PLS 780Week 7

Agenda

• Trademark • Copyright • How does digital publishing and online connectivity

change or ‘complicate’ these two areas of intellectual property law?

Intellectual Property

• Trademarks: symbols, words, sounds that distinguish goods and services

• Copyrights: ownership interest in creative works• Patents: inventions and processes• Trade secrets: proprietary, secret information that a

business is dependent upon (manufacturing processes)

• Negative right: Prevent others from doing something (infringing!)

Trademark

• Why/how does the internet provoke a re-examination of trademark law?

• What policy is behind laws, regulations, cases that impact trademark law and the internet?

• In other words, what outcomes is the law trying to prevent with trademark law generally? With trademark law and the internet specifically?

Trademarks generally

• Words, symbols, sounds, images, video indicate the source of goods/services they represent

• Indicate source! And distinguish goods and services in the marketplace

• Hugely important to consumer protection because consumers trade on reputation. What does this mean?

Likelihood of confusion

• Main test of infringement• A holder asserts confusion as evidence of

infringement (not intention!)• A potential infringer asserts lack of confusion as a

defense• Not always clear!• Lexus, BandAid, CleanEx

Symbols and renewal

•® ℠ ™• 10 year initial registration with

unlimited renewals • Copyright and patent have limits; Why

don’t trademarks?

Lanham Act

• Foundational federal 1946 law of trademark• Prior to Lanham Act most trademark rights were

maintained via enforcement of rights in individual states under common law—labor intensive!

• Any word, name symbol or device used to distinguish one company’s goods or services from another

• Anything that can be viewed or heard

Kinds of marks

• Trademarks: Used to distinguish goods• Service marks: Used to distinguish services• Collective marks: Used to distinguish organizations• Certification marks: Used to establish quality by third

parties (Cordon Bleu, ISO etc.)• Distinction is sort of artificial; Colloquially these are

all marks and almost universally referred to as ‘trademarks’

The Distinctiveness Continuum

• Must be unique to be registerable• Why?• Generic to descriptive to suggestive to

arbitrary/fanciful• Generic not registerable• Descriptive sometimes registerable• Suggestive always registerable • Arbitrary/fanciful always registerable

Trade dress

• Applying distinctiveness to product design and packaging

• What does the incredibly creep SG Services v. God’s Girls case tell us about trade dress and websites?

• Trade dress is an incredibly important area of law where design and intellectual property interests intersect in terms of web site look and feel

Infringement

• Standard is likelihood of confusion• Lesser standard dilution when no confusion is likely

to occur because the infringement can lessen the value/impact of the mark

• Dilution is only available to famous marks. Why?• Dilution can occur by blurring or tarnishment; What’s

the difference?

Online infringement (pp 113-17)

• Linking and deep linking• Framing and in-line linking• Metatags• Initial Interest Confusion• Sponsored advertising and search • Which of these if any represent infringement?

Thoughts? Concerns? • What role does initial interest confusion play in all of

this? Does this standard need some clarification

Secondary Liability

• Tiffany v eBay• Facts• Issue• Holding • Rule

Domain names and trademark

• Lots of opportunistic behavior here that could harm consumers and create confusion

• Cybersquatting• TypoSquatting• ACPA requires bad faith; How is this defined?

ACPA Bad Faith (9 requirements!)

• Offer to sell to owner for a fee• False contact info• Register multiple names that are similar• No particular reason to use the name• No use of domain to sell goods or services or promote

a cause• Attempt to divert from the trademark owners websites• Registers a mark similar to one on the distinctive end

of continuum

RIM v Elias

• Facts• Issue• Holding• Rule

Copyright

• Off all intellectual property copyright is the most ubiquitous, far reaching an important to the internet. Why?

What can be copyrighted?

• Literary/written works• Music• Dramatic presentations• Choreography• Pictures, graphics and sculpture• Film• Sound recordings• Architecture

• Must be original, fixed and registered before there can be infringement

Works for hire

• Copyright holder is the business who hires the author

• Contractual arrangement whereby someone bargains away their exclusive rights in return for employment rights and privileges

Copyright Act of 1976

• Almost exclusively federal since it is a constitutional right

• 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. Article 1, Section 8, Clause 8

• Enforced at common law prior to creation of Act

Why do we copyright?

• Mostly economic welfare and development of new ideas

• What does this mean?

Exclusive Rights

• Core of copyright is to control a creative or artistic work and not allow others to use or gain an economic benefit from its existence without you agreeing to that use

• Copyright prevents/limits reproduction, preparation of a derivative work, distribution (renting or selling), public performance, public display, digital transmission

Derivative works

• Copyright prevents the creation of derivative works as well

• Movies from books, songs from poems, collections of clips into a new work for advertising or entertainment

File sharing and distribution

• Is it distribution?• Depends upon the architecture of the site and how

the sharing is established• What does this mean?

Public performance/display rights and the internet

• Is loading a clip on YouTube with your friends dancing and singing along to a popular song playing in the background a public performance or display?

Limitations on exclusive rights

• Duration-copyright is not indefinite! Eventually copyrighted materials make their way into the public domain. How? Why?

• Fair use: Education or parody/satire• First sale doctrine (applies to distribution only) and

says a legally acquired copy can be sold without the original copyright holder’s permission

Eldred v Ashcroft

• Facts• Issue• Holding • Rule

AV v iPradigms

• Facts• Issue• Holding• Rule

Remedies

• Damages: actual or statutory (sometimes hard to determine real harm so statute provides amounts per incident); What is the policy idea behind statutory damages? How are they like fines?

• Injunctions• Criminal liability (prison sentences and fines)

Online copyright issues

• Websites• Linking• Inline linking and framing• Creative commons

Secondary copyright liability

• Liability of one party based upon infringement of another

• Contributory liability: One has knowledge of infringer’s actions and contributes to the

• Vicarious liability: One benefits from the infringer’s actions

• Inducement liability: One creates a device or process and encourages others to use it for infringement purposes

Digital Millennium Copyright Act

• Response to technology changes and their impact on copyright

• What policy considerations do you see here?

Corbis v Amazon.com

• Facts• Issue• Holding• Rule