2. Agenda
• Trademark
• Copyright
• How does digital publishing and online connectivity
change or ‘complicate’ these two areas of
intellectual property law?
3. Intellectual Property
• 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
processes)
• Negative right: Prevent others from doing something
(infringing!)
4. Trademark
• 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?
5. Trademarks generally
• 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
mean?
6. 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
defense
• Not always clear!
• Lexus, BandAid, CleanEx
7. Symbols and renewal
•® ℠ ™
• 10 year initial registration with unlimited
renewals
• Copyright and patent have limits; Why don’t
trademarks?
8. Lanham Act
• 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
another
• Anything that can be viewed or heard
9. 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
‘trademarks’
10. The Distinctiveness
Continuum
• Must be unique to be registerable
• Why?
• Generic to descriptive to suggestive to
arbitrary/fanciful
• Generic not registerable
• Descriptive sometimes registerable
• Suggestive always registerable
• Arbitrary/fanciful always registerable
11. Trade dress
• Applying distinctiveness to product design and
packaging
• What does the incredibly creep SG Services v.
God’s Girls case tell us about trade dress and
websites?
• Trade dress is an incredibly important area of law
where design and intellectual property interests
intersect in terms of web site look and feel
12. Infringement
• 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
the difference?
13. Online infringement (pp 113-17)
• Linking and deep linking
• Framing and in-line linking
• Metatags
• Initial Interest Confusion
• Sponsored advertising and search
• Which of these if any represent infringement?
Thoughts? Concerns?
• What role does initial interest confusion play in all of
this? Does this standard need some clarification
15. Domain names and
trademark
• Lots of opportunistic behavior here that could harm
consumers and create confusion
• Cybersquatting
• TypoSquatting
• ACPA requires bad faith; How is this defined?
16. ACPA Bad Faith (9
requirements!)
• 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
websites
• Registers a mark similar to one on the distinctive
end of continuum
18. Copyright
• Off all intellectual property copyright is the most
ubiquitous, far reaching an important to the internet.
Why?
19. What can be
copyrighted?
• Literary/written works
• Music
• Dramatic presentations
• Choreography
• Pictures, graphics and sculpture
• Film
• Sound recordings
• Architecture
• Must be original, fixed and registered before there can
be infringement
20. Works for hire
• Copyright holder is the business who hires the
author
• Contractual arrangement whereby someone
bargains away their exclusive rights in return for
employment rights and privileges
21. Copyright Act of 1976
• Almost exclusively federal since it is a constitutional
right
• 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,
Clause 8
• Enforced at common law prior to creation of Act
22. Why do we copyright?
• Mostly economic welfare and development of new
ideas
• What does this mean?
23. Exclusive Rights
• 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
transmission
24. Derivative works
• Copyright prevents the creation of derivative works
as well
• Movies from books, songs from poems, collections
of clips into a new work for advertising or
entertainment
25. File sharing and distribution
• Is it distribution?
• Depends upon the architecture of the site and how
the sharing is established
• What does this mean?
26. Public performance/display
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?
27. Limitations on exclusive
rights
• 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
30. Remedies
• 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?
• Injunctions
• Criminal liability (prison sentences and fines)
32. Secondary copyright
liability
• Liability of one party based upon infringement of
another
• Contributory liability: One has knowledge of
infringer’s actions and contributes to the
• Vicarious liability: One benefits from the infringer’s
actions
• Inducement liability: One creates a device or
process and encourages others to use it for
infringement purposes
33. Digital Millennium
Copyright Act
• Response to technology changes and their impact
on copyright
• What policy considerations do you see here?
