tmpanda dwe.2012

© 2012 Douglas Burda, Esq.248/217.0002 | [email protected]

GIANT!SM Brand Protection

An Overview ofTrademarks & Copyrights

in theOnline Space

SM

Background

Douglas Burda, Esq. | 248/217.0002 | [email protected]

Intellectual Property Forms.

Trade secrets.

Patents.

Trademarks.

Copyrights.

Concepts.

Quid pro quo as the sine qua non.

The exchange is the essence.


Definition. Any formula, pattern, device or compilation of information which is used in one’s business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it.

RESTATEMENT OF TORTS § 757, Comment b (1939).

Generally protected by state law, not federal law.

Protects unauthorized disclosure by someone who has obtained the trade secret by improper means.

Factors.

1. Measures taken to protect.

2. Difficulty in acquiring info by other means.


Trade Secrets

Definition. The grant of a property right to an inventor, issued by the USPTO.

A negative right to exclude others from making, using, offering for sale, or selling the invention in the US, or importing the invention into the US.

Term. 20 years from the date of application to the USPTO.

Requirements. Novel, useful, nonobvious.

Types.

Utility patents. New and useful process, machine, article of manufacture, composition of matter, improvement to any of these.

Design patents. New, original, ornamental design for an article of manufacture.

Plant patents. Invents or discovers and asexually reproduces any distinct and new variety of plant.


Patents

Definition. Word, phrase, symbol or design, or combination of these, that identifies and distinguishes the source of goods of one party from those of others.

Term. Potentially infinite, based on use.

Trademarks can also extend to product design, product packaging, colors, animations, sounds, scents, fragrances, flavors (if nonfunctional).

Governed at State and Federal Levels

Federal statute: 15 U.S.C. §§ 1051-1129, “Trademark Act of 1946”, “The Lanham Act”.

Note: Logo: design mark, Brand: trademark.


Trademarks

Filing bases.

Current use under §1(a).

Owner of a trademark

Use of the trademark

In commerce

With knowledge and belief that no other person has the right to use the trademark in commerce

and when used is not likely to cause confusion, mistake, or to deceive

Intent to use under §1(b).

Bona fide intent to do the above.

Loophole based on §1(b) filings.

Publication & Opposition.

Almost anyone can file an Opposition within 30 days of OG publication (you only have to allege that you believe you would be harmed by registration).

Focus.

Owner of mark: use, Consumers: confusion.


Obtaining a Federal Trademark Registration

Principal Register

Marks registered here are entitled to all rights under the Lanham Act, including:

Constructive notice of ownership

Legal presumption of exclusive use

Date of constructive use

Sue for infringement in federal court

Prevent importation of goods bearing infringing mark

Exclusive right to use/incontestability

US registration as basis of registration in foreign countries


Benefits of Federal Trademark Registration

Type of Mark Definition Examples

Generic Can never be registered. BANK, GROCERY STORE

Descriptive Describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services.

MEDICAL GUIDE (website services featuring medical guide), DENIM (jeans), SPICY SAUCE (salsa)

Suggestive Requires imagination, thought or perception to reach a conclusion as to the nature of the goods/services.“Inherently distinctive” – no secondary meaning/acquired distinctiveness necessary.

CHICKEN OF THE SEA (tuna fish), ROACH MOTEL (insect traps), COPPERTONE (suntan oil)

Arbitrary/Fanciful

“Inherently distinctive” – no secondary meaning/acquired distinctiveness necessary.

Fanciful: PEPSI, KODAKArbitrary: APPLE (computers), STUDIO 54 (night club services)


Spectrum of Distinctiveness

Is the mark likely to cause confusion in the minds of the consuming public as to the source of the goods?

1. Strength of the mark

2. Proximity of the goods

3. Similarity of the marks

4. Evidence of actual confusion

5. Marketing channels used

6. Type of goods and degree of care likely to be exercised by the purchaser

7. Defendant’s intent in selecting the mark

8. Likelihood of expansion of the product lines

AMF, Inc. v. Sleekcraft Boats, 1979

Du Pont Factors


Trademark Infringement:Likelihood of Confusion

Temporary confusion that is dispelled before the purchase is made.

Ex. West Coast Video & Blockbuster Video

1973: Actual or potential confusion at the time of purchase does not need to be demonstrated. Where Party A would attract potential customers based on the reputation built up by the Party B, the initial interest confusion works an injury.

Since 1999: Courts have upheld infringement claims in domain names, meta-tags, and advertising keywords under initial interest confusion.

Internet Impact: initial interest confusion claims have increased from 10 cases before 1990 to more than 100 from 1990 to 2005.


Trademark Infringement:Initial Interest Confusion

Dilution.

Protects sufficiently strong or famous marks from losing their association with a particular product.

Not really concerned with confusion of the public, but with the property rights of the mark owner.

2 flavors.

1. Blurring. Reduction of strength of a mark through association with more than one product.

Ex. DELL for coffee machines.

2. Tarnishment. Reduction of strength of a mark through unsavory associations.

Ex. STARBUCKS for adult film productions.


Trademark Dilution

Definition. Protection provided to authors of original works of authorship fixed in a tangible medium of expression.

Works. Literary, dramatic, musical, artistic, audiovisual, architectural.

Published or unpublished.

Fixation. Manner/medium virtually unlimited: words, numbers, notes, sounds, pictures, any other graphic or symbolic media.

Governed at State and Federal Levels, civil and criminal provisions.

Term.

1 author: life of the author + 70 years.

Joint work: expires 70 years after last author’s death.

Works made for hire/anonymous/pseudonymous works: 95 years from first publication or 120 years from creation.


Copyrights

1. Automatic upon fixation. No publication or registration necessary.

2. Registration with the Copyright Office.

Benefits.

Established public record of claim of copyright.

Necessary before infringement lawsuit can be brought.

Under certain circumstances, presumption of validity of the copyright, availability of attorney’s fees, statutory damages (if willful, up to $150K per incident).

Can further register with U.S. Customs to prevent importation of infringing articles.


Obtaining a Copyright

Copyright exclusive rights: a “bundle of sticks”.

Reproduce

Adapt/Make derivative works

Distribute copies

Perform publicly

Publicly display the work


Copyrights

Copyright infringement. Occurs whenever anyone violates one or more of the exclusive rights in the copyright holder’s bundle.

Elements.

Ownership of a valid copyright.

Unauthorized copying, usually demonstrated by showing:

1. The alleged infringer had access to the work, or

2. Substantial similarity of the works from the viewpoint of the average observer.

Digital Millennium Copyright Act (DMCA).

Largely targeted at cybercrimes. Deters access circumventions, among other things.


Copyright Infringement

Fair use doctrine.

After a showing of infringement, this is a claim that the otherwise unauthorized use should be allowed. The most common bases for this are that the work is not used for commercial purposes, and instead for criticism, comment, reporting, teaching or scholarship. Other bases are available and are a result of considering certain factors:

1. Purpose/character of the use (commercial v. nonprofit/educational)

2. Nature of the copyrighted work

3. Amount and substantiality of the portion used v. work as a whole

4. Effect of the use on the potential market for the original


Limitations on Copyright

Trademarks

Could all meta elements serve as the basis for initial interest confusion?

Does your domain name infringe?

When is it legally fair to refer to another’s trademark on the internet?

Copyrights

What if you site the source of the information you are using? (Righthaven)

Can you use iFrames? Other enclosing methods?

Is hyperlinking permitted?

DMCA

Takedowns

Impact on reverse engineering


Rhetoric


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tel. 248/217.0002

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