• How does digital publishing and online connectivity
change or ‘complicate’ these two areas of
intellectual property law?
• Trademarks: symbols, words, sounds that
distinguish goods and services
• Copyrights: ownership interest in creative works
• Patents: inventions and processes
• Trade secrets: proprietary, secret information that a
business is dependent upon (manufacturing
• Negative right: Prevent others from doing something
• Why/how does the internet provoke a re-
examination of trademark law?
• What policy is behind laws, regulations, cases that
impact trademark law and the internet?
• In other words, what outcomes is the law trying to
prevent with trademark law generally? With
trademark law and the internet specifically?
• Words, symbols, sounds, images, video indicate the
source of goods/services they represent
• Indicate source! And distinguish goods and services
in the marketplace
• Hugely important to consumer protection because
consumers trade on reputation. What does this
Likelihood of confusion
• Main test of infringement
• A holder asserts confusion as evidence of
infringement (not intention!)
• A potential infringer asserts lack of confusion as a
• Not always clear!
• Lexus, BandAid, CleanEx
Symbols and renewal
•® ℠ ™
• 10 year initial registration with unlimited
• Copyright and patent have limits; Why don’t
• Foundational federal 1946 law of trademark
• Prior to Lanham Act most trademark rights were
maintained via enforcement of rights in individual
states under common law—labor intensive!
• Any word, name symbol or device used to
distinguish one company’s goods or services from
• Anything that can be viewed or heard
Kinds of marks
• Trademarks: Used to distinguish goods
• Service marks: Used to distinguish services
• Collective marks: Used to distinguish organizations
• Certification marks: Used to establish quality by third
parties (Cordon Bleu, ISO etc.)
• Distinction is sort of artificial; Colloquially these are
all marks and almost universally referred to as
• Must be unique to be registerable
• Generic to descriptive to suggestive to
• Generic not registerable
• Descriptive sometimes registerable
• Suggestive always registerable
• Arbitrary/fanciful always registerable
• Applying distinctiveness to product design and
• What does the incredibly creep SG Services v.
God’s Girls case tell us about trade dress and
• Trade dress is an incredibly important area of law
where design and intellectual property interests
intersect in terms of web site look and feel
• Standard is likelihood of confusion
• Lesser standard dilution when no confusion is likely
to occur because the infringement can lessen the
value/impact of the mark
• Dilution is only available to famous marks. Why?
• Dilution can occur by blurring or tarnishment; What’s
Online infringement (pp 113-17)
• Linking and deep linking
• Framing and in-line linking
• Initial Interest Confusion
• Sponsored advertising and search
• Which of these if any represent infringement?
• What role does initial interest confusion play in all of
this? Does this standard need some clarification
Domain names and
• Lots of opportunistic behavior here that could harm
consumers and create confusion
• ACPA requires bad faith; How is this defined?
ACPA Bad Faith (9
• Offer to sell to owner for a fee
• False contact info
• Register multiple names that are similar
• No particular reason to use the name
• No use of domain to sell goods or services or
promote a cause
• Attempt to divert from the trademark owners
• Registers a mark similar to one on the distinctive
end of continuum
• Off all intellectual property copyright is the most
ubiquitous, far reaching an important to the internet.
What can be
• Literary/written works
• Dramatic presentations
• Pictures, graphics and sculpture
• Sound recordings
• Must be original, fixed and registered before there can
Works for hire
• Copyright holder is the business who hires the
• Contractual arrangement whereby someone
bargains away their exclusive rights in return for
employment rights and privileges
Copyright Act of 1976
• Almost exclusively federal since it is a constitutional
• To promote the Progress of Science and useful Arts,
by securing for limited Times to Authors and
Inventors the exclusive Right to their respective
Writings and Discoveries. Article 1, Section 8,
• Enforced at common law prior to creation of Act
Why do we copyright?
• Mostly economic welfare and development of new
• What does this mean?
• Core of copyright is to control a creative or artistic
work and not allow others to use or gain an
economic benefit from its existence without you
agreeing to that use
• Copyright prevents/limits reproduction, preparation
of a derivative work, distribution (renting or selling),
public performance, public display, digital
• Copyright prevents the creation of derivative works
• Movies from books, songs from poems, collections
of clips into a new work for advertising or
File sharing and distribution
• Is it distribution?
• Depends upon the architecture of the site and how
the sharing is established
• What does this mean?
rights and the internet
• Is loading a clip on YouTube with your friends
dancing and singing along to a popular song playing
in the background a public performance or display?
Limitations on exclusive
• Duration-copyright is not indefinite! Eventually
copyrighted materials make their way into the public
domain. How? Why?
• Fair use: Education or parody/satire
• First sale doctrine (applies to distribution only) and
says a legally acquired copy can be sold without the
original copyright holder’s permission
AV v iPradigms
• Damages: actual or statutory (sometimes hard to
determine real harm so statute provides amounts
per incident); What is the policy idea behind
statutory damages? How are they like fines?
• Criminal liability (prison sentences and fines)
• Liability of one party based upon infringement of
• Contributory liability: One has knowledge of
infringer’s actions and contributes to the
• Vicarious liability: One benefits from the infringer’s
• Inducement liability: One creates a device or
process and encourages others to use it for
• Response to technology changes and their impact
• What policy considerations do you see here?