by Matthew J. Faust || 4 June 2020 ||
My colleagues and I at Sharif | Faust spend much of our practice advising businesses. Some are newly formed entities, and some are preexisting business entities. But, in either event we commonly advise them to consider protecting their intellectual property (or “I.P.” for short). In these discussions, it is not uncommon to be asked, “what is intellectual property?” Sometimes this question is easily answered, but other times it’s a bit more difficult. In this posting I hope to give you a bit of an overview of intellectual property from 10,000 feet.
What is Intellectual Property
Intellectual Property laws exist to encourage artists, inventors, and other creators to make new art, technology, or other creations. The rest of us benefit from these creations. In return, we give these individuals the ability to profit from their work directly, without interference from others for a certain amount of time. The rights these creators receive is akin to a monopoly. Then, once the time expires, the works go into the “public domain” and anybody can use them.
There is a world-wide organization which helps protect intellectual property. It is, quite appropriately, called the World Intellectual Property Organization (or “W.I.P.O.” for short). This organization defines intellectual property as:
Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.
This definition is nice, as far as definitions go, and an it encapsulates the core idea, that I.P. comes from “the mind.” An I.P. lawyer can easily see references to three major areas of I.P.: Patents, Copyrights, and Trademarks. But business owners can protect much, much more than this. Just as a restaurant can protect its secret recipe, a manufacturer can protect its cutting-edge techniques, and a local business can protect its customer list. Celebrities can protect their likenesses, and writers can protect their idea. These are all forms of I.P. that can be protected under federal law, California law, or both.
Different Types of Intellectual Property
There are many different methods in which I.P. can be protected. In future posts I’ll discuss some of these forms of I.P. in greater detail, but I put together this brief rundown of some of what can be generically lumped under the term “Intellectual Property”:
Trademark
Many of my clients commonly understand trademarks as “brands” but they can include much more than that. Legally, trademarks refer to the use of a word, logo, or symbol (a “mark”) to brand goods or services in business (“trade”). Commonly, trademarks refer to text or logos, but they can also include sound, color, or even smell! Trademarks can be registered by state agencies or the federal United States Patent and Trademark Office (“U.S.P.T.O”).
A trademark holder is not required to register a trademark before going to court. However, courts can give more and better remedies when a work is registered. This can include court orders or money awards. Trademarks also include service marks, collective marks, and certification marks. Famous examples of trademarks include Coca-Cola (Reg. No. 238,157), Disney (Reg. No. 1,162,727), and Milwaukee Brewers (Reg. No. 1,543,238). Under federal law, trademark infringement can also be called “unfair competition,” but under California law, unfair competition usually means something different.
Trade Dress
Businesses can use trade dress to protect “distinctive” aspects of a product’s packaging. As the name suggests, trade dress is a category of trademark protection. There are a few important difference, though. For example, the Coca Cola Company holds a trademark on the word Coke. It also holds trade dress rights in the distinctive shape of the bottles that Coke is sold in (Reg. No. 1,057,884). Trade dress should be registered with the U.S.P.T.O. before it is enforced in court.
Copyright
In general terms, copyright protects “expressive works.” I generally tell clients this includes books, music, movies, translations, and other like works of art. But, in a quirk of the law, Congress also included semi-conductors and boat hulls in the Copyright Act. Copyright only applies to works that are “fixed in a tangible medium of expression.” This means works that are written down, recorded, or saved. Copyright prevents others from copying, displaying, distributing, or performing another’s work without permission. It also prevents the creation of unauthorized “derivative works,” or works based on copyrighted works. This commonly means sequels or spin-offs, but can mean other works as well. Doing any of these things without permission is an act of infringement. Copyright does not protect ideas, just the expression in which the ideas are communicated. To receive full protection under the law, a work must be registered with the United States Copyright Office. Copyrights must be registered with the federal copyright office and enforced in federal courts—there is no state protection or enforcement of copyright allowed.
Patent
Many people understand that patents protect inventions. Keep in mind, though, that the word inventions is extremely broad in the eyes of the U.S.P.T.O. Patents can protect office procedures or musical instruments. Famously, the United States Supreme Court upheld a patent holder’s right to prevent the unauthorized planting of patented soy beans.
Trade Secret
When a business develops something of value (trade) and takes reasonable steps to protect it (secret), it has a trade secret. Unlike most other forms of I.P., trade secrets are protected by state law, not by federal law. There is also no formal registration process. When someone steals a trade secret, it is called misappropriation. The owner of a misappropriated trade secret can ask a court for many different types of remedies, but court orders and money damages are most common.
Right of Publicity
This right allows an individual to the use of their name, image, or likeness in a commercial setting. This is another right that is usually protected by state laws. Each state has its own law on the books, but California has an especially robust law to protect the publicity of its residents.
Literary Property
Some states, including California, protect unfinished ideas that are not written down or recorded. These states use “literary property” to fill in the gaps to protect ideas that are otherwise not protectible under federal Copyright law. Imagine that a writer tells a producer about details for a script for a TV show she is working on. Imagine further that the producer then went on to fire the writer, claim her script as her own, and finish the show without paying the writer. If the ideas were written in an email, the writer could claim copyright infringement. But if the script isn’t totally done yet, the writer might have trouble showing the infringement. Or, what if the writer told the producer the details instead of putting them in an email? Then, the details wouldn’t be written at all. In either case, the writer could claim that her ideas are protected as literary property and could obtain a judgment from a court.
Moral Rights
For many copyrighted works, the consumer can enjoy the work in any way he or she wants after purchasing it, including reselling the work. This is called the “First Sale Doctrine.” However, artists do have continued rights to protect their works. Most commonly these rights are associated with publicly-viewable fine art installations. These rights are called moral rights. For example, what happens if a city commissions an artist to install a large sculpture, but then later decides to tear it down or alter it? Both California and federal law recognize the moral rights of artists to protect the integrity of their work.
Remedies
A remedy is something a court can give an intellectual property owner who has proven infringement. Each of these forms of intellectual property has slightly difference remedies. Every form includes form of money payment, commonly called damages. Most of these cases also include a court order, also called an injunction. But, the exact nature of these remedies varies a little bit between the different forms of I.P.
More Questions?
In future posts we’ll discuss this further. If you have questions beforehand though, please check out the rest of our blog for more information. The content of this blog is provided for informational purposes only, and we are not offering any legal opinions. If you wish to consult with Sharif | Faust, please contact us to set up a consultation. This blog does not create an attorney-client relationship with Sharif | Faust. To retain Sharif | Faust, you must sign a written attorney-client agreement. Remember, the results in any case depend upon the specific facts in that case. It is important that you consult with a lawyer you trust. By reading this blog, you agree to our Terms of Use.