Transcript Document
Intellectual Property & the Net Brett J. Trout 7/21/2015 1 Types of Intellectual Property Trademark law Copyright law Patent law Trade secret law 7/21/2015 2 Trademark A word, name, phrase or symbol used to identify source or origin of a good or service provided through commerce 7/21/2015 3 Types of Trademarks Fanciful – Qwing Arbitrary – royal Suggestive – NoDoze Descriptive – red Generic - apple 7/21/2015 4 Types of Trademarks Color – pink for fiberglass Sound – NBC chimes Scent – floral scent for yarn 7/21/2015 5 Types of Trademarks Domain names - Amazon.Com Over 500 pending Animated browser icon – Netscape “E” marks – eVideo, eMusic 7/21/2015 6 Types of Protection Common law State registration Federal registration 7/21/2015 7 Registering You Domain Name Do not register http:///www portion Must indicate source Not merely address Not primarily a surname unless secondary meaning Not primarily geographically descriptive or misdescriptive Not selling only your own goods or services over the site 7/21/2015 8 Litigation Infringement Similarity of marks Similarity of goods or services Similarity of trade channels Sophistication of buyer Strength of mark Actual confusion or lack thereof 7/21/2015 9 Remedies Injunction Damages and Infringer’s profits Treble damages Attorney fees Must 7/21/2015 be an exceptional case 10 Litigation Cybersquatting Uniform Dispute Resolution Policy - UDPR Anticybersquatting Consumer Protection Act. 7/21/2015 11 Litigation Uniform Dispute Resolution Policy Created by ICANN Adopted by all Registrars Mediation (6-8 weeks) • Can only get transfer or cancellation of name Requires registrant to respond within 20 days Requires showing of bad faith Do not have to have federal registration Trademark owner wins 80% of disputes. 7/21/2015 12 Litigation Anticybersquatting Consumer Protection Act Federal Court Statutory Damages $1K to $100K • Available only if name registered after law enacted Like 7/21/2015 UDRP, requires bad faith. 13 Litigation Federal Anti-Dilution Mark 7/21/2015 statute must be famous. 14 Litigation Likelihood of confusion on the web - same factors apply Similarity of the marks Relatedness of the goods or services Simultaneous use by competing companies of the web as a marketing channel Addition of “.Com” typically not a factor 7/21/2015 15 Litigation Invisible infringement Metatags Playboy and playmate Court does not differentiate visible from invisible infringement 7/21/2015 16 Other Issues Stealthing Words same color as background Invisible to viewer Visible to search engines Likely viewed the same as metatag infringement 7/21/2015 17 Other Issues Link to search engine banner ads Playboy Banner Estee lauder Banner No 7/21/2015 ads for pornography ads for knock-off perfume decision in either case 18 Other Issues “Suck” sites Walmartsucks.Com Very difficult to get name back Free speech issues 7/21/2015 19 Copyright Original works of authorship Fixed in a tangible medium Protects expression Not functionality Not ideas 7/21/2015 20 Copyright Rights Reproduce work Make derivative works Distribute copies Perform work publicly Display work publicly 7/21/2015 21 Covered Works Literary works Musical works Dramatic works Choreographic works Pictorial, graphic and sculptural Motion pictures Sound recordings Architectural works 7/21/2015 22 Does Not Protect Ideas Procedures Processes Systems 7/21/2015 Methods of operation Concepts Principles 23 Damages Your damages and Infringer’s profit Injunction Statutory damages $500-$20,000 $100K if willful and malicious Attorney fees and costs Available to either side Frivolous or unreasonable 7/21/2015 24 Fair Use Exceptions Purpose and character or work Commercial Nature of copyrighted work Form use of copy book Amount of work taken Economic impact of taking Usually ok Parody Critical 7/21/2015 commentary 25 Deep Linking Ticketmaster v. Microsoft Microsoft Seattle sidewalk website Deep linked to Ticketmaster order page Skips home page and several layers of advertising banners Settled 7/21/2015 26 Deep Linking Shetland times v. Shetland news Deep linking to news story Framed story with linker’s advertising Can link to story, but must give proper attribution 7/21/2015 27 Deep Linking Bernstein v. J.C. Penney Linked Arden perfume page to page which displayed infringing photographs of Elizabeth Taylor Court dismissed case as too tenuous 7/21/2015 28 Always Obtain Permission 7/21/2015 29 Digital Millennium Copyright Act 7/21/2015 30 DMCA Enacted on October 28, 1998 Addresses the impact of electronic commerce on the existing legal framework 7/21/2015 31 DMCA Does not affect the rights, remedies, limitations or defenses to copyright infringement. Does not limit “Fair Use” defense 7/21/2015 32 DMCA Limits liability of Internet Service Providers Prohibits circumventing anti-piracy software Requires rebroadcasters of copyrighted material to pay royalties. 7/21/2015 33 Internet Service Providers Shielded from IP Liability provided: No knowledge that material is infringing No receipt of financial benefit from the infringing activity Moves expeditiously to remove the material that is claimed to be infringing. 7/21/2015 34 Internet Service Providers Shielded from IP Liability provided: Reasonable steps taken to notify subscriber; Notification of non-infringement forwarded to IP owner upon receipt from poster; IP owner informed that the material will be replaced; and Material replaced in 10 days unless ISP receives notice that complainant has filed a lawsuit. 7/21/2015 35 DMCA Safe Haven Adopt, implement and inform accountholders of ISP policy; and Terminate accountholders who are repeat infringers. 7/21/2015 36 DMCA Anti-circumvention Under Section 1201 of the DMCA, no person shall circumvent a technological measure that controls access to a copyrighted work Prohibits “trafficking” in any technology product, service, or device designed to circumvent a technological measure that controls access to a copyrighted work. 7/21/2015 37 “Trafficking” Includes website linking with knowledge ad intent to distribute circumvention technology. Universal Studios v. Reinerdes 111 F.Supp.2d 294 (SDNY 2000). 7/21/2015 38 Signs You May be an IT Redneck Your old computers are up on cinder blocks in your front yard You have a bumper sticker on your PC that says "My other computer is a laptop" Installing minesweeper would double the value of your PC 7/21/2015 39 Signs You May be an IT Redneck Any part of your PC is held together with duct tape You have ever used shur'nuff in an e-mail You have a camouflage mouse pad 7/21/2015 40 Signs You May be an IT Redneck You have ever used the back of your keyboard to skin a fish Your e-mail program has a “Reply Y’all” button You have more mouse buttons than teeth 7/21/2015 41 Patent Law Protects new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Does not protect Ideas Obvious combination of prior art Illegal or immoral matter Pure research Novelty or curiosity 7/21/2015 42 Remedies Injunction Damages and Infringer’s profits Treble damages Willful Attorney fees Willful 7/21/2015 43 State Street Bank Court of appeals for the federal circuit decision. Allows patenting business method. Examination no longer begins by determining if claim recites a mathematical algorithm." 1998 USPTO revisions to computer related examination guidelines reflect this decision. 7/21/2015 44 Internet Patents Amazon.Com Secure credit card processing Priceline.Com Reverse Lycos Spider auction technology Cybergold Cash 7/21/2015 for registrations 45 Problems Internet developed using public domain information USPTO has weak database and few patents in this area Many applications will incorporate public domain information Patent may be invalid, but will be difficult to enforce 7/21/2015 46 Trade Secrets Iowa enacted uniform trade secrets act in 1990 Enacted by about 40 states Remaining states use common law theories 7/21/2015 47 Examples Recipes Customer Lists 7/21/2015 48 Trade Secrets Information including, but not limited to, a formula, device, method, technique or process that Derives independent economic value from not being generally known Is not readily ascertainable by proper means Is the subject of reasonable security precautions 7/21/2015 49 Liabilty Posting trade secrets on the internet Using trade secrets you should have known were protected 7/21/2015 50 Remedies Injunction Compensation Punitive damages Willful and malicious Attorney fees Willful 7/21/2015 and malicious 51 Religious Technology Center Church of Scientology Former members posting church secrets on the internet Court held Fair use Documents no longer trade secrets after being disclosed in prior court proceeding 7/21/2015 52 Take Home Do not use any trademarks, text or graphics from the web without permission Advise client’s to register their domain name Advise clients to establish protocols for preventing trade secrets from being posted on the internet 7/21/2015 53 THANK YOU 7/21/2015 54