Introduction

As far as we can tell, this is the first book about patenting art and entertainment. Being first doesn't get us a patent. There's nothing in this book that's particularly novel (one requirement of patentability) and much of what we write will probably be obvious to others in the field.

But we do attempt to do something new here: To consider art and entertainment patents as a family, much like pharmacology, software, and business methods patents are currently categorized. We explain -- through lots of examples -- what kinds of art and entertainment innovations have been granted patents, and how to decide whether your idea might be patentable.

Our challenge when deciding how to present this information was whether to create a theoretical book that explores the need for a separate art and entertainment patent category or to write a practical book that explains how to identify and protect patentable art and entertainment subject matter. We opted to do both, dividing the book into Part One (theoretical) and Part Two (practical).

Don't be afraid of Part One. We're not pushing a doctrine nor speculating on the future. We're just taking a closer look at patents for art and entertainment. In doing so, we define our terms and survey innovations that have received patents. We also look at copyright and other types of intellectual property protection, and help you decide which provides the best protection for your idea.

In Part Two, we speak directly to artists, entertainers, and other innovators and attempt to make the world of patent procedures more accessible. We explain patent searching, invention documentation, and patent application procedures.

This emphasis on the "how-to" may disappoint those seeking an academic treatise or exploration of moral issues ("Will patenting art stifle creativity?" "Does art serve a purpose?"). Of course, if interest in patenting art grows (as we believe it will), others will explore these ideas and many more. For now, we hope this book serves as an introduction to the concept and the process of protecting art and entertainment innovations.

Chapter 1 sets the stage by defining some key terms and providing important basic information on patent law.

The Nutty Professor as a Paradigm

In Jerry Lewis's film The Nutty Professor, mild-mannered scientist Professor Julius Ferris invents a serum that allows him to moonlight as suave entertainer Buddy Love. None of the film's characters suspect that the urbane Love and the nerdy inventor are one and the same. After all, artists and inventors are two distinct breeds.

But are they? This book argues a different view -- that art and invention have been intertwined throughout history; the artist's studio is also the inventor's laboratory; and the chasm separating Buddy Love and Professor Ferris is dissolving (if it ever existed at all).

Need proof that Buddy Love and Dr. Ferris are the same? Look no farther than the Nutty Professor himself:

Jerry Lewis had a problem as director of the film, The Bellboy; he couldn't view his scenes through the camera while acting. So, he mounted a video camera on the motion picture camera which allowed him to simultaneously watch each scene (as a director) and participate (as an actor). Lewis's "Video Assist" system was a hit with most directors and became a mainstay of film production (though some directors despised the video monitor for turning actors into "directors," eager to give opinions and "collaborate" on decisions).

Jerry Lewis got a patent for his innovation, a rarity for artists. This award allowed Lewis (or whoever he assigned the patent to) to control who made, sold, used, or offered the Video Assist system for sale for approximately 17 years.

In this book we argue that Lewis is not alone. Arts and entertainment are the breeding grounds for many patentable ideas. What's more, patent law provides advantages for artists that other forms of intellectual property protection, such as copyrights and trademarks, don't necessarily offer. (This is not to say that all works of art and entertainment qualify for patent protection or that patent protection, by itself, guarantees commercial success.) But the use of patents to protect arts and entertainment is likely to increase in coming years, for two reasons:

• Art and technology are intertwined. Much like alchemy evolved into the science of chemistry, the creation of arts and entertainment have evolved into formal sciences. Technology and process are as important as content when it comes to today's art and entertainment, from video games to raves, flash animation, hip-hop, MP3s, and computerized animation.
• Patent law is expanding. As the arts are changing, patent law is growing to include methods and processes that would have been considered unpatentable just 20 years ago. In recent years, for example, the United States Patent and Trademark office (USPTO) granted patents for:
  • a method for creating an antigravity illusion (U.S. Pat. 5,255,452)
  • a system that provides financial incentives for citizens to view political messages on the Internet (U.S. Pat. 5,855008)
  • a method of exercising a cat (U.S. Pat. 5,443,036)
  • a system for automating airline seat upgrades (U.S. Pat. 6,246,998), and
  • an online dating service (U.S. Pat. 5,884,272).

If patents like these are being issued why not patents for a "Method of Deceiving an Audience as to Presence of a Weapon," a "System for Accomplishing a Falling Stunt," or "A Process for Eliciting Laughter"?

Much of what we discuss here is still evolving. For example, controversy still exists over what constitutes a patentable business method, whether international law will conform to changes in United States law, and what kinds of art and entertainment will be subject to patent protection. Also, many people continue to resist the idea of merging the arts and science. Jerry Lewis remains bitter over the lack of respect he got for the Video Assist. As he told a writer for the S ociety of Camera Operators Magazine, "They [the film community] haven't appreciated the work of an innovator because he's a pratfall comic so I won't dignify them with any further comment about my device."

Art and Entertainment

For the purposes of this book, "art and entertainment" refers to a wide range of tools and works that inspire, provoke, amuse, distract, and divert humans. These include media and processes like film, music, video, painting, graphic art, and writing. In the following sections, we'll look at the distinctions between tools of art and works of art and the differences between art and entertainment.

1. Tools and Works

In 1841, John Rand invented a method of storing oil paint using a tin tube closed at each end with a pincer and solder. With his patented invention -- known as the collapsible tube -- artists could, for the first time, squeeze paint out in increments and then reseal the tube. Compared to the previous method -- stuffing oil paint in an animal bladder (known as a "skin bag") and then jabbing the bag with a bone -- Rand's invention was a quantum leap forward. Colors could be squeezed when needed, stored for long periods, and applied in any order or in any amount. In short, artists could paint with more spontaneity.

What was especially remarkable about Rand's invention was that it didn't just change the way paint was stored: it also changed the way artists painted. "Without paints in tubes," remarked Pierre-Auguste Renoir, "there would have been no Cezanne, no Monet, no Sisley, or Pissarro, nothing of what the journalists were later to call Impressionism."

John Rand created a tool for artists -- a functional method that changed the methodology of an art form. Rand also created works of art -- he was a well-respected portrait painter. Although there is a fundamental difference between a tool and a work of art, both tools of art and works of art are potentially patentable subject matter. We group them together for several reasons:

• It is sometimes difficult to separate tools from works, ideas from expression, and function from aesthetics -- for example in a Playstation game, where does the tool (the software and game play choices) end, and where does the art or entertainment (the sound and visuals) begin? Similarly, when you choose a pop song to serve as the "ringer" for your cell phone -- one of the fastest-growing sources of music revenue -- is the song functional or artistic?
• Patent law protects both tools and works. "Utility patents" are granted for useful inventions (tools) and "design patents" are granted for aesthetic or ornamental designs (works). Many inventions trigger both forms of protection -- for example, the Mickey Mouse telephone.
• The boundaries of protection in patent law are changing. The explosion of new technology patents, particularly business-method patents, has redefined what is patentable. Some invented concepts -- the structure for a romance novel or the construction of a heavy metal ballad, for example -- do not fall neatly into either the tools or works categories.

2. The Fusion of Art and Entertainment

Without getting too deeply into the territory of philosophies or art critics, it's safe to say that there's entertainment in virtually every art work, and vice versa (see "Killing the Clown on Stilts," below). Both art and entertainment are human expressions that require organization, arrangement, and an audience -- and historically, these two categories have overlapped and intertwined. In this book, we use the term, "arts," to refer to both categories.

We're not alone in grouping these two concepts together -- just look at the "Arts & Entertainment" cable channel or the ubiquitous "arts and entertainment" supplement in every local newspaper. Nowadays, these two categories seem to be permanently fused. The marketing of any venture today -- whether it is the soft news known as infotainment or the placement of computer product references in hip-hop songs -- requires some element of distraction, recreation, or diversion that merges art and entertainment. The public, unaware that the message of art has been replaced by the message of commerce, no longer sees any distinction between art and entertainment in these marketing ventures.

The distinction between art and entertainment has only one minor impact on our analysis of patents. Patents only protect useful inventions. What's useful? Legally speaking, providing entertainment is considered a useful activity. On the other hand, beauty, the provocation of thought or inspiration -- things accomplished by art -- are not considered useful. For that reason, you cannot patent Picasso's Guernica but you can patent a musical condom that plays "Happy Birthday to You."

In practical terms, the applicant for a patent can establish that an invention is useful simply by demonstrating any functionality that has a legitimate use for humans. And that covers a broad range of art and entertainment expressions.

What Is an Invention?

Patents are granted only to new inventions, but the term "invention" is much more elastic than you might think. When most people think of an invention, they think of a "thing" -- for example, the collapsible tube or the Video Assist camera and monitor. But Jerry Lewis and John Rand didn't set out to invent a "thing"; instead they wanted to invent a method of doing something -- a method of storing paint and a method of using a closed-circuit camera. They used "things" to accomplish their goals.

An invention, for patent purposes, typically develops in two stages: first as a brainstorm or "Eureka moment," and second as a physical manifestation of the idea -- for example, a prototype or a writing that explains how to make and use the idea. The brainstorm, is known in patent law as "conception." The embodiment of the idea -- that is, when the inventor shows how to make and use the invention -- is known as "reduction to practice."

EXAMPLE: Da Vinci invents sfumato. Artists had difficulty representing atmospheric conditions in paintings until Leonardo da Vinci had an idea -- to blur shadows and objects using minute transitions between color areas. He showed how to do this (in other words, reduced it to practice) in his 1485 painting Virgin of the Rocks, and again, in the delicate, smoky, mountainous landscape that forms the background of the Mona Lisa. Like many great art inventions, da Vinci's innovative process, known as sfumato, transcended its technique and, as one writer put it, created an emotional effect on viewers -- a "willingness to embrace uncertainty."

Today, the definition of invention is so broad and all-encompassing that it includes virtually anything under the sun that can be made by humans. Curiously, this broad definition of invention is not far from the thinking of Aristotle and Plato, both of whom grouped art and invention into one category. Aristotle categorized as poiesis, the making, producing, or performing of something. Plato considered both to be operative ventures -- the transforming of natural objects into man-made things.

What Is a Patent?

In the 15th century, architect Filippo Brunelleschi was commissioned to build a cathedral with a massive dome (a "cupola"). While attempting this task, he made a brilliant architectural breakthrough: he discovered that curves in the cupola could be constructed without a supporting framework. Bruneleschi's idea led to the popularization of Renaissance architecture. But this innovation might never have happened if Brunelleschi had not solved a more practical problem -- how to haul large stones to the cathedral construction site. To accomplish this task, Brunelleschi devised a unique boat capable of moving heavy loads upriver. For his efforts, he was granted the exclusive right to haul heavy loads on the river using his boat. With this monopoly over the use of his invention, Brunelleschi became the first recipient of a "patent grant."

The government rewards innovators today with a more sophisticated patent arrangement. In the United States, an inventor who creates a new, useful, nonobvious invention gets the exclusive right to make use, sell, or offer the invention for sale for a period of approximately 17 to 18 years.

Of course, there are some strings attached: The patent will be denied unless the inventor files the patent application within a fixed period of time and meets rigorous standards at the USPTO. Even if you are granted a patent, the rights it confers are purely offensive. It does not give you a right to prevent others form stealing your innovention (called "infringing your patent"), but it gives you a right to sue the infringer. (This is why author/attorney David Pressman refers to a patent as an inventor's hunting license.) If you don't take action to stop infringers, your patent will become worthless.

The USPTO grants three types of patents: utility, design, and plant patents. A utility patent, the most common type, covers inventions that function in a unique manner to produce a useful result. Unless we say otherwise, whenever we refer to a patent in this book, we're referring to a utility patent.

A design patent is granted for product designs -- for example, an Eames chair, Keith Haring wallpaper, or a Nike shoe. You can even get a design patent for a computer screen icon. There are strings attached to a design patent, too. The design must be ornamental or aesthetic; it can't be functional. You can enforce your design patent for only 14 years after it's issued. (For more information on design patents, see Chapters 3 and 8.) The USPTO also issues patents for plants. Because they're unlikely to fit into the art and entertainment premise of this book, however, we do not discuss them here.

Patents aren't renewable. Once the patent expires, others have the right to use your idea (and you can't repatent an invention, either). Patent rights extend throughout the entire United States, its territories, and possessions. Under international treaties, the owner of a United States patent can acquire patent rights in other countries by filing corresponding patent applications abroad. However, there are strict time limits for filing such foreign applications.

Finally, a patent is a form of personal property. It can be sold outright for a lump sum, or its owner can give anyone permission to use the invention ("license it") in return for royalty payments to the patent owner. A patent can also be transferred by gift, will, or descent (under the state's intestate succession [no-will] laws). In subsequent chapters we'll discuss patent standards in more detail, including what you have to do to get a patent.

Patent Requirements -- Prior Art, Novelty, and Nonobviousness

No introduction to patents would be complete without an explanation of several patent concepts: "prior art," "novelty," and "nonobviousness." These three terms all speak to the "newness" of the invention. Patents are granted only to inventions that differ from those that preceded it. If the invention was already in use, or if it would have been obvious to those in the field of the invention -- for example, if paint tubes already were available or obvious to painters -- then the inventor cannot get a patent.

1. Prior Art

To be patentable, an invention must be distinguishable from the hundreds of thousands of innovations that preceded it. Or, as the writer André Malraux wrote (referring to art and literature), "The convincing force of a work … lies in the difference between it and the works that preceded it." These previous innovations are referred to, coincidentally for our purposes, as "prior art." They include:

• any invention in public use or on sale in the United States for more than one year before the filing date of your patent application
• anything that was publicly known or used by others in the United States before the date of invention
• anything that was made or built in the United States by another person before the date of invention
• any work that was the subject of a prior patent, issued more than one year before the filing date of your patent or any time before the date you created the invention, or
• any work that was published more than one year before the filing date of your patent or any time before your date of invention.

Prior art is used to gauge two patent standards, novelty and nonobviousness.

2. Novelty

An invention is novel if it differs in some way from the prior art. The most common way to establish novelty is to create an invention that physically differs from past ideas -- for example, Rand was the first person to conceive of storing paint in extruded tin, rather than in an animal skin. Novelty can also be established by creating a new combination of existing elements. For example, Richard Hollingshead, Jr., combined two existing inventions -- movies and automobiles -- and patented the drive-in movie theater in 1933.

3. Nonobviousness

In order to obtain a patent, the difference between the invention and the prior art must not be obvious to someone with ordinary skill in the field. Or as it is sometimes put, the invention must yield one or more new and unexpected results. For example, even though John Rand's collapsible tube had been around for 50 years, it wasn't until 1892 that a dentist came up with the idea of filling it with toothpaste, eliminating the communal toothpaste jar. The fact that it took 50 years for someone to realize that toothpaste could be put in tubes demonstrates that it wasn't obvious to those working in the field of oral hygiene.

Nonobviousness is always measured against a person having ordinary skill in the field of the invention. The law considers a person having "ordinary skill in the art" to be a worker in the field of the invention who has ordinary skill, but who also knows about all of the prior art in the field. Of course, this is a legal fantasy -- no such person ever lived (or ever will), but there's just no other realistic way to set an objective standard for determining nonobviousness. Instead, the PTO creates a hypothetical person and tries to weigh the obviousness of the invention against the knowledge this hypothetical person would possess. To determine nonobviousness, courts go through these steps.

• determine the scope and content of the prior art
• determine the novelty of the invention
• determine the level of skill of artisans in the pertinent art and consider secondary and objective factors, such as commercial success, long-felt but unsolved need, and failure of others
• against this background, determine whether the invention is obvious or nonobvious.

In light of these standards, consider the invention of the printing press in 1452. The screw-type wine (or olive) press had already been in existence for centuries. Block-print technology, oil-based inks, and mass-produced paper production had also been around for a few hundred years. Yet none of the people involved with paper, movable block texts, or wine presses had the flash of brilliance that Gutenberg had when he converted his wine press to hold metal type blocks and reproduce text on pages of paper. The rapid success and popularity of the press, and the fact that it solved a long-perceived need to disseminate textual information demonstrated that Gutenberg's invention was nonobvious.

To paraphrase Albert Szent-Gyorgyi, Gutenberg "saw what everybody had seen and thought what nobody had thought." Judge Learned Hand echoed this when he stated, "Many great inventions are of this character, and the reason why the ordinary man does not discover them although they are so plain when some one else has done so is that habit has limited his power to see what he has not been accustomed to see, and his selective attention is fast bound by his past experience."

Two mainstays of the 20th century -- radio commercials and supermarkets -- both seem obvious to us in hindsight, but were actually nonobvious inventions. Initially, radio stations were created as a means of selling radios -- stations that played music, for example, increased sales. It wasn't until August 1922 that radio station owners realized they could earn money directly from the new medium when WEAF in New York created the first "commercial" broadcasting, a paid advertisement for the rental of nearby apartment buildings.

Prior to 1916, whenever a customer wanted an item at a retail store, a clerk fetched it and brought it to the cash register. Clarence Saunders realized that the customer could do the fetching when he invented and patented the supermarket -- a place where customers perused aisles of products, made their choice, and carried it to the cash register.