August 2008

What is Intellectual Property?


Even small children understand that “property” is something that can be “owned,” and that an owner has certain rights regarding that property. Adults understand that ownership of property provides legal rights that can be enforced in a court of law, if necessary. Intellectual property is merely a special class of property that differs from ordinary personal or real property that you can see or touch; the only real difference is that intellectual property is created by the property owner’s mind. Various statutes, both state and federal, have been enacted to protect the rights of intellectual property owners in their property.

Types of intellectual property

There are several different types of intellectual property. One type that touches our lives each day can be seen in writings and other expressions of authorship, whether books, newspaper and magazine articles, music, movies, advertising copy, and even computer software. Creators of this type of intellectual property are entitled to copyrights, which allow them to control how the property they created can be reproduced, sold, or distributed.

Another common type of intellectual property is an invention, which can be legally protected by a specially created right called a patent. Patented inventions are commonly thought of as machines, tools, and equipment; however, other types of patentable subject matter include processes, drug formulas, designs, and even genetically-engineered or special breeds of organisms such as plants. The holders of patent rights, once they are legally established through a government-specified process, have complete control of making and selling the invention for a certain number of years. The patent rights holder may make the patented invention exclusively, hire a company to make the invention for him or her, or may license his or her rights. Under a license agreement, other companies would pay the patent holder for the right to make or sell the invention.

Certain types of intellectual property, which include trademarks, trade dress, and trade secrets, are particularly important to businesses. Trademarks and trade dress go hand-in-hand and are used by businesses to present themselves to the public in a way that distinguishes them from other businesses. Trademarks are words, logos, slogans, pictures, or other symbolic devices that are used to identify a company and its products or services, whereas trade dress represents the totality of the image of a company and its products or services, which can include characteristics such as the shape and color of a package, the roofline or style of a restaurant, or the distinctive shape of a product. Finally, a trade secret can be any information that is not generally known that may give a business an advantage over its competitors. Unauthorized use of another company’s trademarks, trade dress, or trade secrets may allow the company that owns the particular intellectual property to sue for trademark infringement or unfair competition.

The right to publicity is a special type of intellectual property that allows a human being to control the commercial use of his or her name, image, or other physical attributes such as voice. The term “human being” is used purposefully to distinguish the human person from other legally recognized persons such as corporations, which do not have a right to publicity. A company cannot use a human person’s name or image without his or her permission.

Jurisdiction and Procedure in Patent Disputes

A patent gives the patent owner the right to exclude others from the subject matter of the patent. If another person or company makes, uses, sells, offers for sale, or imports the subject matter of the patent, they are said to infringe the patent. If this occurs, the patent owner may elect to stop the infringer or may seek compensation for the infringing activities. Typically these actions are brought in a lawsuit in federal court. The United States Patent and Trademark Office (USPTO) has neither jurisdiction over a patent once it issues nor has any enforcement powers with regard to patent rights. In addition, a party who believes that a patent issued by the USPTO is not valid may bring a federal lawsuit to challenge the validity of that patent.

By federal statute, federal district courts have exclusive jurisdiction over all lawsuits “arising under any Act of Congress relating to patents.” Not all cases involving patents arise under the patent statute, however. Thus, depending upon the exact nature of the dispute, certain cases involving patent questions may be brought in state courts. For example, a lawsuit alleging the breach of a contract that involved a determination of the validity of a patent would be properly brought in a state court because contracts are governed by state law and the question of the validity of the patent is considered a side issue to the main question of whether a contract was breached.

Someone bringing a patent lawsuit must also choose the proper geographical area in which to file the suit. The patent venue statute provides that a patent infringement action may be brought in the federal judicial district in which the alleged infringer resides or where the alleged infringer has committed the alleged acts of infringement and has a regular and established place of business. If the alleged infringer is an alien, an infringement lawsuit may be brought in any federal district court. For actions that involve patents in some way but are not infringement actions, the general venue statutes, whether state or federal, would apply.

In patent cases brought in federal district courts, the unsuccessful party may appeal the decision of the district court. All appeals of federal district court decisions in cases arising under federal patent laws are heard by the United States Court of Appeals for the Federal Circuit. The United States Supreme Court hears appeals of the decisions of the Court of Appeals, although it has complete discretion as to whether to hear any particular appeal and, in fact ,declines to hear most appeals.

Trademark Law and Likelihood of Confusion

The purpose of trademark law is to prevent confusion in the minds of the consuming public as to the source of a particular good or service. An owner of a mark spends considerable money and effort marketing its mark and the goods and/or services that are identified by that mark. One reason for the investment of the money and effort is to make the brand identifiable by the consuming public in association with a particular good or service. In this way the owner maintains the exclusive right to capitalize on their investment. Therefore, if a competitor is intending to use the owner’s mark in such a way as to cause or create a confusion such use may be actionable. If you have a trademark that is being infringed upon, please contact one of our Trademark attorneys.

Understanding Service Marks

Service marks, like trademarks, are used to protect a brand used in interstate commerce. However, service marks are used in connection with a service, while trademarks are used in connection with a good. This service is performed by one entity for the benefit of another. In otherwords, a service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks. If you feel you have a service that needs service marked, please contact one of our Trademark attorneys.

Copyright Formalities

Based upon recent changes in the law, copyright protection in the United States is automatic. When the original work of authorship is fixed in a tangible form of expression the rights associated with copyright generally vest in the artist. The notice and the registration of a work are formalities, which may be required before obtaining and maintaining full copyright protection. The registration and notice requirements, although formally mandatory, are no longer required. This change was enacted with the recent changes to the 1976 Copyright Act. If you have an original work of art that you would like to protect, please contact one of our Copyright attorneys.