Intellectual Property Law

Intellectual property is an area of law that deals with protecting the rights of those who create original works. It covers everything from original plays and novels to inventions and company identification marks. It can be a play, a novel, a product invention, a marketing plan, a logo or many other things The purpose of intellectual property laws are to encourage new technologies, artistic expressions and inventions while promoting economic growth.

Trademarks and Service Marks: A “trademark” is a word, design or combination used by an individual or a business to identify its goods or services. In some cases a trademark can also be a sensory mark–a sound, a color or a smell. While marks identifying services rather than goods are technically referred to a “service marks” we will use the term trademarks to include service marks. Trademarks protect names used to identify goods (or services) and their source of origin. The law protects trademarks in part because trademarked items tend to carry with them certain quality assurances – one would expect an automobile carrying the Rolls Royce trademark to be far superior to most other automobiles. You may use any kind of name or symbol as a trademark to identify your product.

A mark is any word, name, symbol, or design that identifies a product or service.  A trademark identifies a product (for example, Coca‑Cola).  A service mark identifies a service (for example, Holiday Inn). A mark may be registered with the United States Patent and Trademark Office (USPTO) if the mark distinguishes a person’s product or service from products or services of competitors.  Registration of a mark on the Principal Register of the USPTO entitles a person the exclusive use of the mark. Registration can also be accomplished with a State (usually with the Secretary of State of a particular state).  However, State registration does not provide as much protection as Federal registration. Before a mark can be registered, it must be used by the “owner,” and it must distinguish goods or services from others.  The owner of a mark cannot register it with the United States Patent and Trademark Office unless the mark is used in interstate commerce.

Generic terms that merely describe a class of products cannot be registered.  For example, the term motor oil or the word airline would not be accepted for registration.  Descriptive or geographical terms cannot be registered unless they have acquired a secondary meaning.  A mark acquires a secondary meaning when, through long usage, the public identifies the mark with a particular product.  For example, Best Western Motels involves a mark which has a secondary meaning.

One can be an owner of a trademark or service mark, whether or not it is registered.  This is common law protection.  Registration is proof of ownership and makes ownership rights easier to enforce.  The basic question in lawsuits over marks is whether or not the general public is likely to be confused as to the origin of the service or product.

If the owner of a mark permits widespread use of the mark to describe a general class of products, the exclusive right to the mark may be lost.  Two examples are cellophane and aspirin.

Trade dress is the total appearance of a product, including its packaging, label, shape, and size.  Trade dress may also include physical structures associated with a particular product or service, such as the “golden arches” of McDonald’s.  Trade dress may qualify as a protected trademark or service mark if it is distinctive and identifies the source of a specific product or service.

Copyrights: A “copyright” offers protection for original works of authorship. Copyright protection affords the author of a copyrighted work with specific rights that the author can give or sell to others or keep for him/herself. The concept of copyright protection in the United States is set forth in the original U.S. Constitution which allows Congress to pass laws that promote and encourage the process of the useful arts.

The word copyright can be defined as a property right in an original work of authorship (such as a literary, musical, artistic, photographic, or film work) fixed in any tangible medium of expression, giving the holder the exclusive right to reproduce, adapt, distribute, perform, and display the work. Copyright protection may be received regarding a wide range of creative, intellectual, or artistic forms or works. These include poems, plays, and other literary works, movies, choreographic works (dances, ballets, etc.), musical compositions, audio recordings, paintings, drawings, sculptures, photographs, radio and television broadcasts. The creator of the work has a limited monopoly on the work and can, with some exceptions, prohibit others from copying or displaying the work.  The United States copyright law is contained in Chapters 1 through 8 and 10 through 12 of Title 17 of the United States Code.

Works published after 1922, but before 1978 are protected for 95 years from the date of publication. If the work was created, but not published, before 1978, the copyright lasts for the life of the author plus 70 years. However, even if the author died over 70 years ago, the copyright in an unpublished work lasts until December 31, 2002. And if such a work is published before December 31, 2002, the copyright will last until December 31, 2047.

All works published in the United States before 1923 are in the public domain. The term public domain refers to creative materials that are not protected by intellectual property laws such as copyright, trademark or patent laws. The public owns these works, not an individual author or artist. Anyone can use a public domain work without obtaining permission, but no one can ever own it.  Once a copyright expires, it is in the public domain and no longer has protection.  Works created by the federal government are also in the public domain.

A copyright is obtained simply by creating the work.  It comes into existence automatically on the date it is created.  However, in order to get federal protection of a copyright, the creator of the work has to file two copies of the work with the Copyright Office in Washington, D.C.

Copyright law is designed to create an incentive for creativity by allowing the author to profit from his work. The Act tries to balance this need to protect the author with the public’s need for free and open discussion. A copyright owner has the exclusive right to:

  1. Reproduce the work;
  2. Prepare derivative works, such as a script from the original work (e.g., movie script for Book The Rainmaker);
  3. Distribute copies or recordings of the work; and
  4. Publicly display the work in the case of paintings, sculptures and photographs.

The Copyright Act contains several exemptions that allow a person or institution to use or copy a copyrighted work without the owner’s permission.  Three commonly used exemptions are:

  • the fair use doctrine which allows copying for such purposes such as teaching;
  • the right of libraries to make limited copies; and
  • certain performances and displays for teaching or religious purposes.

The fair use doctrine allows reasonable use of copyrighted works (without requiring the author’s permission) for teaching, research, and news reporting.  The Federal Act states: “[T]he fair use of a copyrighted work, including such use by reproduction in copies . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.”

There are four important factors that must be looked at when determining whether or not the fair use doctrine applies:

  • the purpose of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  • the nature of the copyrighted work;
  • the amount of the portion used in relation to the copyrighted work as a whole; and
  • the effect of the use on the potential market for or value of the copyrighted work.

If a work is a “work made for hire,” this means that a person was hired specifically to create the copyrighted work.  The employer of the creator of the work can register the copyright and is entitled to protection.

Patents: A “patent” is a grant of a property right by the Government to an inventor. The United States Constitution gives Congress the right to provide for patent protection in legislation in order to encourage useful inventions. The patent itself provides a detailed description of the invention, and how it is used or how to make it. Thus, if you obtain a patent you cannot keep the matter secret, which is the province of Trade Secret Law. A patent enables the owner to exclude others from making, using or selling the invention for the life of the patent.

Federal statutes give an inventor the exclusive right to use, sell, and market his invention. The types of things that can be patented are things that are new, useful, and not obvious to those in the business to which the invention relates.  An invention also may be a process, a new chemical or even a new type of plant.

Patents are granted by the U.S. Patent and Trademark Office in Washington, D.C. There are three types of patents:

  1. Utility Patents: These are granted for most new products or processes and are valid for 20 years;
  1. Design Patents: These are granted for new and original designs for manufactured goods and are good for 20 years; and
  1. Plant Patents: These are granted for developing a new type of plant.

The difference between a design patent and a utility patent is that a design patent protects the ornamental design, configuration, improved decorative appearance, or shape of an invention. This patent is appropriate when the basic product already exists in the marketplace and is not being improved upon in function but only in style. For example, designer eyeglass frames, the original Coca-Cola bottles, and “Pet Rocks” would have all been protected with design patents. A U.S. design patent generally lasts for 14 years.

A utility patent protects any new invention or functional improvements on existing inventions. This can be to a product, machine, a process, or even composition of matter. Examples of a utility patent would include a better carburetor, a new type of self-fastening diaper or a new recipe. The life of a U.S. utility patent lasts 20 years from the date of filing assuming the patent is granted, but the owner of the patent must pay maintenance fees to the United States Patent and Trademark Office (USPTO) to keep a utility patent from expiring.

A plant patent may be issued for a new and distinct, invented or discovered asexually reproduced plant including cultivated mutants, hybrids, and newly found seedlings, other than a plant found in an uncultivated state. A plant patent permits its owner to exclude others from making, using, or selling the plant for a period of up to twenty years from the date of patent application filing.  Plant patents are not subject to the payment of maintenance fees.

Before a patent is granted the applicant must submit his idea to a patent examiner in the patent office who will make a determination as the whether or not the invention is new and not obvious to a person of ordinary skill in the area in which the invention is related.  The examiner’s decision can be appealed to the Board of Patent Appeals or the Court of Appeals for D.C. circuit.

The owner of a patent is required to mark the word patent on the item patented and also put the patent number on the item.  Failure to do this can prevent the patent holder from recovering damages is an infringement case.

Employers sometimes require employees to sign an agreement to assign any right to an invention of the employee to the employer.  The invention must be related to the employer’s business, or this assignment would possibly be void as a violation of public policy.

Trade Secrets: A formula, process, or information that is secret, and gives its owner a business advantage may be protected under State laws concerning trade secrets.  Trade secrets, basically, are any formula, device, or information that is used in a business, and is of such a nature that it gives the owner an advantage over competitors who do not have the information. Customer lists may be protected unless they can be easily developed from public information. Trade secrets are protected under State law rather than Federal law.  This protection may be by virtue of common law or statutory law, such as the Uniform Trade Secrets Act.

When a trade secret is made public, it loses its protection as a trade secret unless it is disclosed in a restrictive manner to persons who know of its confidential nature.

Generally, computer programs may be copyrighted.  The Computer Software Copyright Act protects copyrighted programs from infringement.  In some cases, computer programs may be patented.  However, since patents are public record, there is a danger that the program might be copied by someone.  Trade secrets laws are sometimes used to protect computer programs.

Sometimes creators of software will require users to sign a licensing agreement which provides greater protection than the copyright laws.  Sample restrictions include limited reverse engineering, which is a method of learning the structure of a program and limiting the renting of the program of third parties in order to prevent unauthorized copying.

Remedies for Violation of Property Rights

When property is harmed, taken, or destroyed, the most common remedy is an action for monetary damages.  The property itself may be recovered if unlawfully taken.  Wrongful use of a copyright, trademark, service mark, or patent can result in injunctive action, as well as a suit for damages.  If an infringement is intentional, profits resulting from the infringement may also be obtained.

Infringement of a trademark or service mark occurs when a person uses or copies the trademark or service mark of another person without the person’s permission (e.g., putting Nike label on shoes and selling them).