TMPanda dwe.2012

SM
GIANT!SM Brand Protection

An Overview of
Trademarks & Copyrights
in the
Online Space

© 2012 Douglas Burda, Esq.
248/217.0002 | douglas@trademarkpanda.com

Background

Douglas Burda, Esq. | 248/217.0002 | douglas@trademarkpanda.com

Intellectual Property
 Forms.
 Trade secrets.
 Patents.
 Trademarks.
 Copyrights.

 Concepts.
 Quid pro quo as the sine qua non.
 The exchange is the essence.


Trade Secrets
 Definition. Any formula, pattern, device or
compilation of information which is used in one’s
business, and which gives him an opportunity to
obtain an advantage over competitors who do not
know or use it.
 RESTATEMENT OF TORTS 757, Comment b
(1939).

 Generally protected by state law, not federal law.

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

 Factors.
 1. Measures taken to protect.
 2. Difficulty in acquiring info by other means.


Patents
 Definition. The grant of a property right to an
inventor, issued by the USPTO.
 A negative right to exclude others from making,
using, offering for sale, or selling the invention
in the US, or importing the invention into the
US.
 Term. 20 years from the date of application to
the USPTO.

 Requirements. Novel, useful, nonobvious.

 Types.
 Utility patents. New and useful process,
machine, article of manufacture, composition of
matter, improvement to any of these.
 Design patents. New, original, ornamental
design for an article of manufacture.
 Plant patents. Invents or discovers and
asexually reproduces any distinct and new
variety of plant.

Trademarks
 Definition. Word, phrase, symbol or design, or
combination of these, that identifies and
distinguishes the source of goods of one party
from those of others.
 Term. Potentially infinite, based on use.
 Trademarks can also extend to product
design, product packaging, colors,
animations, sounds, scents, fragrances,
flavors (if nonfunctional).

 Governed at State and Federal Levels
 Federal statute: 15 U.S.C. 1051-1129,
“Trademark Act of 1946”, “The Lanham Act”.

 Note: Logo: design mark, Brand: trademark.


Obtaining a Federal Trademark
Registration
 Filing bases.
 Current use under 1(a).
 Owner of a trademark
 Use of the trademark
 In commerce
 With knowledge and belief that no other person has the
right to use the trademark in commerce
 and when used is not likely to cause confusion,
mistake, or to deceive
 Intent to use under 1(b).
 Bona fide intent to do the above.
 Loophole based on 1(b) filings.
 Publication & Opposition.
 Almost anyone can file an Opposition within 30 days of
OG publication (you only have to allege that you believe
you would be harmed by registration).

 Focus.
 Owner of mark: use, Consumers: confusion.


Benefits of Federal Trademark
Registration
 Principal Register
 Marks registered here are entitled to all rights
under the Lanham Act, including:
 Constructive notice of ownership
 Legal presumption of exclusive use
 Date of constructive use
 Sue for infringement in federal court
 Prevent importation of goods bearing
infringing mark
 Exclusive right to use/incontestability
 US registration as basis of registration in
foreign countries


Spectrum of Distinctiveness
Type of Mark Definition Examples

Generic Can never be registered. BANK, GROCERY STORE

Descriptive Describes an ingredient, quality, MEDICAL GUIDE (website
characteristic, function, feature, services featuring medical
purpose or use of the goods or guide), DENIM (jeans),
services. SPICY SAUCE (salsa)

Suggestive Requires imagination, thought or CHICKEN OF THE SEA (tuna
perception to reach a conclusion as fish), ROACH MOTEL (insect
to the nature of the goods/services. traps), COPPERTONE
“Inherently distinctive” – no (suntan oil)
secondary meaning/acquired
distinctiveness necessary.
Arbitrary/Fancifu “Inherently distinctive” – no Fanciful: PEPSI, KODAK
l secondary meaning/acquired Arbitrary: APPLE
distinctiveness necessary. (computers), STUDIO 54
(night club services)

Trademark Infringement:
Likelihood of Confusion
 Is the mark likely to cause confusion in the minds
of the consuming public as to the source of the
goods?
 1. Strength of the mark
 2. Proximity of the goods
 3. Similarity of the marks
 4. Evidence of actual confusion
 5. Marketing channels used
 6. Type of goods and degree of care likely to be
exercised by the purchaser
 7. Defendant’s intent in selecting the mark
 8. Likelihood of expansion of the product lines
 AMF, Inc. v. Sleekcraft Boats, 1979

 Du Pont Factors


Trademark Infringement:
Initial Interest Confusion
 Temporary confusion that is dispelled before
the purchase is made.
 Ex. West Coast Video & Blockbuster Video
 1973: Actual or potential confusion at the
time of purchase does not need to be
demonstrated. Where Party A would attract
potential customers based on the reputation
built up by the Party B, the initial interest
confusion works an injury.
 Since 1999: Courts have upheld infringement
claims in domain names, meta-tags, and
advertising keywords under initial interest
confusion.
 Internet Impact: initial interest confusion
claims have increased from 10 cases before
1990 to more than 100 from 1990 to 2005.


Trademark Dilution
 Dilution.
 Protects sufficiently strong or famous marks
from losing their association with a particular
product.
 Not really concerned with confusion of the
public, but with the property rights of the mark
owner.
 2 flavors.
 1. Blurring. Reduction of strength of a mark
through association with more than one
product.
 Ex. DELL for coffee machines.
 2. Tarnishment. Reduction of strength of a
mark through unsavory associations.
 Ex. STARBUCKS for adult film productions.


Copyrights
 Definition. Protection provided to authors of original
works of authorship fixed in a tangible medium of
expression.
 Works. Literary, dramatic, musical, artistic,
audiovisual, architectural.
 Published or unpublished.
 Fixation. Manner/medium virtually unlimited: words,
numbers, notes, sounds, pictures, any other graphic or
symbolic media.

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

 Term.
 1 author: life of the author + 70 years.
 Joint work: expires 70 years after last author’s death.
 Works made for hire/anonymous/pseudonymous
works: 95 years from first publication or 120 years
from creation.


Obtaining a Copyright
 1. Automatic upon fixation. No publication or
registration necessary.

 2. Registration with the Copyright Office.
 Benefits.
 Established public record of claim of
copyright.
 Necessary before infringement lawsuit can
be brought.
 Under certain circumstances, presumption
of validity of the copyright, availability of
attorney’s fees, statutory damages (if
willful, up to $150K per incident).
 Can further register with U.S. Customs to
prevent importation of infringing articles.


Copyrights
 Copyright exclusive rights: a “bundle of sticks”.
 Reproduce
 Adapt/Make derivative works
 Distribute copies
 Perform publicly
 Publicly display the work


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

 Elements.
 Ownership of a valid copyright.
 Unauthorized copying, usually demonstrated by
showing:
 1. The alleged infringer had access to the
work, or
 2. Substantial similarity of the works from the
viewpoint of the average observer.

 Digital Millennium Copyright Act (DMCA).
 Largely targeted at cybercrimes. Deters access
circumventions, among other things.


Limitations on Copyright
 Fair use doctrine.
 After a showing of infringement, this is a claim
that the otherwise unauthorized use should be
allowed. The most common bases for this are
that the work is not used for commercial
purposes, and instead for criticism, comment,
reporting, teaching or scholarship. Other bases
are available and are a result of considering
certain factors:
 1. Purpose/character of the use (commercial
v. nonprofit/educational)
 2. Nature of the copyrighted work
 3. Amount and substantiality of the portion
used v. work as a whole
 4. Effect of the use on the potential market for
the original


Rhetoric
 Trademarks
 Could all meta elements serve as the basis for
initial interest confusion?
 Does your domain name infringe?
 When is it legally fair to refer to another’s
trademark on the internet?

 Copyrights
 What if you site the source of the information
you are using? (Righthaven)
 Can you use iFrames? Other enclosing
methods?
 Is hyperlinking permitted?
 DMCA
 Takedowns
 Impact on reverse engineering


Holler at me!
w. trademarkpanda.com

tel. 248/217.0002

eml. douglas@trademarkpanda.com

tw. @trademarkpanda


TMPanda dwe.2012

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Editor's Notes