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Intellectual Property Law

This guide covers basic resources for researching intellectual property (IP) law: copyright, patents, trademarks, and more.

What is Intellectual Property?

Intellectual Property (IP) is a umbrella term for creations of the mind—non-physical but identifiable property—such as inventions; designs; literary and artistic works; and symbols, names, and images used in commerce. In the U.S., there are 3 main types of IP: Copyright, Patents, and Trademarks.

This research guide includes primary law, secondary sources, and search materials for Copyright, Patents, and Trademarks as well as select resources for International & Foreign IP and related state doctrines—Trade Secrets, Unfair Competition, and Personality Rights.

Types of IP

The U.S. Copyright Office defines "copyright" as:

US Copyright Office Logo
[T]he author's (creators of all sorts such as writers, photographers, artists, film producers, composers, and programmers) exclusive right to reproduce, prepare derivative works, distribute copies, and publicly perform and display their works. These rights may be transferred or assigned in whole or in part in writing by the author. Unless otherwise agreed in writing, work created by an employee is usually owned by the employer.

The duration of most copyright is the life of the author plus 70 years. For more on the duration of copyright, see U.S. Copyright Office, Circular 15A. For more on determining whether a work is public domain, see Cornell's Copyright Information Center.

"Original works of authorship" are copyrightable. §102 of the Copyright Act includes:

  1. Literary works
  2. Musical works, including accompanying words
  3. Dramatic works, including any accompanying music
  4. Pantomimes and choreographic works
  5. Pictorial, graphic, and sculptural works
  6. Motion pictures and other audiovisual works
  7. Sound recordings
  8. Architectural works

The following are NOT copyrightable:

  • Ideas, procedures, methods, systems, processes, concept, principles, or discoveries
  • Works that are not fixed in a tangible form
  • Titles, names, short phrases, and slogans
  • Familiar symbols or designs
  • Mere variations of typographic ornamentation, lettering, or coloring
  • Mere listings of ingredients or contents

For more on works not protected by copyright, see U.S. Copyright Office, Circular 33.

Registration is not required for copyright protection—any original work "fixed in any tangible medium" is protected by copyright. In addition to establishing a public record of a copyright claim, registration offers several other statutory advantages:

  • Before an infringement suit may be filed in court, registration (or refusal) is necessary for U.S. works.
  • Registration establishes prima facie evidence of the validity of the copyright and facts stated in the certificate when registration is made before or within five years of publication.
  • When registration is made prior to infringement or within three months after publication of a work, a copyright owner is eligible for statutory damages, attorneys’ fees, and costs.
  • Registration permits a copyright owner to establish a record with the U.S. Customs and Border Protection for protection against the importation of infringing copies.

For more on copyright registration, see U.S. Copyright Office, Circular 2.

The USPTO defines a "patent" as:

USPTO Logo
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office…What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

The subject matter of a patent must be:

  1. Useful,
  2. Novel, &
  3. Non-Obvious

For more on patentability, see the USPTO's Patent Basics.

Utility Patent

USPTO defintion: "[A]ny new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof."

  • Maintenance fees required
  • Term is generally 20 years from date of filing
  • E.g., US 10,460,568 B2, specialized slot machine

Design Patent

USPTO defintion: "[A] new, original, and ornamental design for an article of manufacture."

  • No maintenance fees required
  • Term is generally 14 years from date of filing
  • E.g., US D906,656 S, Reebok® shoe design

The soles of two Reebok tennis shoes as shown in Fig 1 of patent application

Plant Patent

USPTO defintion: "[A]ny distinct and new variety of plant."

  • No maintenance fees required
  • Term is generally 20 years from date of filing
  • E.g., US PP20,911 P2, Echinacea purpurea or Green Queen

"Green Queen" patent figure 1

The USPTO defines a "trademark" as:

USPTO Logo
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.  In short, a trademark is a brand name.

E.g., think[box]®

Any word, symbol, phrase, or other type of distinguishing mark that is sufficiently distinctive—capable of identifying the source of a particular product—can be trademarked.

There are 4 levels of distinctiveness:

Distinctiveness Meaning Level of Protection
Arbitrary or fanciful no logical relationship to the underlying product Strong
Suggestive evokes or suggests a characteristic of the underlying product Strong
Descriptive directly describes the underlying product Possible
Generic describes the general product category None

The USPTO may refuse to grant trademark if the mark is:

  • Confusingly similar to an existing mark
  • Merely descriptive
  • Deceptively misdescriptive
  • Primarily merely a surname

For more on grounds for refusal of a mark, see the USPTO's Possible Grounds for Refusal of a Mark.

Common law rights do not require registration; however, there are many benefits to registering a trademark:

  • Public notice of ownership.
  • Legal presumption of ownership and exclusive right to use the mark.
  • Use of the federal trademark registration symbol—®.
  • Right to sue in federal court.
  • Ability to record with U.S. Customs and Border Protection.
  • Use of U.S. registration as basis for foreign registration.

For more on the benefits of registration, see the USPTO's Why Register Your Trademark.

The Uniform Trade Secrets Act (UTSA) § 1(4) defines "trade secret" as:

Uniform Law Commission Logo
[I]nformation, including a formula, pattern, compilation, program, device, method, technique, or process that:
  • Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and
  • Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

To date, 47 states and the District of Columbia have adopted the UTSA, a piece of legislation created by the Uniform Law Commission (ULC). Ohio's version is O.R.C. §§ 1333.61-1333.69 .

 

There is also a federal definition of "trade secret," 18 U.S.C.A. § 1839(3), applicable to both the Economic Espionage Act (EEA) and the Defend Trade Secrets Act of 2016 (DTSA):

[T]he term “trade secret” means all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if—
  1. the owner thereof has taken reasonable measures to keep such information secret; and
  2. the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.

The Fifth Circuit defines “unfair competition” as:

An umbrella term for "all statutory and non-statutory causes of action arising out of business conduct which is contrary to honest practice in industrial or commercial matters."

For example: trademark infringement and misappropriation (which often invokes the Right of Publicity). Not unlike evidentiary exceptions, it is helpful to think of examples of unfair competition rather than attempt to define the term in the abstract. Other practices that fall into the area of unfair competition include:

  1. false advertising
  2. "bait and switch" selling tactics
  3. unauthorized substitution of one brand of goods for another
  4. use of confidential information by former employee to solicit customers
  5. theft of trade secrets
  6. breach of a restrictive covenant
  7. trade libel
  8. false representation of products or services.

For more examples, see McCarthy on Trademarks and Unfair Competition § 1:10.

Samuel D. Warren & Louis D. Brandeis
The principle which protects personal writings and any other productions of the intellect or of the emotions, is the right to privacy, and the law has no new principle to formulate when it extends this protection to the personal appearance, says, acts, and to personal relation, domestic or otherwise.

Samuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193, 213 (1890).

That is:

  1. The right not to have one's personal matters disclosed or publicized; the right to be left alone.
  2. The right against undue government intrusion into fundamental personal issues and decisions.

 

The right of privacy encompasses four different interests, which map to four distinct types of invasion of privacy:

  1. Intrusion
    An encroachment into plaintiff’s physical solitude or seclusion.
  2. Public Disclosure of Private Facts
    The disclosure of private information, even though the information is true, in a way a reasonable person would find objectionable, e.g., disclosing the past of a former prostitute.
  3. False Light
    The publication of information that places plaintiff in a false light, e.g., using a person’s picture in connection with an article in which no reasonable connection exists; nonetheless, with an implication that such a connection exists.
  4. Appropriation
    Use of the plaintiff’s name or likeness for defendant’s benefit without permission.

William L. Prosser, Privacy, 48 Calif. L. Rev. 383 (1960).

There is significant overlap in the definitions of appropriation and the right of publicity.

Generally, the right of publicity prevents the unauthorized commercial use of an individual's name, likeness, or other recognizable aspects of one's persona. It gives an individual the exclusive right to license the use of their identity for commercial promotion. The right of publicity is often divided into five separate interests:

  1. Performance
    One’s prerogative to exclusively perform services through which the individual earns a living.
  2. Adaptation
    One’s prerogative to exclusively authorize others to create derivative works personifying the person’s performance either as done by the person or others.
  3. Personality Products
    The exclusive exploitation of products based on a person’s name, likeness or image, e.g., posters, motion pictures, stills from motion pictures and even bubblegum cards.
  4. Endorsement
    The use of person’s name, likeness, image and reputation in connection with the advertising of goods or services.
  5. Reputation
    The protection of one’s reputation against misuse even though the use was otherwise authorized. This right embodies the appreciation that an artist’s past performance has a continuing effect on the artist’s future works.

For a concise history, see Right of Publicity.com.

General IP Resources

For more intellectual property law blogs, see Justia's IP Blawg Search.