The Compleat Lawyer - General Practice, Solo, and Small Firm Division American Bar Association
General Practice, Solo, and Small Firm Division
The Compleat Lawyer
Winter 1997, Volume 14, No. 1
copyright American Bar Association. All rights reserved.

Intellectual Property Law

BY CYNTHIA G. SEAL

Cynthia G. Seal practices law in the areas of patent prosecution, trademarks, and copyrights with the Intellectual Property Section of Chamberlain, Hrdlicka, White, Williams, and Martin.

Patents are the friends of both inventors and the public. Once issued, and subject to the payment of government fees, a patent gives an inventor the right to exclude others from making, using, or selling the patented invention for 20 years from the filing date.

The patent also gives the public a set of illustrated instructions that explain how the invention works. Anyone can use these teachings for inspiration and reference in making new contributions (as long as the results do not infringe upon the patent while it is in force).

A patent grants only the right to exclude others, not the absolute right to make or sell the invention. Other impediments, such as if someone else's patent covers a key component of the invention, may stand in the way.

"Patentable" Inventions To be patentable, an invention must be at least one of the following: an article of manufacture, a machine, a process, a composition of matter (a chemical compound), an improvement of any of the above, an ornamental design of an article of manufacture, or an asexually reproduced plant. Additionally, patentable inventions must be new, useful, and non-obvious.

Abstract ideas and scientific principles cannot be patented. They must first be embodied in a device or process that falls into one of the categories listed above. Software can be patented if it can be described as an embodiment of such a device or process.

Trademarks
A trademark is any word, name, symbol, or device that identifies goods of one company and distinguishes them from goods of others. Trademarks may also consist of the shape of the goods or package, slogans, or colors; or any combination.

A trademark is a proper adjective that modifies a generic name of a product. As a proper adjective it should always be capitalized. For example, "Budweiser" is a trademark; "beer" is a generic name. A trademark should never be used as a noun or a verb. The Xerox Corporation fights to preserve its trademark by discouraging the use of the name of their company's trademark products as nouns or verbs.

A trademark is not a trademark until it has been used to identify goods. Using the mark in advertising or on business cards is not enough. The mark must be affixed to the goods or the packaging in order to be entitled to the legal status of a trademark.

Choosing a trademark. If a trademark is good, the public will easily remember and associate it with the goods of a given company, as contrasted to other goods of the same generic kind. A trademark should be readily distinguishable from the generic or common name of the goods. Cute variations of generic names usually don't make good trademarks. Trademarks should also be different from the marks of competitors and should not sound or look the same. The strongest trademarks are those that have no dictionary meaning, such as EXXON or XEROX.

When a tentative trademark has been selected, a search should uncover whether anyone else is using a similar trademark for similar goods.

Trade Names
A "trade name" is the name of a business. It may or may not be the same as a trademark that identifies a product of that business. For example, "Cadillac" is a trademark for automobiles made by a company whose trade name is "General Motors Corporation."

Service Marks
A service mark is any word, symbol, phrase, or device that identifies services rendered by a company and distinguishes them from services rendered by others. For example, "Fly the Friendly Skies" is a service mark for air transportation services provided by United Air Lines.

A service mark must be used in connection with the rendering of a service in order to be entitled to the legal status of a service mark. Since it is impossible to actually affix a service mark to a service, the use of the mark in advertising or on business cards can sometimes be enough to entitle a service mark to legal protection.

Fair Use: Not an Excuse
The law allows for certain uses of another's copyrighted work without author permission. Some examples of "fair use" include quoting from a copyrighted book in a critical review and videotaping a copyrighted television show off the air for later viewing. It is not "fair use" to create a training manual by copying and compiling selected chapters from a collection of text books on a particular subject; similarly, it is not fair use to make multiple copies of an article from a technical journal for in-house publication. Copyrights
Unlike a patent, which must be applied for and may or may not be granted, a copyright exists automatically from the moment a work of authorship is created. Additional rights can be obtained from the Registrar of Copyrights.

"Works of authorship." A "work of authorship" includes any of the following when fixed in a tangible medium:

  • Literary works (including computer software).
  • Musical or dramatic works.
  • Pantomimes and choreographic works.
  • Pictorial, graphic, and sculptural works.
  • Movies and other audiovisual works.
  • Sound recordings.

A "tangible medium" is any material object in which a work is fixed, including paper, film, records, compact discs, and magnetic tape.

Some works do not meet the definition of a work of authorship and are not copyrightable. Examples of such works include impromptu speeches that are not fixed in a tangible medium; titles and other short phrases; and ideas, methods, and concepts.

A work is "created" when it is fixed in a tangible medium from which the work can be perceived, either directly or by means of a machine such as a record player, a computer, or a movie projector.

Copyright ownership. A copyright belongs to the author of the work except in the case of a "work for hire," in which case the owner is the employer. A work for hire includes a work created by an employee in the course and scope of employment. Many employers include works of authorship as well as inventions in their employee invention assignment agreements. In the strictest sense, a contractor owns the rights to the work created for a business unless it is made clear the work is done for hire.

The rights of a copyright owner. A copyright gives its owner a "bundle" of exclusive rights, including making and distributing copies, preparing derivative works, public performance, and public display.

A copyright lasts for the lifetime of the author, plus 50 years. In the case of an anonymous work or a work for hire, the term is 100 years from creation or 75 years from publication, whichever comes first.

Copying or reproducing a copyrighted work or part of a work without permission may be an infringement of a copyright. Penalties for infringement may include an injunction against future infringement, payment of damages, and, in extreme cases, criminal punishment.

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