1
Q
4 types of tm
A
- Generic
- Descriptive (Can acquire distinctiveness thru secondary meaning)
- Suggestive (Inherently distinctive)
- Arbitrary/fanciful (Inherently distinctive)
2
Q
Importance of secondary meaning
A
Descriptive mark that acquires distinctiveness
- Only the secondary meaning is protected
- Need it to be placed on Principal Register
3
Q
What are the elements for trademark infringement claim
A
- Valid + legally protectable marks
- marks are owned by P; and
- D use of marks is likely to create
confusion concerning the origin of the goods/services
4
Q
Likelihood of confusion factors
A
- Degree of similarity
- Strength of owners mark
- Price + other factors indicative of care/attention expected
of consumers when making a purchase - Length of time D has used mark w/o evidence of actual confusion arising
- Intent of D in adopting the mark
- Evidence of actual confusion
- Whether the goods, though not competing, are marketed thru same
channels of trade + advertised thru same media - Extent to which the targets of the parties sale efforts are the same
- Relationship of goods in minds of the public bc of the similarity of function
- Other facts suggesting that consuming public might expect prior
owner to manufacture a product in Ds market
5
Q
What is initial interest confusion
A
Customer would realize immediately whether they were on the wrong site but find that is similar enough to what they were looking for and just use it instead
6
Q
Types of trademark dilution
A
- Blurring (Consumer search costs will rise if a TM becomes associated w variety of unrelated products. efficacy of mark as an identifier of a product will be diminished)
- Tarnishment (when famous mark is improperly associated w an
inferior/offensive product)
7
Q
Federal trademark dilution act - what is a famous mark?
A
- national fame; duration, extent, geographical reach of
advertising + publicity of mark, whether advertised by owner or 3rd
parties - amount, volume, and geographic extent of sales offered under the mark
- extent of actual recognition of the mark
- Likelihood of harm is enough
8
Q
Federal trademark dilution act exclusions
A
- Comparative ad/promotion
• Identifying + parodying, criticizing, or commenting upon the famous mark
• All forms of news reporting/commentary
• Any non-commercial use
9
Q
Federal trademark dilution act remedies
A
Generally no damages, only injunctive relief
o Exception: willful dilution
10
Q
Trademark nominative fair use defense
A
- Product not readily identified w/o mark – no other reasonable
way to refer to the product - Use is no more than necessary to make ID
- no suggestion of sponsorship or endorsement
–
if all 3 = absolute nominative fair use defense
11
Q
Trademark preliminary injunction analysis
A
- probability of success on the merits (likelihood of confusion)
- threat of irreparable harm - 8 cir. has held district ct can presume irreparable injury from finding of probable success on merits
- state of balance between this harm and injury that granting injunction will inflict on other parties
- Public interest
12
Q
Anti-cybersquatting consumer protection act. Creates a civil claim against a person who:
A
- bad faith intent to profit from mark (at time of registration) AND
- Registers, traffics in or uses a DN that is:
- identical, confusingly similar to a distinctive mark;
- dilutive of famous mark; or
- has special protection (Olympics)
13
Q
Uniform dispute resolution policy allows you to…
A
Bring in rem action against DN to have it ceased/given to you.
Need to show: distinctive mark, use in the DN, and bad faith.
Bad faith is registration and use.
- Cheap + 30 day resolution.
- Remedies: only get the DN
14
Q
“Traditional” TM fair use
A
Using a competitors mark truthfully to identify competitors goods or in comparative advertisements
15
Q
Registering Domain Names as Trademarks - Important points to remember:
A
- Registration of DN is not a TM “use”; must be used on site
- Site must provide a service; advertising them is not sufficient
- “Advertising one’s own products or services is not a service.”
- TM classes for products/services in “real world” generally diff from TM class for web site
16
Q
What are shrinkwrap licenses
A
- Effort to bind license agt w/o signature
- Usually refers to a license agt, governing a purchaser’s use of software of digitized data, that is presented to the purchaser AFTER payment
17
Q
Are Shrinkwrap Licenses Enforceable?
A
Majority view: tends toward enforcement
18
Q
Clickwrap agts generally enforceable if:
A
- Require that the user read the agreement first.
- Require that the user consent; provide means for refusal
- Don’t process order until after consent.
19
Q
What are Browsewrap Agreements?
A
- Nothing more than a link on the website; you don’t have to click on it before using the site (ex: terms of use/service)
- only enforceable when users have actual or constructive notice of terms before using site
20
Q
What is a “signature”?
A
UCC provides for “any symbol executed or adopted by a party with present intention to authenticate a writing.
21
Q
6 Key Issues to Enforceability of Electronic Contracts
A
- Authorization: Does the law authorize the transaction to be done electronically?
- Consent: Have the parties consented to electronic contracting?
- Signature: Is the electronic record signed?
- Authentication: Is the doc accurate, prepared by party to be held liable?
- Retention: Can it be retained?
- Record keeping and proof – Does it satisfy evidence law reqt’s?
22
Q
What is procedural and substantive unconscionability?
A
- Procedural- involves impropriety during the process of forming a K.
- Substantive - where a clause in a K is allegedly one-sided or overly harsh.
23
Q
e-contracts: choice of law and forum
A
- Choice of Law – generally OK, unless unconscionable + jdx bears no reasonable relationship to transaction
- Choice of Forum -presumptively valid
24
Q
Works of authorship
A
- literary works (software; sometimes databases)
- musical works
- dramatic works
- pantomime and choreographic works
- pictorial, graphic; other sculptural works
- motion pictures and other audiovisual works
- sound recordings
25
copyright Exclusions
Idea, procedure, process, system, method of operation, concept, principle, or discovery regardless of the form
26
copyright exclusions: merger doctrine
One or only limited number of ways to express an idea.
27
copyright exclusions: scenes a faire
Expression that are “as a practical matter, indispensable or at least standard in the treatment of a given [idea].”
28
Copyrights in Databases
* Compilation c – selection, arrangement+ org, but not the facts themselves (“thin” c)
* protection for data: trade secret law, misappropriation (swear of the brow protection),
* NBA v Motorola: protection of "hot" news, severely restricts misappropriation doctrine
29
elements of direct copyright infringement cause of action?
what is the traditional test for direct infringement?
claim: 1) ownership of a valid copyright; 2) violation of one or more of the exclusive rights of copyright owner
test: Access + substantial similarity (Q 4 jury)
30
Contributory Infringement elements
1) must be direct infringement
2) knowledge of infringing activities
3) Induces, causes or materially contributes to the infringing conduct of another
31
Vicarious Liability elements
ex: swap meet
1) direct infringement
2) Right and ability to control infringer’s acts and
(2) receives direct financial benefit from infringement (napster ct still found this element when might monetize in future)
32
Fair Use 4 factor test
1. Purpose and character of use (commercial/educational?)
2. Nature of copyrighted work
3. Amount and substantiality of portion used
4. Effect of use on potential market **
33
Other test for copyright infringement
Striking similarity; no proof of access b/c when nature of work offers only limited possibilities, test is “virtual identical copying.”
34
infringement claim for public display via playboy v frena
Assuming a 3rd party posted infringing material, his website publicly displayed, reproduced and distributed.
35
What is the DMCA and what conduct does it apply to?
DMCA was enacted to address specifically the liability of service providers for copyright infringement committed by their customers. The approach adopted was to create a series of "safe harbors" from liability.
36
To take advantage of a "safe harbor" service providers must:
1. Follow specific notice and take down procedures
| 2. Agree to remove repeated infringers
37
“service provider” for transitory communications:
entity offering the transmission, routing, or providing of connections ... between or among points specified by a user, of material of the user’s choosing, w/o modification to the content of the material as sent or received
38
“service provider” for caching, storage, information location tools
A provider of online services or network access, or the operator of facilities therefor
39
DMCA Notice and Takedown Provisions (not applicable to transmission b/c too short duration)
1. file form w Copyright Office identifying person to receive notice of alleged infringement
2. If ISP receives proper notice ("substantially complies"), take down (or block access to) allegedly infringing materials
3. ISP gives poster notice of take down
4. If poster files counter-notification under penalty of perjury, give notice to complainant, and tell them will repost in 10 days
5. Repost in 10-14 days unless complainant gives notice of filing court action
40
DMCA requirements - threshold eligibility for a safe harbor
1. Must adopt and reasonably implement policy re termination of repeat infringers, + info subscribers or account holders of that policy
2. Must not interfere w standard tech measures used by copyright owner to identify and protect its works
3. If service provider meets reqts of DMCA, immune from monetary damages; if not, then traditional copyright rules apply re: infringement
41
Sampling ≠ fair use
Sampling remains a commercial use even if some users eventually purchase the music. Even authorized temporary downloading of individual songs for sampling is commercial in nature
42
what is space-shifting / is it fair use?
ex: converting CDs into mp3 to put on your ipod. when its personal and non-commercial in nature then its fine
43
What is “intermediate and transient storage”?
exempted storage and transmission carried out through an automatic tech process that is indiscriminate (provider takes no part in selection of material) where the copies are retained no longer than necessary for the purpose of carrying out the transmission.
44
Types of conduct by service providers:
| ***for 2,3,4 you must comply with notice & takedown procedures
1. Transmissions (transitory digital network communications)
2. Caching
3. Postings (storage of info on systems or networks at direction of users)
4. Linking (information location tools)
45
DMCA - required to continually monitor?
DMCA only relates to items posted on the site as of the date of receipt of the notice; no requirement to continually monitor the site for future posting
46
Peer 2 Peep cases: MGM v. Grokster
Different business model/technology; key is whether D had knowledge or encouraged it
47
DMCA – Anticircumvention - fair use doctrine
can be a defense to unauthorized copying, but not unauthorized access.
48
DMCA – Anticircumvention /o “effectively controls access” means -
“requires the application of information or a process or a treatment, with the authority of the copyright holder, to gain access to the work”
49
DMCA – Anticircumvention / “effectively protects” -
the rights of the copyright holder if it “prevents, restricts, or otherwise limits the exercise of a right of a copyright owner”
50
Trespass to Chattels
- Intermeddling with a chattel
- Must be actual damages (traditional)
- First use in spam cases
- Then used in spidering cases (floodgates argument)
51
Defamation for ISPs - Communications Decency Act
* No provider of an interactive comp service shall be treated as the publisher or speaker of any info provided by another info content provider.
* Applies not only to ISPs, but also websites, chat rooms, and any online service that permits 3rd party posting
52
Fair Information Practices
* No secret collection of personal data
* way for person to find out what info has been collected/ how its used
* way for person to prevent info obtained for 1 purpose from being used for another purpose w/o consent
* way for a person to correct/amend info
* obligation on the info collector/holder to insure that it is reliable and to prevent unauthorized access or use of that info
53
Children’s Online Privacy Protection Act 1998: Operator must provide “clear and prominent” notice of
(1) what info is collected from children;
(2) how the info will be used;
(3) the operator’s disclosure practices
54
Communications Decency Act §230 Does NOT protect
* Against federal criminal law violations
* Against IP infringements
* Against situations where website owner provides the content, and user merely chooses
55
Children’s Online Privacy Protection Act 1998: Operator requirements:
* make “reasonable efforts” to ensure a parent receive notice
* obtain “verifiable parental consent” b4 collecting,using or disclosing child’s personal info
* must provide means for parent to inspect info collected about his child
* take reasonable steps to preserve information internally
56
“sliding scale” depending on what operator will be doing with information
* for internal use only can use e-mail or telephone call
* for chat rooms, msg boards and disclosure to 3rd parties, must use more reliable methods (consent forms signed/returned, cc#, 800# + trained staff, or digital signature
57
Electronic Communications Privacy Act of 1986 - Extend privacy protection to
electronic communications reasonably expected to be private
58
Electronic Communications Privacy Act of 1986 - crim penalties
for intentional, unauthorized access to a facility through which an electronic communication service is provided and obtaining, altering, or preventing authorized access to a wire or electronic communication while it is still in electronic storage.
59
Data Breach Notification Law
Any company doing business in California that maintains computerized customer records must notify a customer, no matter where the records are located, if there is a security breach involving those records
60
Federal Trademark Dilution Act
What is the purpose of the Act?
Gives owner of famous marks a federal claim for dilution; before only state
claims.
Fall 15
flashcards
Decks in class (3)
# Cards
