USA Intellectual Property Law - Assignment Example

US Intellectual Property Law Question 1: A trademark could be defined as a symbol, phrase, or a word which is used for the identification of a specific business in terms of products and range thereby differentiating the product from the product characterizing another business (15 U.S.C. 1127). Under some conditions, trademark protection could find extension beyond the scope that is provided by words, phrases or even symbols, in order to provide for the inclusion of the other more specific aspects characterizing the product-this could relate to the product size, quality, pack ageing, color among others (Wilson, 2005). Nevertheless, such aspects would not find protection if they bestow any kind of practical or aggressive benefit. An example in this case would be a businessman’s inability to lock up the use of a particular unique bottle shape if that shape confers some sort of functional advantage (e.g. is easier to stack or easier to grip (Qualitex Co. v. Jacobson Products Co., Inc., 115 S. Ct. 1300 (1995). In keeping with the nature of the court’s decisions on the issue of fair use in trademark registration, it has been found that there is a general tendency to protect free speech values trademark infringement cases by broadly applying the doctrines of fair use and nominative fair use. The trademark infringement law in the US are governed by the Lanham (Trademark) Act (title 15, chapter 22 of the United States Code), which prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. The provisions of Subchapter III are the heart of the Lanham Act, with Sections 42 and 43 of the Lanham Act setting forth the remedies that can be sought when a trademark is infringed. These provisions can be used to restrict the importation of goods that infringe or counterfeit registered trademarks, through the use of injunctions and damages. Section 43(a) (codified at 15 USC 1125(a)) is the “likelihood of confusion” standard for infringement of an unregistered trademark or trade dress. Courts still frequently refer to this as "Section 43(a)". Section 43(a)(1)(B) is also often utilized in law when false or misleading statements are alleged to have hurt a business. To be proven in court a claimant must satisfy 3 principles: There was a false or misleading statement made, the statement was used in commercial advertising or promotion, and the statement creates a likelihood of harm to the plaintiff (Merges, Menell & Lemley, 2010). To prevail under the Lanham’s Act’s classic fair use defense, the it is mandatory that the use of the trademark needs to be “a use, otherwise than as a mark…of a term or device which is descriptive and of an used fairly and in good faith only to describe the goods which is descriptive of, and used failure and in good faith only to describe the goods or services of [the defendant], or their geographic origin” (Henry, 2009). The fair use doctrine safeguards the commercial expression by allowing non-trademark, good faith use of trademarked words by the use for the description of their product (Merges, Menell & Lemley, 2010). Unfortunately this particular manner of thinking, does not fully protect commercial expression given the fact that some courts could interpret usage, otherwise than as a mark, narrowly and hold use of the mark in slogan to describe goods or in a domain name to describe the contents of a website is use as a mark ineligible for the fair use defense (Yu, 2007). The idea remains in essence that the consumer would benefit if competitors are able to describe words in terms of slogans and domain names because an increase in dissemination of product information could increase competition and lower prices. The fair use concept would therefore be a lot more speech friendly if the trademark makes use of a slogan even in cases where the non-trademark use of the mark that qualifies for this defense. The law mandates that there is a requirement for serving the trademark as a mark that is distinctive and easily recognizable. There is also therefore the need to ensure that the trademark be such it does not help the owner of the trademark to get unfair advantage from the competition’s product by the creation of some kind of confusion within the mind of consumer. Distinctiveness also means that the mark needs to be competent to identify the foundation of a particular commodity on sale or even for that matter its intrinsic characteristic. There are four basic categories that the distinctiveness defining the trademark falls. These are inclusive of the groups that find basis in terms of the relationship between the mark and the underlying product: (1) suggestiveness, (2) ability to describe, or (3) arbitrariness and (4) generic. Given the fact that trademarks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within. If the rights to the usage of a given trademark are owned by a particular business, then the business would also be able to bring an injunction against those subsequent parties for trademark infringement (15 U.S.C. 1114, 1125). The basic yardstick of measurement is the “likelihood of confusion” that transcends the trademark. If one were to be more precise, the usage of similar trademarks or for that matter signs signifying a given business products would mean the creation of confusion in the mind of the consumer thereby constituting infringement, given the fact that it would mean a similarity in terms of approval for such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including factors such as the force of the mark, immediacy with the product, similarity of the marks, proof of actual confusion, likeness of marketing channels used and the degree of caution exercised by the typical purchaser, along with the defendant's intent (Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961). Between the two ends of the spectrum lie many close cases, in which the courts will apply the factors listed above. So, for example, where the marks are similar and the products are also similar, it will be difficult to determine whether consumer confusion is likely. In one case, the owners of the mark "Slickcraft" used the mark in connection with the sale of boats used for general family recreation. They brought an infringement action against a company that used the mark "Sleekcraft" in connection with the sale of high-speed performance boats. Because the two types of boats served substantially different markets, the court concluded that the products were related but not identical. However, after examining many of the factors listed above, the court concluded that the use of Sleekcraft was likely to cause confusion among consumers. (AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). In the context of this particular case, it needs to be understood that there is a problem with the trademark name Mattress.com given the fact that .com as a tab is generic of the world wide web and would invariably land up in the names of most of other mattress businesses that deal in similar categories of product and consumer servicing. The idea is that .com” evokes the words “comfort” or “comfortable and that part of its mark serves as a mnemonic as well as an indication of quality of comfort is debatable given the fact that for most people, .com relates to websites and not to comfort. There is therefore a problem with respect to distinctiveness and fair use, because of the fact that the trademark would invariably create confusion in the minds of the consumer at a later date, also if one searches for mattresses online, the trademark mattress.com would invariably yield number one results giving the business some sort of unfair advantage in this case. The trademark mattress.com should therefore not be allowed to the business in the interest of protection of the principle of fair use for trademark usage. Question 2 Inventions: The concept of patents in contemporary American relates to the concept of a grant that is issued by the government that gives the owner the right of patent usage, from the moment at which the patent is issued, excluding others from the right of “making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a period of 20 years from the filing date of the patent application.  In order to get the grant of the patent usage it is mandatory for the owner of the patent to disclose, in detail, the invention to the public so that a person of ordinary skill in the art to which the invention pertains can make use of the invention. The idea intrinsic in this contract formation between the inventors and the patent issuing authority, means that the invention itself would be made public knowledge as quickly as possible so that others can build upon the technology. There are those that consider the patent nothing more than an enticement for the inventor to spend money and time aimed at the creation of an invention that would be disclosed to and would be beneficial to the public. Patents in USA: First to file vs. File to invent There is a fundamental difference between the international community’s patent laws and the patent laws of the United States. This is centered essentially around the fact that the United States remains committed to the first-to-invent system of patent protection , vis-à-vis the much of the internal community wherein one finds a dedication to the perpetration of the first-to-file system of patent protection. Inventions are generally defined by the 1) conception of the invention and 2) the reduction of the invention to practice.  When the inventor conceives of the invention and reduces the invention to practice within a reasonable time, the inventor’s date of invention will be the date of conception. A first to invent system awards a patent to the inventor who was the first to develop the invention, regardless of whether or not he was the first one to file a patent application for it (Stuckey, 1996). In most of the rest of the world, the laws do not favor the first to invent but instead grant the patent to the individual who was the first to file a patent application anywhere in the world. Under the United States system of first-to-invent, if there is a dispute among two or more inventors as to who is rightfully entitled to receive a patent for a particular invention, the Patent Office would hold an interference proceeding to determine who actually the first to invent was. The idea therefore remains that, if two people apply for a patent on the same invention within a year of each other, the true inventor must be determined (Bystrom and Eisenstein, 2005). Patents are typically filed first in one’s home country. In case of conflict in the US, it is resolved in a proceeding called “interference” in which each party tries to establish it invented first. Interferences occur in fewer than 1 per cent of the total patents filed and are fought in the US Patent and Trademark office in a formal procedure which could be very expensive. One has to therefore understand the fact that there is an unspoken emphasis on the prompt filing of the patents, given the fact that the first to file has a certain advantage in an interference proceeding, because the burden of proof would be with the latter to prove that, he, in fact was the inventor (Voet, 2008). This means, in essence, that the first to file in the USA would also be likely to win in case of an interference, unless the second to file could provide some convincing evidence of the fact that he was the one to have first conceived the invention, first and also would have to prove that he was diligent in completing the invention from the time the first to file inventor filed until he filed. Advantages and Disadvantages The United States has remained critical of the first-to-file systems because of the fact that they tend to favor larger companies that have the financial means to file a great number of patent applications as soon as inventions are conceived. Typically individual inventors cannot afford to file patent applications in great quantity and sometimes not until that are sure about their individual inventions being worthwhile. Also the advantages of the first-to-file system are inclusive of the fact that it tends to encourage inventors to quickly file for patent rights, avoids the potential for fraud in swearing-behind references. There is also an advantage of the fact that there would be no need for an interference hearing and that a patent would be more difficult to obtain. Finally, the system ensures global harmony.  Disadvantages of the first-to-file system include the fact that granted patents would favor the wealthy, ultimately resulting in progressive decline in innovation and the contract between the inventor and the government will be void. Question 3: The issue at hand in this case is that of a simple copyright problem. The rights of all US copyright owners are created by the US copyright statue, which is the latest in a long line of copyright statutes that have been passed by the US. The idea inherent in the copyright statute is the need to protect the rights and the originality of literary property especially in an age where the evolution of the electronic medium in the form of the internet has taken the concept of copy and stretched the boundaries of literary infringement (Stim, 2007). A copyright act attempts to provide an author or the owner with a set of intellectual property claims with exclusive claims within a particular period in time with respect to the work that he has produced. These rights include the rights of distribution, adaptation and reproduction. After the particular time-period has elapsed, the work enters public domain. The term copyright would therefore apply to any given form or an ideal substantive disconnected and fixed within the norms of a given medium. There are issues to be placed under consideration while attempting a discourse on copyright issues like "moral rights" (also understood to be the right of the owner to be given credit for the work that he has produced) as stated in United States Constitution, Article I, Section 8, Clause 8. In essence the term Copyright could be understood to be the exclusive rights to intellectual property. This is inclusive of patents and trademarks. One of the best codifications of the term copyright can be found within the United States Constitution that states to this affect that: “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." First, 106 states that a person shall have the right to retain the exclusive rights of taking credit for an original piece of work. It also states that a person shall have the right to “Prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation”. The implications of the phrase “fixed in any tangible medium of expression” affect every song and music composer. Since the new copyright statue became effective, copyright protection for any song begins the moment the song is recorded on tape or written on paper but not before, even if the composer has carried the song around in his/her head for years altogether. Since it is the “fixation” of the song that works as the trigger for copyright protection, one would have to, automatically, record the song on tape or reduce it to a lead sheet before performing it live in a club. The idea essentially is that the music and lyrics of the song need to be accurately recorded in sufficient details so that the song finds adequate representation. Copyright over the song begins once the song has been adequately fixed. There is also the question of the transfer of the ownership of the song in the light of the fact that a publishing agreement in most cases entails the transfer of copyrights from composer to the label publishing the song. A copyright in essence is a set of what is now known as exclusive rights, these may be exercised only or exclusively by the owner of the rights. Although copyright protection des not begin until a given work is “fixed in [a] tangible medium of expression” copyright itself is intangible; i.e. one cannot see a copyright or hold it in one’s hands. Given the fact that the copyright statute givens one the exclusive right to reproduce one’s songs in “phonorecords” and to distribute any such phonorecords to the public only the one holding the copyright has the right to record the song and to sell copies of the recording in any shape or form. This holds true until the song in question has been recorded previously with the permission of the owner. As a matter of practicality it has been found that because the copyright statute sets out strict and specific accounting regulations by which record companies need to abide during song recordings, most companies tend to prefer to obtain permission to record songs by the direct license. A direct license is a permission to record a song obtained directly from the owner of the copyright. These are the preferred mode of working. The rights to reproduce a song in the form of records, tapes, CDs and other physical phonorecords are referred to as the “mechanical rights” of the song. The royalties paid by record companies for the songs as phonorecords are referred to as mechanical royalties or mechanicals, these are now fixed by the Licensing Division of the Library of Congress through the Copyright Arbitration Royalty Panels. It is essential when attempting to prove copyright infringement that a person needs to be able to show that there is an ownership on his/her part in the context of the said work and that the alleged infringer has copied it. The question whether a valid copyright subsists in a song or a sound recording would be rarely is an issue in a sampling case; this leaves the issue of whether or not the work was in fact copied. In order for a person to prove that his work was copied a person must show that the alleged infringer had access to the work and that work and the allegedly infringing work are substantially similar. Whether the alleged infringer had access to the work would also rarely be a quotient in question in the context of a sampling case, given the fact that access to the work would whether be admitted or be proven. The extent of similarity which constitutes a substantial and hence infringing similarity has presented difficulties that have long challenged courts into engaging in deciding these cases. The issue of substantial similarity has been approached by the courts in a variety of manner. Some have broken the question into two primary parts: 1.      Whether the work was physically copied and 2.      Whether copying was illicit or improper. In the case of sampling, whether the work was physically copied will either be admitted or an easy matter of proof. But proof of physical copying was illicit or improper, or, in other words whether extent of similarity is sufficiently substantial to constitute infringement. In making this determination, courts would inquire whether the portion copied was a qualitatively substantial portion of work from which it was taken. Courts will find infringement where the quality of the portion taken was “the whole meritorious part of the song”, “so much of what is pleasing to the ear and forming a substantially larger and the more important part of the song, or in terms of which particular part of the song had popular appeal and on which would depend the song’s commercial success, or the very part of that makes [the copied work] popular and valuable. In determining what kinds of short portions of musical compositions are qualitatively substantial and hence protecteabale by copyright law, it will be useful to divide the universe of potential samples into those tending to be clearly infringing and these tending to be non-infringing, recognizing, however, that there will always be those cases in that grey area, in which the parties may find themselves subject to the most precisely applicable standard very developed by the courts, i.e. “I know it when I see it”.   The chorus is often the hearty of the song. Because of its brevity, repetitiveness, and frequent placements at the end of the sing, the chorus tends to be the most memorable part of the song. In many cases, it would not be difficult for a court to find that the chorus is the very part that makes the song popular and valuable. Accordingly, should a digital sample be made of a recognizable portion of a chorus its unauthroised use is likely to be held infringing. Other phrases of musical composition that are distinctive and memorable are likely to be held qualitatively parts of the song. This may include any phrase that is repeated often in a composition or placed at the beginning or ending of the song. Even a very short phrase from a musical composition could be infringed by the use of a sample of that phrase; if the phrase is repeated often through substantial portions of the sampler’s new work. For example if the digital sample contains six notes from a song that is repeated ten times in sampler’s work, then the sampler has taken sixty notes, not six. In such a case, the sampler’s work is more likely to be held substantially similar to the copied work and the unauthorized distribution of the sampler’s new work would constitute copyright infringement. Finally, the unauthorized use of any sample which is clearly identifiable as having been taken from another copyrighted composition or which an average person would immediately associate with another copyrighted composition is likely to hold an infringement. Given the fact that there is only a limited number of ways in which a short number of musical notes might possibly be expressed, copyright protection does not subsist in exceedingly short phrases of music. The idea also is that in cases where a certain phrase or a catchword, provides the key words that define certain genre, or are characterized by a presence that make them a regular usage in songs cannot not be deemed as being plagiarized or elements of copyright infringement. Examples of such words would be “baby”, “love” or even “sweetheart”, which are used regularly in music across genres and in fact at times across languages. It also needs to be understood that similarities with a single musical note cannot be termed copyright infringement. Since the Copyright Act, 1976 was passed in the US, the basic idea remains that music once composed in its initial days remains the property of the composer, post copyright creation after the music has been fixed. There is a need in case of sheet music on the part of the composer to include a copyright notice, either on the title page or the first page of the music. This is made up of three essential items: 1. The word “Copyright” of the symbol for the same. 2. The year in which the composition was made public and 3. The name of the composer. There is also the need to register the music at the US Copyright office-this is optional but recommended given the fact that since January 1, 1978, registration places the composer in a strong position where a case against plagiarism is concerned. This is justified because the registration at a later date provides a prima facie evidence of the validity of the copyright in litigation for copyright infringement. In the context of this particular case, first and foremost it needs to be understood that there was in fact a copyright that avid Spradley, Garry Shider, and George Clinton  had on the song, Atomic Dog, given the fact that the song was in fact fixated when it was recorded and the composition was embedded in the sound recording. The song would as a composition therefore have a copyright entity, in terms of the recording. There is a second aspect to the song which is the sheet music, which was created once the song was recorded. There are two different set of rules that govern recorded songs and sheet music. The smallest appropriation from a musical composition held to be infringing was a phrase consisting of six notes. In this particular case, the songs before the court were “considerably different both in theme and execution except as to the phrase in question- “I hear you calling me”. This phrase and the music of his phrase was a copyright infringement, because the phrase despite its brevity, had what “causes audiences to listen and to applaud and buy copies in the corridor on the way out of the theatre. Essentially this means that the song which was allegedly a rip-off from the original made use of the major selling points of the original song, points that made the original song unique. If a song therefore in the matter of subjective interpretation does not touch the USP of the original than more often than not there would not be a standing case for copyright infringement. Samplers need to take note of a more recent case herein the court determined that the use of four note phrases together with three of the words accompanying those notes would have been sufficient in constituting infringement. In [Elsmere Music Inc v NBC 482 F. Supp 741 (S.D.N.Y. 1980)], the song I Love New York became the basis of the parody composition, I Love Sodom, perfumed by the notready-for-prime-time-players on NBC’s Saturday Night Live TV program. The four note phrase was continually repeated and was referred to by the court as “the heart of the composition. The court concluded that the use did not constitute infringement, given the fact that it was part of a satire, permissible under the doctrine of fair use. Accordingly, while the sampling of a single note or a phrase of two notes would appear not to be an infringement of a musical composition, the sampling of three notes may be the sine qua non of permissible song sampling. The two basic tests that have been outlined for copyright infringement in case of sheet music are as follows: 1. If alleged infringer had access to copyrighted ok then legal test for copying is “substantial similarity” between the copyrighted elements of the original and the allegedly copied work and 2. Without proof that the alleged infringer had access to the copyrighted work, then the plaintiff must show “striking similarity” between the copyrighted elements of the original and the allegedly copied work so as to preclude the possibility of independent creation [Ferguson v National Broadcasting Co., Inc., 584 F.2d 111, 113 (5th Cir. 1978)] Given the fact that the deeper sense of the quantity and nature of the work being infringed upon and the kind of creativity required for copyright of musical compositions is a tricky topic, they have found mixed judgments in US law courts. Also because of the fact that the judgments given the judges in US District courts are not considered precedent, the decisions by the courts are at best be used as advice. When a company purchases sheet music, it owns just the paper and the ink and not the music itself. A copyright would mean that there would be permission needed in case there is a creation of a photocopy of the music, or for posting the music on the internet. There is also permission needed for performance of copyrighted music and for recording them music as well. The point to be noted in this particular case is that the rendition of the song D.O.G. in Me, released by A & M Records in the album All Work, No Play by the rap group Public Announcement. The album. The song was composed by songwriter Felony Davis. “D.O.G. in Me” differs in theme, tempo, and style. The song does use the word “dog” in a low voice as “musical punctuation,” the rhythmic panting, and the “Bow Wow refrain.” With respect to copyright infringement the point remains that the Bow Wow refrain was not originally part of the sheet music in the original song when the sheet music was sold to Bridgeport Group. this would then mean that the Bow Wow refrain was not a property of Bridgeport Group. The ownership of the Bow Wow restraint would remain with the group that composed and recorded the song. There has in fact been no overall copyright infringement in this case given the fact that the Bow Wow refrain characterized the genre of music itself and was not in fact the unique identification point of the song. Any copyright infringement point would fall flat in the context of the fact that an anthem of the era, Atomic Dog and its music has influenced many others. A specific copyright infringement action against this particular song would therefore make no sense at all. 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