chapter 7 intellectual property and internet law

Chapter 7 Intellectual Property and

Internet Law

Chapter 7 Intellectual Property and

Internet Law

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Introduction Introduction

Wealth consists of tangible and intangible property.Intellectual property (or “I.P.”) is becoming more important because the value of many corporations (e.g., Microsoft) is based primarily on I.P. See the “Digital Dilemma: Intellectual Property in the Information Age.”

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Constitutional AuthorityConstitutional Authority

Founders of America understood the value of I.P. and its impact on interstate commerce.

Article I § 8 authorizes Congress to “secur[e] for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

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Types of Intellectual PropertyTypes of Intellectual Property

Trademarks.Service Marks.Trade Dress.

Patents.

Copyrights.

Cyberspace I.P.

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§1: Trademarks§1: Trademarks

Overview at Bitlaw.com.Distinctive mark, motto or device or emblem that a manufacturer stamps, prints or othewise affixes to the goods it produces.Distinguish product/service from goods of other manufacturers and merchants.Avoids consumer confusion.

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Trademarks [2]Trademarks [2]

Lanham Trademark Act (1946) creates incentives for companies to invest; prevents unjust enrichment of companies who infringe.

Federal Trademark Dilution Act (1995) Cause of action regardless of competition or confusion based on a “similar” mark.

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Trademarks [3]Trademarks [3]

Register with U.S. Patent Trademark Office if:Mark is currently in commerce; orApplicant intends to put it into commerce

within 6 months.Registration allows use of “®” symbol.

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InfringementInfringement

Whenever a trademark is copied or use, intentionally or unintentionally, there is infringement.

Trademark owner has cause of action against infringer,unless trademark is a “generic” term.

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Trade DressTrade Dress

Refers to the image and overall appearance of the product.

Same protection as trademark.

Issue is consumer confusion.Example: distinctive décor, product names,

packaging of Starbucks coffee shops.

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Service MarkService Mark

Similar to trademark but used to distinguish services of one person/company from another.

Titles and character names used in media are frequently registered as service marks.

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Trade NameTrade Name

Trademarks apply to products.

Trade name applies to companies and are protected by federal law as well.Example: IBM, Coca-Cola, NBC.

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§2: Cyber Marks§2: Cyber Marks

Virtual property exists in cyberspace.

Cyber Marks: rights of trademark owners in cyberspace.Cybersquatting: occurs when person registers a

domain name that is similar to the trademark of another and offers to sell the domain back to the trademark owner.

Anticybersquatting Consumer Reform Act of 1999.

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Virtual PropertyVirtual Property

Meta Tags: key words on webpage that are indexed by search engines.Case Playboy Enterprises vs. Welles (1998).

Dilution on the Web.

Licensing: permits use of intellectual property by licensee.

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§3: Patents§3: Patents

Exclusive grant from U.S. Patent and Trademark Office to make, use and sell an invention for 20 years.

Patent Infringement.

Patents for Software are now available.

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§4: Copyrights§4: Copyrights

Introduction to Copyright.

Intangible property right to author for her life plus 70 years.

Automatic protection after 1978.

Works can be protected by registration at U.S. Copyright Office.

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Copyrights [2]Copyrights [2]

Can only copyright the expression of an idea, not the idea itself.

Work must be original and fixed in a durable medium: literary, musical, choreographical and dramatic works, pictoral, graphic and sculptures, films/ audiovisual/ TV/ sounds, computer software and archtectural plans.

“Work Made For Hire” for Employees.

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Copyrights [3]Copyrights [3]

Compilations of facts are copyrightable but the compilation must be “original.”Feist v. Rural Telephone Co. (1991).Bellsouth v. Donnelley (1993).

Infringment. Section 107 of the Copyright Act provides for exception to liability from reproduction of copyright under the the “fair use” doctrine when material is used for criticism, comment, news, criticism, teaching, research.

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Software CopyrightsSoftware Copyrights

Computer Software Copyright Act (1980).Classifies computer software as a “literary

work.” Does not apply to “look and feel.”

• Lotus v. Borland (1996).

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§5: Copyrights in Digital Information

§5: Copyrights in Digital Information

Digital media can easily be copied.

Copyright Act of 1976Copy of a program into RAM is infringement.Revision or re-sale of freelance authors works can be

infringement. NY Times v. Tasini (2001).

No Electronic Theft Act of 1997.

MP3 and File-Sharing.Napster case.

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§6: Trade Secrets§6: Trade Secrets

Trade secrets are confidential, not filed with the government.Can be customer lists, formulas, pricing, etc.Theft of trade secrets is now a federal crime under the Economic Espionage Act of 1996.Cyberspace: employees can easily email information to competitors.

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§7: Licensing§7: Licensing

Allows a third party to lawfully use a patent, trademark, copyright or trade secret.

The licensee pays the licensor (the owner of the IP) a fee for use.

U.C.I.T.A. is a uniform code that licenses the use of software.

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§8: International Protection for Intellectual Property

§8: International Protection for Intellectual Property

Berne Convention (WIPO).

Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 (WTO).

World Intellectual Property Organization (WIPO) Copyright Treaty 1996.

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Case 7.1: Coca Cola v. Koke Co.(Trademark Infringement)

Case 7.1: Coca Cola v. Koke Co.(Trademark Infringement)

FACTS:Coca-Cola Company sought to enjoin The Koke

Company of America from using the word Koke for their products.

Koke defended that the Coca-Cola trademark, by its use of the Coca-Cola name, represented that the beverage contained cocaine (from coca leaves)-a fraud.

The trial court granted the injunction against Koke, but the appellate court reversed.

Coca-Cola appealed to the United States Supreme Court.

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HELD: FOR COCA-COLA. REVERSED.The Supreme Court underscored that Coca-

Cola was not “a medicine” and that its attraction did not lay in producing “a toxic effect.” Since 1900 sales had increased.

The name had come to characterize a well known beverage to be had almost anywhere “rather than a compound of particular substances.”

Case 7.1: Coca Cola v. Koke Co.(Trademark Infringement)

Case 7.1: Coca Cola v. Koke Co.(Trademark Infringement)

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Case 7.2: AOL v. AT&T(Trademark Infringement)

Case 7.2: AOL v. AT&T(Trademark Infringement)

FACTS:AOL sued AT&T alleging that AT&T’s use of the

phrase “you’ve got mail” was trademark infringement of the phrase, which AOL claimed to own.

AT&T filed a motion for summary judgment, asking the court to rule that the term was generic.

HELD: FOR AT&T. MOTION GRANTED. The term is generic and therefore can not be

owned by AOL. The court applied the “primary significance test,” re viewing five types of evidence

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HELD:“(1) competitors’ use of the mark, (2)

plaintiff’s use of the mark, (3) dictionary definitions, (4) media usage, (5) testimony of persons in the trade,” and dismissed a sixth type—“consumer surveys”—as indicating secondary meaning, which would not entitle a generic term to pro tection. The court concluded that “mail” means “e-mail” and that “you” and “have” do not change the generic nature of the term.

Case 7.2: AOL v. AT&T(Trademark Infringement)

Case 7.2: AOL v. AT&T(Trademark Infringement)

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Case 7.3: NY Times v. Tasini(Copyright Infringement)

Case 7.3: NY Times v. Tasini(Copyright Infringement)

FACTS:Magazines and newspapers, including the New York

Times, buy and publish articles written by freelance writers like Tasini.

These publishers sell the contents to e-publishers for inclusion in online, and other electronic, databases.

Tasini and other freelance writers sued the Times and the e-publishers, contending that the e-publication of the articles violated the Copyright Act.

The publishers defended that these were only “revisions” stored under databases and legal under the Copyright Act.

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HELD: FOR TASINI.The US Supreme Court remanded the case

for a determination as to how the writers should be compensated.

The Court found that these databases are not “revisions,” because the databases reproduce and distribute articles “clear of the context provided by the original periodical editions”—not “as part of that particular collective work” which the Copy right Act allows.

Case 7.3: NY Times v. Tasini(Copyright Infringement)

Case 7.3: NY Times v. Tasini(Copyright Infringement)

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Case 7.4: A&M Records v. Napster(Copyright Infringement)

Case 7.4: A&M Records v. Napster(Copyright Infringement)

FACTS:Napster allowed users to (1) make MP3 music

files stored on individual computer hard drives available for copying by other Napster users, (2) search for MP3 music files stored on other users’ computers, and (3) transfer exact copies of the contents of other users’ MP3 files from one computer to another via the Internet.

A&M sued Napster alleging infringement. The court issued a preliminary injunction. Napster appealed.

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HELD: AFFIRMED. FOR A&M.The Ninth Circuit affirmed the lower court’s

decision that Napster was obligated to police its own system and had likely infringed the plaintiffs’ copyrights.

“Napster’s failure to police the system’s ‘premises,’ combined with a showing that Napster financially benefits from the continuing availability of infringing files on its system, leads to the imposition of vicarious liability.”

Case 7.4: A&M Records v. Napster(Copyright Infringement)

Case 7.4: A&M Records v. Napster(Copyright Infringement)