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International conference organized by 'JurInfoR-MSU' Institute for Contemporary Education, 'JurInfoR'; center , the Criminalists and Criminologists’ Union (Moscow), and the U.S. Department of Justice, 20-21 May, 1997, Moscow

On combating new types of economic crimes in Russia and the United States

An overview of amrican intellectual property law

This outline cover five subjects: I. The functions of American intellectual property law; II. The American Aproach to copyright protection;III. The American approach to patents; IV. The American approach to trademarks; and V. International Conventions on these subjects.

Definition note:

Patent law protects new and innovative products and processes.

Trademark law forbits imitators from passing off their goods as those of another.

I. The functions of American intellectual property law

American law general favors the creation of markets to promote efficient allocation of resources and provate investment.

American intellectual property law follows this general approach by creating property rights in various forms of intagible information.

The intangible property right permits the producer of valuable information to capture at least some of the value of the information, thereby encouraging investmentinto socially desirable areas.

Because the American approach is based on utilitarian calculation, protection of intellectual property rights is not absolute and can give way to completing concerns.

II. The American Aproach to copyright protection

A. An overview of American Copyright Protection

The federal goverment (specifically Congress) is given the power “to promote the progress of science and useful arts, but securing for limited times to authors and inventos the axclusive right to their respective writing and discoveries.” U.S. Const., article I, section 8, clause 8.

Congress has adopted several copyright statues — 1790, 1831, 1870, 1909, and 1976.

1976 Act created a single, unified system of protection for any work reduced to a concrete form.

Federal Law pre-empts state law that attemps to extend new rights of copyright. 17 U.S.C. § 301.^*

B. Copyright Right Protection Under the 1976 Act.

The Act extends copyright protection to “original works of authorship fixed in any tangible medium of expression... from which they can be perceived, reproduced, or otherwise communicated.” 17 U.S.C. § 102(a).

Computer programs are also specifically copyrightable. 17 U.S.C. § 102.

The Act extends protection from the creation of work until 50 years after the death of its author. 17 U.S.C. § 302(a).

An author or copyright holder has the exclusive right to copy a work or to display the work. 17 U.S.C. § 106.

Core concepts underlying copyright include (1) expression and (2) originality.

American courts have recognized that a work is copyrightable if its author has invested “sweat” or original labor in the product.

As a result of the accession of the United States to the Berne Convention, notice of copyright is no longer required for copyright protection.

C. Copyright Infringement.

Anyone who violates any of the exclusive right of the copyright owner is an infringer of the copyright and is subject to an action for copyright infrigement. 17 U.S.C. § 501.

For purposes of civil liability, infrigement need not be intentional.

To establishment infringerment, the copyright owner must prove (1) ownership of the copyright and (2) impermissible copyng.

D. Civil Remedies.

Any court may issue an injunction on such terms as it may deem reasonable to prevent or restrain infrigerment of a copyright. 17 U.S.C. § 502.

Any court may also impound, on such terms as it may deem reasonable, all copies allegedly caimed to have been made in violation of the owner`s copyright. 17 U.S.C. § 503.

A copyright infringer is liable for either (1) the copyright owner`s actual damages and any additional profits of the infringer or (2) an amount of between $500 and $20,000, or an amount up to $100,000 if the infrigement was willfull. 17 U.S.C. § 504.

The court also has discretion to aware attorney`s fees and costs to the prevailing party (axcept against the geverment). 17 U.S.C. § 505.

E. Criminal Penaties

Copyright infrigement is federal crime if done (“willfully” and “for purposes of commercial advatage or provate financial gain.” 17 U.S.C. § 506(a).

A “willfully” infrigement is one that is done voluntary with intentional violation of a known legal duty.

Criminal penalties for copyright infrigenment are generally at the misdemeandor level (no more than year in prison), althogh harsher penalties are provided for record and tape piracy. 18 U.S.C. § 2319.

Upon convention fro criminal infrigement, the court must order, in addition to other penalties, the forfeitute and destruction of all infriging vopies and all equipment use in the manufacturer of such infriging copies. 17 U.S.C. § 506(b).

III. The American Approach to Patent Protection

A. An Overview of American Patent Protection

Patent Law is generally designed to eciounrage inventions by giving an inventor a monopoly right to use his invention for a limited period of time.

Congress has extensive authority over the patent law. U.S. Constitution, article I, section 8, clause 8.

Congress has enacted Patent Acts in 1790, 1793, 1836, and 1952.

A revision of the Patent Act is under consideration in Congress.

B. Patent Protection Under the Patent Act.

Patent protection is available to “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter , or any new and useful improvement thereof...” 35 U.S.C. § 101.

In general, patent protection is available for new products and processes, not for ideas.

Patent protection is obtained by filing an application for a patent with Patent Office in Wasington, D.C. 35 U.S.C. § 101.

The application contains a specification describing haw the invention wors and claims about the new and useful advances.

If two inventors are competing for an application, the first to conceive the idea generally has priority — provided that he has used due diligence in pusuing a patent application.

An inventor can obtain the advantage of an earlier filing for a patent in another country if that country extend similar privileges to applications by citizens of the United States. 35 U.S.C. § 119.

If the patent application is granted, the patentee has the exclusive right to make, use or sell the invention for a term of 17 years. 35 U.S.C. § 154.

C. Patent Infrigement.

Anyone who, without permission, makes, uses or sells the patent invention is direct infriger of the patent. 35 U.S.C. § 271.

Anyone who encourages another to use the product is liable as an indirecrt infringer; anuone who supplies a material part of the invention , knowing that is especially adapted for use in an infrigement of a patent, is liable as a contributory infriger.

Direct infrigement can be committed wthout knoledge of patent.

Anyone who supples from United States a substantional proportion of the components of a patented invention which are then assembled outside the United States is liable an infriger. 35 U.S.C. § 271(f).

It is defense to infrigement that the patetee has misused the patent by attempting to extent it and monopolize the market for an unpatented component.

D. Remedies

A patentee can obtain injunctive relief for infrigement of a patent. Although courts are reluctant to do so unless the infrigement has clearly been established.

A patentee can obtain demages for infrigement that are not less a reasonable royalty for the invention

Attorney fees can be awarded in exceptional cases.

There are no criminal remedies for patent infrigement, althought 18 U.S.C. § 497 forbits forging patent letters.

IV. The American Approach to Trademark Protection

A. An Overview of American Trademark Protection

American trademark law is designed to prevent the “palming off” of goods by one producer as good of another.

Congress enacted national trademark law in 1870 and 1876, which were declared unconstitutional by the Supreme Court on the grounds that Congress lacked authority to regulate purly state matters .

Congress passed trademark laws in 1881 and 1905 addressing interstate use of trademarks; Congress adopted a substaintial revision of trademark law in 1946 in the Lanhman Act.

The fderal government maintains a registry of trademarks.

B. Requirements for Obtaining Trademark Protection.

The Lanham Act creats a “distintiveness” requirement for the registration of trademarks, which has two major components: (1) the mark must not resemble a mark in previous uses and (2) the mark must not be merely descriptive of goods and services.

(1) Previous use

The Patent and aTrademark Office will not register a mark “which so resembles a mark [previously] registered or mark... previously uses in United States by another and not abandoned, as to be likely, when used on or in connection with the goods of applicant, to cause confusion, or to clauses mistake, or to deceive” 15 U.S.C. § 1052.

(2) Generally descriptive terms.

The Patent and Trademark Office will not accept a registration of mark which is merely descriptive of the goods. 15 U.S.C. § 1052.

A descriptive term can, however, be eligible for trademark protection if it acquires a “secondary” meaning.

In determining whether a term has acquired a secondary mewning, the courts examine whether an association has developed between the mark and a single produser of goods for a significant prtion of the market.

C. Infrigement of trademarks.

Trademark infrigemtn occurs when a person, wthout the consent of the owner, uses ion commerce any reproducion, counterfeit, or copy of the registered mark in connection with the sale of goods when such use is likely to couse confusion or mistake or to deceive. 15 U.S.C. § 1114.

In determining whether there is likelihood of confusion, the courts consider a variety of factors, including similaruty of the marks in question , similarity of the goods and services and the trade channels through which they are delivered , “impulse” versusu considered purchases; and any actual confusion.

The Trademark wil be examined as whole to determine risk of confusion.

D. Civil Remedies for Infrigement.

The trademark owner may obtain an injunction against further infrigement. 15 U.S.C. 1116, 1114

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