Patent, Copyright & Trademark

Introduction

Intellectual property refers to products of the human intellect that have commercial value and that receive legal protection. Typically, intellectual property encompasses creative works, products, processes, imagery, inventions, and services and is protected by patent, copyright, trademark, or trade secret law.

The commercial value of intellectual property comes from the ability of its owner to control and exploit its use. If the owner could not legally require payment in exchange for use, ownership of the intellectual property would have little if any commercial value.

Example 1:  At the end of the 1930s Walt Disney took a big gamble. Nobody had ever made a full-length animated feature. Many people felt the idea was foolish, including Mr. Disney’s business partner and brother, Roy. But Walt Disney believed that the public was ready for full-length animated features, and in 1937 he borrowed heavily from Bank of America to make the film Snow White and the Seven Dwarfs. The success of that film led to other classic animated features including Fantasia, Lady and the Tramp, and 101 Dalmations. These films are now among the most valuable copyright properties in the world and have been rereleased numerous times and in different formats. The Disney Company has earned billions of dollars from the monopoly created by its copyrights on full-length animated films. The company has successfully used copyright law to prevent others from copying and selling the films without authorization.

Example 2: In the 1990s, Lonnie Johnson, an ex-NASA engineer, improved upon a staple of every child’s toy weapons arsenal when he created one of the most popular toys of the 1990s, a squirt gun with phenomenal spraying power. Mr. Johnson acquired a U.S. patent for his invention (U.S. Pat. 4591071) and was able to license the rights to several companies who paid millions of dollars in royalties to Mr. Johnson. The product was sold under the trademarked name “Super Soaker,” and the exclusive right to use this name further enhanced the value and goodwill of the product. Under patent law, Mr. Johnson was able to stop others, during the term of his patent, from the unauthorized making, using, and selling of his invention. 

How Intellectual Property Law Works

Intellectual property laws, along with court decisions and regulations, establish rules for the following activities:

selling or licensing of intellectual property

resolving disputes between companies making or selling similar intellectual property products and services, and

the registration and administration of intellectual property.

Intellectual property laws don’t prevent someone from stepping on the owner’s rights. But the laws do give an owner the ammunition to take a trespasser to court. This is the most well-known benefit of owning intellectual property: The owner acquires exclusive rights and can file a lawsuit to stop others who use the property without authorization. If the intellectual property owner does not confront the person or company who has acted without permission, then the illegal activity will likely continue.

Types of Intellectual Property Laws

Intellectual property law consists of several separate and overlapping legal disciplines, each with its own characteristics and terminology.

Patent law. There are three types of patents: utility, design, and plant. Utility patents (the most common type) are granted to the inventor of a new, nonobvious invention. The utility patent owner has the exclusive right to make, use, and sell the invention for a limited term—usually 17 to 18 years. A design patent (for a new but nonfunctional design) lasts 14 years after the date the patent issues. A plant patent expires 20 years from the date the patent was filed.

Copyright law. Copyrights are granted for original creative expressions produced by authors, composers, artists, designers, programmers, and similar creative individuals. Copyright law does not protect ideas and facts, only the manner in which those ideas and facts are expressed. Copyright protection lasts a long time, often more than 100 years.

Trademark law. Trademark law protects the rights of businesses that use distinctive names, designs, logos, slogans, or other signifiers to identify and distinguish their products and services. This protection can last as long as the company uses the trademark in commerce—for example, many trademarks, such as Coca-Cola and General Mills, have been protected for over a century.

Trade secret law. A trade secret is any confidential information that gives a business a competitive advantage. Under trade secret law, the owner of this confidential information can prevent others from using the information if it was obtained illegally. Trade secret protection lasts for as long as the business maintains the secret.

Legal Basis of Intellectual Property Laws

The sources of intellectual property laws vary according to the subject matter. Copyright and patent laws are derived from powers originating in the U.S. Constitution and are specifically and exclusively implemented by federal statutes. In all of these areas, court decisions provide important principles governing the application of intellectual property laws. Trademark and trade secret laws originate primarily in both federal and state statutes but also are derived from court decisions that apply principles developed by earlier courts as part of the common law.

Intellectual Property Overlap

Sometimes, trade secret, copyright, patent, and trademark laws intersect with each other with respect to a particular product or service. Some common examples of this are as follows:

Trade secret and patent. It is possible to pursue a patent application while simultaneously maintaining the invention as a trade secret, at least for the first 18 months of the U.S. patent application process. The U.S. Patent and Trademark Office (USPTO) treats applications as confidential until they are published. Unless the applicant files a Nonpublication Request (NPR) at the time of filing, and doesn’t file for a patent outside the United States, the PTO will publish the application within 18 months of the filing date.

Copyright and trademark. It’s not uncommon for an item to be protected under both trademark and copyright law. For example, the expressive artwork in a package design may be protected by copyright, while the overall look and feel of the package may be protected as a form of trademark. Likewise, an advertisement may include some material covered by copyright (for example, a jingle) and other material covered by trademark (the product or company name). The difference here is that copyright protects the literal expression, while trademark protects whatever is used to designate the source of a product or service being offered in the marketplace.

Patent, copyright, and trademark. Patent law can intersect with copyright and trademark law in the case of certain products. For example, the designer of a toy or of jewelry may protect the device’s name or appearance (as a trademark), the design of the item (design patent), the appearance of any artwork or graphics (copyright), and the novel, nonobvious functionality of the device (utility patent).

Intellectual Property and the Internet

Intellectual property laws came under intense scrutiny with the popularization of the Internet at the end of the 20th century. The ability to transform documents, movies, music, and other expressions into digital copies suddenly made near-perfect copying possible for everyone, not just bootleggers and pirates. The Internet enabled the widespread distribution of these unauthorized copies as well as a plethora of other issues relating to trademarks and domain names, the publication of trade secrets, the linking of websites, and the invention of patentable business processes (business method patents). Along with these changes came disputes and new laws. Throughout this book, we have included Internet-related definitions and issues.

International Laws

Most countries in the world have entered into intellectual property treaties that afford members mutual rights. This does not mean that anything protected in the United States will be protected abroad. However, intellectual property that is protected in America may achieve protection abroad under the standardized rules established by the various treaties. For example, the Madrid Protocol has standardized the process for obtaining trademark protection among member countries. Similarly, the Berne Convention establishes international copyright principles, and the Paris Convention and the Patent Cooperation Treaty offer harmonization for owners of patents. Trade secrets may receive international protection under GATT (General Agreement on Tariffs and Trade).

Determining What Rights Apply to Your Work

If you are concerned with a creation of your own, you’ll first need to know what form (or forms) of intellectual property applies to it. On the next few pages, we’ve provided a detailed chart that classifies how creative works are protected.

These basic rules can help you get started.

Utility patents are awarded for new processes, machines, manufactures, or compositions of matter, or new uses of any of the above

Design patents are awarded to nonfunctional, ornamental, or aesthetic design elements of an invention or product.

Plant patents a granted for asexually or sexually reproducible plants (such as flowers).

Copyright law protects expressions of creative ideas such as songs, artwork, writing, films, software, architecture, and video games.

Trademark law protects marketing signifiers such as the name of a product or service or the symbols, logos, shapes, designs, sounds, or smells used to identify it.

Trade secret law commonly protects confidential designs, devices, processes, compositions, techniques, formulas, information, or recipes.

Is It Primarily Functional or Aesthetic?

Intellectual property rights are often divided between functional elements (protected by utility patents and trade secrets) and nonfunctional elements (protected by trademarks, copyrights, and design patents). Sometimes you can start your analysis of intellectual property protection by asking the question: “Does this creation accomplish a task or goal or is it done primarily to appeal to the senses or provide information or entertainment?”

Self-Help Intellectual Property Resources From Nolo

If you’re interested in intellectual property, Nolo, the publisher of this book, offers a number of excellent self-help resources. You can find more information at the back of this book or at the Nolo website, www.nolo.com.

Books

All I Need Is Money: How to Finance Your Invention, by Jack Lander, is packed with advice and strategies to help the reader find sources of funding for new inventions.

Getting Permission: How to License & Clear Copyrighted Materials Online & Off, by Richard Stim, spells out how to obtain permission to use art, music, writing, or other copyrighted works.

What Every Inventor Needs to Know About Business & Taxes, by Stephen Fishman, provides the information you will need if you want to make a profit from your invention, or if you have to understand legal protections, business rules, and tax deductions.

Profit From Your Idea: How to Make Smart Licensing Deals, by Richard Stim, guides the reader through the important process of giving others permission to use, develop, and market an invention.

Nolo’s Patents for Beginners, by David Pressman and Richard Stim, is a quick and easy guide to patent law that sets out the basics for protecting, searching, documenting, and registering patentable inventions.

Patent It Yourself, by David Pressman, a patent attorney and former patent examiner, takes inventors through the entire process—from conducting a patent search to filing a successful application.

Patent Pending in 24 Hours, by Richard Stim and David Pressman, shows you how to prepare, assemble, and file a provisional patent application—an abbreviated patent application that preserves your priority of invention for 12 months.

Patent Savvy for Managers: Spot & Protect Valuable Innovations in Your Company, by patent attorney Kirk Teska, provides all the information you need to identify and evaluate company patents, organize patent committees, work with patent attorneys, and read and understand patents.

The Copyright Handbook: What Every Writer Needs to Know, by Stephen Fishman, takes the reader through the process of protecting all kinds of written expression under copyright law.

The Inventor’s Notebook: A Patent It Yourself Companion, by Fred Grissom and David Pressman, is an annotated book that can be used to document the creation of an invention.

How to Make Patent Drawings: A Patent It Yourself Companion, by Jack Lo and David Pressman, teaches how to use pen and ink, computerized drawing programs, and photography to prepare patent drawings.

The Public Domain: How to Find Copyright-Free Writings, Music, Art & More, by Stephen Fishman, is an essential road map for determining whether music, writing, artwork, and movies are free to use.

Trademark: Legal Care for Your Business & Product Name, by Stephen Elias and Richard Stim, shows how to choose a distinctive name, conduct a trademark search, and register a mark with the U.S. Patent and Trademark Office.

Legal Guide to Web & Software Development, by Stephen Fishman, covers website development, software development, intellectual property laws, and the legalities of working with independent contractors and employees.

Online Resources

Dear Rich: Nolo’s Patent, Copyright & Trademark Blog
(www.patentcopyrighttrademarkblog.com) provides answers to many common intellectual property questions.

Nolo Podcasts (www.nolocast.com) offer a series of audio podcasts on legal subjects including several episodes discussing intellectual property.

Nolo’s Online Trademark Application (www.nolo.com) assists applicants filing for federal registration.

Nolo’s Online Provisional Patent Application (www.nolo.com) assists applicants filing a provisional patent application with the U.S. Patent and Trademark Office.