Intellectual Property FAQ | Altman & Marin Law

Intellectual Property FAQ

How do copyrights, patents, and trademarks differ?
What are the advantages of registering a copyright?
What is “work made for hire”?
When is copying something allowed under copyright law?
Who owns the patent on an invention created by a person as part of his or her job?
Is it necessary to hire a lawyer to make a patent application?
What is a Provisional Patent Application?
When can the decor of a restaurant be protectable trade dress?
How can a business prevent an employee from stealing trade secrets when the employee leaves the company?
What kinds of marks cannot be registered as federal trademarks?

How do copyrights, patents, and trademarks differ?

Copyrights, patents, and trademarks all are examples of intellectual property. While each has its own rules and applications, they sometimes overlap so that more than one could apply to the same article or service, although in practice usually only one type of protection is granted.

Copyright protects the expression of an idea. It protects the original creative works of artists, authors, and musicians from unauthorized copying and use by others. Books, music, sculpture, choreography, and jewelry design 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 a new, nonobvious and useful machine, chemical, or process; or a new and nonobvious design or plant; and gets a patent, others are prohibited from copying the invention for a period of time. The inventor then can profit from the invention. Patents most often are awarded for useful items and processes, such as drugs, machines, and new compositions of material. A design patent, however, is awarded for a nonfunctional design or ornamentation of a manufactured product. The design itself also may be eligible for copyright protection.

Trademark protects a device that identifies the provider of a particular good or service. The mark may consist of words, symbols, or a combination of the two. A fast food restaurant named MacDonald’s probably would be infringing on the trademark of McDonald’s restaurants, because it could confuse consumers, and the MacDonald’s owner would be unfairly cashing in on the reputation of McDonald’s. Trademark, unlike copyright, can protect names, titles and slogans. Copyright law may protect the artistic design of a logo, while trademark law would prevent others from using the same logo in a confusing manner. The design of a product may be a trademark of the manufacturer, but also could receive a design patent.

What are the advantages of registering a copyright?

Artists automatically receive federal copyright protection for their works as soon as the works are created. Registration of a copyright is not essential for protection, but there are some advantages to registration.

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.

A copyright owner cannot sue for copyright infringement unless the copyright is registered.

If a copyright is registered within five years of publication, the registration creates prima facie (true on its face) proof 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 of publication, or before any infringement of the work, the copyright owner may be able to recover attorneys’ fees and up to $100,000 in damages, without having to prove monetary loss.

After a copyright is registered, the owner can record the registration with the U.S. Customs Service for protection against infringing imported copies.

The owner of a registered copyright receives a certificate of registration.
To register a copyright, the creator of a work must fill out forms and submit them and a fee to the U.S. Copyright Office at the Library of Congress in Washington, D.C., 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 artist who created the work, unless the artist sells the copyright or the work was “made for hire.” Generally speaking, 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 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 artist is not technically an employee, if a court determines an employment relationship exists between the artist and the employer, the artist will not own the copyright on his or her work. If an employee creates a work on his 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; or
  • An atlas.

When is copying something 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 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 review of the book normally is allowed. A graduate student writing a thesis on the works of Ernest Hemmingway can quote some of Hemmingway’s published work in her thesis. A teacher may make a limited number of copies for classroom use. Other examples of fair use include:

Making Braille copies or audio recording of books for use by the blind;

Video recordings of TV programs for personal use; and

Parody and satire, such as a take-off on a popular song.
The courts also consider the amount and substantiality of the copyrighted work reproduced in deciding whether a use is fair. 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 be considered unfair. If the value of the copyrighted work is potentially reduced by the copying, it is likely to be considered unfair. 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, so may be violating copyright law.

Who owns the patent on an invention created by a person as part of his or her job?

The actual inventor is the only one who can file for a patent, even if the individual developed the invention in the course of his or her employment using the employer’s resources. However, it is a regular practice for an employee of a corporation or university to sign a contract stating he or she will assign any patents received to the employer. Often a potential employee must sign such a contract as a condition for getting the job. Sometimes an employer may agree to share royalties with the inventor, or may give a bonus to the inventor. If there is no agreement of this sort, the employer may be given “shop rights,” the right to use the invention for its internal purposes. No matter what sort of arrangement exists between the inventor and the employer, though, the inventor’s name remains on the patent.

Is it necessary to hire a lawyer to make a patent application?

There is no requirement that an inventor 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 U.S. Patent and Trademark Office (“PTO”) can make the patent application process easier. To apply for a patent, the inventor must submit an application to the PTO that includes specifications and drawings of the proposed invention, an oath signed by the inventor, and a fee. The specification is a complete written description of the invention, which includes 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 PTO 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, while the PTO and the applicant, or the applicant’s lawyer, communicate back and forth.

What is a Provisional Patent Application?

A provisional patent application (“PPA”) is an easier and cheaper way for an inventor to file a first patent for an invention than a traditional patent filing. To file a PPA an inventor must submit a detailed description of the invention, informal drawings if needed to understand how to make and use the invention, a cover sheet, and a fee. A PPA does not require a formal patent claim, oath, declaration, or information disclosure. When the Patent and Trademark Office receives a PPA it does not examine it, and keeps it confidential. Within one year of filing a PPA an inventor must file a formal patent application, which may not include any new technical information about the invention, or the PPA will be abandoned. A formal application can be filed later, but the inventor will have lost the advantage of the earlier filing date.

The advantages to an inventor in filing a provisional patent application include:

  • The “patent pending” term can be applied;
  • It establishes a patent application filing date;
  • It allows the inventor immediately to begin promoting the invention with greater security against theft; and
  • It gives the inventor a year to assess the invention’s commercial potential before committing to the higher cost of filing a traditional patent application.
When can the decor of a restaurant be protectable trade dress?

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, which 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 decided 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 confusing consumers. 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 never possible to prevent all trade secret theft by employees, but an employer has some tools at its disposal, including:

requiring employees, when they join the company, to sign non-competition agreements in which the employees agree not to take confidential business information or product innovations, and use them to compete with the employer in a new job;

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; and
  • Using 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 U.S. 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; and
  • Marks that merely describe the product or service

Intellectual property describes a wide variety of property created by musicians, authors, artists, and inventors. The law of intellectual property encompasses the areas of copyright, patent, trade dress, and trademark laws. It is 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 themselves from infringement, the unauthorized use and misuse of their creations.

Copyrights are exclusive rights granted to authors, artists, composers, and publishers to produce 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.

International intellectual property is intellectual property, such as patents and copyrights, which is transferred from one country to another. 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 have 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 he or she can profit from the invention before the right to exploit it is available to the general public. Patents can be granted for plants and other life forms, designs of manufactured products, machines, processes, and combinations of matter. A patent must be applied for from the federal government, and will only be granted if the invention is unique.

Technology licensing is a way in which the inventor of a new technology can get 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, 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 relates to their 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.