INTELLECTUAL PROPERTY OR COPYRIGHT?

June, 2001

Intellectual property may be defined as legal protection for commercially valuable products of human intellect. It is a term that encompasses several distinct types of property: copyrights, patents, trademarks trade secrets and, in some jurisdictions, certain types of ideas. Librarians often use the term “intellectual property” when they really mean copyright. Each of these types of intellectual property has unique characteristics although there are some similarities among them. In contrast to real property, such as land, or personal property, such as an automobile, intellectual property is intangible. There is no physical object that comprises the intellectual property.

On the other hand, the intellectual property may be manifested in copies of a copyrighted work or in copies of a patented invention. But the property itself actually consists of the bundle of rights that the law awards the owner of the intellectual property. Patents, trademarks and copyrights are the best known types of intellectual property, but trade secret law is also vitally important in the corporate world. Certain works, such as software, may qualify for more than one form of protection. A special librarian needs to know something about each of these.

Patents

Patents traditionally were awarded to inventors for the tools of industrial production. Known as “utility patents” this category includes machines, manufactures, compositions of matter (chemical inventions) and processes. Software, business methods and biotechnology are the fastest growing areas for new patents. In order to obtain a patent, an inventor has to invent something that (1) comprises patentable subject matter, (2) is original to that inventor, (3) is useful, (4) novel, and (5) nonobvious. The last three requirements are very stringent, especially nonobviousness. It is more difficult to qualify for a patent than for other forms of protection, but a patent also grants the broadest rights. In the United States, a patent lasts for 20 years from the date of filing the patent application. During the patent term the patentee has the right to exclude others from making, using, selling or offering to sell the patented invention. Even reverse engineering infringes a patent. One infringes a patent by engaging in any of these activities without permission of the patentee. The Patent Act of 1952 is the current statute and it comprises Title 35 of the United States Code.

Trade Secrets

A trade secret a formula, pattern, device or compilation of information used in one's business to provide a competitive advantage. Chemical formulas, manufacturing plant processes, customer lists and computer programs have all been subject to trade secret protection. The range of subjects for which trade secret protection is available is much broader than that for which patent protection may be obtained. Often the subject of a trade secret is the same type of invention that might also qualify for patent but for some reason the owner of the secret has elected trade secret protection. Traditionally, trade secrets were governed by state law, although there now is a federal Economic Espionage Act. Trade secrets are of potentially infinite duration, so long as secrecy is maintained. In fact, the primary requirement for a trade secret is secrecy. The right may be lost accidentally or lost by theft or breach of confidence. To succeed in trade secret litigation, the owner of the secret must demonstrate the existence of a secret which was unlawfully obtained by the defendant, as opposed to being discovered through lawful means such as reverse engineering and which is being or will be used to the owner's detriment.

Trademarks

A trademark or service mark is a name, word, symbol or device that is used by a business in interstate commerce to distinguish its goods or services from those of another competitor. One acquires trademark rights by use of the mark rather than through registration, but federal registration does serve as constructive notice of ownership of the mark. For federally registered works, the trademark owner has exclusive use of the mark within the United States. The most valuable thing about a trademark is the cache the mark carries in the marketplace and the goodwill that is associated with its use. Famous trademarks are very valuable indeed, and companies go to great length to control the use of their marks. In the United States, trademark protection lasts is for 10 years, but may be renewed every 10 years so long as the mark is continuously used in commerce and appropriate applications are filed with the U.S Patent and Trademark Office. Thus, trademark rights may be perpetual.

In recent years, trade dress has become a very important for trademark protection. Trade dress is the distinctive packaging or unique shape of a product which also serves a trademark function to identify the goods. The intersection of the Internet and trademark law brought about the protection of famous trademarks as Internet domain names. One who is not the owner of a trademark may use the mark in its nominative sense (to name the producer’s goods) but may not use the mark in any way that causes a likelihood of confusion. The federal trademark law is the Lanham Act, found in 15 U.S.C. §§ 1051-1129. Each state also has a trademark law that permits registration of marks used only within a state, plus there are also common law trademark rights that may protect a trademark owner regardless of registration, but only within the geographic area in which it is used and to the extent that it has acquired “secondary meaning,” i.e., association in the minds of the consuming public between the producer and the mark.

Copyright

Because this column has month after month discussed copyright, readers certainly know what a copyright is by now. Briefly, copyright is the legally secured right to publish and sell the substance and form of a protected work. Copyright exists from the time an author produces an original work of authorship (not copied from someone else) and fixes it in a tangible form of expression. There are eight categories of works protected by copyright: literary; musical, dramatic, pantomimes and choreographic; photographic, sculptural and artistic; motion pictures and other audiovisual; sound recordings and architectural works. The copyright holder has five exclusive rights: reproduction, distribution, adaptation, performance and display. Additionally, a newer right provides performance rights for the digital transmission of sound recordings. One who violates one of these exclusive rights without permission of the copyright holder or if there is no exemption for the use, infringes the copyright. The Copyright Act is Title 17 of the United States Code.