Intellectual Property Laws
Securing Your Legal Rights
From Stephen Elias and Richard’s Stims, Patent
Copyright & Trademark (Nolo.com 2001)
What is Intellectual Property?
• Any product of human intellect that has
commercial value.
• What is meant by commercial value?
• Commercial value comes from the ability
of the owner to control its use, generally
by requiring payment in exchange for its
use.
For example:
• Assume Prof. Powell
writes a romance
novel in cyberspace
about two cyberspace lovers. He has the
legal right to prevent others from
reprinting the book or making a movie
based upon it.
• But he can also sell the publishing rights
to a publisher or movie producer.
Four Categories of
Intellectual Property Law
• Although these categories have distinct
characteristics, they often overlap.
•
•
•
•
1) Trade Secret Law
2) Copyright Law
3) Trademark Law
4) Patent Law
1)What is a TRADE SECRET?
• A trade secret is commercial information
that an owner has taken reasonable
precautions to keep secret. (e.g. consumer
lists).
• The law protects these secrets and the
competitive advantage that comes along
with them from competitors who acquire
the information improperly.
2)What is a COPYRIGHT?
• Copyrights protect the literal form of all types
of creative expressions whether produced by
authors, composers, artists, computer
programmers, Web page designers etc.
• But the ideas or concepts underlying the
creative expression can not be protected.
• Copyrights last a long time, 100 years or more.
For example:
• Copyright law could protect the actual
words of Prof. Powell’s romance novel
but it would not prevent others from
writing novels about cyberspace lovers,
even using the same basic plot.
3)What is a TRADEMARK?
• Trademarks are distinctive (creative or
well-known) names, designs, logos,
slogans, symbols,sounds, smells, colors,
packaging, containers or any other
devices used by a business to identify the
sources of their goods or services and
distinguish them in the marketplace.
• A Trademark can last indefinitely.
4)What is a PATENT?
• Patents give the inventor of a new and
non-obvious invention the right to
exclusive use for a LIMITED term.
• How long a patent depends upon the kind
of patent.
Intersection in the areas of
Intellectual Property Law
• Copyright and Trademark
• Both may apply to the same item. For
example an advertisement may include
material covered by copyright like a
jingle and other material covered by
trademark, like a product name.
• The difference is that the copyright
protects the literal expression while
trademark protects whatever is used to
designate the product or services offered
in the marketplace.
• Patent, Copyright and
Trademark
• When it comes to a product design, all
three areas of law may intersect. Courts
are constantly trying to distinguish and
restrict the respective contexts of these
areas of law.
For Example:
• Suppose you get a design patent for a new
kind sun glasses. If the style is also
intended to distinguish your brand in the
marketplace,it may be protected by
trademark law. Copyright might also
protect expressive aspects of the design.
Securing Your Legal Rights
Trade Secrets
KEEP IT SECRET!
• Courts will consider the following factors:
• Extent to which info. is known outside the
business;
• Extent to which info. is known by employees in
the business;
• Extent to which measures have been taken to
guard secrecy;
• The value of the info. to the business; and
• The difficulty with which info. could be
properly acquired by others.
How You Lose a Trade Secret.
• 1) Sell it.
• 2) Courts will find theft where:
– A) Key employees (directors, officers etc,)
disclose in violation of implied or written
duty of loyalty
– B) Other employees breach confidentiality
agreement
– C) Suppliers, consultants or others who
signed nondisclosure agreements
– D) Industrial espionage
Securing Your Legal Rights
Copyrights
First, it must be a copyrightable:
• The creator owns the copyright unless the
creation was in the course of employment or
created “under commission”.
• Remember Copyrights will NOT protect ideas,
only the expression of an idea. Also the creative
work must:
– Be original
– Fixed in a tangible form
– Must be creative (not alphabetic listing of
phone numbers)
Next, a copyright must be created
• A copyright is created when the creative
work is fixed in a tangible medium of
expression.
• However, there are also steps you should
take that increase the likelihood that a
court will enforce a copyright:
1) Put a Bug on the Work
• Placing a copyright notice or “bug” on
the work will increase the likelihood that
a court will enforce a copyright.
• The notice includes the symbol ©
followed by the year of publication and
the author.
• For example: ©(2001) (Ben Powell)
2) Register the work
• Registering the work with the U.S. Copyright
Office within three months of publication or
before the infringement will create a legal
presumption that the copyright is valid.
• It will allow you to recover up to $150,000
without proving actual monetary harm.
• Registration is accomplished by submitting a
completed form along with about $30.00.
How long does it last?
• 1) For publications after Jan. 1, 1978, the life of
the author plus 70 years. There are exception
for copyrights created under commission, by
employees or those published before Jan. 1,
1978.
• 2) You can also sell, transfer or divide the
copyright by giving the right to:
–
–
–
–
Reproduce the work;
Display or perform the work;
Distribute the work; or
Prepare adaptations/derivations of the work
The Legal Use of Copyrighted
Work Without Permission
• The Fair Use Defense: Where the work is
used for research, scholarship, journalism
or the like. The court will consider:
– Purpose and character
of the use
– Amount of portion borrowed
– Effect of use on the market
for the material
Securing Your Legal Rights
Patents
What is a Patent?
• It’s a document issued
by the US Patent and
Trademark Office granting
a monopoly for a limited
period of time on the use
and development of an invention.
• There are three kinds:
– Utility Patents
– Design Patents and
– Plant Patents
Kinds of Patents
• Utility (most common)-protects new processes,
machines, manufactures, or uses of.
• Design patent-protects non-functional, unique,
ornamental shapes or designs. (e.g. new shape
of care fender not improving functionality)
• Plant patent- protects any asexually or sexually
reproducible plants (such as flowers) that are
novel and unobvious.
Duration of Patents
• Utility (most common) new processes,
machines, manufactures, or uses of -20 yrs after
filing application or (PPA).
• Design patent-non-functional, unique,
ornamental shapes or designs (e.g. new shape
or care fender not improving functionality) -14
years after the date of issue.
• Plant patent- any asexually or sexually
reproducible plants (such as flowers) that are
novel and unobvious - 20 years from the date of
filing application or (PPA).
What kinds of inventions qualify?
• They must offer something new or novel
and be particularly clever, or nonobvious (meaning would someone who
was skilled in the field consider the
invention unexpected or surprising
development?)
• Things naturally occurring in the world
like laws of nature or math formulas are
not patentable.
License to use a Patent
• Generally inventors do not develop their
inventions but contract with companies to
exploit the invention in exchange for royalties
on each invention sold.
• The patent may be sold outright or the
developer may have the right to license other
companies to market or distribute.
• Distribution licenses may be limited by
geography as well as use.
How to Apply:
• The inventor must file
an application with the
United States Patent
and Trademark Office.
• You may file a Preliminary Patent
Application to obtain an earlier patent
date as long as the PPA adequately
describes the invention and as long as
the formal application is filed within a
year of the PPA.
The Application Process
• Typically the process takes between one
and three years and requires
communication and amendments
between the patent officer and the
applicant.
The Application Process
• There are also patent fees beginning at
issuance ($355 for independent inventor
and $500 for a corporation with less than
500 employees.)
Also there are fees continuing over the
life of the patent totaling about $3,000 for
an independent inventor and about
$6,000 for a corporation.
A owner can also lose a patent if:
• An infringer proves in court that:
• 1) The patent was invalid or improperly
granted according to the criteria.
• 2) The patent was obtained by fraud
or through illegal conduct.
• 3) The owner failed to pay
maintenance fees.
Securing Your Legal Rights
Trademarks
Protecting a trademark . . .
• - includes a distinctive word, phrase,
logo, symbol etc. used to identify a
source of product or service (Ford
Trucks, or IBM computers)
Protecting a trademark . . .
• may also include shapes, letters,
numbers, sounds, smells or colors,
character names or features of a movie or
television show.
Trademarks also include:
• The concept of a Service Mark:
which is the same as a trademark except
they promote only services - Like the
McDonald’s “M”or CBS’s stylized eye in a
circle.
• And the concept of a Trade Dress
which includes packaging or distinctive
shapes or
décor used to identify a
product (Kodak film package)
Source of Trademark Law
• Both federal and state law provide for the
law of trademarks.
• The federal statute called the “Lanham
Act” established a registration system
and provides for judicial remedies in the
case of infringement.
What’s not covered:
• 1) Ordinary or common words like Pete’s
Muffins or Northern Dairy or Ice Cold Ice
Cream unless the ordinary words have become
instinctive because they developed great
recognition through long use in the market
place (Park N Fly airport parking).
• 2) Marks not used continuously
• 3) Generic terms like computers or eyeglasses.
What’s not covered:
• 4) Marks that are confusingly similar
• 5) Weak or Descriptive Marks unless the owner
can prove the consumers are aware of it as a
mark.
• 6) Functional features when the feature is
necessary for the item to work. Since the shape
of a guitar is not necessary to its function, it can
be a trademark (and also a design patent)
Who owns a trademark?
• The first to use it by actual use or by
filing an intent to use (ITU) trademark
registration application.
•
• The first to file will win out as long as
actual use occurs within certain time
limits (6 months to 3 years depending on
the excuse for a delay)
The Process of
Federal Registration
• ITU Registration puts others on notice.
• Requires an application and $325 Fee.
• You must first put it into a use that
Congress may regulate- (product or service
must cross state, national or territorial line
or effects commerce that crosses such lines).
Federal Registration
• If the application meets
certain factors then it is
published in the Official
Gazette as being a candidate for registration.
Others may oppose registration.
• With no opposition then the trade mark is
published in the Principal Register.
• This publication creates a legal presumption
that another using the trademark is a willful
infringer liable for large money damages.
Federal Registration
• Marks consisting of ordinary or
descriptive terms may be published in the
Supplemental Register which affords less
protection.
• Five years on the Supplemental will get
you on the Principal Register.
• Under the“Lanham Act” one can still
obtain basic trademark protection
without registering.
Do a trademark search!
• Use an agency to check state and federal
registers, journals, telephone books and
magazines for similar or identical marks.
• Also check PTO’s online databases:
http://www.uspto.gov.
Or private companies such as:
http://www.thomson-thomson.com
http://www.dialog.com
http://www.micropatent.com
Providing Notice of a Trademark:
• “TM” or “SM” next to your trademark
creates no legal significance because the
use the mark itself is what confers
ownership.
• However, ® shows you have registered
with the PTO. Failure to include this
symbol will handicap the owner in a later
conflict with a infringer.
Registering trademark.com
• If a trademark owner acquires federal
registration of a mark there is not need to
register the “.com”
Why?
• Because the owner of a federally
registered trademark can stop others
from using the mark to sell similar goods
or services online or off.
THE END