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Intellectual Property Issues in International Commerce

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    Intellectual Property Issues in International Commerce Intellectual Property Issues in International Commerce Presentation Transcript

    • Intellectual Property Issues in International Commerce
      • International Law Section
      • Idaho State Bar
      • October 27, 2011
      • Brad Frazer
      • Hawley Troxell
      • 208.388.4875
      • [email_address]
    • Why do you care?
      • Hypothetical: Your client starts selling its patented mousetrap in the U.S. under the trademark “Mouseraser.” Six weeks later, you learn that a company in Sweden is selling the patented mousetrap there under the brand name “Mousey-Racer.”
      • Hypothetical: Two months later, that same Swedish company starts selling mouse poison in the U.S. under the “Mousey-Racer” brand. That same company also registered the domain names “mouseraser.se,” “mousey-racer.com” and “mouseraser.cn.”
    • Types of Intellectual Property (“IP”)
      • Patents
      • Trademarks
      • Domain Names (and Twitter usernames? Facebook pages?)
      • Copyrights
      • Trade Secrets
      • IP created by contract (“NDA’s”)
      • Focus today on trademarks and domain names
    • What are trademarks?
      • A trademark or service mark is any word, slogan, logo, symbol, sound, color, smell, or other item that serves as a means of commercial source identification of a product or service.
      • E.g., Nike, Coke, Geico Gecko--or Geico Cavemen
    • Types of U.S. Trademark Protection
      • Common Law™ - unregistered
        • In the U.S., trademark rights arise through use, not through registration.
      • State Registration – the “truly local”
      • Federal Registration® - interstate
      • Registration in the U.S. requires acceptable “trademark use.”
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    • Advantages to Federal (U.S.) Registration:
      • Constructive notice nationwide of TM owner's claim.
      • Evidence of ownership of the trademark.
      • Jurisdiction of the federal courts may be invoked.
      • Registration can be used as a basis for obtaining registration in foreign countries.
      • Registration may be recorded with U.S. Customs Service to prevent importation of infringing foreign goods.
    • Infringement
      • Is the defendant using a confusingly similar trademark to sell or advertise a related line of goods or services?
      • Is there a likelihood of consumer confusion as to the source of the infringing goods?
    • What are domain names?
      • A domain name correlates words to a numeric identifier called an “IP Address” that tells your web browser where to look for a particular web site.
      • Top-level domains, e.g., .com and .net (gTLDs).
      • Second-level domains, e.g., “Amazon.”
      • ccTLDs—e.g., .tw (Taiwan), .uk (United Kingdom), .cn (China), .se (Sweden); also are Top-level Domains
      bfrazer@hawleytroxell.com / @bfrazjd
    • Are trademarks and domain names the same thing?
      • Amazon.com is both
      • What about Golden Acres Retirement Community, whose website URL is boiseretirement.com?
      • Consider the impact of the new gTLDs!
    •  
    • International Considerations: Always protect your IP in the United States first!
      • Creates priority dates for other jurisdictions.
      • Utilizes a familiar, definitive regulatory and statutory scheme.
      • Builds value and good will.
    • International Considerations: Always search in the other jurisdictions before commencing commerce!
      • Dangers: infringement liability
      • Dangers: impoundment
      • Dangers: injunction
    • International Protection--Trademarks
      • Trademarks are “territorial.”
      • National filings
      • Centralized filings
        • Madrid Protocol (EU is now a contracting party)
        • Community Trademark (EU)
    • International Protection—Trademarks (cont’d)
      • “ First-to-File” Jurisdiction?
        • E.g., China, Germany, Japan
        • Versus a “common law,” first-to-use jurisdiction (U.S., Canada, Australia)
        • Conflicts are inevitable
      • Many times a combination of approaches is needed.
    • International Protection—Domain Names
      • Aggressive and proactive registration of ccTLDs (.co is a lot like .com)
        • ICANN UDRP—maybe; policies vary by registrar and registry. See http://arbiter.wipo.int/domains/cctld_db/index.html
      • Anticybersquatting Consumer Protection Act?
    • Other International Issues
      • Licensing and IP Ownership
      • Piracy
      • Agreement on Trade Related Aspects of Intellectual Property Rights  (TRIPS)
      • Anti-Counterfeiting Trade Agreement (ACTA)
        • Signed October 1, 2011, by United States, Australia, Canada, Japan, Morocco, New Zealand, Singapore, and South Korea
      • Strategy Targeting Organized Piracy (STOP!) ( http://www.stopfakes.gov/ )
      • U.S. Customs and Border Protection
    • Take-Aways
      • Protect IP in the United States first.
      • Perform searches in target jurisdictions.
      • Protect IP in other jurisdictions quickly.
        • Note on patents and disclosures . . .
      • Use Treaties and Border Enforcement.
    • Q & A