Copyright, Trademark, or Patent

Which form of intellectual property do I need?

It is very common for people to get forms of intellectual property. Often I talk to people who know that they need to protect their intellectual property, but they aren’t sure what form of intellectual property protection they need. Although there are some similarities among these kinds of intellectual property, copyrights, trademarks, and patents are different and serve different purposes. This blog post will first outline the three main forms of intellectual property: copyright, trademark, and patents, and then will discuss the differences between each one. By the end of reading this blog post, you should have a good idea of what form of intellectual property you need and how to go about obtaining it.

Copyrights

A copyright is a form of intellectual property and is a way to protect original works of authorship that are fixed in a tangible medium of expression. Primarily, copyright is appropriate for original creative works of authorship; however, the level of creativity is very small (“a modicum of creativity” is required). Original works of authorship that are protected by copyright include literary, dramatic, musical, and artistic works, such as paintings, sculptures, and photography, literary works such as poetry, novels, short stories, articles, screenplays, theatrical scripts, and other writings, motion pictures such as movies and television shows, songs (musical compositions and sound recordings) and even computer software (code), and architecture to some degree. Copyright provides you with the exclusive right to reproduce, perform, distribute, or display the work or to create other works based on that work called a derivative work. These exclusive rights granted may be divided up and sold or licensed individually or together.

You cannot obtain copyright protection on things like facts, ideas, systems, or methods of operation, however, it may be possible to protect these things in some form of tangible expression. Remember, to obtain copyright protection you must express your idea in some form of tangible expression. This is known as the idea-expression dichotomy in copyright law; basically, it is the manifestation of an idea (i.e., the expression of the idea in tangible form) that is protected, not the idea itself. For example, you may have an idea about a movie script, but until you write that script, you do not own a copyright. That said, there are ways to protect a mere idea through express or implied contracts, but the best way to protect an idea is to not tell anyone (i.e., keep it a secret) until you express it in a tangible medium of expression and obtain copyright (or patent) protection.

Whether published or unpublished, the work will be protected by copyright from the point it was created, for the life of the author, plus seventy (70) years post-mortem, whether the work was ever registered with the copyright office or not. If the work is created anonymously, pseudonymously, or for hire (Work for Hire), then copyright protection lasts either ninety-five (95) years from the date of first publication or one-hundred-twenty (120) years from the date of creation, whichever is shorter. Copyright protection can depend on a number of factors because copyright laws have been revised over the years. It is very important to consider when the copyright was first obtained when determining what the copyright duration is.

The work is protected from the moment it is created and it is not necessary to register it with the copyright office, however, registering your work with the copyright office is highly recommended because doing so will preserve the facts of your copyright on the public record and provide you with a certificate of registration, which if done within five years of the publication of the work, constitutes prima facie evidence of copyright ownership. Also, by registering your copyright with the copyright office you become eligible for statutory damages of up to $150,000 per infringing use, and attorney’s fees in a successful litigation whereas, if you do not register your copyright you’ll be limited to actual damages, or the infringers profits, in a litigation for copyright infringement, which often times is zero.

Your copyright registration in the United States does provide you with some protections around the world throughout various treaties, compacts, and agreements, primarily the Berne Convention. As a result of these agreements, the member countries honor each other’s citizens’ copyrights, but not every country in the world is a member. For a listing of countries and their relations with the United States as it pertains to copyright law, click HERE.

Registering your copyright is fairly easy and inexpensive. Go to copyright.gov and log in to the electronic copyright office registration system. Click HERE to register your copyright.

Trademarks

A trademark is a brand identifier, usually in the form of a design, symbol, word, or phrase. The purpose of the trademark is to identify the source of the goods or services and it distinguishes the goods or services from those of other companies. This ultimately serves the purpose of protecting consumers from being misled by confusingly similar trademarks, so that a consumer can always rest assured that they are buying their favorite and trusted brand and not some knockoff.

The terms trademark and service mark are used interchangeably, but technically a trademark typically applies to companies that sell goods, while a service mark applies to a company that sells services. A trademark might be your business name, product name, or brand name, it might be your logo, or your label, it can be a symbol, a design, a sound, a smell, or a product package design and color scheme (known as trade dress).

To protect your trademark you need to use the mark in commerce in connection with your goods or services. That means you have to offer the goods for sale with the mark displayed on the goods themselves, or on the labels or packaging of the goods, or on a website that offers the goods or services for sale and has the mark displayed in connection with those goods or services that are for sale. Trademark protection is automatic under common law, but common law trademark protection can be very limited geographically, and the protection is considered weak compared to a state or federal registration primarily because of the remedies offered under common law in the face of infringement, but also because there is no registration, and therefore, there is no record preserved as evidence of ownership. You can register your mark with your local state government in which you use the mark for state trademark registration, which provides a stronger form of trademark protection, however, you should register the mark with the United States Patent and Trademark Office (USPTO.gov), for federal trademark registration. Having a federal trademark registration on the public record will preserve a record of your use and evidence of your ownership of the mark, which comes in handy if you find someone infringing on your trademark.

Trademarks under the common law will last for as long as you use the mark in commerce, as long as you make an effort to claim rights to the trademark and enforce those rights. If you have a trademark that has not been federally registered then you should display the little “TM” for a trademark, or “SM” for a service mark, at the end of your mark to put the public on notice that you claim rights to the word, phrase, symbol or device as your trademark. Also, if you don’t enforce your rights against an infringer, then you may lose your common law protection.

The rules governing state trademark registrations vary from state to state and each state’s trademark laws must be reviewed to ascertain the length of state trademark protections. You should consult with a trademark attorney to determine if your trademark is registered in your state and how to accomplish such state trademark registration.

Federal trademark registration is good forever given the proper timely maintenance is upheld. Initially, the trademark registration is good for five years after the registration is issued by the USPTO, at which point the owner must file a declaration of use and/or a declaration for excusable nonuse between the fifth and sixth years after the registration date. Then the owner must file a declaration of use and/or of excusable nonuse between the 9th and 10th years after the registration date and thereafter, the owner must file a declaration of use or excusable nonuse every ninth and tenth year period to keep the mark alive.

Patents

Patents are property rights relating to an invention, a design, or a new plant, that are granted by the United States Patent and Trademark Office for a limited duration in exchange for public disclosure of the patent. The public disclosure is important because the purpose and intent behind these intellectual property laws are to promote the arts and sciences. The United States Constitution gave Congress the power to enact these laws in Article I, section 8, known as the copyright and patent clause, which reads in pertinent part “Congress shall have power . . . 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.” The arts and sciences are promoted by sharing ideas such as machines, manufactured articles, industrial processes, chemical compositions, non-functional designs, and new plants with the public. This allows the public to be inspired by your patent and to create new inventions out of that inspiration and thereby progress is promoted.

The right that is granted under patent law is in the language of the statute which states, “the right to exclude others from making, using, offering for sale, or selling” the invention. Thus, technically it’s not the right to make, use, offer for sale, sell, or import the invention, but the right to exclude others from doing such things. Patents basically may be issued for anything made by man and the processes for making those products. The statute enacted by Congress states any person who “invents or discovers any new and useful process (i.e., process, act, or method, including industrial or technical processes), machine, manufacture (i.e., articles that are made, including but not limited to manufactured articles), or composition of matter (i.e., chemical compositions, including but not limited to mixtures of ingredients as well as new chemical compounds), or any new and useful improvement thereof, may obtain a patent” (of course subject to circumstances and requirements in the law). Courts have defined limits on patentable subject matter establishing that you may not patent laws of nature, physical phenomena, and abstract ideas.

There are three types of patents: utility patents, design patents, and plant patents:

1. Utility patents are the most common and are most commonly what people think of when they think about filing for a patent. People generally think of “inventions” when they think of patents. You may need a utility patent if you invent a new and useful process, machine, article of manufacture, and composition of matter. You may also be granted a utility patent on any new and useful improvement on any new and useful process, machine, article of manufacture, or composition of matter.
2. A design patent is for any invention of a new, original, and ornamental (i.e., non-functional) design for an article of manufacture. These patents are often used in the fashion industry to protect new, non-functional designs. This allows a fashion designer to exclude competitor fashion designers from knocking off their designs.
3. A plant patent is just what it sounds like; a patent on a plant. This may be granted to someone who invents or discovers and then asexually reproduces any distinct and new variety of plants. For example, there are a lot of patents currently being filed and issued for various types of cannabis plants. If you are issued a plant patent on a new variety of cannabis plants that you invented through cross then you may be able to exclude other cannabis companies from selling that strain of cannabis for a twenty year period. In the burgeoning cannabis industry, as you can imagine, this could be very valuable.

The patent protection duration depends on the type of patent that is granted. If it is a design patent the duration is fifteen (15) years from the date the patent was issued, if the patent application was filed on or after May 13th, 2015 and only fourteen (14) years from the issuance if the application was filed before that date. If it’s a utility patent or plant patent then the duration is twenty (20) years from the date that the application was filed.

To be patentable, the subject matter must be “useful”, “new”, and “non-obvious” as defined by the statute.

1. The subject matter of the patent must be considered useful as defined by the statute. For example, a machine that doesn’t operate and perform the intended purpose would not be considered “useful” under the patent statutes and thus would not be patentable.
2. The invention must be “new” to be patentable which means that it cannot have been “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention”. This includes disclosed in an oral presentation, a demonstration (such as at a trade show, or science convention), in a lecture or speech, or on a radio or television talk show, or online. The term “new” also means that the subject matter of the patent cannot have been “described in a patent issued by the USPTO or in an application for patent published or deemed published in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective date of the claimed invention.”
3. To be non-obvious means that the patent must be sufficiently different from what’s called “prior art”, which means it must be sufficiently different from what has already been used or described in other patents. If your patent is different from the prior art, it still may be refused if those differences are considered obvious to a person having ordinary skill in the area of technology related to the invention. For example, if your patent merely has different colors or changes in size, these differences would likely be considered “obvious” and your patent would fail.

What are the differences Between Copyrights, Trademarks, and Patents?

These forms of intellectual property all protect your rights to your “products of the mind”, however, each protection differs in important ways. It is commonly necessary to obtain all three forms of protection. For example, you may obtain a utility patent for your new invention, and seek a design patent on some non-functional design aspect of that invention, and then you may launch that invention to market under a brand name, which you would protect with a trademark, and your product packaging, various product design elements, including photographs of your product, and potentially your logo if sufficiently creative, you may protect under copyright law.

1. The major differences in these three main forms of intellectual property: copyright, trademark, and patent are pertaining to:
2. the subject matter that is protected;
3. the methods of securing the protection;
4. the duration the protection lasts;
5. the nuances to consider in each type of intellectual property protection; and
6. the remedies available for infringement.

Typically, you need a copyright if you are a Creative and you have a creative work that you have expressed in some tangible form. If you have not expressed the work in a tangible form, then you likely only have an idea and it is not protected if shared with others unless there is some express or at least implied contract in place.

You need a trademark so your customers can identify your products and services. If you are selling goods or services in commerce and you want to make sure that someone doesn’t come along and start offering related goods or services using a confusingly similar mark. Although the real purpose of trademark law is consumer protection, it is clearly very valuable for businesses too. If you own a business that has invested time and money in building a brand and cultivating consumer recognition, you want a trademark so you can exclude other businesses from trading their own goods or services with a trademark that is confusingly similar to your trademark. Essentially you want to prevent your competitors from riding your coattails to success. Trademarks may last forever since technically a trademark doesn’t expire after a set term, unlike patents and copyrights.

You need a patent if you have a new, non-obvious, useful invention, a non-functional design, or a new plant. Similar to copyright, you cannot patent a mere idea; you must have a complete description of the actual patentable subject matter, most often including a narrative description, detailed drawings and specifications, and a prototype. With a copyright you can obtain rights merely by creating the work in a tangible form and with a trademark, you can obtain rights by merely using the trademark in commerce, but patents differ here in an important way. If you are an inventor, to obtain a patent you should not go to market with your invention until after you file for patent. If you go to market first, you have one (1) year to file for your patent otherwise you will lose your ability to patent the invention.

The differences in the various forms of intellectual property are highly nuanced and can be difficult to understand. It’s important that you discuss with an attorney who specializes in these matters to effectively develop your intellectual property portfolio. In the 21st century, it is imperative to consider the entire globe when harnessing your intellectual property rights because we all have a global marketplace at our fingertips with the advent of the Internet.