ip seminar ppt.ppt

8/10/2019 IP Seminar PPT.ppt

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Intellectual Property onthe Web

Trademark, Copyright and Patent IssuesThat Impact All Companies in the

Internet Age

The material provided herein is for informational purposesonly and is not intended as legal advice or counsel.


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Please help yourself to foodand drinks

Please let us know if the roomtemperatureis too hot or cold

Bathroomsare located past thereception desk on the right

Please turn OFFyour cellphonesPlease complete and returnsurveysat the end of the

seminar


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Trademark and CopyrightIssues on the Web

Jeanne Hamburg


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Why Important? Top IP concerns:

Cybersquatting

Unlawful copying of digital media content

Reverse engineering

Phishing

Sale of counterfeit goods online


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Overview Transactional Issues:

Licensing Web Content

Web Publishing

Web Site Development Counseling Issues

Web Content Clearance/Fair Use

Contentious Issues

Domain name recovery (cybersquatting) DMCA

Litigation of online copyright infringement and licensing cases

Copyright and trademark issues arising from phishing, onlinecounterfeiting, key word purchases, hyperlinking, pop up ads,framing


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Licensing Web Content Distinguish whether content is being

licensed or just a trademark

Is the content copyrightable?

What type of use is contemplated? (Maynot require a license)


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Licensing Web Content What kind of license?

What type of grant?

Representations and Warranties

Credit, right of attribution, right ofpublicity


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Web Publishing Publish and/or

purchase a book that

is printed andshipped to you or todownload a digital

copy


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Web Publishing Form of license, same issues

Technological safeguards on unauthorized

copying

Does third party site have terms of useprohibiting unauthorized use of digital

content purchased?


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Web Site Development Hiring of third party (independent

contractor) to develop site

Who will own content created and thehtml code used to create it?


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Web Content Clearance: Fair Use You are a site owner or third party owning

content appearing on third party site without

permission Cannot assume creative content (graphic,

textual, sound recordings, etc.) are notprotected by copyright simply because

available on web Sites claim to make material available that is

in the public domain (copyright hasexpired) but may not be


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Web Content Clearance If license content from such a site, look for

representations and warranties that site

owner has the rights Look for terms of use that may restrict useof the licensed content; often a one timeclick through

Right of publicity/privacy issues if personis depicted in connection with promotinga business


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Web Content Clearance: Fair Use Fair use codified at 17 U.S.C. 107

Allows the user of copyrighted material to do things

otherwise exclusively the right of the copyright ownerso permission not required

Must be for fair use purposes enumerated by statute:e.g., criticism, comment, news reporting, teaching,

scholarship, research

Four factor test for fair use: (1) purpose and characterof use; (2) nature of work; (3) amount and substantialityof portion used; (4) effect on marketplace value


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Contentious Issues

Cybersquatting

DMCA Litigation of online copyright/licensing

cases

Trademark and copyright issues uniqueto the web


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Cybersquatting Trademark, or confusingly similar

mark, is used in a web site address

Prohibited by federal law

Vehicles for domain name recovery


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Federal Court Action forCybersquatting

Rarely done unless there is

also another act of trademarkinfringement

Expensive

No showing of bad faithrequired


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UDRP Proceedings Arbitration proceeding Not necessary to own registered mark

Confusingly similar

No legitimate right to the domain name Registered in bad faith

ICANN

WIPO in Switzerland and NAF in Minneapolis Complaint, Reply, and Surreply, then a singlemember or three member panel will decide. Allfiled electronically.


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DMCA: Service Provider Liability DMCA effective weapon for those whose

copyrights are infringed on the web

Makes the host of content, who receivesnotice of the infringement from thecopyright owner or its counsel, liable if it

does not take down the content Fantastic remedy when infringers identity

is not known or infringer is uncooperative


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ISPs Frequently ContactedUnder DMCA

Apple (iTunes, TETRIS infringements) Google

Gadgets

Android Amazon
http://www.freestyle-developments.co.uk/img/projects/tetris.jpghttp://images.google.com/imgres?imgurl=http://www.technologygear.net/wp-content/uploads/2009/01/google_android_logo.jpg&imgrefurl=http://www.technologygear.net/android-application-developers-will-be-paid.html&usg=__rUjZGa7hpo9w7SV6hgNV_7WO8LI=&h=550&w=585&sz=84&hl=en&start=2&um=1&tbnid=lmnYcJ2Vwi4QoM:&tbnh=127&tbnw=135&prev=/images%3Fq%3Dgoogle%2Bandroid%2Blogo%26hl%3Den%26um%3D1http://images.google.com/imgres?imgurl=http://www.blogsdna.com/wp-content/uploads/2009/02/itunes-logo.png&imgrefurl=http://www.blogsdna.com/2468/itunes-agent-lets-you-to-synchronize-any-portable-mp3-player-with-apple-itunes.htm&usg=__RjgJRdeBSnog0u3cPOX6y0d0pVI=&h=153&w=137&sz=31&hl=en&start=7&um=1&tbnid=Wk4qcsVLeSXNUM:&tbnh=96&tbnw=86&prev=/images%3Fq%3Dapple%2Bitunes%2Blogo%26hl%3Den%26um%3D1


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DMCA: Anti-circumvention Makes it unlawful for someone to hack

through technology designed to protect

the unauthorized exploitation ofcopyrightable content

Applies only if the content to which

unauthorized use is being blocked iscopyrightable (e.g. circumvention ofaccess to alphabetical directory listingwould not violate DMCA)


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Litigating Online CopyrightInfringement Cases Copyrightable expression (factual data

organized logically not protected) Access to copyrightable work (can often be

demonstrated with IP addresses)

Copying

Copying is presumed from substantialsimilaritythe key test for infringement

Fair Use


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Litigating Online CopyrightInfringement Cases

Must obtain registration before you sue;expedited registration may be secured for this

purpose (10 days vs. several months) Preliminary injunction often ends the case

Declaratory judgment is popular for the alleged

infringer Must bring suit in federal court

Often choice of jurisdiction


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Litigating Online CopyrightInfringement Cases: Licenses

Click through agreements or terms of use

can raise special issues Important to attend to the terms Consent to jurisdiction

Restricts use of content that is not copyrightable

Adhesion: courts generally find these agreementsbinding

Authority to bind company

Hospital sued by provider of health care ratings


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Phishing Criminally fraudulent process of attempting to acquire

sensitive information such as usernames, passwords andcredit card details by masquerading as a trustworthyentity in an electronic communication

Communications purporting to be from popular socialweb sites, auction sites, online payment processors or ITadministrators are commonly used to lure theunsuspecting public

Typically carried out by email or IM, and it often directs

users to enter details at a fake website whose look andfeel are almost identical to the legitimate one. Even whenusing it may require tremendous skill to detect that thewebsite is fake

MasterCard/UDRP recovery and investigation


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Legislation on Phishing No legislation directly prohibits, but there may be copyrightand trademark remedies available since site content andtrademarks are copied

Credit Card Fraud Act The Identity Theft and Assumption Deterrence Act Fair and Accurate Credit Transaction Act California's Anti-Phishing Law

California in 2005 became the first state to enact legislationdesigned specifically to deter phishing. Some victims ofphishing, including those who provide Internet access service to

the public, own a Web page, or own a trademark, may recoverup to $500,000 for each proven violation of the statute. Othervictims may recover up to $5000 for each violation of the statute.The statute also allows the state's attorney general or a districtattorney in the state to bring an action to enjoin furtherviolations.


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Online Counterfeiting Best Practices for Trademark Owners Educate the public so they are not deceived on

online searches, marketplace and shopping sites

Request that Payment Service Providers (such ascredit card and debit card companies, PayPal)terminate service and indemnify PSP for wrongfultermination

Report abuses of PSPs trademark if trademarkowners are unable to make a purchase on a sitebearing the PSPs mark


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Online Counterfeiting

Contact the providers of Internet shopping

services under the DMCA or Lanham Act NGC trade dress of coin holders (ebay form)

eBay, Inc.

Yahoo

Google Amazon


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Is Copying of Hyperlinks aCopyright Infringement?

In the DeCSS case Universal v. Reimerdes, 2600Magazine prohibited from posting hyperlinks to

DeCSS code because it found the magazine hadlinked for the purpose of disseminating acircumvention device

Intellectual Reserve v. Utah Lighthouse Ministry:linking to unauthorized copies of a text might be a

contributory infringement of the work's copyright Ticketmaster v. Tickets.comfound that hyperlinksto ticket broker sites copied by tickets.com from theticketmaster web site were not infringements ofcopyright


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Hyperlinking Best Practices

In an email, do not provide a live

hyperlink Beneath a hyperlink in a site, include a

disclaimer that the site owner is not

affiliated with, does not endorse orsponsor the trademark owners services


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Framing


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Framing

Perfect 10 v. Amazon.com: Google's in-line links were not infringements of the

copyright owner's rights to copy anddisplay its work.


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Pop Up Ads

Are a site owners copyrights ortrademarks infringed when a competitorspop up ad is displayed when a consumeraccess the site?

Most courts hold no when: No use in commerce of the site owners

trademark in the ad itself

Not a derivative work


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Key Word Purchases Search engines such as Google sell third

party trademarks as key words whichwill display the purchasers web site ona search by the user for the keyword/trademark


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Key Word Purchases


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Key Word Purchases

US courts split on whether this isunlawful Is there likelihood of confusion, trading off

on goodwill earned by the trademarkowner or is this just like a virtualmarketplace where different brandedgoods are displayed on virtual store

shelves next to each other? Issue may be treated differently abroad

and in US


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Pay Per View/Pay Per ClickAdvertising

What is PPV/PCC?

Is the PPV or PPC ad of a third party (notthe trademark owner) an infringement ifit does not use the trademark in the adbut is displayed on key word search of

trademark? In 2006 Yahoo prohibited PPV or PPC

advertisers from bidding on third party

trademarks


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Pay Per View/Pay Per ClickAdvertising

Google's AdSense program still

permits this; 95 percent of Google'srevenue comes from AdSense.

What are fraudulent clicks?


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Questions & AnswersSession Part 1


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Seminar Intermission


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Business Method Patents andthe Bilski Case

Chris Casieri


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What is a Patent? Exclusive rights granted to an inventor

for a limited period of time in exchange

for a public disclosure of the invention

Rights extend for 20 years from earliest

filing date or 17 years from date ofissuance depending when theapplication was filed


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What is the Origin of U.S.Patent Law?

Article I, Section 8, Clause 8 of the

United States Constitutionempowers the U.S. Congress: To promote the Progress of Science and

useful Arts, by securing for limited Times

to Authors and Inventors the exclusiveRight to their respective Writings andDiscoveries.


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What are the Types of U.S.Patents Available?

Utility Patents Bilskis application

Design Patents

Plant Patents


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What Types of Subject Matter are

Protectable by a Utility Patent?

Section 101 of US Patent law sets out:

Whoever invents or discovers any new and usefulprocess, machine, manufacture, or composition of

matter, or any new and useful improvementthereof, may obtain a patent therefore, subject tothe conditions and requirements of this title.


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What is a Business MethodPatent?

Business method patent is a type of

utility patent which is directed to newmethods of doing or conductingbusiness


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Famous Business MethodPatent and Industries Amazons one-click buying patent used for

purchasing on Amazon.com Business method patents are useful to the

following industries: E-commerce

Insurance Investment

Banking

Tax Compliance


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What Are Patent Claims? Patent claims define, in legal patent

terms, the extent of the protection

sought in a utility application

A sample patent claim may read:

"Method for computing future lifeexpectancies, said method comprisingsteps X, Y, Z, ..."


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In general, Bilskis main

claim requires the steps of: Initiating a series of transactions between a broker

and purchaser by which the purchaser may buy a

commodity at a first fixed rate based on historicalprice levels

Identifying a producer of the commodity

Initiating a series of transactions between the brokerand producer, at a second fixed rate, such that riskpositions balance out


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Legal History of Bilski US Patent Examiner rejected all claims

USPTOs Board of Patent Appeals and Interferencesaffirmed the Examiners decision

Court of Appeals for the Federal Circuit (CAFC)

affirmed the USPTOs rejection of all claims

Bilski appealed to the US Supreme Court for reviewthe CAFCs decision


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Why is Bilski Important? CAFCs decision was extraordinarily

over broad As a result, software, pure businessmethods, medical diagnostic methods,biotechnology methods, medical device

and e-commerce patents may beunpatentable/invalid in view of theCAFCs decision


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What Test was Adopted by the CAFC

and What was Their Decision?

CAFC applied a particular machine ortransformation (MOT) test: A claimed process is surely patent-eligible under

101 if: (1) it is tied to a particular machine orapparatus, or (2) it transforms a particular articleinto a different state or thing

In other words, transformation/reduction of anarticle 'to a different state or thing' is the clue tothe patentability of a process claim that does notinclude a particular machine


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What is the Historical Standpoint

Taken by the Supreme Court?

The Supreme Court typically allows

inventions that incorporate or applyabstract concepts such as mathematicalformulas, as long as the invention, asclaimed, has a sufficiently practicalimpact in the real world.


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What Alternatives are There to the

MOT Test Adopted by the CAFC?

In the 1998, the CAFC utilized the

straightforward concrete, useful,tangible test (the CUT test)

CAFC effectively overruled the CUT

test with their Bilski decision


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What are the Issues Before

the Supreme Court?

Key question to be considered by the

Supreme Court: Whether the MOT test should command

patentability outcomes possibly not intendedby Congress or required under the plain

language of the statute


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How May the Supreme Court

Decide? The Supreme Court may:

Affirm the MOT test, but rule that it is not thedefinitive test for determining patent eligibility

Rule that business methods are inherently abstractideas and are not patentable

Affirm the CAFCs decision, making the MOT testthe bright-line test for establishing patentabilityunder 35 USC 101


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How Should Software/Business

Methods be Protected Until theSupreme Courts Decision?

Software and business methods should stillbe protected with patents

Patent claims should be included that satisfy

the narrow MOT test

Patent claims satisfying the broader CUT testshould also be included


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Claim Satisfying the MOT test A method comprising:

Providing a computer network having aprogrammed computer and a VOIP device

Initiating a first sales transaction between twoparties over the computer network via theVOIP device

Identifying a producer with the programmed

computer over the computer network Initiating a second sales transaction betweenthe producer and a party over the computernetwork via the VOIP device


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Claim Satisfying the CUT Test A method comprising:

Initiating a first sales transaction between two

parties Identifying a producer

Initiating a second sales transaction betweenthe producer and a party


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Questions & AnswersSession Part 2

Thank you for coming!

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