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inventions. In one decision, the Federal Circuit concluded that an "old" memory that was "reconfigured" through the storage thereon of a "data structure" (an ordered arrangement of information) constituted a patentable invention.462 In other cases, both before and after this holding, the Federal Circuit concluded that a data structure, per se, and as incorporated into a process without any additional physical elements or steps in the process, did not create patentable subject matter. *83* The combined effect of the cases suggests that software can transform unpatentable objects into patentable ones and as such must be given weight in patentability determinations, but information per se and abstract ideas continue to be treated as non-statutory subject matter. The trend -- as far as can be ascertained is to provide a broader eligibility for software aspects of inventions than was available previously.

While there may be some degree of uncertainty relating to the precise boundaries of patent-eligibility for software, this alone does not suggest that this topic should or even could be resolved by the Working Group. Finer resolution of the boundaries of patent-eligibility for software could result in greater or more restricted protection for software. Whatever the result, the ramifications run far past those that must be considered in the context of the NII. Changes affecting patent eligibility for software-related technologies will affect more than simply the software innovation that will develop incident to development and use of the NII. And resolution of these boundaries of protection under the patent law for software will not directly affect the significant development efforts underway now related to the NII. Considered from a different perspective, development of the NII may lead to more software development, particularly related to

482

In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). 483

In re Trovato, 42 F.3d 1376 (Fed. Cir. 1994); In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994).

telecommunications and networking, but it will not present unique issues in terms of patent eligibility for software.

C. TRADEMARK

A trademark is quite different from either a copyright or a patent. A trademark is any word, name, symbol or device, or any combination thereof, that serves to identify and distinguish the source of one party's goods or services from those of another party. A service mark is the same as a trademark, except that it identifies and distinguishes the source of services rather than goods. In this report, the terms "trademark" and "mark" are intended to refer to both types of marks.

The
purpose

of a trademark is twofold -- to identify the source of products or services and to distinguish the trademark owner's goods and services from those of others. As long as a trademark fulfills these functions, it remains valid. Trademark ownership rights in the United States arise through use of a mark. Continued use of a mark is necessary to maintain trademark rights. The owner of a trademark is entitled to the exclusive right to use the mark. This entitlement includes the ability to prevent the use, by unauthorized third parties, of a confusingly similar mark. Marks used by unrelated parties are confusingly similar if, by their use on the same, similar, or related goods or services, the relevant consumer population would think the goods or services come from the same source.

Unlike patent and copyright law, Federal trademark law coexists with state and common-law trademark rights. Therefore, registration at either the Federal or state level is not necessary to create or maintain ownership rights in a mark. For example, priority of trademark rights between owners of confusingly similar marks, regardless of whether the marks are Federally registered, is based upon first use of the mark.484

Federal trademark law is embodied in the Lanham Act48s and is based upon the commerce clause of the Constitution. % Therefore, to obtain a Federal trademark registration, in most cases 487 the owner of a mark must demonstrate that the mark is used in a type of commerce that may be regulated by Congress. 488 Additionally, the Trademark Law Reform Act of 19884 amended the Lanham Act to establish trademark rights, which vest upon registration following use of the mark in commerce, as of the filing date of a trademark application indicating a bona fide intent to use the mark in commerce.

489

490

Goods and services to which a mark applies in a trademark registration are categorized according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13,

484

Priority may also be established by the filing date of a Federal registration based upon an intent to use a mark (15 U.S.C. S 1051(b) (1988)) or a foreign filing (15 U.S.C. S 1126 (1988)).

485

15 U.S.C. S 1051 et seq. (1988 & Supp. V 1993). The Lanham Act, as amended, forms Chapter 22 of Title 15 of the U.S. Code.

486

The first Federal trademark law in the United States was found unconstitutional because it was premised on the patent clause of the Constitution.

487

Certain foreign-based applications may register without a showing of use in commerce. 15 U.S.C. S 1126(e) (1988).

488

15 U.S.C. S 1127 (1988 & Supp. V 1993). "The word 'commerce' means all commerce which may lawfully be regulated by Congress." This includes interstate commerce, commerce between the United States and a foreign country, and territorial commerce.

489

Pub. L. 100-667, 1988 U.S.C.C.A.N. (102 Stat.) 3935.

490

15 U.S.C. $ 1051(b) (1988).

1977 (International Classification). This treaty, of which the United States is a member, is administered by WIPO. WIPO convenes a meeting of experts, including representatives of the United States, every five years to consider and adopt changes to the International Classification. These meetings will be an important means to effect changes to the International Classification to accommodate the changing goods and services available in connection with the NII and the GII. In preparation for the next meeting of experts, which is likely to take place in late 1995, a working group which includes the United States convened in March 1995 at WIPO to discuss proposals to amend the International Classification.

Remedies against trademark infringement and unfair competition are available to trademark owners under both state and Federal law.49 In this regard, the owner of a Federal trademark registration has certain benefits. In a court proceeding, registration on the Principal Register constitutes prima facie evidence of the registrant's ownership of the mark.492 Registration on the Principal Register may also be used as a basis to block importation of infringing goods or to obtain remedies against a counterfeiter. The Lanham Act provides that under certain conditions the right to use a registered mark may become incontestable.495 Additionally, the Lanham Act provides for cancellation of registrations on certain grounds.4%

491

See 15 U.S.C. SS 1114 - 1121, 1125(a) (1988 & Supp. V 1993) for relevant Federal law provisions. State and common law unfair competition provisions include such torts as passing off and dilution.

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494

15 U.S.C. S 1116(d) (1988); 18 U.S.C. 5 2320 (1988).

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496

15 U.S.C. S 1064 (1988).

Existing legal

legal precedent accepts electronic transmission of data as a service and, thus, as a valid trademark use for the purpose of creating and maintaining a trademark.49 Additionally, existing legal precedent applies the available remedies for infringement and unfair competition to such acts occurring through the unauthorized use of trademarks electronically. *** However,

497

See In re Metriplex Inc, 23 U.S.P.Q.2d 1315 (TTAB 1992), where the PTO's Trademark Trial and Appeal Board authorized registration of a mark identifying "data transmission services accessed via computer terminal" and accepted, as evidence of use of the mark, a print-out of the mark as it appeared on the computer screen during transmission.

498

In the case of Playboy Enterprises Inc. v. Frena, supra note 386, the operator of a subscription computer bulletin board system (Frena) transmitted as part of its bulletin board system photographs owned by Playboy Enterprises Inc. (PEI). PEI's trademarks were obliterated on some photographs transmitted by Frena and PEI's "Playboy" and "Playmate" marks appeared on other photographs transmitted by Frena. These transmissions were without authorization from PEI. The court found, in part, that Frena infringed PEI's registered trademarks when it used PEI's "Playboy" and "Playmate" marks in unauthorized transmissions of PEI's photographs as part of its computer bulletin board system. The court also found Frena to have committed acts of unfair competition, in violation of Section 43(a) of the Lanham Act (15 U.S.C. $ 1125(a) (Supp. V 1993)), both by obliterating PEI trademarks from photographs and by placing its own advertisement on PEI photographs. Such acts made it appear as if PEI authorized Frena's use of the images on the bulletin board; see also Showtime/The Movie Channel, Inc. v. Covered Bridge Condominium Ass'n, 693 F. Supp. 1080 (S.D. Fla. 1988), modified, 881 F.2d 983 (11th Cir. 1989), remanded, 895 F.2d 711 (1990), in which the court found that interception of cable television programming broadcast via satellite which appropriates trademarks and trade names in a manner likely to cause confusion is unfair competition in violation of Section 43(a) of the Lanham Act (15 U.S.C. $ 1125(a) (Supp. V 1993)). See also Pacific & Southern Co. Inc. v. Satellite Broadcast Networks Inc., 694 F. Supp. 1575 (N.D. Ga. 1988).

In California, a U.S. District Court has entered a preliminary injunction against the owner of a computer bulletin board system based upon claims of copyright and trademark infringement and unfair competition. In Sega Enterprises Ltd. v. MAPHIA, supra note 388, Sega demonstrated that the bulletin board system knowingly solicited the uploading and downloading of unauthorized copies of Sega's video games, and that whenever such a copy is played, Sega's trademark appears on the screen. Further, Sega's trademark appeared, with the BBS operator's knowledge, on file descriptors on the bulletin board. With regard to the trademark and unfair competition claims, the court concluded that there is support for the conclusion that the transferred

games

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