Frequently Asked Questions
How do copyrights, patents and trademarks differ?
Copyrights, patents and trademarks are legal protections for different types of intellectual property. While each has its own rules and applications, they can overlap so that more than one kind of protection applies to the same article or service. In practice, however, usually only one type of protection is granted.
A copyright protects the expression of ideas. It protects the original creations of artists, authors and musicians from unauthorized copying and use by others. Books, music, sculpture, choreography and jewelry are examples of creative expression that can be copyrighted. Copyright laws encourage creativity and intellectual pursuits by allowing artists to profit from their creations.
A patent protects the application of an idea. If an inventor creates or discovers a new, nonobvious and useful device, chemical or process; a new, original and ornamental design; or a new and distinct asexually reproducing plant and receives a patent, others are prohibited from making, using, selling or importing the item for a period of time. The inventor then can profit from the invention. Patents are frequently granted for pharmaceuticals, machines and new compositions of material. A design patent, however, is awarded for a nonfunctional design or ornamentation of a manufactured product. The design may also be eligible for copyright protection.
A trademark protects an identifying feature used on a particular good or service. The mark may consist of words, symbols and/or other features. A fast-food restaurant named MacDonald’s, for instance, probably would be infringing on the trademark of McDonald’sÂ® restaurants: It could confuse consumers, and the MacDonald’s owner would be unfairly benefiting from the reputation and name recognition of McDonald’s. Trademark, unlike copyright, can protect names, titles and slogans.
What are the advantages of registering a copyright?
Authors automatically receive federal copyright protection for their works as soon as the works are created. Registration of a copyright is not required for protection, but registration has significant advantages:
- Registration of a copyright creates a public record of the copyright claim, which makes it more difficult for anyone to argue lack of knowledge of the claim.
- Registration grants a copyright owner the right to sue for copyright infringement.
- Registration within five years of publication creates prima facie (true on its face) evidence that the copyright is valid. A work is considered “published” when it is made available to the public on an unrestricted basis.
- If a copyright is registered within three months from publication or before any infringement of the work, the copyright owner may be able to recover attorney’s fees and statutory damages without having to prove monetary loss.
- After a copyright is registered, the owner can record the registration with the US Customs Service for protection against infringing imported copies.
To register a copyright, the creator of a work must complete forms and submit them with a fee to the US Copyright Office at the Library of Congress in Washington, DC, along with the required number of copies of the work. The Copyright Office will process the application and send the creator a certificate of registration.
What is “work made for hire”?
A copyright is owned by the author or artist who created the work, unless the author sells the copyright or the work was “made for hire.” Generally speaking, a work made for hire is something that was created by an employee while on the job or by an independent contractor who was hired to create the specified work. The copyright on work made for hire belongs to the employer or the party who commissioned the work.
An employee who writes an article, designs a web page, creates a computer program or draws an illustration for a company publication is creating a work for hire. Even if the author is not technically an employee, if a court determines an employment relationship exists between the author and the employer, the author will not own the copyright on his or her work. If an employee creates a work on his or her own time, it probably is not work for hire, even if the employee uses it on the job.
A creative work that a party commissions an artist to produce is work for hire if the parties sign a contract stating the work is for hire, and if it is ordered for use as:
- A contribution to a collective work
- Part of a motion picture or other audiovisual work
- A translation
- A supplementary work, such as a forward to another work
- A compilation
- An instructional text
- A test or an answer key for a test
- An atlas
When is copying allowed under copyright law?
Copy machines in libraries and copy centers often have signs posted above them warning that a person making copies from a published work may be violating copyright laws. Not all copying violates the exclusive rights of a copyright holder, though. Of course, if a poet gives a radio commentator permission to quote his poem, the copyright is not violated. The “fair use” doctrine, however, has been developed by the courts to determine when copying is allowed without the prior permission of an author.
The purpose of the copying is important to whether it will be considered fair use. If the reproduction is for the purpose of criticism, news reporting, teaching or research it is more likely to be fair use than if it is copied for commercial purposes. For example, quoting a few lines from a book in a book review normally is allowed. A graduate student writing a thesis on the works of Ernest Hemingway can probably quote some of Hemingway’s published work in the thesis. A teacher may make a limited number of copies of a work for classroom use. Other examples of likely fair use include:
- Making Braille copies or audio recordings of books for use by the visually impaired
- Video recordings of TV programs for personal use
- Parody and satire, such as a takeoff on a popular song
In deciding whether a use is fair, the courts also consider the amount and substantiality of the copyrighted work that was reproduced. The larger the proportion of a work that is copied, and the more important that part is, the more likely it is that the use will not be considered fair (and therefore be considered infringing on the copyright). If the value of the copyrighted work is potentially reduced by the copying, it is not likely to be considered fair. For example, a campus bookstore that reproduces a packet of articles to sell to students may reduce the market for the books or magazines that published the articles and therefore may be violating copyright law.
Who owns the patent on an invention created by an employee?
Only the actual inventor can file for a patent, even if the inventor developed the invention under the orders of his or her employer. It is typical, however, for the employer to contract with the employee to assign the patent to the employer once it is granted. The contract also may call for the employer to give the employee a bonus or a percentage of the royalties generated by the invention.
If there is no such contract, the employee will continue to own the patent to the invention. The shop-right doctrine, however, may come into play. The shop-right doctrine says that in this situation, the employer has a nonexclusive license to use the invention.
Is it necessary to hire a lawyer to submit a patent application?
There is no requirement for an inventor to hire a lawyer to help with a patent application, but it is advisable. Patent law is a complex mix of intellectual property law and technical information, and for this reason patent lawyers are trained in the patent process and in one or more technical or scientific fields. Before an inventor applies for a patent, a lawyer can make a preliminary patent search to determine if someone else already has patented the invention. The lawyer also can advise the inventor on whether the invention meets the legal requirements for patentability.
A patent lawyer who is familiar with the procedures of the US Patent and Trademark Office (USPTO) can make the patent application process easier. To apply for a patent, the inventor must submit an application to the USPTO, including specifications and drawings (if applicable) of the proposed invention, an oath signed by the inventor and a fee. The specification is a complete written description of the invention, including the manner and process of creating the invention, its uses and the limits of its operation. The specification must follow a particular form. A patent examiner in the USPTO reviews the application to determine whether the invention and the application meet the legal requirements. The examiner usually will have questions for the applicant. If the examiner has objections to the application, the applicant may try to overcome those objections and may be required to make amendments to the application. The process of patent approval may take several years.
What is a provisional patent application?
The US Patent and Trademark Office (USPTO) instituted the provisional patent application (PPA) in 1995. By filing a PPA, the inventor may use the “Patent Pending” description in connection with the invention. The PPA process is less expensive and complex than the non-provisional patent application (the traditional, full patent application), but if the non-provisional application is not filed within 12 months, the PPA will be abandoned.
The PPA establishes an early filing date for the patent, but the 20-year patent term does not begin until the non-provisional patent application is filed. The PPA is not examined on its merits.
The PPA allows the inventor to spend less money up front, while giving him or her a year to test the merits of the invention. The inventor should take care, however, to patent the invention within 12 months if the invention is successful.
When can the decor of a restaurant be protected under trade dress law?
If the decor of a restaurant is distinctive and if a competitor’s use of similar decor could confuse consumers, the decor of the first restaurant may be entitled to trade dress protection.
Example: Taco Cabana© opened a chain of Mexican restaurants in Texas. The restaurant interiors were decorated with artifacts, bright colors, paintings and murals that created a “festive eating atmosphere.” The exteriors had vivid colors and bright awnings, and patios with umbrellas. When another chain of Mexican restaurants, Two Pesos, opened restaurants with similar decor in competition with Taco Cabana, Taco Cabana sued for trade dress infringement.
The court said that Taco Cabana’s trade dress could include virtually the total image of the business, including the shape and appearance of the exterior of the building, the identifying sign, the kitchen floor plan, the decor, the menu, the food-service equipment and the servers’ uniforms. The court found that Taco Cabana’s trade dress was distinctive.
The court also stated that Two Pesos had “brazenly copied Taco Cabana’s successful trade dress” and expanded in a manner that foreclosed Taco Cabana’s expansion in several geographic areas. This created a likelihood of consumer confusion. The court held that Two Pesos had deliberately infringed Taco Cabana’s trade dress and Taco Cabana was able to recover monetary damages.
How can a business prevent an employee from stealing trade secrets when the employee leaves the company?
It is impossible to prevent all trade secret theft by employees, but an employer has some tools at its disposal, including:
- Requiring employees, when they are hired by the company, to sign noncompetition agreements that prohibit the employees from using confidential business information or product innovations to compete with the employer in new jobs
- Conducting exit interviews with departing employees to remind them of their duty to keep trade secrets confidential
- Educating employees about the importance of confidentiality of trade secrets
- Limiting access to confidential information to those who need to know the information
- Requiring computer passwords to access confidential files
What kinds of marks cannot be registered as federal trademarks?
Not all words, names or symbols can be used as trademarks. Categories of marks that generally will not be registered as trademarks include:
- Generic marks
- Surnames, unless they become well known as trademarks through advertising or long use, such as McDonald’s
- Trade names, unless they are used in the marketplace and have become distinctive
- Marks containing immoral, deceptive or scandalous matter
- Marks that disparage persons, institutions, beliefs or national symbols
- Marks consisting of the flag of the United States, a state or a foreign nation
- Primarily geographically descriptive marks
- Marks using the name, signature or portrait of a living individual without that person’s consent
- Marks using the name, signature or portrait of a deceased US president, during the life of his widow, without written consent of the widow
- Marks so similar to those already registered that they may cause confusion, mistake or deception
- Marks that merely describe the product or service
Learn More: Intellectual Property Law
Intellectual property describes a wide variety of property created by musicians, authors, artists, inventors and businesses. Intellectual property is protected by copyright, patent, trade dress and trademark laws. These areas of law are designed to encourage the development of art, science and information by granting property rights to creative and inventive people. These rights allow artists and inventors to protect their work from infringement, unauthorized use and misuse.
Copyrights are exclusive rights granted to authors, artists, composers and publishers to copy and distribute their works. To qualify for copyright, a piece of art must be original and must exist in some tangible form; it cannot exist only in the artist’s mind. Copyrights arise automatically as soon as creative works are made. However, registration affords owners of copyrighted materials additional benefits.
Each nation has its own rules and regulations governing intellectual property, so an artist or inventor who wants to protect his or her rights in more than one country will need to make several registrations. International treaties have streamlined some search and registration procedures.
Patents are granted to inventors for new and nonobvious technologies. A patent gives the inventor exclusive rights in the invention for a period of time so that the inventor can profit from the invention before the right to exploit it is available to the general public. Patents can be granted for some plants and other life forms, designs of manufactured products, machines, processes and combinations of matter. A patent must be applied for through the federal government and will only be granted if the invention is unique.
Technology licensing is a way that the inventor of a new technology can place the invention into the stream of commerce and realize some profit from its production. The inventor can grant a license to a corporation that has the resources to produce the invention.
Trade dress is similar to trademark in that it is symbolic of a product or service and can be used to identify and promote the product or service. The shape, color and design of a product or its packaging can be trade dress. The decor and color scheme of a restaurant or store also can be trade dress.
Trade secrets are a class of proprietary information that has commercial value and is held by a business. Trade secret laws protect formulas, patterns, devices and compilations of information from use by unauthorized persons.
Trademarks allow businesses to protect the symbolic information that identifies the source of goods and services by preventing use of the information by competitors. To receive trademark protection, a word or symbol must be distinctive and must be used in the marketplace so that it gains recognition with the public. A trademark need not be registered, but if it is registered the owner of the mark has put others on notice that the trademark already is in use.
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