Intellectual Property

Intellectual property matters include the application and registration of patents, trademarks, and copyrights, among related issues such as unfair competition, and trade secrets.

Do you need help with obtaining or defending a copyright or trademark? Are you an artist, author or musician who needs to protect your intellectual property or assistance with a contract?

Do you have an issue concerning a website, a domain name or computer software?

If you answered “yes” to any of these questions, you may need a qualified intellectual property rights attorney.

Copyright

Copyright is governed by federal law and is derived from the U.S. Constitution, which granted power to the United States Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” (this clause also is the basis for patent protection in the U.S.). As a result, Congress has enacted a succession of copyright acts and amendments, beginning in 1790 and continuing through today. In general, the current law grants copyright protection for a period of the life of the author plus 70 years.

Copyright applies to original works of authorship that are fixed in a tangible medium of expression. An original work of authorship is one that is independently created and includes a minimum level of creativity. Examples of the types of works to which copyrights apply include literary works, drawings, paintings, sculptures, movies, music, video games, and other works of art. Copyright protection also applies to computer software.

Copyright protection does not protect ideas, but protects the expression of an idea. A work does not need to be registered with the Copyright Office to be afforded copyright protection. However, it must be registered with the Copyright Office to bring a lawsuit for copyright infringement. In addition, significant benefits arise from the timely registration of copyrights.

The author of a work is vested with a number of exclusive rights when copyright protection arises. These exclusive rights include, among other things, the right to reproduce (copy), adapt, display, and publicly perform the work. The author may transfer all or some of his or her exclusive rights in the work to another party. For example, the author of a novel may transfer the right to adapt a novel into a screenplay to a movie studio, while still retaining the copyright in the novel itself. Another significant component of copyright law is the area of fair use, which allows use of a copyrighted work without permission in certain limited circumstances (e.g., for the purpose of commenting on or criticizing the work).

Copyright lawyers assist clients with identifying materials that are protectable by copyright, registering copyrightable works with the United States Copyright Office, and counseling clients in the various ways in which copyrights may be acquired, protected and exploited. Litigation also is a large part of a copyright lawyer’s practice.

Copyright law also addresses issues involving digital rights management, which are measures designed to manage digital copies of works. With the advent of digital copies, some copyright owners seek to restrict the ability to make copies of a particular work. The Digital Millennium Copyright Act, which is part of U.S. copyright law, prohibits circumventing measures that are designed to prevent copying of copyrighted works. The Digital Millennium Copyright Act also, among other things, provides a framework for online service providers for avoiding copyright infringement based on the acts of the online service provider’s users.

Patent

A patent is a contract between an inventor and the government. The inventor provides a complete description of the invention to the public in an application for patent. This benefits the public by providing knowledge of the invention for use as a foundation for additional innovation. In return, if the invention is new (as compared to everything known to the public prior to the invention), a patent is issued. This patent gives the inventor a right to exclude others from making, using, offering for sale, or selling the patented invention throughout the United States, and from importing the invention into the United States, for the life of the patent, usually 20 years from filing.

Grant of a patent does NOT itself give an inventor a right to exploit the patented invention – it only gives the inventor a right to exclude others from practicing the invention. For example, if an inventor makes an improvement to a previously patented machine, and gets a patent, the inventor can prevent the owner of the original patent from using the improvement. However, the inventor may not be able to exploit the improvement itself, at least until the original patent expires, because such exploitation might infringe that original patent.

Title 35 of the United States Code (the “Patent Statutes”) set forth the standards and procedures for obtaining patents. Patents are granted by the United States Patent and Trademark Office (USPTO), an agency of the Department of Commerce.

The following items are patentable under these statutes:

1. Processes: new methods of doing something.
2. Machines: engines, machinery, instruments, gadgets, etc.
3. Articles of manufacture: circuits, tools, structures made of metal, plastics, ceramics, etc.
4. Compositions of matter: new pharmaceuticals, chemical compounds, naturally occurring substances when substantially purified, DNA sequences, biological materials, e.g. bacteria, viruses, proteins and protein fragments, monoclonal antibodies, epitopes, and vectors.
5. Improvements in any of the above.
6. Living organisms: genetically altered plants and animals.
7. Computer programs: alone and in conjunction with other equipment.
8. Business methods: methods for doing business, but not those solely directed to patenting abstract ideas.
9. Designs: ornamental aspects of articles of manufacture.

Non-patentable items include: nebulous concepts or ideas, laws of nature (e.g., gravity), mathematical algorithms alone (but computer-implemented mathematical algorithms producing a concrete, useful, and tangible result are patentable subject matter), and purely mental processes.

A key element to effective patent protection is writing patent claims that define the invention as broadly as possible, but without overlapping prior art that could make the patent invalid. This is generally best done by someone with skill and experience in patent practice, so consulting with a patent attorney is a wise choice.

Trademark

Trademark law encompasses the protection and enforcement of words, symbols or phrases used to identify the source of a particular product or service. Some of the most famous trademarks in the world include APPLE®, GOOGLE®, MCDONALD’S® and MICROSOFT®. Trademarks are governed by state law and the federal Lanham Act, which allow trademark owners to claim exclusive rights to use and register all protectable marks.

A mark is deemed protectable if it is distinctive, meaning that it is capable of identifying the source of a particular good. In determining whether a mark is distinctive, trademark law uses four separate classifications based on the relationship between the mark and the associated product: (1) arbitrary or fanciful (marks such as KODAK® and APPLE® that bear no inherent relationship to their associated products); (2) suggestive (marks such as COPPERTONE® that evoke a characteristic of the associated products); (3) descriptive (marks such as HOLIDAY INN® that directly describe a characteristic or feature of the associated products); or (4) generic (terms that describe the general category of the associated products, e.g., “phone,” “keyboard,” etc.). The first two categories of marks are protectable without proof that they have acquired distinctiveness in the minds of consumers, while descriptive marks require evidence that the consuming public has come to associate the term with its specific source. Generic terms are never protectable as trademarks, as they are necessary for general identification of a particular product category.

Once a trademark owner has acquired protectable rights in a mark, it may enforce its rights by preventing the use and/or registration of all subsequent infringing marks. The standard for infringement in the United States is “likelihood of confusion,” which means that consumers viewing the respective marks on their associated products are likely to be confused as to the source of those products or as to the sponsorship or approval of such products. In other words, determining infringement is not as simple as merely comparing the marks to see if they are identical; rather, courts will employ a multifactor test. While the precise factors vary slightly by jurisdiction, courts generally consider the following elements: (1) the strength of the plaintiff’s mark; (2) the relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of care exercised by the typical purchaser; (7) the defendant’s intent; and (8) the likelihood of expansion of the product lines.

Protecting and enforcing trademarks is critical to the success of any company. Trademarks allow consumers to distinguish a company’s products and services from those of its competitors, and also serve as indicators of the quality of such products and services. Indeed, many companies’ trademark portfolios constitute the majority of the value of their businesses. Please consult with an experienced trademark lawyer to explore how to best to protect your company’s trademarks.

Other Forms of Intellectual Property

The body of intellectual property law also includes laws relating to trade secrets, unfair competition, and the right of publicity. Trade secret laws protect any formula, pattern, device, or compilation of information that provides a business advantage over competitors who do not use or know of it. A strategy to increase worker productivity, for example, is a trade secret. Trade secrets do not receive patent protection because they are not inventive. Trade secret laws are included in intellectual property laws because, like other intellectual property laws, they prevent the unauthorized use of certain intangible subject matter.

The right of publicity is the right of a person to control the commercial value and exploitation of his or her name, voice, or likeness. Because right-of-publicity laws promote artistic and commercial pursuits, they are included among intellectual property law. These laws are usually reserved for celebrities and other public figures whose name and image are important to their career. By allowing celebrities the right to control the commercial use of their name, voice, and image, right-of-publicity laws protect the commercial potential of entertainers.