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| Copyright Act: 17 USC c. 1 §101 ff. |
| Patent Act: 35 USC c. 1. |
| Trademarks - 15 USC c. 22 §1057 ff. |
| Unfair Competition Act (Lanham) 15 USC c. 15 §1125 ff. |
Trade secrets are protected by common law and is usually codified in state statutes. There is no federal law governing trade secrets. The types of properties subject to trade secret protection are usually all industrial information, manufacturing processes, machine designs, or commercial information, which usually consists of computer data, financial data and customer lists or client lists.
A trade secret is protected only if it is kept secret. It cannot be a matter of public knowledge or of general knowledge in the trade or business. If the information is very general, it is usually not protected. Secrecy is not lost by disclosure to another as long as it is done in confidence. The other person can be either an employee or a licensee of the information. When information is given it must be made clear to the person to whom the trade secret is disclosed that such information is secret and must be disclosed in confidence.
Trade secret law only prevents others from obtaining access to the secret information by improper means, such as theft, wire tapping, breach of confidence, or aerial reconnaissance. There is no protection against somebody who independently invents whatever secret is to be kept secret, there is no protection if there is an accidental disclosure, and there is no protection if the product can be reverse engineered.
A corporation in order to protect its trade secrets must do all of the following:
1. all of the employees who work with the subject matter that is to be secret must sign an employee nondisclosure agreement, and within that agreement they must not disclose any trade secrets while employed by the company or after they leave the company.
2. the corporation must limit the access to that secret information, giving it only to people with a need to know.
3. if the information is put into writing, it must be stamped "confidential and secret."
4. if it is put to writing, the number of written copies are to be limited and there should be a log listing who has the copies.
5. if the trade secret is discussed with a licensee or with any outsiders before they are given the information, they must sign an agreement that they understand that the information is a trade secret and its content must remain secret and not disclosed to any others. Usually trade secrets are sometimes preferred over patenting the invention, because if they file a patent application and a patent issues, the information is out in the public and usually can be reverse engineered.
There are advantages to having a trade secret:
1. it is a perpetual personal property right as along as it is not destroyed.
2. it may cover a wide range of subject matter and is not subject to subject matter limits, such as a patent, and it does not entail an expensive application procedure such as gives full disclose as in a patent or copyright.
The primary disadvantage of a trade secret is that it only protects against discovery by an improper means. Sometimes the holder of the secret information is compelled to give the trade secret information; it may be evidence in a trial. It does not become part of the public domain and becomes protected.
Trade secret right, being a personal property right, is protectable under state law. If there is any litigation dealing with that trade secret information the action would be brought in state court. However, if there is diversity of citizenship or a federally related claim against the defendant, the case will be brought in federal court.
The remedy for the theft of a trade secret or the misappropriation of a trade secret may include damages as well as an injunction which runs for the length of the time hypothetically necessary for the defendant to duplicate the trade secret by lawful means. The term "hypothetical" is not defined and is decided on a case by case basis.
State Statutes
Under Massachusetts law, MGL c.25 §5D, the Commonwealth essentially has the right to protect trade secrets, etc. from public disclosure. However, under the law, there is a presumption that the information is public so that the proponent saying that it is secret information has the burden to prove it.
Under MGL c.93, §42, whoever embezzles, steals, unlawfully takes, etc. with the intent to use for his own use, will be liable to the person or corporation for all damages that result. The amount of damages can be doubled or trebled, usually because it was done willfully.
Under MGL c.93, §42A, appropriate injunctive relief may be obtained including orders or decrees restraining and enjoining the respondent from taking, receiving, concealing, assigning, transferring, leasing, pledging, copying or otherwise using or disposing of a trade secret, regardless of value.
Under MGL c.266 §30, one stealing or defrauding, or converting any trade secret of another, regardless of value, whether such trade secret is or is not in his possession at the time of such conversion or secreting, shall be guilty of larceny... The term "trade secret" as used in this paragraph means and includes anything tangible or intangible or electronically kept or stored, which constitutes, represents, evidences or records a secret scientific, technical, merchandising, production or management information, design, process, procedure, formula, invention or improvement.
Under MGL c.266, §60A, converting trade secrets subjects one to imprisonment or fine.
Trademark protection is given to anyone, corporation or individual, who adopts and uses a particular device to identify his goods or services which distinguishes them from the the goods and services of others. A trademark may consist of one of the following: a word, letter, or a combination of words or letters. It can be a number or a combination of numbers. It may be a color (trade dress), a design, a cartoon character, or distinctive packaging. Trademark is good for as long as it is used on goods or services. It is protected under federal statute, the Lanham Act, state common law, and it may be protected under state antidilution, unfair competition and unfair trade practice statutes.
There are four types of marks that may be registered:
1 most common is a trademark which is used on goods (usually products)
2 a service mark which is used in the advertising and the sale of services
3 collective mark which pertain to certain groups
4 certification mark which certify that a product or services come from a designated region.
State law usually duplicates the federal statutes. A trademark or a service mark will only be protected if it is distinctive, meaning essentially that the mark must distinguish the goods or services of the trademark owner from those of others. The mark is not distinctive if it is
1 confusing similar to trademarks in prior use
2 descriptive of the goods or services (actually describes the product such as "soap").
3 primarily geographically descriptive
4 primarily a surname
The name must be nonfunctional and not mean anything; it must be an adjective. A trademark owner's use may be limited in geographic scope or precluded if there has been a prior use by another entity of a mark or name that has not been abandoned if the other mark resembles the trademark enough to cause confusion or mistake in the marketplace. Usually the common law and states give the secondary user rights in a geographic territory if he uses the mark without knowledge of the the first user's prior use in another area.
Once a trademark has been registered, the registration is constructive notice throughout the entire United States and no one, even if in good faith, may adopt that mark. If the Lanham Act conflicts with the common law, the act will be considered preëmptive.
Trademarks cannot be obtained for marks that are descriptive, because anyone has the right to use descriptive language in the offer and sale of goods and services. However, if the descriptive marks gain secondary meaning, then they may be registered. The secondary meaning is that the mark becomes distinctive of the applicant's goods or services. This means that if the consumer primarily associates the mark with the producer, then it is not descriptive. Prima facie evidence of secondary meaning is established by giving proof that there has been a substantially exclusive and continuous use for five years preceding the filing of the registration application.
The factor pertaining to secondary meaning:
1 the extent and manner of advertising
2 the volume of sales
3 the length and manner of use
4 the content of direct consumer testimony
5 consumer surveys
There are four categories of descriptiveness:
1 generic marks
2 descriptive marks
3 suggestive marks
4 arbitrary marks
Generic marks cannot be protected under any circumstances. A mark is generic if it constitutes a common name of the goods and services or their primary ingredients. e.g., aspirin, Monopoly, Xerox. The trademark should be used only as an adjective. The company must use two words, one being the generic name of the product and the other being the trademark.
A mark is descriptive if it conveys an immediate idea of the ingredients the qualities or the characteristics of the goods or services. However, a secondary meaning may attach to descriptive marks if in the mind of the consumer the descriptive term signifies to the consumer that the goods or services are from a single source.
A mark is suggestive if its suggests or hints at the nature of the goods and services. You can acquire trademarks immediately if the mark is adopted and used. Suggestive marks are very weak, and in order to have protection there must be proof of secondary meaning.
What to look at in choosing a trademark:
1. the mark should be arbitrary and fanciful (e.g. "Teddy Bear peanut butter"). It should be nonfunctional.
2. the mark should not be descriptive, e.g. the mark "orange" for an orange.
3. it must be shown that the trademark is being properly used and there was a filing for trademark protection as soon as there had been a legitimate use of the mark. "Legitimate use" implies crossing state lines, interstate commerce.
Trademark rights cannot be obtained in marks which are primarily geographically descriptive of the goods or services to which they apply (e.g., Florida oranges). However, if a secondary meaning attaches, then it probably can be protected. Trademark rights cannot be obtained if the mark is a surname (unless secondary meaning attaches, e.g., Howard Johnson, Orville Redenbacher). The advantage of having the name first in time is that all others are then considered unfair competition. The court usually balances first user against the second.
Trademark is a property right and gives its owner the perpetual right to sell the goods or services under that trademark. Trademarks, out if all the intellectual property (except trade secrets), are perpetual as long as all requirements are met. Patents and copyrights, of course, are limited.
A trademark search must be one of the first things performed, usually a full search, which covers the federal registration, state registration, all businesses, all common law and all domain names. The cost is usually about $400.00; if the search is not done, the trademark examiner may just deny the application and one will have to be done in response.
If the filing of the federal registration conveys constructive notice throughout the United States of the registrant's rights thereby preventing anyone from acquiring common law rights.
Once the mark is registered, between the fifth and sixth year, affidavits of continued use in commerce must be filed. If not, the trademark is abandoned. Being abandoned does not necessarily mean it cannot be resurrected.
Trademark case usually turn on issues of fact, and those facts may include who is the first user and who is the second; where did the first user adopt the mark and use; what was the extent of the user; how similar are the marks; are the goods or services similar; has there been any confusion among the consumers; are the marks recognized; what was the origin of the marks; and were the marks descriptive or generic.
Anyone who traffics in counterfeit goods under the trademark counterfeiting act, there are criminal penalties. To obtain a trademark right, you must first adopt and use the trademark, file a trademark registration application and any prosecution that may take place and publication of the mark in the PTO's official gazette. If anyone wishes to object to your application, they have 30 days from the date of publication in the official gazette. If they do not file an opposition within 30 days, they cannot do so afterwards.
There are two marks that go with trademarks and service marks; prior to registration, one may use the symbols or letters ™ or sm and they must be in close proximity to the mark one is using. Once the mark is registered, one has the right to use ®, which tells all that the mark is in the principal Register.
Defining "in commerce": one must place the mark on the goods or services plus transport or sale of the goods of the goods, this shows the use. Commerce means all commerce which may lawfully be regulated by Congress. It does not necessarily have to be confined to interstate transactions; some intrastate activities may be regulated.
Because of a change in 1988, an intent to use can be filed. It had to be used within a year of filing. It gives companies the right to see what the impact may be; it might then be abandoned.
When you file an application (stating the mark wanted registered, who the owner is, a drawing or other identification of the mark and specimens of the mark as it is actually used. The application must state the first date used. It must state the first date used in commerce.
There is a classification of every type of mark, depending on what it is to be used for, e.g. a restaurant service mark is class 42. International classification is different from the US.
There are four types of contested proceedings. These proceedings are adjudicated by the Trademark Trial and Appeal Board and the proceedings usually conforms to the Federal Rules of Civil Procedure. There is no live testimony. All must be done by deposition. The proceedings thus are factual inquiries.
1. oppositions: any person who feels they have been damaged by the registration of their particular mark may file an opposition petition within 30 days of the marks being published in the official gazette. In order for the petitioner to be successful, the petitioner must establish standing as a damaged person and assert sufficient grounds for the opposition. The grounds for an opposition: are first use by another, descriptiveness, primarily a surname, and geographic descriptiveness. Usually the petitioner must believe that the published mark will create confusion in the marketplace of the goods and services of his company. These proceedings take place before the registration. The petitioner must be damaged as in any other law suit.
2. cancellations: Any person may file if s/he has been damaged. The grounds vary, depending on whether the petition is filed before or after the expiration of 5 years from the date of registration. If the petition is filed prior to the expiration of 5 years, the petition may assert any ground that could have been used to reject the application or to oppose the registration or any ground that would justify cancellation. The burden of proof is on the petitioner as it would be if they were opposing it. If the petition is filed after the expiration of the 5 years, the cancellation petition may assert a limited number of grounds and the petitioner may not rely on descriptiveness, or first use by another. It is important not to let the 5 year period go by.
Grounds for cancellation: (1) the mark has become generic; (2) the mark has been abandoned; (3) the registration was obtained by fraud; (4) the registration was contrary to the Lanham Act, such as immoral or scandalous matter; (5) the mark is used by or with the permission of the registrant to misrepresent the source of the goods or services.
Regarding a certification mark, the mark may be cancelled if the registrant does not control it, engages of the production or marketing of the goods (and services), permits the use of the certification mark for a purpose other than certifying, or refuses to certify or to continue to certify goods or services for the person who maintains standards or conditions which the mark purports to serve on.
3. concurrent use: if somebody believes they they are lawful concurrent users, they may initiate proceedings.
How concurrent rights arise: when a junior user is the first to apply or obtain a trademark registration, the senior user is presumed to be entitled to registration for the entire United States. The senior user has been using the mark the longest period of time. The registration of a junior user is subject to cancellation on the petition of the senior user, notwithstanding the fact that the senior user could have filed an opposition.
The courts look at the equities and those may favor the junior user. However, if the junior user's registration of the mark survives for 5 years without any successful challenge, his registration can no longer be cancelled on prior use grounds by the senior user. In fact, the junior user in that case would have the rights to all unpenetrated territory, and the senior user will be geographically restricted. Upon the filing of concurrent use petition all known users of the trademark are given notice of the use by others and the Trademark Trial and Appeal Board decides the rights of the other users. Once they have determined the rights, they will publish the results in the official gazette. If no opposition is filed, the Board sends a copy of the concurrent user's application to each party. If an opposition is filed,, that proceeding must go forward first. Once the notice has been given to each party, they have 40 days to answer. If anyone answers and contests the application, the applicant for concurrent use registration has the burden of proving his entitlement to registration. Concurrent use registration may be brought before the Board or before a court of competent jurisdiction. A federal court proceeding may be initiated under the general federal jurisdiction statute relating to the Lanham Act or under the
4. interferences: the act gives the PTO discretion to declare an interference between two applications where confusing or similar marks, or between an existing application an the registration. Priority will go to the first person adopting and using the mark, not the first person to file an application to register it.
Trademark right may be enforced in state courts or federal courts. In state courts actions are brought for unfair competition, unfair trade practices, infringement of common law; trademarks cases in federal courts are based on diversity or unfair competition. Appeals in federal trademark cases are brought before the Regional Board of Trademark Appeals. Damages can be recovered or the other party enjoined.
The trademark owner may prevent any other person from using a mark that causes a likelihood of confusion with the owner's mark. If the confusion relates to the origin of the products, such as the maker or seller of the products or services, under state law even with no showing of likelihood of confusion or confusion, the states have dilution statutes. A cause of action is to show that the use by another is diluting one's mark.
How to prove trademark infringement: (1) Similarity of the marks; (2) similarity of the goods or services; likelihood of bridging the gap between the two marks; (4) the strength or fame of the protected mark; (5) the accused infringer's intent in adopting the mark; (6) the quality of the defendant's product; (7) the sophistication of the lines; (8) actual confusion.
Similarity of marks involves their appearance, sound, or connotation, even thought; the words may not even look the same, they may sound similar, such as "tuna of the farms" or "chicken of the sea."
Similarity is determined by the impression that a mark makes on the average reasonable, prudent consumer. rather than dissection and comparison of the component parts.
Courts recognize that trademark rights protect three interests which justify relief against the use of a mark on noncompeting goods:
1. the senior user's interest in being able to enter a related field at some future time
2. the senior user's interest in protecting the reputation of the goods against any inferior merchandise
3. the public's interest in not being misled by confusing similar lines.
Courts also consider the strength and fame of the protected mark in determining likelihood of confusion. The intent to infringe is not a necessary element of trademark infringement. The junior user will be enjoined from using a deceptively similar mark even though s/he adopted it in good faith and without knowledge of the senior's mark. A person is not liable is s/he uses the mark in a non-trademark or collateral manner. One cannot lie about the other person's product; cannot dilute the other's mark in any manner other than by comparison to one's own mark.
The defense of descriptiveness is unavailable if the trademark owner has registered the mark and has met the requirements for incontestability. With secondary meaning one must show advertising costs, volume of sales and affidavits from dealers and consumers.
Remedies: One the mark is shown to be valid and that an infringement has taken place, the court may grant monetary relief and order the destruction of the inventory of the other or grant injunctive relief to eliminate the confusion created by the infringer.
Monetary relief may include the following: (1) the profits that the defendant has made from the infringement; (2) the actual damages suffered by the trademark owner; (3) increase or punitive damages; (4) costs and reasonable attorney fees. If the trademark owner can establish a causal relationship between the infringement and his lost sales or profits, the possibility exists of treble damages, and if it is counterfeit goods, the infringer may be assessed three times the profits or damages, whichever is greater. They may be subject to fines if counterfeit, and or imprisonment up to five years, and all counterfeit goods and related materials will be confiscated. Passing off, is an unfair competition, where a person attempts to sell his goods by misrepresenting his goods as those of another, hence the question "is Pepsi okay?"
Another form of unfair competition is called misappropriation. This is the unfair taking or copying of a business.
False advertising occurs where a person makes false statements as to the nature or quality of his own goods which operates to the damages of another.
Tradenames per se are not protectable under the Lanham Act because they identify a business, or the name of a business, and are not specifically identifiable as the source of origin of the goods. But if they do serve the source function, then they may be registered. A mark is nonfunctional if it means nothing.
Subject matter is described by statute as original works of authorship fixed in any tangible medium of expression now known or later developed from which they can be perceived reproduced, or otherwise communicated either directly or with the aid of a machine or device. Congress wanted to express in any tangible. The following is a nonexclusive list of categories for which copyright may be obtained
1. literary works
2. musical works, including words
3. dramatic works, including works musical accompaniment
4. pantomimes and choreographic works
5. pictorial, graphic and sculptural works
6. motion pictures and other audio visual works
7. sound recordings
Copyright protection does not extend to ideas, procedures, systems, methods of operation or doing business, concepts, principles or discoveries no matter what form they take. It is required that a work be fixed, that is, words or numbers plus an embodiment in a stable form in any medium that is sufficiently permanent to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration. Fixed forms include paper, machine readable disks and tapes. Conversations, speeches, and performances are unfixed and not copyrightable because they are not in a fixed medium. They are protectable under a different way, e.g. unfair competition.
The copyright statute provides that it does not preëmpt state law protections for works not fixed in a tangible medium of expression. The four classes that are recognized by the copyright office are
1. Class TX, which is non dramatic, literary works, includes fiction, nonfiction, poetry, periodicals, text books, computer programs, compilations of information, etc.
2. Class PA, for works of the performing arts, includes musical works, dramatic works, pantomimes, choreographic motion pictures, radio and television broadcasts, videotapes and other forms.
3. Class VA, for works of the visual arts, includes two- and three-dimensional works of graphic or applied art such as paintings, drawings, sculptures, photographs, prints, etc.
4. Class SR, for sound recordings, includes works created by the fixation of a series of musical, spoken or other sounds.
Copyright laws also recognize works formed by the collection and assembly of preëxisting materials and data. These are called compilations.
Laws also protect collective works. This is when a number of contributions constituting separate and independent works in themselves are assembled into a collective whole.
Derivative works are based on preëxisting work and include translations, dramatizations, condensing and other reforming constituting copyrightable works separate from the work on which they are based. If there is a preëxisting work, one must get the permission of the copyright owner, and the copyright work only extends to the new matter.
Copyrightability
Computer programs are copyrightable to the extent of the literary or
textual expression contained in them. Computer programs include any works reproduced in
machine readable form such as magnetic tapes, disks, CD-ROMs, from which the work cannot
ordinarily be perceived except with the aid of a machine or device. Microchips
are likewise protected. Included in the copyright of a computer program is the
structure, sequence and organization of the program and its form of display on the
computer screen. Sounds and images constituting a video game are copyrightable under
audio-visual work.
The following are works that may not be copyrighted: variations of typography, ornamentation, lettering or coloring, listing of ingredients. However, in conjunction with the listing of ingredients, an explanation of how to use those ingredients may be copyrighted. Any ideas, plans, systems or devices cannot copyrighted as well as blank forms, because they are used for recording information and do not convey information until the information is entered. However, test and test answers are copyrightable; they are original.
Any work that consists of information that is common property (e.g., calendars, weights and measures), words and phrases (e.g. names, titles, slogans), names of products or services, names of businesses, synonyms of individuals, titles, catch words, or mottoes can be protected by trademark.
Copyrights have inherent value. (1) They may cover a wide range of subject matter, allow the author to prevent others from expressing the subject matter in a similar manner and give the owner protection. (2) the procedures to copyright are quick and inexpensive as opposed to trademarks and patents (3) copyright law is applied in a consistent manner by the courts and it offers immediate remedies for infringement (4) copyright protection lasts for a long period (a) the life of the author plus 50 years; (b) in the case of anonymous works or works for hire, 100 years from its creation or 75 years from the date of publication, whichever is the shorter period.
One of the requirements of copyright is that it has to have a element of originality. A work is original if it owes its origin to an author who has created it by his or her own skills, labor and judgment without copying or imitating the work of another. If two persons create the same work independently and through their own efforts, they both may copyright it.
Copyright Protection: Usually two issues arise as to whether to apply for registration of a copyright or not (1) whether another form of protection is available (trademarks, patents, trade secrets); (2) the question of ownership. When these interests are balanced, one must look to the economics. With patents and trademarks, many people are involved, a higher amount of money must be expended, and it may take years to obtain; it is not so easy to predict the outcome of infringement.
An author is the owner. However, in works for hire the employer or another person for whom the work is prepared, is the author. There are two categories for works for hire (1) if prepared by an employee within the scope of his or her employment (2) if it comprises works that are specially ordered or commissioned and are subject to a written agreement that the work be regarded as a work for hire. Works created by independent contractors cannot be considered for hire. A work for hire may be considered such only if it was prepared by a person considered to be an employee under common law agency principles or under the Copyright Act.
If the copyright notice is not there, it may affect the copyright owner's monetary recovery for infringement. If the notice is there, the infringer cannot use the defense of an innocent infringer to mitigate damages. If the notice is not affixed to the work, one must file for registration and receive it before one may file a copyright infringement suit.
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Copyright Creation
A work is created under the copyright law when it is fixed in a copy or
phonorecord for the first time; however, if the work has been created over a period of
time, the part of the work existing in a fixed form when a particular date constitutes the
date of creation of that work at that time. However, for registration purposes, the date
of creation is the date when the author has completed the work.
For any works created after January 1, 1978, copyright exists from the date of creation, such as life of the author plus 50 years, or if there are joint authors, copyright exists for the life of the last surviving author plus 50 years.
Author
Authorship is very important and is only created when each author
contributes to the work and both of them intend at the time of the creation to create a
joint work. Working together is irrelevant; generating ideas is irrelevant. The work must
be committed to a fixed medium.
Publication
Under the 1909 Act, common law rights were lost upon publication, but that
publication had to include the proper copyright notice. If the notice was omitted or
improper, the copyright was lost for all time. The act was very specific as to what could
be copyrighted: only published works.
The definition of publication under the 1909 Act consisted of the distribution of copies of the work in an unrestricted fashion. It did not cover public performances or distributed of limited copies.
Under the 1976 Act, protection was provided for unpublished works. Any work published before March 1, 1989, had to have the copyright notice. Under the the 1976 Act publication is defined as: a distribution of copies, phonorecords, of a work to the public by sale, or other transfer of ownership, by rental, lease or lending. Public performances and displays were now considered publications; also, distributions to groups was further distribution contained in the definition.
Copyright notice
The copyright notice of the 1976 Act consisted of three elements: (1) the
word "copyright" or abbreviated copyright (copr.)or lower case letter c in a
circle (2) the name of the owner (3) the year of publication. From 1978-88, the copyright
notice had to be affixed to the work so that reasonable notice was given to the public,
and had to be permanently legible and not concealed.
When dealing with music, especially cassettes and phonorecords, the symbol is a lowercase p in a circle together with the year and name of the owner.
There is no copyright protection for works done by the United States government; they are of public record. The work of the United States government has to be work prepared by an officer or an employee as long as it is part of the person's official duties.
Defects
There are some common defects put into copyright notices, most commonly a
lack of one of the three elements, or not close enough together to be recognized as a
notice, or wrong date or wrong owner or of such a small size as to be unreadable. Under
the 1976 act the defects could be cured.
If part of the notice was omitted, it could be corrected by revising it. Even though something was missing in the notice, it still would have been valid. The problem with defective notices was that all defective copies of the publication had to be recovered and changed.
The statute also provides for an "innocent infringer." The alleged infringer never had actual notice of the copyright registration.
Purpose
To give wide expression of ideas in tangible forms.
Registration for copyright
Two procedures (1) a physical deposit of copies of the original work after
publication in the US, with the copyright Office for use by the Library of Congress; (2)
the registration of a claim of copyright with the Copyright Office (not mandatory, but to
file a suit for infringement, must do).
Any owner of a copyright that is published with a copyright notice shall make a deposit of two complete copies of the best edition of the work within three months of publication. "Best edition" of a copyrighted work is the edition published in the US at any time before the date of deposit that the Library of Congress determines to be the most suitable for its purposes. The LOC catalogs everything.
There are certain types of works that are exempt from deposit, such as advertising material, computer programs in machine readable form, diagrams, models and three dimensional works. If the deposit is not made within three months after a demand from the Copyright Office, the failure to make such a deposit usually results in a fine of up to $250.00 or in the case of willful noncompliance $2500.00 for each work. (non deposit does not affect the granted copyright).
Failure to register a copyright may limit the monetary remedies. Suit cannot be brought in federal court without a registration. Any certificate of registration made before or within 5 years after the first publication constitutes prima facie evidence of the validity of the copyright. Registration of a copyright within 5 years will prevent invalidation of the copyright due to an omission of the copyright notice on copies of the work publicly distributed before 3-1-1989, provided that the owner takes reasonable steps to cure the omission.
Once the form for registration has been filed along with the deposit, the examiner will view the work, make a determination of its originality, but only as to whether it constitutes copyrightable subject matter. The examiners make no search of prior act, as do patents and trademarks. Once the registration form is filed there is a presumption that the works are copyrightable but there is no presumption of the validity of the works. Infringement is not investigated.
Duration of copyrights
After 1-1-1978, for works created after its effective date, the 1976
Copyright Act adopts a basic life plus 50; essentially this means the work is protected
from the date of creation, for the author's life plus 50. The owner must be determined (or
the assignee). Works made for hire, anonymous, or pseudoanonymous, created after 1-1-1978,
are 75 years from the date of publication or 100 years from the creation, whichever is the
shorter period.
For works created before 1-1-1978, but were not published nor registered before that date, usually is the 75 years from the date of creation. However these works are guaranteed at least 25 years of protection. This means the copyright will not expire before 12-31-2002, and if they are published before that date, the term is extended to 2027.
Any works copyrighted before 1950 and renewed before 1978 the term of the copyright was automatically extended to last for a total of 75 years from the date of the copyright.
Works copyrighted between 01-01-1950 and 12-31-1977 were in their first term under the 1909 act, the 1976 act provides that if and when these copyrights are renewed at the end of their first 28 year term the second will be 47 years (i.e., totaling 75 years) However, if they are not renewed, they will expire on the 12-31 of the 28th year. The 1976 Copyright Act did not revive any copyrights that already expired.
Who has the right to file for renewal
The author if living; if the author is dead, the widow or widower, a child
or children of the author or both (widow and children combined). If there is no surviving
widow or child and the author left a will, the executor of the will will claim. If
there is no surviving widow or childrens and the author has left no will, the next of kin.
When the following four types of works are concerned, renewal may be made by the owner. (1) Posthumous work may be claimed by the owner; these are works to which no copyright has been assigned or contracted for during the author's lifetime. (2) with periodicals, encyclopedic or other composite works, renewal may be claimed by the owner. (3) works copyrighted by an employer for whom such work was made for hire may be claimed by the owner. (4) a work copyrighted by a corporation other than as an assignee or licensee of the author may be claimed by the copyright owner.
Rights given by copyright
The author has the exclusive right to reproduce, distribute, prepare
derivative works, give public performances, and display the work in general. However,
these rights are subject to a limitation, called the fair use doctrine. In addition under
the Copyright Act the act requires compulsory licensing for the following: recording of
musical compositions, the performance of musical compositions on coin operated machines,
the retransmission of copyrighted works on cable television, the use of musical works and
works of visual art in noncommercial broadcasting.
Fair use doctrine
Fair use generally is defined as including use of the work by reproducing
and copying works or phonorecords for such purposes as criticism, comments news reporting,
teaching and research. The courts determine whether the use is fair by looking at a number
of factors: (1) whether the use is for profit or educational purposes; (2) the nature of
the copyrighted work; (3) the amount and substantiality of the portion used in relation to
the copyrighted work as a whole; (4) the effect of the use upon a potential market for or
value of the copyrighted work. If documents are reproduced internally (e.g. within a
company) they are part of fair use and not an infringement.
Fair use also includes time-shifting. All copy cases are brought in federal district court, therefore they have original and exclusive jurisdiction, as so granted under the copyright laws. An infringement action is instituted in the district court in which the defendant or agent resides or may be found. Before you institute an infringement suit you should first bring to the attention of the infringer any claim you have you have of infringement, trying to settle the matter by negotiation. This is so that when the act is brought to court, it can be shown that the plaintiff has dealt in good faith and was diligent. If this step is not taken, the court may deem it to be bad faith or lack of diligence. These will affect the size of the owner's damages.
Statute of limitations
A copyright infringement action must be brought within 3 years of the
occurrence. There must be actual knowledge, though constructive knowledge may come through
registration. It is thus necessary to do a diligent search (e.g., through a search
facility); it is difficult to find copyrights, because they are not all in the same area.
Such litigation is very costly.
The issues that the court may have to resolve are: (1) did the defendant independently create his alleged work; (2) is the accused work substantially similar in expression to the protected work. Substantially similar is taken from the view point of the ordinary viewer or user, not an expert (and accompanying bias). (3) is the defendant's use protected under the fair use doctrine.
Relief
The relief available in copy actions: temporary restraining order,
preliminary injunction, permanent injunction, impoundment and destruction of infringer's
inventory, damages and profits and court costs and attorney fees. Another relief is
summary judgment, but there has to be no doubt as to the originality of a copyrighted
work; this is rarely given.
To have proof for a prelim injunction there has to be (1) a high probability of success on the merits. (2) there has to be irreparable harm (3) there has to be a balance of hardships in the movant's favor (4) public interest considerations.
Because the copyright owner has a remedy to get actual damages and additional profits or statutory damages, copyright owner has the burden of proof to show the court what the infringer's gross revenue is. If the copy owner does not wish to take actual damages and profits, he may take statutory damages. St damages are not less that $500 nor more than $20,000. The copy owner may increase his damages by proving that the infringement was committed willfully. To show willfulness, if the infringer disregards a cease and desist letter, the court will call this willful infringement.
Defenses of an infringer
(1) That the use is a fair use under the copyright laws; (2) that the cop
has no originality; (3) the copy is in the public domain either for failure to place a
proper notice, failure to renew the copyright or the copyright term has expired; (4) the
alleged infringer had no access to the copyright, therefore could not have copied it; (5)
that here is no infringement because the copyrighted work and the work of the infringer
are not substantially similar or have independent origins and copied from the copyrighted
work; (6) the copyright owner has committed a fraud on the Copyright Office (unclean
hands).
Patent protection is available for inventions, discoveries of new and useful processes, machines, manufactures, or composition of matter of improvements thereof. The right that is conferred by a patent is to exclude others from making, using or selling one's patented product or process. The court of appeals of the federal circuit is the court of last resort in patent litigation.
Patentable subject matter
A utility patent may be obtained for any new and useful process, machine,
manufacture, composition of matter, or any any new and useful improvements thereof.
The four categories are usually divided into two types, processes, which covers an operation or series of steps leading to a useful result. The other two relate to structural entities or products. Any invention may support both a product and a process claim. Since a product cannot be made without the process, it cannot be patented without the process.
No patent may be obtained for an abstract principle, mathematical formula or a method of calculation. However, a patent may be obtained for an industrial process which includes as one of its steps the use of a mathematical formula and a programmed digital computer to do calculations.
The patentability of living organisms
A live, genetically altered microorganism constitutes patentable subject
matter and may be either a manufacture or composition of matter. Printed matter or the
arrangement of information cannot be patented. Business systems, professional techniques
and methods which depend upon the aesthetics, emotional, or normative reactions of a human
are not patentable.
Patentability of new uses for old
products
Many times there are inventions that consist of the discovery of a new use
or advantage for a known product or process. For example, some one patents a pencil;
someone later adds an eraser. The second person may patent the eraser but not the pencil.
The second person cannot commercially develop the pencil without authorization from the
first person.
The patent law also covers surface ornamentation or configuration of an article or manufacture; this is a design patent, rather than a utility patent. The design patent protects the appearance of the object rather than functional features. For example, the design of a bottle may be patented. If the mouth is change to a big mouth type, the utility has changed and is thus patentable. The same design may not only patented but also copyrighted. It may also be trademarked. Handiwipes patented its design and also colors. The first thing to do it to copyright the item.
Provisions of USC Title 35
Any provisions on Title 35 that apply to utility patents apply equally to
design patents with two exceptions: (1) the right of priority under international
conventions which provides the benefit of the earlier filing in a foreign country is one
year for a utility patent but only 6 months for a design patent; (2) the patent term for a
design patent is 14 years whereas the term for a utility patent is 20 years.
The date the patent issues is the valid date of the patent. The date of filing is important because because of infringement; one must go back in time to show one was first in time, e.g., in a laboratory notebook.
Qualifying for patent protection
An invention must meet three requirements: (1) utility; (2) novelty;
and (3) non-obviousness.
(1) utility means that the claimed invention must operate to perform its designated function in a reasonably effective and safe manner. Pertaining to drugs, (there is usually no problem determining utility of mechanical or electrical) the claimant need only make a reasonable showing of effectiveness and safety. Drug companies who invent drugs do not need to meet governmental regulations for commercial sale (for patenting). If a challenger to an invention has made, sold or used a device, proof of that device's utility is established. The court's reasoning is that people will not but useless inventions. Utility is shown when an invention on its own merits is commercially successful. Any evidence that demonstrates substantial utility for any purpose is enough, and it is not necessary that there be a demonstration of commercial acceptability, only that the product or process may be used in some fashion (e.g., the pencil). No workable model has to be submitted.
(2) novelty requirement is that there must be no product or process in the prior art that is identical to the product or process claimed in a patent. Prior art is defined both by statute and judicial doctrines. It includes any patent or publication in any language or country antedating the patent's claimant's date of invention. Publication may be in any form including a newspaper article, photograph or advertisement available to the public. It also includes products and processes that are in public use in the US.
Factors that relate to novelty
(1) whether the invention was know or used by others in the US before the invention by the applicant.
(2) whether the invention was patented or described in a printed publication anywhere in the world before the invention by the applicant.
(3) whether the invention was patented or described in a printed publication anywhere in the world more than one year prior to the date of application in the US.
(4) whether the invention was in public use or on sale in the US more than one year prior to the date of the invention. Sale not only means it must be sold, but also if offered for sale it is a sale.
(5) whether the applicant or his representative successfully applied for a patent of the invention in a foreign country more than 12 months before the filing of the application in the US.
(6) whether the invention was described in a patent granted to someone else on an application for a patent filed in the US before the date of the invention.
(7) whether the invention was descried in an international application filed by someone else before the date of the invention.
(8) whether the patent applicant did himself invent the subject sought to be patented.
(9) whether before the applicant's invention, the invention was invented in the US by someone else who had not abandoned, suppressed or concealed it.
In order to meet the novelty requirement, ALL of these must be passed.
The requirement that the invention not have been in public use or on sale more than one year prior to the applicant's filing for protection in the US is an absolute bar to getting a patent.
Public use will not be found if the process in question is used in secret by someone other than the applicant and the public could not learn the claimed process by viewing the final product (it must be kept a trade secret).
There is no statutory basis regarding such person's secret commercialization of a process as a bar under S102.
If a use is experimental, either by the inventor or by others using the invention, that is not a public use and there is no bar. However, the inventor must show that he or she retained the control over the invention during the testing. This usually pertains to drug companies where many studies are done during an experimental stage. Until it is known what the product does what it is supposed to do, it is experimental.
The patent becomes effective the date the patent is issued, and then lasts for 20 years.
Anybody contemplating a patent application must determine whether it is novel or not. To do this a patent search is done which will bring up all prior art. All patent law is federal. Patents are published only after they are issued.
To do a patent search all prior found must be supplied to the examiner together why the prior art is not pertinent.
(3) nonobviousness is an extension of the novelty requirement and means that no valid patent may be obtained for a variation or modification of old processes, products or technology if such would have been obvious to a person with ordinary skill in the pertinent art at the time of the invention. Any production process, even if it is new or anticipated by any prior art, may be unpatentable because of the non-obviousness requirement. This is the most difficult to overcome with an examiner who sees it as obvious to someone skilled in the art.
Test for non-obviousness by the following:
(1) scope and content of the prior art
(2) the differences between the subject matter to be patented and the prior art.
(3) a determination is made as to whether the differences between the subject matter to be patented at the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to persons of ordinary skill in the art to which said subject matter pertains.
(4) secondary considerations such as commercial success, a need, or failure by other to invent to prove non-obviousness.
Novelty
35 USC §102 deals with novelty, which id the
anticipation by a prior act of other than the inventor before the date of invention. (1)
is the invention known to others in the USA §102a. (2) was
the invention used by others in the USA §102a; (3) was the
invention patented anywhere §102a; (4) was there publication
anywhere §102a; (5) date of the actual filing of another's
application in the USA §102e.
Regarding one year bars
The inventor's own delay or acts of others occurring more than one year
prior to the filing of the application in the US. (1) was the invention patented anywhere §102b; (2) was there publication of the invention anywhere §102b; (3) was there public use in the US §102b;
(4) was the invention on sale in the US. If these things happen more than one year prior
to the filing of the application for the invention, the inventor will be barred from
getting a patent. The bar is absolute.
Delays of the applicant under §102d
(1) a foreign patent or an inventor's certificate issues on a foreign
application before the filing date of the US applicant; (2) if the foreign patent were
filed more than 12 months before a US applicant; (3) an application which resulted in an
issues forein patent was filed by the inventor.
Lack of qualification of the inventor
(1) The applicant was not the original inventor. The inventor must
conceive and must reduce the invention to practice §102f. (2)
§102g he was not the first inventor. If the invention is
abandoned under §102c, it can be expressly abandoned or the
abandonment may be implied.
The definition of "known": must be publicly available or accessible knowledge and not knowledge which was know on a restricted basis by a few. Under use, it must be publicly available or accessible use. An actual sale is a use. An offer for sale of an uncompleted device is not use. To be a sale the invention must be completed. The major parts of the law are mainly §§101, 102 and 103. A process may be known or used if the end product is available even though the process itself may be used in secret
Publication
The publication does not necessarily mean it has to be printed. May be
typewritten, handwritten, on microfilm, etc. Access: publication must be available to the
public. An internal or controlled distribution is not a publication. A copy in a library
is not a publication. This is determined as a question of fact: how accessible and
available is it to the public.
Content under §102a
The publication must fairly disclose the claimed invention. If a patent
existing anywhere in the world, then the application will not get a patent. Patented
anywhere: applies to acts by persons other than the inventor. Under §102e, prior art applies only to US patents; the effective date has a prior
art reference, is its actual US application filing date.
§102d one year bars
Statutory law gives the inventor a one year grace period to file his US
application. The acts causing the bar may be either the inventor or others. If any act
that takes place more than one year before the US application date, the bar comes into
force.
Sale
Experimental use is not a sale. However if the inventor makes a profit,
that is not experimental and thus considered a sales. The date of an on sale is a factual
question. If an offer to sell is made, the offer need not be accepted and the date of sale
is the date of the offer even if the invention is not physically built.
Under §102f the original inventor must be the true inventor. The invention cannot be stolen from someone else. Under §102g, the first inventor eliminates the race to file the application in the Patent Office. The first inventor would win an interference or his invention would be prior art if he had not abandoned, suppressed or concealed his invention. The first to concede and last to reduce to practice prevails if he has diligence during that period.
§102c abandonment
There can be express abandonment; this is done by notifying the Patent
Office. Implied abandonment: circumstances showing that the inventor took no action for a
long period of time after the conception. However, if the inventor was in bad health or
had no money, they can be used to explain away a lack of diligence.
§102d The applicant creates his own bar if a patent is granted before the filing of a US application; (2) the foreign application is files more than 12 months before the US application (6 months in the case of design patents). There may no patent on nuclear materials.
35 USC §103
unobviousness, nonobviousness
An invention is not patentable over the prior art if the invention as a
hole was obvious at the time it was made. The entire context of the application is to
considered. Obvious at the time it was made means at the time of the invention, to a
person of ordinary skill in the art of which the invention pertains. Ordinary skill does
not mean genius, but the average person in that particular art.
An inventor is charged with knowledge of all analogous prior art. The courts consider §103 as the statutory standard of invention.
The test to determine prior art under §103: (1) determine the scope and content of the prior art, such as what the prior art teaches; (2) must ascertain the differences between the prior art and the claims at issue. (3) establish the level of ordinary skill in the art. These factors are looked by the court to determine whether an invention is obvious.
For a defendant to invalidate a patent, the defendant must show the difference between the claimed subject matter and the prior art would have been obvious to a person of ordinary skill in the art at the time the invention was made. At the time if filing the application we must look at the date of the invention and go backwards: review all prior art. It has to be obvious at the time the invention was made. If someone came close to inventing it but did not, it is not prior art.
A plaintiff may sustain a patent by showing the following factors:
(1) that the invention solved a long-felt need
(2) the invention went contrary to the teaching of the art
(3) the invention produced an unexpected result
(4) there was commercial success of the invention
If an inventor does not challenge an examiner when the examiner state that the invention is well-known matter of common knowledge to the art, you have admitted to that knowledge. The rejection is then to be challenged (whether there is a reason or not); the challenge goes back to the same examiner for review. The best thing to to is to meet in person with the examiner in Washington; discussion can take place, clarifications made and questions answered. Any information not challenged is admitted to.
Obviousness
The examiner looks at:
(1) is the substitution of materials to yield only the property of the new material
(2) duplication of parts
(3) changes in size or shape without production any new or unexpected result
(4) combining old and well known elements without producing any new function
Definitions
Prior art: is subject matter; it must be in existence at the time the
claimed invention is made.
A person: means a natural person and/or a corporation.
Another person: means another invented entity; it is not always one person who invents and may be many as long as s/he contributed to the invention; each must then be recognized as an inventor. If not recognized until some one discovers the omission, the front page of the patent is reissued with the proper name included.
Developed: made in any way
Owned: totally (100%) owned by the same person.
PCT: Patent Cooperation Treaty. Once a patent is issued IN the US, you are committed to file within 6 months to file into the European community (13 members). This is quite expensive (about $5,000) because each is separate.
A patent renders unlawful any unauthorized making, use or sale of the claimed invention. Once a patent is received there is a strong presumption that the patent is valid. A patent provides a clear and definite statement of the scope of its owner's rights. If the invention is of substantial commercial interest, it serves as very strong collateral for banking purposes.
Patentability
Any person who meets the requirements of utility, nonobviousness and
utility may get a patent. However, if just adding to something old, s/he cannot obtain a
patent because it may be prior art. A right to use is always distinguished from a right to
patent when doing a search.
If a person works for a corporation and there is an employment agreement dealing with inventions within the scope of the employment, then the corporation own the invention. If however an agreement is not signed and and the person does in fact invent something, s/he retains the right to the invention and the corporation only has a shop right, which is a royalty free, non-exclusive license.
All inventors have a duty to disclose to the Patent Office all material that is relevant or material to their subject matter and which would affect the issuance of a patent on the invention. If a search is performed, all patents found and considered relevant must be disclosed to the office and all the art in those patents explained. Many patent attorneys do not do searches; what is not known is not disclosed. The examiner however, may find relevant patents when s/he performs a search. In the US it is the first first to invent, not to file, that receives a patent. The inventor must show that there will be an end result if "things" are put together.
In 1984 there was a statute that permitted registration of an invention (different from filing an application). One all requirements are met, the application is published by the Patent Office; by choosing to do this the applicant waives any right to receive a patent on the invention disclosed in the application. The reason this is done is to create a bar to any others from obtaining a patent for the invention contained in the registration. Large companies often do this; they do not want a patent. This is a way to create a marked for a particular product.
In the application, four things are needed
(1) inventor's oath
The inventor must make a declaration that s/he believes that s/he is the original and first inventor of the invention. S/he also must declare that the invention meets the requirement of novelty. If an inventor refuses to sign or is insane or legally incapacitated, either an assignee or the legal guardian of the inventor may sign. Anyone who signs in place of the inventor, must meet all the requirements, e.g. a document showing an assignment by the inventor, a power of attorney.
(2) description of the invention
(3) drawings if they are necessary
(4) the claims which describe the invention
The law requires that a patent application must contain everything that is necessary to describe to those persons skilled in the art to which it pertains the actual invention and its utility. The applicant must also must fully describe the manner of making and using the invention and the best mode contemplated by the inventor of carrying out the invention. The inventor must have at least one or more claims which particularly point out and distinctly claim the subject matter which the applicant regards as his or her invention. These claims are very important because they define the invention in determining both patentability and infringement.
A patent owner may seek re-examination of an issued patent where there is prior art consisting of patents or publications not presented during the original prosecution which would invalidate in part or in whole the claims of the issued patent. All patents are published in the Official Gazette by classifications for patents issued or to be issued. For example, companies might use this to see a "good" patent in the same business and then attack it and present evidence of prior art.
Affidavits
During the steps two things which can be provided to the Patent Office are
an affidavit showing a date of invention prior to the date of invention listed by the
patents or publications cited by the patent examiner in rejecting claims. This is called a
Rule 131 Affidavit and must set forth the conception and reduction to practice of the
invention as believed by the applicant to predate the item cited by the patent examiner.
There is another affidavit on technology giving factual evidence supporting the
patentability of rejected claims in distinguishing what is presented in prior art
publications and patents cited by the patent examiner. This is called a Rule 132 affidavit
and sets forth the results of laboratory research or expert opinions of one knowledgeable
in the art.
abandoned trademark: (1) nonuse: the mark's use has been discontinued with the intention not to resume use, or (2) loss of distinctiveness: rights will be lost when the mark loses its capacity to indicate source. A finding of abandonment implies that the mark is in the pubic domain and that the mark's owner no longer has any rights in the mark. Abandonment requires intent, usually evidenced by an overt act such as a statement appearing on copies of the work that anyone who wishes to reproduce, perform or display the work is free to do so.
antidilution statute: enacted to prevent the unlawful injury caused by the whittling away of an established trademark's selling power and value through its unauthorized use by others upon dissimilar products (NY); an act which threatens two separate but related components of advertising value (Sally Gee).
arbitrary and fanciful marks: marks that are made up of, and have no meaning other than their trademark meaning, such as newly coined words; they in no way describe the particular product or service they are meant to identify.
author: the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection. An "author" is one "to whom anything owes its origin; originator; maker; one who completes a work of science or literature." Burrow-Giles.
"best edition:" is the edition of a copyrighted work published in the US at any time before the date of deposit that the Library of Congress determines to be the most suitable for its purposes.
certification mark: words, names, symbols or devices used by one person to certify the goods or services of others have certain characteristics. The Lanham Act imposes strict restrictions on certification marks registered on the Principal Register.
collective mark: (1) collective membership marks adopted for the purpose of indicating membership in an organization; (2) collective trademarks and service marks adopted by a collective organization, such as a co-op, for use by its members in selling their individual goods or services, distinguishing their gods or services from those of nonmembers.
compilation: in the copyright sense is " a work formed by the collection and assembly of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship (Copyright Act, §101). Facts are never original, so the compilation author can claim originality, if at all, only in the way the facts are presented.
control test, actual: Under this test, independent contractors who are so controlled and supervised in the creation of a particular work are deemed "employees."
copies: material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.
copying works of art: Others are free to copy the original. They are not free to copy the copy. The copy is the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man' s alone. That something he may copyright unless there is a restriction in the words of the act. Bleistein.
copyright: protection of expressions, not ideas. Copyright rewards originality, not effort.
damages: Damages can be measured by(1) loss of sales and profits caused by the infringer's use of the owner's (1) loss of sales an, (2) consequent economic injury to the trademark owner' s reputation and good will. Profits earned by the infringer through its use of the mark can be treated (1) as presumptively equivalent to the profits lost by the trademark owner and, thus, awarded on a compensatory basis; or (2) under the approach taken in Maltina, as unjust enrichment.
derivative copyright doctrine: protects only the new material contained in the derivative work, not the matter derived from the underlying work. Thus, although the derivative work may enter the pubic domain, the matter contained therein which derives from a work still covered by statutory copyright is not dedicated to the public. The established doctrine prevents unauthorized copying or other infringing use of the underlying work or any part of that work contained in the derivative product so long as the underlying work itself remains copyrighted. Russell v. Price.
descriptive mark: (1) mark that appear to describe the product or service they identify; (2) marks that describe the geographic location from which the goods or services emanate; and (3) marks that are primarily merely a person's surname. Descriptive marks are not considered inherently distinctive and cannot be the subject of ownership rights unless they have attained secondary meaning.
display: any showing of a "copy" of the work, "either directly or by means of a film, slide, television image, or any other device or process."
dilution doctrine: the blurring of a mark's product identification or the tarnishment of the affirmative associations a mark has come to convey (Mead). Dilution theory presumes some kind of mental association in the reasonable buyer's mind between the two parties' uses of the mark (McCarthy). The trademark itself is sought to be protected when it has value of its own; it is, in other words, protected from dilution (Miller). Underlying all dilution decisions is the question whether one party should have rights in a product or service market it has not yet entered.
expansion doctrine, likelihood of : through this doctrine, the owner can extend protection to any field that the public naturally might associate with the present commercial activity of the owner. Modern trademark law allows an owner to prohibit use of the mark in commercial areas that are not presently used by the owner.
expansion doctrine, zone of: a prior user can preëmpt the right to use its name and symbols in territories "that would probably be reached by the prior user in the natural expansion of his trade" (Hanover).
facts: all facts-scientific, historical, biographical, and news of the day: "[T] hey may not be copyrighted and are part of the public domain available to every person." Miller. This is because facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: the first person to find and report a particular fact has not created the fact; s/he has merely discovered its existence.
"first sale" doctrine: where a copyright owner parts with title to a particular copy of his copyrighted work, he divests himself of his exclusive right to vend that particular copy. While the proprietor's other copyright rights (reprinting, copying, etc.) remain unimpaired, the exclusive right to vend the transferred copy rests with the vendee, who is not restricted by statute from further transfers of that copy. United States v. Wise, 660 F.2d at 1187.
fixed: A work is "fixed" in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. The statutory definition of "fixation" provides, by implication, that a work will not be deemed "fixed" unless its embodiment in a copy or phonorecord was done by or under the authority of the author.
forfeiture: occurs through publication without proper notice and is accomplished by operation of law.
generic mark: the common, descriptive name of the good or service it is used to identify. The standard for determining whether an alleged mark has become generic is whether its primary significance to the customer is the common name of the product or service, or an indication of origin.
infringement: To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.
infringement, derivative work: the infringing work must incorporate a portion of the copyrighted work in some form.
infringement, trade name : the appropriation of another's business name together with the exploitation and the grasping for enjoyment of the benefits of another's labor and effort, when the latter has culminated in a special quality being attached to the particular name.
joint work: a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.
misappropriation: tort dealing with subject matter that is a fixed and tangible form of expression and distinguished from copyright by identifying the nature of the wrong and the remedy sought; it deprives the holder of property rights of the value of the information created or collected. The remedy can bear a marked resemblance to an injunction against copying.
originality: authorship. A work of authorship must be "original" in order to qualify for copyright protection. This requirement has two facets: (1) the author must have engaged in some intellectual endeavor of her own, and not just have copied from a preexisting source. (2) in addition to being the author's independent creation, the work must the work must exhibit a minimal amount of creativity.
passing off: the imitator of another's goods must sell them as his own production and cannot lawfully palm them off on the public as the goods of his competitor.
perform a work: includes reading a literary work aloud, singing or playing music, dancing a ballet or other choreographic work, and acting out a dramatic work or pantomime. A performance may be accomplished "either directly or by means of any device or process," including all kinds of equipment for reproducing or amplifying sounds or visual images, any sort of transmitting apparatus, any type of electronic retrieval system, and any other techniques and systems not yet in use or even invented.
public performance, right of: under §106(4) extends to "literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works and sound recordings. The exclusive right of public performance is expanded to include not only motion pictures, including works recorded on film, video tape, and video disk, but also audiovisual works such as filmstrips and sets of slides. The concepts of public performance and public display cover not only the initial rendition or showing, but also any further act by which that condition or showing is transmitted or communicated to the public.
public display, right of: explicit statutory recognition in American copyright law of an exclusive right to show a copyrighted work, or an image of it, to the public. The existence or extent of this right under the present statute is uncertain and subject to challenge. The concepts of public performance and public display cover not only the initial rendition or showing, but also any further act by which that condition or showing is transmitted or communicated to the public.
publication, right of: The right "to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending."
publicly: a performance or display is "public" if it takes place "at a place open to the public or at any place where a substantial number of persons outside of a normal circle of family and its social acquaintances is gathered."
reproduction: The right "to reproduce the copyrighted work in copies or phonorecords" means the right to produce a material object in which the work is duplicated, transcribed, imitated, or simulated in a fixed form from which it can be "perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." §101
secondary meaning: the trade meaning which may attach to a particular mark because its user has expended time and money in the promotion of the mark. The concept of secondary meaning is that a name has become so identified with a particular business that it exclusively signifies only that one particular business.
service mark: similar to trademarks, they identify services rather than products. To register a service on the Lanham Act Principal Register, an applicant must provide a service that is sufficiently separate from the sale of goods.
suggestive marks: marks that indirectly describe the product or service they identify.
"sweat of the brow" doctrine: justification of copyright on the basis of the labor the author expended in collecting and cataloging the facts.
tarnishment: Applied broadly, the prohibition encompasses any unauthorized use of a mark in any context, commercial or noncommercial, that diminishes the mark's positive associations. Applied narrowly, the prohibition encompasses only unauthorized commercial uses of the mark in connection with shoddy goods or with goods that lack the prestige associated with the mark.
trade dress: such as striking, colorful background design on the product, its wrapping or label may be protected as a mark if it makes a separate commercial impression and its impact on the customer is primarily to identify or distinguish the product and not merely to serve as decoration. Includes color, shape, container, functionality, distinctiveness in packaging, slogans, scents and sounds and composite marks.
trademark: a word, name, symbol or device, or any combination thereof, which is used to identify and distinguish the goods of one person from goods manufactured or sold by others and to indicate the course of the goods, even if the source is unknown.
trade secrets: 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 sit (Restatement of Torts, §757, comment b). Anything tangible or intangible or electronically kept or stored, which constitutes, represents, evidences or records a secret scientific, technical, merchandising, production or management information, design, process, procedure, formula, invention or improvement (MGL c.266 §30).
work made for hire: work prepared by an employee within the scope of his or her employment. A work is "for hire" under two sets of circumstances: (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work.
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