New LawyerVolume 5, Number 2
September 2007
Table of Contents
Past Issues

Intellectual Property for the General Practitioner

Nearly everyone has heard the terms patent, copyright and trademark. Many even know that these are all types of intellectual property protection. When it comes to defining what actually constitutes a patent or a trademark, however, most lawyers are in the dark. Although an intangible may be protected under more than one type of intellectual property, it is critically important not to confuse the different categories. The laws governing each type of intellectual property are vastly different from one another. Failure to properly identify and distinguish among the different types of protection available can be the difference between whether a client’s business lives or dies. All of the intellectual property protection in the world is not going to salvage a bad idea, but failure to properly protect a great idea can put your clients’ most valuable assets into the hands of their competitors.

A patent is a legal document defining an invention. A patent does not allow its owner to do anything; it only prevents others from making, using, or selling the invention without a license. Patents protect inventions. A patent would protect something like a new mousetrap. Patentable inventions include new and useful processes, machines, manufactures or compositions of matter, as well as any new and useful improvement thereof. Federal law covers patents. There is no state or common law patent protection. Federal patent law provides inventors with attorneys’ fees and treble damages in situations where an infringer is willful. Patents used to be protected 17 years from the date of their issuance, but patents now expire 20 years from the date of their filing. For a simple invention, a patent will cost $8,000 or more and take approximately two years to obtain.

Patent law does not protect any ideas, any obvious combinations of pre-existing devices, illegal or immoral matter, pure research, or anything that is simply a novelty or curiosity. Items such as perpetual motion machines are summarily rejected by the United States Patent and Trademark Office (USPTO).

While any lawyer can file for trademark or copyright protection on behalf of clients, only a patent attorney (or a patent agent) may file a patent for another party. Inventors may file for a patent on their own, but even the USPTO recommends against filing a patent without the aid of a professional. Examples of patents can be found on the USPTO website or Google Patent Search.

Just as drafting a patent requires special expertise, so does litigating a patent dispute. Patent cases are some of the most complex types of litigation. The complexities and nuances associated with the nonintuitive area of patent law are compounded by the technology associated with the underlying patent. It is not surprising that attorneys’ fees in a patent lawsuit average well over $1.5 million per side. Although it is not necessary to have a patent attorney try the case, it is imperative to enlist a seasoned litigator with substantial patent litigation experience.

A trademark is a word, name, phrase, or symbol used as a brand identifier of a good or a service. Trademark rights arise only through use. For this reason, “naked” assignments of a trademark are not allowed. A valid assignment must also assign the goodwill associated with the trademark. As soon as a trademark is used in commerce in association with a good or service, common law rights to the trademark attach. These common law rights can be effective in obtaining an injunction or a judgment against an infringer. States also provide trademark protection. State laws provide for both registration and enforcement. These state law protections, however, are often no more valuable than common law rights. Accordingly, most trademark owners opt for either common law or federal law protection.

Federal trademark registration provides several benefits, including treble damages and attorneys’ fees for willful infringement. Federal registration also provides national constructive notice of the owner’s trademark rights. While federal trademark registrations must be renewed every ten years, trademark rights themselves are indefinite, lasting until the mark becomes abandoned, or in rare cases, generic. Obtaining a federal trademark registration covering a single type of goods or services costs about $1,200 and takes approximately eighteen months to obtain.

The protection afforded a particular trademark depends in large part on how descriptive the mark is of the particular product or service provided in association with the mark. For example, if the product is apples, the mark “APPLE” would be deemed “generic,” the mark “RED” would be deemed “descriptive,” the mark “DEVIL’S FRUIT” would be “suggestive,” the mark “ROYAL” would be “arbitrary,” and the mark “QWIPPLE” would be “fanciful.” These distinctions are important as generic marks are neither protectable nor registerable, while suggestive, arbitrary and fanciful marks are both protectable and registerable. Descriptive marks may or may not be registerable, depending upon whether the owner can demonstrate that consumers have attached a “secondary meaning” to the mark apart from its ordinary descriptive meaning.

While any lawyer can legally file for a trademark application on behalf of a client, it is best to enlist an experienced trademark attorney to do the work. Mistakes during the prosecution of a federal trademark application may not become apparent until a dispute arises. By that time, it may be too late to correct the error, and the client’s rights may become irrevocably abandoned. Trademark litigation does involve a certain level of complexity, but a seasoned litigator with access to a good trademark attorney can usually navigate a typical trademark case.

Copyright protects many different forms of authorship, including literature, music, drama, choreography, pictorial, graphic and sculptural, motion picture, sound recordings, and architectural works. Proof of infringement of a copyrighted work requires proof of ownership of the copyright, and evidence of copying.

Copyright is the exclusive right of its owner to copy, distribute, and perform the work. All copyright law is federal—there are no provisions for copyright protection under either state statutes or common law. Once an original work of authorship is fixed in a tangible medium, copyright protection attaches. Although federal registration is not mandatory, it is required to file suit in the United States and may entitle the author to attorneys’ fees and statutory damages. Unique to copyright law is the potential for the defendant to obtain attorneys’ fees in certain frivolous actions.

Copyright endures for a term consisting of the life of the author, plus 70 years after the author’s death. In the case of joint works, the term consists of the life of the last surviving author plus 70 years. In the case of an anonymous, pseudonymous or work made for hire, the term is 95 years from the date of its first publication, or a term of 120 years from the date of its creation, whichever expires first. As uniqueness is not a prerequisite of copyright, it is hypothetically possible for two authors to obtain separate copyright registrations on an identical work. For this reason, the Copyright Office does not search an application for registration against existing registered works. This keeps the cost of copyright registration much lower than the cost of patent or trademark registration. The cost of obtaining a copyright registration on a literary work costs about $250 and usually takes less than a year to obtain.

Although there is a “fair use“ exception tempering copyright enforcement, this exception is very narrow and should not be relied upon without a prior written opinion as to the applicability to a particular situation. In determining whether a particular use constitutes “fair use” under the United States copyright laws, the court examines the purpose and character of the work, the nature of the copyrighted work, the amount of the work taken, and the economic impact of the particular taking. Courts will view noncommercial usage, formbook usage, de minimis takings, and takings of low economic impact as more of a “fair use.” Conversely, commercial takings extracting the heart of a copyrightable work to usurp the profits and royalties associated therewith are less likely to be perceived as “fair use.” As a general rule, parody and critical commentary are given a wider “fair use” berth than commercial usage.

A work is afforded copyright protection just by being published. A 1989 federal statute lifted the prerequisite to register a copyrighted work prior to its publication, to prevent it from moving into the public domain. The United States, however, does require the copyrighted work to be registered prior to instigation of infringement litigation, and does limit damages associated with acts undertaken prior to the registration. Although copyright registration may take eight to ten months, the Copyright Office provides expedited service for an increased fee in the situation when an infringement has already occurred.

Because direct evidence of copying is rarely available, courts will accept evidence of the accused infringer’s access to the copyrighted work, and a substantial similarity between the two works as rebuttable proof of copying. Obviously, the more similar the two works, the lower the requirement for proof of access and vice versa. Once infringement is shown, damages may include an injunction, as well as the copyright owner’s damages or the infringer’s profits. Federal copyright laws provide for statutory damages of five hundred to two thousand dollars for infringement, and up to one hundred thousand dollars in the case of willful and malicious infringement. As with patents and trademarks, attorneys’ fees are available, but unlike patents and trademarks, the statute provides for the defendant to recoup attorneys’ fees if the copyright owner brings an action that is frivolous or unreasonable.

As with trademarks, any attorney can file for copyright registration on behalf of a client. Subtle nuances associated with the application for registration, however, advocate using an experienced copyright attorney to apply for the registration. Given their familiarity with the application process, copyright attorneys can often obtain a copyright registration more cost effectively than a lower cost, but less experienced general practice attorney, and without the increased risk of a mistake being made in the application. As with trademark litigation, copyright litigation involves a certain level of complexity. A seasoned litigator, however, working closely with a copyright attorney, should be able to handle most copyright cases.

Trade Secrets and More
Other types of intellectual property include trade secrets, domain names, trade dress, and the right of publicity. Like patents, trademarks, and copyright, each of these types of intellectual property includes a unique set of rules governing their protection and defense. It may be tempting for the general practitioner to delve into one of these more lucrative areas of law unaided. However, the complexity of intellectual property law and the high likelihood of making a crucial error in either protection or defense mandates discussing nearly every intellectual property issue with an experienced intellectual property attorney. Both your clients and your malpractice carrier will be glad you did.

Brett J. Trout is the founder of The Law Offices of Brett J. Trout, P.C. Mr. Trout is a patent lawyer, frequent lecturer, and author of the book Internet Laws Affecting Your Company. For more information visit BlawgIT.

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