Transcript Document
Intellectual Property & the Net
Brett J. Trout
7/21/2015
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Types of Intellectual Property
Trademark law
Copyright law
Patent law
Trade secret law
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Trademark
A word, name, phrase or symbol used to
identify source or origin of a good or
service provided through commerce
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Types of Trademarks
Fanciful – Qwing
Arbitrary – royal
Suggestive – NoDoze
Descriptive – red
Generic - apple
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Types of Trademarks
Color – pink for fiberglass
Sound – NBC chimes
Scent – floral scent for yarn
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Types of Trademarks
Domain names - Amazon.Com
Over
500 pending
Animated browser icon – Netscape
“E” marks – eVideo, eMusic
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Types of Protection
Common law
State registration
Federal registration
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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
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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
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Remedies
Injunction
Damages and Infringer’s profits
Treble damages
Attorney fees
Must
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be an exceptional case
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Litigation
Cybersquatting
Uniform
Dispute Resolution Policy - UDPR
Anticybersquatting Consumer Protection Act.
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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.
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Litigation
Anticybersquatting
Consumer Protection Act
Federal
Court
Statutory Damages $1K to $100K
• Available only if name registered after law enacted
Like
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UDRP, requires bad faith.
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Litigation
Federal Anti-Dilution
Mark
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statute
must be famous.
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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
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Litigation
Invisible infringement
Metatags
Playboy
and playmate
Court does not differentiate visible from
invisible infringement
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Other Issues
Stealthing
Words
same color as background
Invisible to viewer
Visible to search engines
Likely viewed the same as metatag
infringement
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Other Issues
Link to search engine banner ads
Playboy
Banner
Estee
lauder
Banner
No
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ads for pornography
ads for knock-off perfume
decision in either case
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Other Issues
“Suck” sites
Walmartsucks.Com
Very
difficult to get name back
Free speech issues
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Copyright
Original works of authorship
Fixed in a tangible medium
Protects expression
Not
functionality
Not ideas
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Copyright Rights
Reproduce work
Make derivative works
Distribute copies
Perform work publicly
Display work publicly
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Covered Works
Literary works
Musical works
Dramatic works
Choreographic works
Pictorial, graphic and sculptural
Motion pictures
Sound recordings
Architectural works
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Does Not Protect
Ideas
Procedures
Processes
Systems
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Methods of operation
Concepts
Principles
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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
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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
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commentary
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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
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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
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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
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Always Obtain Permission
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Digital Millennium Copyright Act
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DMCA
Enacted
on October 28, 1998
Addresses the impact of electronic
commerce on the existing legal
framework
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DMCA
Does not affect the rights, remedies,
limitations or defenses to copyright
infringement.
Does not limit “Fair Use” defense
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DMCA
Limits liability of Internet Service Providers
Prohibits circumventing anti-piracy
software
Requires rebroadcasters of copyrighted
material to pay royalties.
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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.
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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.
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DMCA Safe Haven
Adopt,
implement and inform
accountholders of ISP policy; and
Terminate
accountholders who are
repeat infringers.
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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.
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“Trafficking”
Includes website linking with knowledge ad
intent to distribute circumvention
technology.
Universal Studios v. Reinerdes
111 F.Supp.2d 294 (SDNY 2000).
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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
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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
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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
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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
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Remedies
Injunction
Damages and Infringer’s profits
Treble damages
Willful
Attorney fees
Willful
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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.
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Internet Patents
Amazon.Com
Secure
credit card processing
Priceline.Com
Reverse
Lycos
Spider
auction
technology
Cybergold
Cash
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for registrations
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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
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Trade Secrets
Iowa enacted uniform trade secrets act in
1990
Enacted by about 40 states
Remaining states use common law theories
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Examples
Recipes
Customer Lists
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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
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Liabilty
Posting trade secrets on the internet
Using trade secrets you should have known
were protected
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Remedies
Injunction
Compensation
Punitive damages
Willful
and malicious
Attorney fees
Willful
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and malicious
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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
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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
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THANK YOU
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