Intellectual property (or “I.P.”) is becoming more important because the value of many corporations (e.g., Microsoft) is based primarily on I.P.
Founders of America understood the value of I.P.  and its impact on interstate commerce.
Article I § 8authorizes Congress to “secure[e] for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Types of Intellectual Property

  • Trademarks.
  • Service Marks.
  • Trade Dress
  • Patents.
  • Copyrights.
  • Cyberspace I.P.


Distinctive mark, motto or device or emblem that a manufacturer stamps, prints or otherwise affixes to the goods it produces.
Distinguish product/service from goods of other manufacturers and merchants.
Avoids consumer confusion.
Case 7.1: Coca Cola v. Koke Co. (1920).

Trademarks-Statutory Protection

Lanham Trademark Act (1946) creates incentives for companies to invest; prevents unjust enrichment of companies who infringe.
Federal Trademark Dilution Act (1995)  Cause of action regardless of competition or confusion based on a “similar” mark.

Trademarks – Registration

Register with U.S. Patent Trademark Office if:

  • Mark is currently in commerce; or
  • Applicant intends to put it into commerce within 6 months.
  • Registration allows use of “®” symbol.

Trademark Infringement

Whenever a trademark is copied or use, intentionally or unintentionally, there is infringement.
Trademark owner has cause of action against infringer,unless trademark is a “generic” term.
Lanham Act designed to prevent consumer confusion about similar marks.

Trademark – Distinctiveness

Trademark must be sufficiently distinct.
Strong’ Marks:

  • Fanciful.
  • Arbitrary.
  • Suggestive marks.

Secondary Meaning.
Generic Terms: escalator, aspirin.

Trade Dress

  • Refers to the image and overall appearance of the product.
  • Same protection as trademark.
  • Issue is consumer confusion.

Example: distinctive décor, product names, packaging of Starbucks coffee shops.

Service Marks
Similar to trademark but used to distinguish services of one person/company from another.
Titles and character names used in media are frequently registered as service marks.

Trade Names
Trademarks apply to products.
Trade name applies to companies and is protected by federal law as well. Example: IBM, Coca-Cola, NBC.

Cyber Marks
Online trademarks.

Domain Names:

  • Conflicts: ICANN, WIPO.
  • Anti-Cybersquatting Consumer Protection Act (1999) amended the Lanham Act.
  • Meta Tags.

Case 7.2:Playboy Enterprises v. Welles (2002).
Cyber Mark Dilution.

Exclusive federal grant from U.S. Patent and Trademark Office to make, use and sell an invention for 20 years.

  • Patent Infringement.
  • Patents for Software are now available.
  • Patents for Business Processes.


Introduction to Copyright.
Intangible property right to author for her life plus 70 years.
Automatic protection after 1978.
Works can be protected by registration at U.S. Copyright Office.
Can only copyright the expression of an idea, not the idea itself.
Work must be original and fixed in a durable medium:  literary, musical, chorographical and dramatic works, pictoral, graphic and sculptures, films/ audiovisual/ TV/ sounds, computer software and architectural plans.
Compilations of facts are copyrightable but the compilation must be “original.”

  • Bellsouth v. Donnelley(1993).

Work Made For Hire” for Employees.
Copyright Infringement: whenever unauthorized copying occurs.

  • Damages: actual to criminal prosecution.

‘Fair Use’ Exception
Section 107 of the Copyright Act provides for exception to liability from reproduction of copyright under the “fair use” doctrine when material is used for criticism, comment, news, criticism, teaching, and research.

Software Copyrights
Computer Software Copyright Act (1980).

  • Classifies computer software as a “literary work.”
  • Does not apply to “look and feel.”

Lotus v. Borland(1996).

Copyrights in Digital Information
Much of the content on the internet consists of copyrighted I.P.
Copyright Act of 1976.
Case 7.3:New York Times v. Tasini (2001).
Further Developments:

  • No Electronic Theft Act (1997).

Digital Millennium Copyright Act (1998).
Provides civil and criminal penalties to circumvent encryption software (like DVD).
Limits ISP liability for subscriber act.
‘Fair Use’ Exceptions for Libraries, universities and others.

  • MP3 and File Sharing.
  • Peer to Peer (P2P) Networking.
  • Music sharing (Napster, Kazaa, Gnutella).

Case 7.4:  A & M Records v. Napster (2001) in which Court found Napster vicariously liable for copyright infringement of its users.

Trade Secrets
Business process or information that cannot or should not be patented, copyrighted or trademarked.
Protection from competitors.
Uniform Trade Secrets Act.
Case 7.5: Nowogroski v. Rucker (1999).
Can include: customer lists, plans, research, formulae, pricing information, marketing techniques.
Hacking into a competitor’s computer may be criminal.
Economic Espionage Act (1996).
Trade Secrets in Cyberspace.


  • Make use of another’s trademark, copyright, patent or trade secret without incurring liability.
  • Uniform Computer Information Transactions Act (UCITA).

International Protection
Berne Convention (WIPO).
Trade-Related Aspects of Intellectual Property (TRIPS) of 1994 (WTO).
World Intellectual Property Organization (WIPO) Copyright Treaty 1996.