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Intellectual Property onthe Web
Trademark, Copyright and Patent IssuesThat Impact All Companies in the
Internet Age
The material provided herein is for informational purposesonly and is not intended as legal advice or counsel.
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Please help yourself to foodand drinks
Please let us know if the roomtemperatureis too hot or cold
Bathroomsare located past thereception desk on the right
Please turn OFFyour cellphonesPlease complete and returnsurveysat the end of the
seminar
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Trademark and CopyrightIssues on the Web
Jeanne Hamburg
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Why Important? Top IP concerns:
Cybersquatting
Unlawful copying of digital media content
Reverse engineering
Phishing
Sale of counterfeit goods online
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Overview Transactional Issues:
Licensing Web Content
Web Publishing
Web Site Development Counseling Issues
Web Content Clearance/Fair Use
Contentious Issues
Domain name recovery (cybersquatting) DMCA
Litigation of online copyright infringement and licensing cases
Copyright and trademark issues arising from phishing, onlinecounterfeiting, key word purchases, hyperlinking, pop up ads,framing
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Licensing Web Content Distinguish whether content is being
licensed or just a trademark
Is the content copyrightable?
What type of use is contemplated? (Maynot require a license)
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Licensing Web Content What kind of license?
What type of grant?
Representations and Warranties
Credit, right of attribution, right ofpublicity
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Web Publishing Publish and/or
purchase a book that
is printed andshipped to you or todownload a digital
copy
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Web Publishing Form of license, same issues
Technological safeguards on unauthorized
copying
Does third party site have terms of useprohibiting unauthorized use of digital
content purchased?
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Web Site Development Hiring of third party (independent
contractor) to develop site
Who will own content created and thehtml code used to create it?
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Web Content Clearance: Fair Use You are a site owner or third party owning
content appearing on third party site without
permission Cannot assume creative content (graphic,
textual, sound recordings, etc.) are notprotected by copyright simply because
available on web Sites claim to make material available that is
in the public domain (copyright hasexpired) but may not be
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Web Content Clearance If license content from such a site, look for
representations and warranties that site
owner has the rights Look for terms of use that may restrict useof the licensed content; often a one timeclick through
Right of publicity/privacy issues if personis depicted in connection with promotinga business
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Web Content Clearance: Fair Use Fair use codified at 17 U.S.C. 107
Allows the user of copyrighted material to do things
otherwise exclusively the right of the copyright ownerso permission not required
Must be for fair use purposes enumerated by statute:e.g., criticism, comment, news reporting, teaching,
scholarship, research
Four factor test for fair use: (1) purpose and characterof use; (2) nature of work; (3) amount and substantialityof portion used; (4) effect on marketplace value
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Contentious Issues
Cybersquatting
DMCA Litigation of online copyright/licensing
cases
Trademark and copyright issues uniqueto the web
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Cybersquatting Trademark, or confusingly similar
mark, is used in a web site address
Prohibited by federal law
Vehicles for domain name recovery
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Federal Court Action forCybersquatting
Rarely done unless there is
also another act of trademarkinfringement
Expensive
No showing of bad faithrequired
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UDRP Proceedings Arbitration proceeding Not necessary to own registered mark
Confusingly similar
No legitimate right to the domain name Registered in bad faith
ICANN
WIPO in Switzerland and NAF in Minneapolis Complaint, Reply, and Surreply, then a singlemember or three member panel will decide. Allfiled electronically.
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DMCA: Service Provider Liability DMCA effective weapon for those whose
copyrights are infringed on the web
Makes the host of content, who receivesnotice of the infringement from thecopyright owner or its counsel, liable if it
does not take down the content Fantastic remedy when infringers identity
is not known or infringer is uncooperative
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ISPs Frequently ContactedUnder DMCA
Apple (iTunes, TETRIS infringements) Google
Gadgets
Android Amazon
http://www.freestyle-developments.co.uk/img/projects/tetris.jpghttp://images.google.com/imgres?imgurl=http://www.technologygear.net/wp-content/uploads/2009/01/google_android_logo.jpg&imgrefurl=http://www.technologygear.net/android-application-developers-will-be-paid.html&usg=__rUjZGa7hpo9w7SV6hgNV_7WO8LI=&h=550&w=585&sz=84&hl=en&start=2&um=1&tbnid=lmnYcJ2Vwi4QoM:&tbnh=127&tbnw=135&prev=/images%3Fq%3Dgoogle%2Bandroid%2Blogo%26hl%3Den%26um%3D1http://images.google.com/imgres?imgurl=http://www.blogsdna.com/wp-content/uploads/2009/02/itunes-logo.png&imgrefurl=http://www.blogsdna.com/2468/itunes-agent-lets-you-to-synchronize-any-portable-mp3-player-with-apple-itunes.htm&usg=__RjgJRdeBSnog0u3cPOX6y0d0pVI=&h=153&w=137&sz=31&hl=en&start=7&um=1&tbnid=Wk4qcsVLeSXNUM:&tbnh=96&tbnw=86&prev=/images%3Fq%3Dapple%2Bitunes%2Blogo%26hl%3Den%26um%3D18/10/2019 IP Seminar PPT.ppt
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DMCA: Anti-circumvention Makes it unlawful for someone to hack
through technology designed to protect
the unauthorized exploitation ofcopyrightable content
Applies only if the content to which
unauthorized use is being blocked iscopyrightable (e.g. circumvention ofaccess to alphabetical directory listingwould not violate DMCA)
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Litigating Online CopyrightInfringement Cases Copyrightable expression (factual data
organized logically not protected) Access to copyrightable work (can often be
demonstrated with IP addresses)
Copying
Copying is presumed from substantialsimilaritythe key test for infringement
Fair Use
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Litigating Online CopyrightInfringement Cases
Must obtain registration before you sue;expedited registration may be secured for this
purpose (10 days vs. several months) Preliminary injunction often ends the case
Declaratory judgment is popular for the alleged
infringer Must bring suit in federal court
Often choice of jurisdiction
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Litigating Online CopyrightInfringement Cases: Licenses
Click through agreements or terms of use
can raise special issues Important to attend to the terms Consent to jurisdiction
Restricts use of content that is not copyrightable
Adhesion: courts generally find these agreementsbinding
Authority to bind company
Hospital sued by provider of health care ratings
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Phishing Criminally fraudulent process of attempting to acquire
sensitive information such as usernames, passwords andcredit card details by masquerading as a trustworthyentity in an electronic communication
Communications purporting to be from popular socialweb sites, auction sites, online payment processors or ITadministrators are commonly used to lure theunsuspecting public
Typically carried out by email or IM, and it often directs
users to enter details at a fake website whose look andfeel are almost identical to the legitimate one. Even whenusing it may require tremendous skill to detect that thewebsite is fake
MasterCard/UDRP recovery and investigation
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Legislation on Phishing No legislation directly prohibits, but there may be copyrightand trademark remedies available since site content andtrademarks are copied
Credit Card Fraud Act The Identity Theft and Assumption Deterrence Act Fair and Accurate Credit Transaction Act California's Anti-Phishing Law
California in 2005 became the first state to enact legislationdesigned specifically to deter phishing. Some victims ofphishing, including those who provide Internet access service to
the public, own a Web page, or own a trademark, may recoverup to $500,000 for each proven violation of the statute. Othervictims may recover up to $5000 for each violation of the statute.The statute also allows the state's attorney general or a districtattorney in the state to bring an action to enjoin furtherviolations.
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Online Counterfeiting Best Practices for Trademark Owners Educate the public so they are not deceived on
online searches, marketplace and shopping sites
Request that Payment Service Providers (such ascredit card and debit card companies, PayPal)terminate service and indemnify PSP for wrongfultermination
Report abuses of PSPs trademark if trademarkowners are unable to make a purchase on a sitebearing the PSPs mark
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Online Counterfeiting
Contact the providers of Internet shopping
services under the DMCA or Lanham Act NGC trade dress of coin holders (ebay form)
eBay, Inc.
Yahoo
Google Amazon
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Is Copying of Hyperlinks aCopyright Infringement?
In the DeCSS case Universal v. Reimerdes, 2600Magazine prohibited from posting hyperlinks to
DeCSS code because it found the magazine hadlinked for the purpose of disseminating acircumvention device
Intellectual Reserve v. Utah Lighthouse Ministry:linking to unauthorized copies of a text might be a
contributory infringement of the work's copyright Ticketmaster v. Tickets.comfound that hyperlinksto ticket broker sites copied by tickets.com from theticketmaster web site were not infringements ofcopyright
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Hyperlinking Best Practices
In an email, do not provide a live
hyperlink Beneath a hyperlink in a site, include a
disclaimer that the site owner is not
affiliated with, does not endorse orsponsor the trademark owners services
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Framing
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Framing
Perfect 10 v. Amazon.com: Google's in-line links were not infringements of the
copyright owner's rights to copy anddisplay its work.
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Pop Up Ads
Are a site owners copyrights ortrademarks infringed when a competitorspop up ad is displayed when a consumeraccess the site?
Most courts hold no when: No use in commerce of the site owners
trademark in the ad itself
Not a derivative work
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Key Word Purchases Search engines such as Google sell third
party trademarks as key words whichwill display the purchasers web site ona search by the user for the keyword/trademark
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Key Word Purchases
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Key Word Purchases
US courts split on whether this isunlawful Is there likelihood of confusion, trading off
on goodwill earned by the trademarkowner or is this just like a virtualmarketplace where different brandedgoods are displayed on virtual store
shelves next to each other? Issue may be treated differently abroad
and in US
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Pay Per View/Pay Per ClickAdvertising
What is PPV/PCC?
Is the PPV or PPC ad of a third party (notthe trademark owner) an infringement ifit does not use the trademark in the adbut is displayed on key word search of
trademark? In 2006 Yahoo prohibited PPV or PPC
advertisers from bidding on third party
trademarks
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Pay Per View/Pay Per ClickAdvertising
Google's AdSense program still
permits this; 95 percent of Google'srevenue comes from AdSense.
What are fraudulent clicks?
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Questions & AnswersSession Part 1
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Seminar Intermission
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Business Method Patents andthe Bilski Case
Chris Casieri
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What is a Patent? Exclusive rights granted to an inventor
for a limited period of time in exchange
for a public disclosure of the invention
Rights extend for 20 years from earliest
filing date or 17 years from date ofissuance depending when theapplication was filed
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What is the Origin of U.S.Patent Law?
Article I, Section 8, Clause 8 of the
United States Constitutionempowers the U.S. Congress: To promote the Progress of Science and
useful Arts, by securing for limited Times
to Authors and Inventors the exclusiveRight to their respective Writings andDiscoveries.
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What are the Types of U.S.Patents Available?
Utility Patents Bilskis application
Design Patents
Plant Patents
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What Types of Subject Matter are
Protectable by a Utility Patent?
Section 101 of US Patent law sets out:
Whoever invents or discovers any new and usefulprocess, machine, manufacture, or composition of
matter, or any new and useful improvementthereof, may obtain a patent therefore, subject tothe conditions and requirements of this title.
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What is a Business MethodPatent?
Business method patent is a type of
utility patent which is directed to newmethods of doing or conductingbusiness
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Famous Business MethodPatent and Industries Amazons one-click buying patent used for
purchasing on Amazon.com Business method patents are useful to the
following industries: E-commerce
Insurance Investment
Banking
Tax Compliance
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What Are Patent Claims? Patent claims define, in legal patent
terms, the extent of the protection
sought in a utility application
A sample patent claim may read:
"Method for computing future lifeexpectancies, said method comprisingsteps X, Y, Z, ..."
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In general, Bilskis main
claim requires the steps of: Initiating a series of transactions between a broker
and purchaser by which the purchaser may buy a
commodity at a first fixed rate based on historicalprice levels
Identifying a producer of the commodity
Initiating a series of transactions between the brokerand producer, at a second fixed rate, such that riskpositions balance out
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Legal History of Bilski US Patent Examiner rejected all claims
USPTOs Board of Patent Appeals and Interferencesaffirmed the Examiners decision
Court of Appeals for the Federal Circuit (CAFC)
affirmed the USPTOs rejection of all claims
Bilski appealed to the US Supreme Court for reviewthe CAFCs decision
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Why is Bilski Important? CAFCs decision was extraordinarily
over broad As a result, software, pure businessmethods, medical diagnostic methods,biotechnology methods, medical device
and e-commerce patents may beunpatentable/invalid in view of theCAFCs decision
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What Test was Adopted by the CAFC
and What was Their Decision?
CAFC applied a particular machine ortransformation (MOT) test: A claimed process is surely patent-eligible under
101 if: (1) it is tied to a particular machine orapparatus, or (2) it transforms a particular articleinto a different state or thing
In other words, transformation/reduction of anarticle 'to a different state or thing' is the clue tothe patentability of a process claim that does notinclude a particular machine
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What is the Historical Standpoint
Taken by the Supreme Court?
The Supreme Court typically allows
inventions that incorporate or applyabstract concepts such as mathematicalformulas, as long as the invention, asclaimed, has a sufficiently practicalimpact in the real world.
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What Alternatives are There to the
MOT Test Adopted by the CAFC?
In the 1998, the CAFC utilized the
straightforward concrete, useful,tangible test (the CUT test)
CAFC effectively overruled the CUT
test with their Bilski decision
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What are the Issues Before
the Supreme Court?
Key question to be considered by the
Supreme Court: Whether the MOT test should command
patentability outcomes possibly not intendedby Congress or required under the plain
language of the statute
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How May the Supreme Court
Decide? The Supreme Court may:
Affirm the MOT test, but rule that it is not thedefinitive test for determining patent eligibility
Rule that business methods are inherently abstractideas and are not patentable
Affirm the CAFCs decision, making the MOT testthe bright-line test for establishing patentabilityunder 35 USC 101
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How Should Software/Business
Methods be Protected Until theSupreme Courts Decision?
Software and business methods should stillbe protected with patents
Patent claims should be included that satisfy
the narrow MOT test
Patent claims satisfying the broader CUT testshould also be included
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Claim Satisfying the MOT test A method comprising:
Providing a computer network having aprogrammed computer and a VOIP device
Initiating a first sales transaction between twoparties over the computer network via theVOIP device
Identifying a producer with the programmed
computer over the computer network Initiating a second sales transaction betweenthe producer and a party over the computernetwork via the VOIP device
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Claim Satisfying the CUT Test A method comprising:
Initiating a first sales transaction between two
parties Identifying a producer
Initiating a second sales transaction betweenthe producer and a party
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Questions & AnswersSession Part 2
Thank you for coming!