives—of allowing unrestricted copying of another firm’s design. The Supreme Court held that the statute in question was pre-empted under the federal patent laws. Noting that the boat hulls covered by its provisions were not protected by federal patents, it held that Congress wanted everyone to be free to copy them. In reaching that conclusion, however, Justice O’Connor took the opportunity to narrow the scope of and
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Chapter 22. Remedies for Patent Infringement 30 results (showing 5 best matches)
- The Patent Act sets forth the remedies a patentee may obtain upon a finding of infringement. These remedies include injunctions, monetary damages and attorney fees. The statute also allows for damages to be increased by up to three times in exceptional cases of willful infringement. The Patent Act does not provide for criminal sanctions for violation of patent rights, nor does it allow the patentee to obtain statutory damages in the manner of the copyright law.
- The Federal Circuit will not ordinarily enhance damages due to willful infringement if the adjudicated infringer did not know of the patent until charged with infringement in court, or if the infringer acted with the reasonable belief that the patent was not infringed or that it was invalid. Federal Circuit decisions emphasize the duty of someone with actual notice of a competitor’s patent to exercise due care in determining if his acts will infringe that patent. This duty may be fulfilled by obtaining and observing competent legal advice before commencing, or continuing, activity that may infringe another’s patent. The best practice appears to be the commissioning of an infringement and validity opinion from a member of the patent bar who is fully conversant with the patent law; has familiarized herself with the patent, its prosecution history, and the pertinent prior art; and is knowledgeable of the products or processes that might be accused of infringement.
- Many readers have doubtlessly observed the legend “patent pending” on a variety of products and packaging. The phrase may mean that the manufacturer has filed a patent application pertaining to that product. The mere filing of a patent application ordinarily lacks legal significance for anyone except the applicant and the PTO, however. Until the patent issues, the applicant obtains no legally enforceable rights, and there is some chance that the PTO will refuse to issue a patent at all. Use of “patent pending” is essentially a form of “self help” through which applicants warn others that a patent may be in the works. The phrase “patent pending” bears no relationship to the patent marking statute and, absent special circumstances, generally has no legal ramifications at all.
- The wisdom of awarding enhanced damages in cases of patent infringement has been roundly debated. Critics of the policy believe that the possibility of trebled damages discourages individuals from reviewing issued patents. Out of fear that their inquisitiveness will result in multiple damages, innovators may simply avoid looking at patents until they are sued for infringement. To the extent this observation is correct, the law of willful infringement discourages the dissemination of technical knowledge, thereby thwarting one of the principal goals of the patent system. With willful infringement principles encouraging industry to seek out opinion letters of patent counsel, these developments have been likened to a “full employment act” for the patent bar. Fear of increased liability for willful infringement may also discourage firms from performing the public service of challenging patents of dubious validity. Perhaps it is time for the patent system to shift to a “no-fault” regime
- The Patent Act encourages patentees who make or sell embodiments of their patented invention to give notice to the public of their patent rights. Section 287(a) provides that patentees and their licensees should fix the word “patent” or the abbreviation “pat.”, along with the number of the patent, on patented articles. If the nature of the article does not allow this notice to be placed directly upon it, a label may be placed on the article or its packaging.
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Chapter 18. The Patent Instrument 151 results (showing 5 best matches)
- Courts routinely state that the patent applicants are allowed to coin their own terms for use in claims. As expressed in the vernacular of the patent law, “a patentee is free to be his or her own lexicographer.” However, newly minted terms may not be misdescriptive, nor should the applicant employ such banal terms as “gadget” or “widget.” The courts and PTO have been more hostile to the use of trademarks or trade names within patent claims however. Typical of such cases is which rejected a claim reciting the trademark “FORMICA.” The PTO Board of Appeals reasoned that the manufacturer was free to change the composition of FORMICA as it pleased, rendering Bolton’s claim of indefinite scope.
- Patents may be distinguished from other intellectual property rights in that they necessarily arise from a formal application process. Individuals must present written applications to the PTO in order to secure proprietary interests in their inventions. These applications may ultimately mature into issued patent instruments, the documents that form the basis of individual patent rights. The Patent Code mandates the contents of each patent instrument in § 112, a statute comprised of six unnumbered paragraphs. The first two of these paragraphs are of central significance to the patent project.
- Leeds v. Commissioner of Patents and Trademarks, 955 F.2d 757, 759 (D.C.Cir.1992).
- One of the more explosive opinions in patent law, exemplifies the effect of prophetic examples and the workings of the enablement requirement more generally. Atlas obtained a patent claiming water-resistant blasting agents and sought to enforce it against DuPont. The claim called for the mixture of such ingredients as salts, fuels and emulsifiers to form an emulsion. The patent’s specification then offered numerous particular examples of each sort of ingredient.
- Department of Commerce, Patent and Trademark Office,
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Chapter 6. Ownership and Transfer of Copyright Interests 107 results (showing 5 best matches)
- In addition to the constitutional question, there is also the issue of the policy justification for the works made for hire doctrine. It might be constitutionally permissible to treat employers as the copyright owners of works created by employees, but is it a good idea to do so? This question becomes particularly interesting when we realize that no comparable rule exists in the law of patents. The usual justification for the work made for hire rule is that it places the legal incentive where it will likely do the most good—in other words where it will be most effective in inducing the creation of intellectual works. If employers know that they will control the copyright to works created on the job, they have the motivation to hire the right people and give them the right resources to engage in the creative endeavor. Without the incentive of copyright, those works might never be created. In addition, the employer may also be in the best position to disseminate the work once it is...
- Perhaps the leading case reaching this holding was Pushman v. New York Graphic Society, Inc., 287 N.Y. 302, 39 N.E.2d 249 (1942). The precise scope of is somewhat uncertain. Since a one-of-a-kind work is, by definition, unpublished ( court was not actually addressing the ownership of federal copyright, since such unpublished works generally did not have federal copyright under the 1909 act. Rather, the court was concerned with the ownership of the
- Copyrights are freely transferable, just like all other types of personal property. They can be transferred outright, in a transaction usually denominated as an assignment, or the owner can merely give another party the right to exercise certain rights of copyright ownership by granting either an exclusive or non-exclusive license. These transfers can be for compensation or can take the form of a gift. Moreover, copyrights will be treated as part of the owner’s legal estate upon his or her death, and thus can be transferred by provisions in a will, or under the relevant provisions of state intestacy laws.
- Copyright owners seeking to maximize the economic value of their rights may often be motivated to deal with a variety of different people. An author of a novel, for instance, might wish to grant one publisher hardcover publication rights, another publisher paperback rights, a movie studio the right to make a derivative work in the form of a motion picture, and a record company the right to produce and market recording of the book on audiocassette tapes. Such a strategy is only possible if the copyright interest in the novel is “divisible”—permitting the copyright owner to transfer or license each right separately. The current copyright law provides for such divisibility in section 201, which states
- The relevant provision is section 28 of the 1909 Act, which read “copyright secured under this title or previous copyright laws of the United States may be assigned, granted, or mortgaged by an instrument in writing signed by the proprietor of the copyright, or may be bequeathed by will.”
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Chapter 5. Publication and Formalities 93 results (showing 5 best matches)
- Before addressing the legal particulars, competing views on the worth of the notice requirement should be noted. Proponents have pointed to several benefits of affixing copyright notice upon works of authorship. Notice is said not only to inform the public of an intellectual property right, but to identify the copyright owner and the publication date. In addition, a notice requirement was also claimed to have the beneficial effect of instantly injecting into the public domain works that the author did not wish to copyright.of the notice requirement undoubtedly deprived worthy authors of the benefits of copyright protection over the years. A requirement of notice also in part prevented the United States from acceding to the Berne Convention. The permissive notice regime of the present U.S. copyright law attempts to profit from the perceived benefits of copyright notice without incurring too many of its costs.
- Under the Copyright Act of 1909, publication formed the crucial dividing line between protection under state common law and protection under the federal statute. Before publication, an author whose work was reproduced without his or her permission could maintain a cause of action for infringement of “common law copyright” under the law of his or her home state. There was no time limit on this right. The “common law copyright” was perpetual—it endured as long as the author kept the work unpublished. Moreover, federal law simply did not apply to unpublished works in most cases. After publication
- The difference between auto registration and copyright registration, however, is that copyright registration under the present law is not mandatory. there are numerous incentives in the current statute designed to encourage prompt registration of copyright claims, and registration remains a prerequisite to the filing of an infringement suit for many copyright owners.
- Registration was not always optional under American copyright law. Under the earliest copyright statute in the United States, the law required the filing of the title page of a work with the clerk of the U.S. district court in the district where the claimant resided as a formal condition of copyright protection. Without the filing, copyright protection under federal law would be lost. By the time of the 1909 act, however, registration was to be made with the Copyright Office rather than with the district courts, and was no longer an essential condition of copyright protection. Registration of the claim of ownership was, however, a prerequisite to the filing of any infringement suit.
- Historically, general publication of a work without proper notice had grave consequences for an author attempting to claim copyright. As discussed in the foregoing section, such a publication was “divestitive” of copyright, and it injected the work into the public domain. That rule has been relaxed over time, however, and it is important to determine the date a work was first generally published in order to ascertain the precise consequences of the publication. To be more precise, there are three separate eras in American copyright law insofar as notice is concerned—the pre–1978 period; the period from January 1, 1978 through February 28, 1989; and the post-March 1, 1989 period. The state of the law in each of these eras is discussed in the subsections that follow.
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Acknowledgments 6 results (showing 5 best matches)
- My participation in this project would not have been possible without the efforts of many mentors and colleagues. The late Chief Judge Helen W. Nies gifted me with two unforgettable years of training in the work of the remarkable court on which she served. I miss her dearly. I shall always be grateful to Professors Martin Adelman and Rebecca Eisenberg for igniting my interest in intellectual property, Harold Wegner for first placing me in front of a law school classroom and Professor Hugh Hansen for proposing a full-time career in law teaching. I also acknowledge Professors Rochelle Dreyfuss, Jerome Reichman and Pamela Samuelson, distinguished senior colleagues who have inspired a new generation of intellectual property scholars. The thoughful commentary of Professor Douglas Lichtman improved the patent portions of this text and was of immeasurable help. My thanks also to Peter Corcoran, Jyotsna Gautam and Brian McMahon for their invaluable research assistance.
- This volume would have been simply impossible without the collaboration and encouragement of my co-author Jay Thomas, whose enthusiasm and amazing hard work kept me moving through many hard patches. Finally, there are no sufficient words of thanks for my students. So many teacher-authors have said it before that it may take on the trappings of a cliche, but the intellectual curiosity, probing questions, good humor, excitement and energy of two decades worth of G.W. law students have been, more than anything, what got me out of bed each morning and what made this book possible.
- There are many others whose contributions were one step removed from the preparation of this book, but who laid the foundation that made it possible. I am greatly indebted to Professor J. Thomas McCarthy of the University of San Francisco, not only for his extraordinary contribution to trademark law through his definitive treatise, but for his many thoughtful observations and kindnesses over the years. He is one of the true gentlemen and scholars in our business. I would not be in law teaching if not for the confidence and support of Professor Glen E. Weston, my emeritus colleague at George Washington, who illustrated for me what a teaching book should look like. I am grateful as well to Jerome A. Barron, the Dean who hired me, and to Michael K. Young, my current Dean, for doing so well the hardest thing a Dean can do—namely to leave a faculty member unmolested to pursue a large project. The forbearance, patience, and grace of several at West Group, notably Tom Berreman, Doug Powell...
- Only other authors of similar books really understand the large number of people who make a work like this possible. I am deeply grateful to several remarkable law students at George Washington University who helped in the research for this work, including Michael Alter, John Donboli, James Gallagher, Mark Glaze, John Moran, Douglas Rettew and Wayne Stacy. Thanks are also due to David Colletti and Paul M. Levine for meticulous help in proof-reading under great time pressure.
- I was pleased to attend Roger Schechter’s classes as a student and delighted to enter academia as his colleague; now I am honored to serve as his co-author. Roger’s insight and eloquence of expression is apparent from the pages of this text, but I also admire his collegiality and extraordinary commitment to his students. The original vision of this treatise was his, and I am grateful to have shared in the work of fulfilling it.
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Chapter 16. Novelty 221 results (showing 5 best matches)
- An invention that has been “patented” one year before the date of filing under § 102(b) will bar a later U.S. application. Issues over the term “patented” ordinarily arise with respect to patents granted abroad. Global legal regimes yield an exotic array of intellectual property rights that can differ significantly from familiar domestic patents. The courts have been left to determine which of these rights constitutes a patent within the terms of § 102.
- Section 102(e) presents a complex rule that governs the prior art status of a special category of secret knowledge of a first inventor’s work. As amended by the American Inventors Protection Act of 1999 and the Intellectual Property and High Technology Technical Amendments Act of 2002, § 102(e) consists of two sub-paragraphs. Section 102(e)(1) provides that a published patent application that discloses, but does not claim the invention constitutes prior art as of its filing date. Section 102(e)(2) works similarly: an issued patent that discloses, but does not claim the invention, constitutes prior art as of its filing date.
- On the other hand, settled patent law principles established that prior secret uses would not defeat the patents of later inventors. If an earlier inventor made secret commercial use of an invention, and another person independently invented the same technology later and obtained patent protection, then the trade secret holder could face liability for patent infringement. This policy was based upon the reasoning that issued, published patent instruments fully inform the public about the invention, while trade secrets do not. As between a subsequent inventor who patented the invention, and had disclosed the invention to the public, and an earlier trade secret holder who did not, the law favored the patent holder.
- court’s unwillingness to consider Greek patent law surprising, its generous view of patented subject matter seems questionable. Few members of the patent community would say that disclosed but unclaimed subject matter is patented, for the claims are the measure of patentee rights. Perhaps , applicants should be particularly wary of foreign patent registration regimes. Under these systems, foreign patent offices do not fully examine applications for compliance with the patent law, leading to short processing times and prompt issuances of foreign patents.
- Sometimes a patent discloses a set or group of technological things, such as an entire class of chemical compounds. The PTO will then learn of a prior art reference that describes the use of a subordinate member of that group, such as a discrete compound within the claimed class. In the patent law, these sorts of problems are referred to as those of “genus” and “species.” Genus-species relationships create logical difficulties for the anticipation analysis of the patent law, but they have been resolved as follows.
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Chapter 29. Trademark Infringement, Counterfeiting and False Advertising 293 results (showing 5 best matches)
- In copyright law, courts assessing claims under the fair use doctrine have held that a work is not entitled to special consideration as a “parody” unless it targets or pokes fun at the plaintiff’s work. be seen as ridiculing Budweiser’s self-congratulatory tone and the purple prose on Budweiser’s label. Professor McCarthy shares Justice Powell’s view of the matter, stating outright that “if defendant appropriates a trademarked symbol … not to parody the product or company symbolized by the trademark, but only as a prominent means to satirize and poke fun at something else in society, this is not ‘parody’ of a trademark.”
- False advertising is a large subject, which could easily warrant its own book-length treatment. At first blush, it may also seem far afield from issues of trademark protection or intellectual property generally. Further reflection reveals, however, that misrepresentation of the source or sponsorship of goods through the unauthorized use of another’s trademark is merely one way falsely to represent those goods. Lying about a product’s ingredients, place of manufacture, warranty terms, expected performance, or any other product attribute can be seen as a close cousin to lying about source or sponsorship. As a result, there has been much historical connection between false advertising issues and trademark law. In addition, the most important federal statutory provision granting private rights against false advertisers is contained in the Lanham Act. Space limitations prevent an in-depth treatment of false advertising, but the sections that follow provide a simplified map of the legal...
- the plaintiff Fonovisa held both copyrights and trademarks for several Latin music recordings. The defendant, Cherry Auction, operated a “swap meet,” renting booths in its facilities to independent vendors who sold merchandise directly to the public. Those vendors paid Cherry a daily fee for the space, and Cherry retained the right to exclude any vendor at any time for any reason. Cherry also charged an entrance fee to customers who wanted to attend the swap meet. By the time of the litigation, it was undisputed that certain of the vendors at Cherry’s swap meet were selling counterfeit recordings in violation of Fonovisa’s copyrights and trademarks, and that Cherry knew of these activities. Plaintiff offered evidence that the local sheriff’s department had even informed Cherry of the infringing activities.
- the immunization from unfair competition liability of a company with a well established trade name and with the economic power to advertise extensively for a product name taken from a competitor. If the law is to limit recovery to passing off, anyone with adequate size and resources can adopt any trademark and develop a new meaning for that trademark as identification of the second user’s products. The activities of Goodyear in this case are unquestionably unfair competition through an improper use of a trademark and that must be actionable.
- As we have seen in previous chapters, a merchant who selects the right kind of trade-identifying symbol and appropriates it in the right kind of way is given trademark rights in that symbol. Those rights are essentially a form of legally enforced exclusivity—a limited property right if you prefer —forbidding others to use the trademark in certain ways. It follows that the unauthorized use of another party’s trademark will be actionable as trademark infringement. There is, however, a lot of law hiding behind that word “sometimes.”
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Chapter 10. The Fair Use Defense 159 results (showing 5 best matches)
- Nonetheless, historically there has been a broad consensus, among both courts and commentators, that enforcement of copyright laws does not conflict with the First Amendment. This is because First Amendment values are considered to be already built in to the structure of the copyright act. Two aspects of copyright doctrine in particular are usually cited as eliminating any risk of interference with free speech concerns. The first of these is the idea/expression distinction, discussed in some depth in Chapter 3 of this treatise. Since copyright only protects the expression of an author—his or her words, notes, lines or images—others are free to use the underlying ideas of the work. It is not a violation of the copyright in for us to make a movie about a blonde sorority member who goes to law school, or even a movie about a blonde woman law student who defies expectations and achieves great academic success despite the initial hostility of her classmates. The idea/expression... ...and...
- The fair use defense is the copyright doctrine that provides flexibility in the system. The Supreme Court has noted that it is a “guarantee of breathing space at the heart of copyright,” and the Second Circuit has observed that the fair use doctrine prevents “rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” It exempts from liability certain modest uses of copyrighted work when those uses will not undermine the economic interests of the copyright owner. It is unequivocally the most important defense in copyright law, both in terms of how often it is asserted by defendants and in terms of its importance to basic copyright policies.
- A perfectly airtight system of copyright would probably be intolerable. Many individuals need or desire to use copyrighted works in ways that do not seriously threaten the interests of the copyright owner, but that do tend to promote the social goals of advancement and dissemination of knowledge and learning. One readily thinks of the book reviewer who wishes to quote a portion of a volume being reviewed, or the teacher who wishes to distribute copies of a current news story to her students. Others may merely use copyrighted works in an incidental and casual way, such as the TV or movie producer who prepares a program showing a copyrighted poster in the background of a scene who tapes a copyrighted broadcast for viewing at a more convenient time. Each of these users might find it impractical to seek permission from the copyright owner because of the expense and nuisance involved. If, as a consequence, such individuals decided to forgo the use of the copyrighted material, our society...
- A final context in which the fair use status of photocopying activities should be considered is copying, particularly of copyrighted journal articles, by corporate research departments, hospitals, law firms and other intellectually oriented institutions. When such an enterprise subscribes to only a few copies of a journal and then makes copies of those journals, or selected articles appearing in them, for wider circulation to members of its staff, the copyright owners lose sales to effectively their only real audience for the work. In a publisher of medical journals sued the U.S. government for photocopying taking place at the National Institutes of Health (NIH). The NIH subscribed to only one or two copies of each journal and then routinely made copies of journal articles for researchers who requested them. The total extent of copying was several million pages per year. The Court of Claims found the activity to be fair use, suggesting that a contrary result might be harmful to...
- Prior to 1972, sound recordings were not protected by copyright in the United States. Thus anyone could copy them without violating the rights of the party who prepared the sound recording. Under this state of the law, record piracy flourished. While duplication of sound recordings did implicate the copyright interests of the holder of copyright in the underlying musical composition, those rights were subject to a compulsory license. Consequently, it was perfectly legal to make unauthorized duplicates of hit albums, provided only that the compulsory license fees were paid for use of the musical composition.
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Chapter 21. Equitable Defenses to Patent Infringement 38 results (showing 5 best matches)
- A patent owner commits misuse when he exploits a patent in such a manner as to exceed its lawful scope. The key inquiry in patent misuse cases is whether the patentee has impermissibly broadened the scope of his patent with anticompetitive effect. A successful showing of patent misuse renders the patent unenforceable. Misuse is an elusive doctrine, since there is scant statutory language explaining which activities constitute misuse and which do not. As such, patent misuse is very much a creature of the case law. However, because the patent misuse doctrine arose in the era of anti-monopoly sentiment following the Great Depression, most of these cases are of questionable vitality today. Still, the Supreme Court has yet to overturn its misuse precedent, and perhaps some of its dated holdings may continue to have some force in the future.
- Although hardly unique to the patent law, the equitable defenses of laches and estoppel have recently been of considerable importance in this discipline. In an era where patent litigation has become an increasingly lucrative endeavor, patentees have demonstrated a renewed willingness to review their portfolios in order to consider whether any claims are being infringed. Sometimes this effort results in the “dusting off” of patents that are near expiration or have in fact expired, with litigation commenced regarding infringements that began years before. A review of laches and estoppel cases in the patent context therefore seems well worthwhile.
- A successful laches defense requires a showing that a patentee unreasonably and inexcusably delayed in bringing an infringement suit such that the infringer suffered material prejudice. Related to laches is estoppel, which applies if a patentee leads the infringer to believe that the patentee does not intend to enforce its patent against the infringer, and the infringer relies on that representation to its detriment. Shop rights entitle an employer, in appropriate circumstances, to use an invention patented by an employee without liability for infringement. Finally, a patent owner may commit misuse by improperly extending a patent’s exclusive rights. Such extensions frequently are, but need not be, violations of the antitrust laws. Practices previously held to be misuse include tying the purchase of unpatented goods along with a patented technology, conditioning the licensing of a patent upon an agreement not to sell competing products and price fixing.
- The case law more clearly explains that a shop right endures through the duration of the patent. A shop right remains personal to the employer and cannot be transferred, Title to the patent remains vested in the patentee, who is free to license or assign the patent to others.
- Judge Newman began by considering whether any Supreme Court case had held that a patentee engaged in misuse by using any form of a limited license in selling patented products. Finding none, and rejecting analogies from price-fixing and tying cases, the Federal Circuit overturned the trial court. The opinion offers two principal lessons. The first is that a patentee may limit the use of patented articles and may obtain a remedy through the patent laws if others disobey that restriction. Restraints on the repair or modification of patented equipment will be struck down only if they violate some other positive law, in particular the antitrust laws. The second is that the Federal Circuit will find misuse only when the Supreme Court has specifically declared a commercial arrangement as such, or when the conduct is demonstrably anticompetitive.
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Chapter 34. International Aspects of Trademark Protection 77 results (showing 5 best matches)
- Trademarks are creatures of national laws. They are protected within a given nation only when the claimant has observed the relevant rules of that nation’s domestic laws. Consequently, the owner of state or federal trademark rights under U.S. law does not automatically own the right to use its mark on the relevant goods in any other nation, unless it takes steps to conform to that other nation’s laws. Moreover, the U.S. trademark owner may actually be precluded from using the mark in a given country if another firm is considered to have superior rights under the domestic laws of that country, even if the U.S. firm was the first to use the mark world-wide and is a much bigger firm with a much larger volume of sales. Similarly, a foreign firm that may have been using a mark for decades in dozens of countries around the world has no automatic rights to that mark in the United States unless it observes the requirements of U.S. law. As the Court of Appeals for the Federal Circuit has...
- Both the Paris Convention and TRIPS require member nations to adhere to a principle known as “national treatment.” This requires each member country to treat foreign parties who apply for trademark protection no less favorably than they treat domestic parties. The national treatment concept can be thought of as a principle of nondiscrimination against foreigners. Consequently, any foreign party seeking U.S. trademark protection is entitled to base its claim on the same activities or representations that would suffice for a domestic firm. For instance, a foreign merchant can begin using the mark in U.S. domestic commerce, and by that act, secure common law rights to the trademark under the laws of the relevant U.S. state or states. Similarly, that foreign merchant can also, based on its use of the mark in domestic U.S. commerce, file for Lanham Act registration. Moreover, a foreign merchant is entitled to seek Lanham Act registration based on an “intent to use” filing, just like a...
- The chief obstacles for U.S. firms seeking trademark protection in other countries are procedural rather than substantive. Under present law, a U.S. firm seeking to protect its trademarks in other nations must file a separate application in every country where it wishes to obtain trademark rights. There is no “one-stop-shopping.” This is, of course, expensive and burdensome. For firms contemplating use of a mark on a global basis, local counsel must be hired in dozens of nations, filings must be made in numerous languages, and administrative and legal fees can be quite substantial. For firms with extensive product lines and multiple trademarks, this cost and the risk of error is enormous.
- [S]ome courts have reasoned that the accessibility in their country of a foreign web site that contains trademarks involves use of those marks in their country. If there were widespread adoption of the principle that prescriptive jurisdiction of a particular country can be premised upon the mere accessibility of a web site in that country, then a producer would be required to clear its trademark use in every country of the world. With respect to future marks, this would significantly increase the cost of trademarks, and hence of goods to consumers. It would convert truly local uses in global uses, giving rise to innumerable conflicts, causing the depletion of available marks, and eviscerating the concept of local use through which trademark law has facilitated co-existence of marks in the past.
- There is one important exception to the rule of strict territoriality and its corollary grant of trademark rights to the firm that first used or registered the mark in each national market. Where a mark is considered “well-known,” the leading international trademark treaties require that member countries grant the owner of that mark rights superior to a local registrant or user even if the local party can show priority of registration or use in the country in question. This rule was first established in the late nineteenth century with the adoption of the Paris Convention, mentioned in the preceding section. In the mid–1990’s, the members of the General Agreement on Tariffs and Trade promulgated an agreement known as Trade–Related Aspects of Intellectual Property, or TRIPS, which among its many features greatly strengthened the protection accorded to well-known marks. These treaty provisions reflect the common sense notion that where consumers everywhere in the world associate a...
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Chapter 8. Duration of Copyright Interests and Termination of Transfers 89 results (showing 5 best matches)
- Prior to publication, the work was protected by “common law copyright.” This meant that the author had a state common law cause of action against anyone who used or duplicated the work without his or her permission. This common law right was perpetual in duration. Another way to think of this situation is to realize that the act of publishing the work marked the dividing line between the state and federal regimes of protection. It signified that the author had traded state law protection of perpetual duration in favor of the greater protection, but limited term of federal copyright.
- If restored, the copyright will subsist for the duration of the statutory term as if the work had never entered the public domain.of the restored copyright vests initially in the author or other proprietor as determined by the law of the source country of the work. Copyrights in restored works provide their proprietors with the same rights as other sorts of copyrights. However, Congress recognized that third parties may have made substantial investments in the exploitation of a work on the assumption that the work was in the public domain, only to discover that the copyright has been restored.
- One further complication should be mentioned here. The discussions that led to the ultimate passage of the 1976 copyright act actually started in the early 1960’s. In anticipation of an ultimate elongation of copyright terms as part of the new law, Congress periodically extended the terms of copyrights that were already in their renewal periods. Thus, any works that were in their renewal terms on September 19, 1962, or later, had those renewal terms extended until the new act was to become effective, and thereafter were subject to the new term provided by the 1976 Act.
- With the adoption of the 1976 Act, as modified by the Bono Act, Congress decided to bring all such unpublished works under the scope of federal copyright. That meant that these pre-existing but unpublished works would now only be protected for a limited time. As a general matter, Congress granted these works the same basic terms as those applying to new works created after the effective date of the 1976 law. In the typical case of a work created by an individual author, that means life of the author, plus 70 years. For example, assume a work was created in 1970 and never published, and that its author died in 1975. Prior to January 1, 1978 (the effective date of the 1976 act) it was protected by perpetual common law copyright. After that date it was protected under federal law, and the state law protection was pre-empted. The federal copyright would expire in the year 2045, 70 years after the death of the author.
- before 1950 would have exhausted its first 28 year term of copyright under the 1909 act before the January 1, 1978, effective date of the current law. If the copyright in such a work had not been renewed at the relevant time by the proper person that work would have fallen into the public domain and there is nothing in the 1976 Act that changes that result so as to restore the copyright in such a work. For example, the initial term of copyright for a work first published in 1945 would have expired in 1973, and if no renewal application was filed at that time, the work would thereafter be free for others to use, with no restoration of rights under the 1976 Act.
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Chapter 15. Utility 29 results (showing 5 best matches)
- Section 101 of the Patent Act mandates that patents issue only to “useful” inventions. Utility ordinarily presents a minimal requirement that the invention be capable of achieving a pragmatic result. Patent applicants need only supply a single, operable use of the invention that is credible to persons of ordinary skill in the art. Although the utility requirement is readily met in most fields, it presents a more significant obstacle to patentability in the disciplines of chemistry and biotechnology. In these fields, inventors sometimes synthesize compounds without a precise knowledge of how they may be used to achieve a practical working result. When patent applications are filed claiming such compounds, they may be rejected as lacking utility within the meaning of the patent law.
- The patentability of these genetic materials has proven controversial. While and other Federal Circuit opinions suggest a more lenient posture. Some legal and scientific commentators have expressed concern that proprietary interests in scientific knowledge will impede research efforts overall. They have also suggested that inventors of cDNA sequences and ESTs seek an overly broad scope of patent protection, out of proportion with their relatively modest technical achievements. Others have urged that originators of cDNA sequences, like other inventors, also require a return on investment, and that allowing patents only on final products would merely further industry concentration. Both the patent bar and the scientific community await judicial resolution of the legal protectability of these crucial technologies, a decision that will undoubtedly compel a further unpacking of the precise scope of the patent law’s utility requirement.
- and the notion of utility is a longstanding feature of United States patent law. In
- The utility requirement should be viewed in light of the considerable incentives chemists and biotechnicians possess to obtain patent protection on compounds of interest as soon as possible. For example, in the case of pharmaceutical compounds, food and drug authorities require considerable product testing before the pharmaceutical can be broadly marketed. Before investing further time and effort on laboratory testing and clinical trials, actors in the pharmaceutical field desire to obtain patent rights on promising compounds even where their particular properties are, as yet, not well understood. But when patent applications are filed too close to the laboratory bench, chemists and biotechnicians have discovered that the ordinarily dormant utility requirement has posed considerable obstacles.
- The plaintiff, Juicy Whip, held a patent concerning a post-mix dispenser that included a transparent bowl. According to the patent, the bowl was filled with a liquid that appeared to be the beverage available for purchase. While the bowl was arranged in such a way that it seemed to be the source of the beverage, in fact no fluid connection existed between the bowl and the beverage dispenser at all. Instead, the beverage was mixed on the fly, immediately prior to each beverage sale. The district court struck Juicy Whip’s patent on the ground of lack of utility, reasoning that the patented invention acted only to deceive consumers. The court stated that the purpose of the invention “was to create an illusion, whereby customers believe that the fluid contained in the bowl is the actual beverage they are receiving, when of course it is not.”
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Table of Contents 207 results (showing 5 best matches)
Index 684 results (showing 5 best matches)
Chapter 17. Nonobviousness 116 results (showing 5 best matches)
- The trial court held the Scroggin patent not invalid and infringed, and the Eighth Circuit affirmed. The Supreme Court reversed, finding that the Scroggin patent would have been obvious in light of three prior art patents to Lohse, Mellon and Livingstone. Lohse and Mellon both taught the use of shipper-sprayers similar to that of Scroggin. The Livingstone patent, which was not before the examiner, concerned a seal designed to cover and protect pouring spots that functioned without the use of a gasket or washer. The Court rejected the argument that the Livingstone patent comprised nonanalogous art: “Closure devices in such a closely related art as pouring spouts for liquid containers are at the very least pertinent references.”
- The Court then considered the proper scope of the Scroggin patent claims. Turning to the patent’s prosecution history, or record of the dialogue between the examiner and applicant, the Court found that the examiner had imposed rejections based upon Lohse and Mellon. In response, Scroggin accepted claim limitations that confined the scope of his invention to two features. In the view of the Court, the first feature, “the space between the skirt of the overcap and the container cap,” was taught by Mellon. Livingstone taught the second feature, “the substitution of a rib built into the collar to achieve a seal for a washer or gasket.” Finally, the Court was unpersuaded that secondary considerations supported the patentability of the Scroggin patent. The patent rested on a narrow advance, already disclosed by Livingstone and available to anyone who had conducted a patent search. The Court concluded that the Scoggin patent would have been obvious under § 103.
- The patent in concerned a cashier’s counter for use in grocery and other stores. The two lower courts had upheld the patent, but the Court granted certiorari and struck the patent down. According to Justice Jackson himself, the disputed invention claimed a combination of known elements and, as such, must be judged under the so-called “synergy” test. “The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable.” This demand for “unusual or surprising consequences” seemed to call for the downfall of nearly every patent claim, for nearly every invention may be cast as a combination of old elements. The patent community sought relief from this unfavorable precedent, ultimately prevailing with the enactment of the nonobviousness standard in § 103 in the 1952 Patent Act.
- The correspondence of inventor surnames between the application and the prior art patents was not a coincidence. In fact, the PTO and CCPA cited the earlier work of Bass, Jenkins and Horvat against them. They did so by following the traditional patent law principle that each new combination of joint inventors constitutes a distinct inventive entity. This principle holds even where these combinations share individual inventors. For example, the joint inventors Bass, Jenkins and Horvat were considered a different inventive entity than the team of Bass and Horvat. Each group of natural persons essentially acquires its own legal identity; they, as a whole, constitute “the inventor” of that technology.
- Economic studies have advanced a more theoretical justification. Legal economists have urged that an optimal patent system would only grant patents to inventions that have been induced by the patent system itself. If ordinary market forces provided sufficient incentives to invent and disclose new technologies, then the award of a patent would be unnecessary to promote innovation. In such cases, the public should not be made to suffer the inconvenience of having a patent issue. Although the patent system does not attempt to discern the motivation of individual inventors, it does employ the proxy of nonobviousness. Under this view, the nonobviousness requirement encourages individuals to pursue projects that, because they require expansion of the state of the art, are of uncertain success.
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Copyright Page 4 results
- and West Group are registered trademarks used herein under license.
- COPYRIGHT © 2003 By WEST GROUP
- West Group has created this publication to provide you with accurate and authoritative information concerning the subject matter covered. However, this publication was not necessarily prepared by persons licensed to practice law in a particular jurisdiction. West Group is not engaged in rendering legal or other professional advice, and this publication is not a substitute for the advice of an attorney. If you require legal or other expert advice, you should seek the services of a competent attorney or other professional.
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Advisory Board 9 results (showing 5 best matches)
- Chancellor, Dean and Distinguished Professor of Law, University of California, Hastings College of the Law
- Professor of Law, University of Michigan Professor of Law, University of San Diego
- Professor of Law, University of California, Berkeley
- Professor of Law, University of Chicago
- Professor of Law, University of Illinois
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- Publication Date: May 1st, 2003
- ISBN: 9780314065995
- Subject: Intellectual Property
- Series: Hornbooks
- Type: Hornbook Treatises
- Description: This work provides a comprehensive treatment of all three major branches of intellectual property law, surveying basic principles and emerging issues. The book summarizes what is clear, identifies what is unsettled, and offers concise views on how some open issues might be sensibly resolved. This text also deals with a variety of related intellectual property topics, including state laws governing the misappropriation of intangibles, state protection for the right of publicity and for trade secrets, and both federal and state rules concerning false advertising and deceptive trade practices. The authors use numerous examples to guide you through various technical areas.
