Chapter 7

Intellectual Property
and Internet Law
Joel Leppard
Legal Studies Instructor
LAW STUDIES II

Introduction
Intellectual

property (or I.P.) is becoming

more important because the value of many
corporations (e.g., Microsoft) is based
primarily on I.P.
Founders of America understood the value of
I.P. and its impact on interstate commerce.
Article I 8 authorizes Congress to secur[e]
for limited times to Authors and Inventors
the exclusive Right to their respective
Writings and Discoveries.

Types of Intellectual
Property

Trademarks.

Service Marks.

Trade Dress.

Patents.

Copyrights.

Cyberspace I.P.

1: Trademarks

Distinctive mark, motto or device or emblem that a

manufacturer stamps, prints or othewise affixes to the
goods it produces.

Distinguish product/service from goods of other

manufacturers and merchants.

Avoids consumer confusion.

Case 7.1: Coca Cola v. Koke Co. (1920).

Trademarks-Statutory
Protection

Lanham Trademark Act (1946) creates

incentives for companies to invest; prevents
unjust enrichment of companies who infringe.

Federal Trademark Dilution Act (1995) Cause of

action regardless of competition or confusion
based on a similar mark.

Trademarks - Registration
Register

with
U.S. Patent Trademark Office
if:
Mark

is currently in commerce;

or
Applicant intends to put it into
commerce within 6 months.
Registration allows use of
symbol.

Trademark Infringement

Whenever a trademark is copied or use,

intentionally or unintentionally, there is
infringement.

Trademark owner has cause of action against

infringer,unless trademark is a generic term.

Lanham Act designed to prevent consumer

confusion about similar marks.

Trademark Distinctiveness

Trademark must be sufficiently distinct.

Strong Marks:

Fanciful.

Arbitrary.

Suggestive marks.

Secondary Meaning.

Generic Terms: escalator, aspirin.

Trade Dress

Refers to the image and overall appearance of

the product.

Same protection as trademark.

Issue is consumer confusion.

Example: distinctive dcor, product names,

packaging of Starbucks coffee shops.

Service Marks

Similar to trademark but used to distinguish

services of one person/company from another.

Titles and character names used in media are

frequently registered as service marks.

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Trade Names

Trademarks apply to products.

Trade name applies to companies and are

protected by federal law as well.

Example: IBM, Coca-Cola, NBC.

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 2: Cyber Marks

Online trademarks.

Domain Names:

www.westlaw.com

Conflicts: ICANN, WIPO.

Anti-Cybersquatting Consumer Protection Act

(1999) amended the Lanham Act.

Meta Tags.

Case 7.2: Playboy Enterprises v. Welles (2002).

Cyber Mark Dilution.

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3: Patents

Exclusive federal grant from

U.S. Patent and Trademark Office to make, use
and sell an invention for 20 years.

Patent Infringement.

Patents for Software are now available.

Patents for Business Processes.

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4: Copyrights

Introduction to Copyright.

Intangible property right to author for her life

plus 70 years.

Automatic protection after 1978.

Works can be protected by registration at

U.S. Copyright Office.

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Copyrights

15

Can only copyright the expression of an idea, not the idea

itself.

Work must be original and fixed in a durable medium:

literary, musical, choreographical and dramatic works,
pictoral, graphic and sculptures, films/ audiovisual/ TV/
sounds, computer software and archtectural plans.

Copyrights

Compilations of facts are copyrightable but the

compilation must be original.

Bellsouth v. Donnelley (1993).

Work Made For Hire for Employees.

Copyright Infringement: whenever unauthorized

copying occurs.

Damages: actual to criminal prosecution.

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Fair Use Exception

Section 107 of the Copyright Act provides for
exception to liability from reproduction of
copyright under the the fair use doctrine
when material is used for criticism, comment,
news, criticism, teaching, research.

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Software Copyrights
Computer Software Copyright Act (1980).

Classifies computer software as a literary work.

Does not apply to look and feel.

Lotus

v. Borland (1996).

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 5: Copyrights in
Digital Information

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Much of the content on the internet consists of copyrighted I.P.

Copyright Act of 1976.

Case

7.3: New York Times v. Tasini

(2001).

Further
No

Developments:

Electronic Theft Act (1997).

Copyrights in
Digital Information
Digital

Millennium Copyright
Act (1998).
Provides

civil and criminal

penalties to circumvent
encryption software (like DVD).
Limits ISP liability for
subscriber act.

Fair Use Exceptions for Libraries, universities and

others.

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Copyrights in
Digital Information

MP3 and File Sharing.

Peer to Peer (P2P) Networking.

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Music sharing (Napster, Kazaa, Gnutella).

Case

7.4: A & M Records v. Napster

(2001) in which Court found Napster
vicariously liable for copyright
infringement of its users.

6: Trade Secrets

Business process or information that cannot or

should not be patented, copyrighted or
trademarked.

Protection from competitors.

Uniform Trade Secrets Act.

Case 7.5: Nowogroski v. Rucker (1999).

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Trade Secrets

Can include: customer lists, plans, research,

formulae, pricing information, marketing
techniques.

Hacking into a competitors computer may be

criminal.

Economic Espionage Act (1996).

Trade Secrets in Cyberspace.

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7: Licensing

Make use of anothers trademark, copyright,

patent or trade secret without incurring liability.

Uniform Computer Information Transactions Act

(UCITA).

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8: International
Protection

Berne Convention (WIPO).

Trade-Related Aspects of Intellectual Property

(TRIPS) of 1994 (WTO).

World Intellectual Property Organization (WIPO)

Copyright Treaty 1996.

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Law on the Web

U.S. Patent and Trademark Office.

Patent Searches.

Copyright Info at the U.S. Copyright Office.

Law.com I.P. Site

Legal Research Exercises on the Web.

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